Polinati, Chinna et al.

Patent Trials and Appeals Board

Dec 27, 2019

13230734 - (D) (P.T.A.B. Dec. 27, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/230,734 09/12/2011 Chinna Polinati 333272.01 6084
148708 7590 12/27/2019
Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
BARON, HENRY
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
12/27/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
microsoft@bmtpatent.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHINNA POLINATI,
PURUSHOTTAM SRIDHAR AMRADKAR, JOAN OUYANG,
ARNE LYNN GAENZ, EDWARD MINISTERIO SARAUSAD,
and CHRISTINE JEFSON
________________

Appeal 2018-002548
Application 13/230,734
Technology Center 2400
____________

Before JOHN A. EVANS, MATTHEW J. McNEILL, and
SCOTT E. BAIN, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒18, 21, and 22, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 3.
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Application 13/230,734
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to measuring the quality of a service to
facilitate the monitoring of the service, the diagnosis of service quality
problems, the prioritization of service quality problems, and the allocation of
resources to improve the service. Spec. ¶ 7. Claim 1 illustrates the appealed
subject matter and reads as follows:
1. A method of diagnosing service quality of an activity of a
service provided by a source to a user of a computer having a
processor, the method comprising:
executing instructions on the processor that cause the
computer to:
identify a service path of a performance of the
activity of the service from the source to the user;
identify at least two segments in the service path
over which the performance of the activity of the service
is provided to the user;
for respective segments of the service path,
measure a service quality metric of the activity along the
segment during the performance of the activity of the
service for the user;
compare the service quality metrics of the
respective segments of the activity during the
performance of the activity of the service for the user to
identify at least one selected segment having a poor
service quality metric; and
for the respective at least one selected segment
having a poor service quality metric, evaluate an effect of
the poor service quality metric of the selected segment on
the activity to identify a poor quality segment that
contributes to the poor service quality of at least one
activity of the service during the performance of the
activity of the service for the user; and
inform the user of the poor quality segment that
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Application 13/230,734
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contributes to the poor service quality of the performance
of the activity of the service for the user.

The Examiner’s Rejections
Claims 1‒18, 21, and 22 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 6‒7.
Claims 1‒7, 9‒17, 21, and 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Sahai (US 7,349,340 B2; Mar. 25, 2008), Raleigh
(US 8,346,225 B2; Jan. 1, 2013), Kaffine (US 6,654,914 B1; Nov. 25,
2003), and Morrill (US 2008/0049631 A1; Feb. 28, 2008). Final Act. 7‒14.
Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Sahai, Raleigh, Kaffine, Morrill, Touboul (US 2009/0323621 A1; Dec.
31, 2009), and Taylor (US 8,339,938 B2; Dec. 25, 2012). Final Act. 14‒15.
Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Sahai, Raleigh, Kaffine, Morrill, Touboul, and Khasnabish (US
2010/0265826 A1; Oct. 21, 2010). Final Act. 15‒16.
ANALYSIS
Patent-Ineligible Subject Matter
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
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Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
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to limit the use of the formula to a particular technological environment.” Id.
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under that guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. Claim 1 recites a “method.” Claim 21 recites a
“device” comprising “a processor” and “a memory.” Claim 22 recites a
“server.” Appellant does not argue the Examiner erred in concluding claims
1, 21, and 22 fall within the four statutory categories of patentable subject
matter. We agree with the Examiner’s conclusion because claim 1 falls
within the process category and claims 21 and 22 fall within the machine
category.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes). See Revised Guidance.
Claim 1 recites the following limitations, among others: (1) “identify
a service path of a performance of the activity of the service from the source
to the user,” (2) “identify at least two segments in the service path over
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which the performance of the activity of the service is provided to the user,”
(3) “compare the service quality metrics of the respective segments of the
activity during the performance of the activity of the service for the user to
identify at least one selected segment having a poor service quality metric,”
and (4)
for the respective at least one selected segment having a poor
service quality metric, evaluate an effect of the poor service
quality metric of the selected segment on the activity to identify
a poor quality segment that contributes to the poor service
quality of at least one activity of the service during the
performance of the activity of the service for the user.
The Examiner concludes claim 1 is directed to the abstract idea of
“measuring, comparing, and evaluating quality metrics of segments in a
service path.” Final Act. 6. Appellant argues the Examiner erred in
concluding claim 1 is directed to an abstract idea. See Appeal Br. 18‒24;
Reply Br. 3‒17. In particular, Appellant argues the abstract idea identified
by the Examiner is an oversimplification of the claims that merely represents
a small portion of the overall claim language. See Appeal Br. 18‒20.
Appellant has not persuaded us of Examiner error with respect to the
identification of the abstract idea. We agree with the Examiner that the
identified limitations, under their broadest reasonable interpretation, recite
measuring, comparing, and evaluating quality metrics of segments in a
service path. For example, the “identify” steps recited in limitations (1) and
(2) characterize identifying a service path and a segments of that path for
which the analysis of quality metrics will be performed. The “compare” step
recited in limitation (3) characterizes comparing service quality metrics to
identify poor quality service metrics. The “evaluate” step recited in
limitation (4) characterizes evaluating an effect of the poor service quality
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metric to identify a segment that contributes to poor service quality of a user
activity. These steps each characterize a concept performed in the human
mind, including observations, evaluations, and judgments.
Appellant’s argument that the Examiner oversimplifies the claim is
unpersuasive of Examiner error with respect to Step 2A, Prong 1 because the
Examiner’s characterization of the claim is consistent with this analysis.
Thus, under the broadest reasonable interpretation, claim 1 recites
measuring, comparing, and evaluating quality metrics of segments in a
service path. We, therefore, conclude claim 1 recites a series of observations,
evaluations, and judgments, which fall within the mental processes category
of abstract ideas identified in the Revised Guidance.
Revised Guidance, Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
Appellant argues the Examiner erred in concluding claim 1 is directed to an
abstract idea because the claim recites improvements to computers or other
technology and the Specification explains at great length such
improvements. See Appeal Br. 21‒24; Reply Br. 6‒16.
We agree with Appellant. Claim 1 recites a series of observations,
evaluations, and judgments, as discussed above. However, these mental
processes are performed in a specific technological context in furtherance of
improving the performance of the underlying technology. In particular,
claim 1 recites comparing service quality metrics of a service provided to a
user to identify at least one segment of the service path that has a poor
quality service metric. Claim 1 further recites evaluating the effect of that
poor service quality metric on the selected segment to identify a poor quality
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segment that contributes to poor service quality of the service provided to
the user.
In other words, the observations, evaluations, and judgments are not
merely mental processes being performed by a generic computer, but instead
are evaluations of the functioning of the technology itself for the purpose of
improving the technology itself. This is analogous to claims that our
reviewing court has determined to be patent eligible. See, e.g., BASCOM
Global Internet Svcs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350‒51
(Fed. Cir. 2016) (finding patent-eligible claims that recited a “specific,
discrete implementation of the abstract idea of filtering content”); Amdocs
(Israel) Ltd. V. Openet Telecom, Inc., 841 F.3d 1288, 1300‒02 (Fed. Cir.
2016) (finding patent-eligible claims that correlated two network accounting
records to enhance the first record because the claims recited “an
unconventional technological solution (enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases).”).
For these reasons, claim 1 recites additional elements that integrate
the judicial exception into a practical application by reciting improvements
to computers or other technology. We, therefore, do not sustain the
Examiner’s rejection of claim 1 as being directed to patent-ineligible subject
matter. We also do not sustain the patent-eligibility rejection of claims 21
and 22, which recite commensurate limitations, or dependent claims 2‒18.
Obviousness
Appellant argues the Examiner erred in rejecting claim 1 as obvious
over Sahai, Raleigh, Kaffine, and Morrill. Appeal Br. 26‒28; Reply Br. 20‒
22. In particular, Appellant argues the proposed combination does not teach
or suggest
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for the respective at least one selected segment having a poor
service quality metric, evaluate an effect of the poor service
quality metric of the selected segment on the activity to identify
a poor quality segment that contributes to the poor service
quality of at least one activity of the service during the
performance of the activity of the service for the user.
See id. Appellant argues the Examiner erred finding Morrill teaches the
disputed limitation because Morrill teaches the conventional technique upon
which the claimed technique improves. Appeal Br. 27.
Specifically, Appellant argues Morrill teaches measuring the
performance of each segment along a path and presuming that obtained
quality metric causes poor service quality without any additional
consideration of this fact. Id. Appellant argues the Examiner tacitly
acknowledges that Morrill relies on this presumption by finding that Morrill
teaches “calls” that correspond to the claimed “activity” and “latency, jitter,
and packet loss” that represent the claimed “poor quality metrics.” See Reply
Br. 20‒21 (citing Ans. 16, Morrill ¶ 21). Appellant argues Morrill presumes
that the identified poor quality metrics contribute to poor service quality
without “evaluat[ing] an effect of the poor service quality metric of the
selected segment on the activity to identify a poor quality segment that
contributes to the poor service quality of at least one activity” as claimed.
See Reply Br. 21‒22.
Appellant has persuaded us of Examiner error. Claim 1 recites
“compar[ing] the service quality metrics of the respective segments of the
activity . . . to identify at least one selected segment having a poor service
quality metric” and “evaluat[ing] an effect of the poor service quality metric
. . . to identify a poor quality segment that contributes to the poor service
quality of at least one activity of the service.” In other words, claim 1 recites
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identifying a segment having a poor service quality metric and then
evaluating that poor service quality metric to determine its contribution to
poor service quality of the activity. We agree with Appellant that the
Examiner has failed to sufficiently explain how Morrill evaluates latency,
jitter, and packet loss (which the Examiner finds correspond to the claimed
“poor service quality metrics”) to identify a poor quality segment that
contributes to the poor service quality of at least one activity of the service.
Indeed, Morrill appears to presume a link between the identified poor
service quality metric and poor service quality of the activity, as argued by
Appellant. See Reply Br. 21‒22.
For these reasons, we do not sustain the Examiner’s obviousness
rejection of claim 1. We also do not sustain the Examiner’s obviousness
rejections of independent claims 21 and 22, which recite commensurate
limitations, or claims 2‒18, which depend from independent claim 1.

CONCLUSION
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1‒18, 21,
22
101 Eligibility 1‒18, 21, 22
1‒7, 9‒17,
21, 22
103 Sahai, Raleigh,
Kaffine, Morrill
1‒7, 9‒17,
21, 22
18 103 Sahai, Raleigh,
Kaffine, Morrill,
Touboul, Taylor
18
8 103 Sahai, Raleigh,
Kaffine, Morrill,
Touboul,
Khasnabish
8
Overall
Outcome
1‒18, 21, 22

Appeal 2018-002548
Application 13/230,734
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REVERSED