Stefano Stefani et al.

Patent Trials and Appeals Board

Oct 9, 2019

14695377 - (D) (P.T.A.B. Oct. 9, 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.
14/695,377 04/24/2015 Stefano Stefani 170104-1401 1027
71247 7590 10/09/2019
Client 170101 c/o
THOMAS HORSTEMEYER, LLP
3200 WINDY HILL RD SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
NGUYEN, THU N
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
10/09/2019 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):
docketing@thomashorstemeyer.com
uspatents@tkhr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEFANO STEFANI and JAKUB KULESZA
____________________

Appeal 2018-006796
Application 14/695,377
Technology Center 2100
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a) Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Amazon
Technologies, Inc. Appeal Br. 2.
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BACKGROUND2
Appellant’s disclosed embodiments and claimed invention relate to
“facilitating reduced locking in a distributed data store.” Spec. ¶ 8. “When
a request to modify a data item is obtained by the primary data store, the
data item may be locked during the modification process to avoid race
conditions created by other modification requests.” Id. The described
invention avoids locking when the modification is being replicated to
increase efficiency. Id.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal (emphasis added to contested prior-art limitations):
1. A non-transitory computer-readable medium embodying
a program executable in at least one computer device, wherein
when executed the program causes the at least one computer
device to at least:
[(1)] receive an update to a data item that is to be
applied to a first data store and at least one second data
store;
[(2)] apply the update to a cached version of the data
item when a lock is held;
[(3)] replicate the update to the second data store after
the lock is released; and
[(4)] receive a replication confirmation from each of at
least a predetermined number of the at least one second
data store.
Appeal Br. 29 (Claims App’x.) (limitation numbering added).

2 Throughout this Decision we have considered the Specification filed April
24, 2015 (“Spec.”), the Final Rejection mailed July 14, 2017 (“Final Act.”),
the Appeal Brief filed January 12, 2018 (“Appeal Br.”), the Examiner’s
Answer mailed May 10, 2018 (“Ans.”), and the Reply Brief filed June 21,
2018 (“Reply Br.”).
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REJECTIONS
Claims 1–20 stand rejected for the judicially-created doctrine of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1–20 of Application No. 12/913,556. Final Act. 3; Non-Final
Rejection mailed February 1, 2017, 3–4.
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–5.
Claims 1–5, 7–11, and 13–20 stand rejected under 35 U.S.C. § 102 as
being anticipated by US 2009/0313311 A1, published Dec. 17, 2009
(“Hoffmann”). Final Act. 5–11.
Claims 6 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hoffmann. Final Act. 11–12.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Provisional Rejection of Claims 1–20 for Nonstatutory Obviousness-Type
Double Patenting
The Examiner rejects claims 1–20 on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 1–20
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of co-pending Application No. 12/913,556. Final Act. 3; Non-Final
Rejection mailed February 1, 2017, 3–4. On April 28, 2015, Application
No. 12/913,556 issued as US Patent No. 9,020,891 B1.
Appellant does not address this ground on the merits. The Examiner
does not address this rejection in the Answer and has not officially
withdrawn the rejection in any other communication of record.
We, therefore, pro forma affirm the Examiner’s rejection of
claims 1–20 on the ground of non-statutory obviousness-type double
patenting.
Rejection of Claims 1–20 under 35 U.S.C. § 101
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S.
at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive
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concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
Guidance, to decide whether a claim is “directed to” an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determined the claims are directed to “a method for
receiv[ing] an update, apply[ing] the update, replicat[ing] the update and
receiv[ing] a replication confirm[ation],” which is “similar to the basic
concept of manipulating information” and, therefore, “directed to an abstract
idea.” Final Act. 2. The Examiner added that the steps of the claims “can be
performed mentally, and are similar to the concepts identified as abstract
ideas by the courts.” Ans. 2–3 (citing SmartGene, Inc. v. Advanced
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Biological Labs., SA, 555 Fed.Appx. 950 (Fed. Cir. 2014), Cyberfone Sys.,
LLC v. CNN Interactive Grp., Inc., 558 Fed.Appx. 988 (Fed. Cir. 2014)).
Under the Revised Guidance, we must determine whether the claims
recite one of several groupings of abstract ideas: mathematical concepts,
certain methods of organizing human activity, and mental processes. See
Revised Guidance, 84 Fed. Reg. at 52. For the reasons discussed below, we
conclude that the claims are not directed to a judicial exception because the
claimed invention is not directed to any of these enumerated categories. Id.
First, we do not agree with the Examiner’s conclusory statement that
each of the steps can be performed mentally. For example, the Examiner
does not explain, nor do we understand how, “apply the update to a cached
version of the data item when a lock is held” can practically be performed in
a person’s mind. This step, along with the other steps recited by the claims,
require the use of a computer for replicating the modification of a data item
to several data stores by updating a cached version of the data item while
holding a lock and replicating secondary versions of the data item after the
lock has been released. Spec ¶ 24; but cf. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372, 1376 (Fed. Cir. 2011) (holding that a
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under 35 U.S.C. § 101); SiRF Tech., Inc. v.
Int’l Trade Comm’n, 601 F.3d 1319, 1331-1333 (Fed. Cir. 2010) (holding
claims properly directed to patentable subject matter because “they explicitly
require the use of a particular machine (a GPS receiver) and could not be
performed without the use of such a receiver”).
Although the Examiner compares the claims to those at issue in
Cyberfone and SmartGene, we are not persuaded this analogy is appropriate.
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Cyberfone’s claims involved “collecting information in classified form, then
separating and transmitting that information according to its classification,”
which the Federal Circuit described as “the well-known concept of
categorical data storage.” Cyberfone, 558 Fed.Appx. 988, 992 (Fed. Cir.
2014). Similarly, SmartGene’s claims “do[] no more than call on a
‘computing device,’ with basic functionality for comparing stored and input
data and rules, to do what doctors do routinely.” SmartGene, 555 Fed.Appx.
950, 954 (Fed. Cir. 2014). The claims at issue in both Cyberfone and
SmartGene involve the collection of and simple manipulation of data, which
the Federal Circuit has found, in similar circumstances, can be performed in
the human mind. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011); Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016). In contrast, the claims at issue here
involve steps that do not easily translate to activity done in the human
mind—such as using locks to prevent certain processes from occurring.
Indeed, we find these claims to be similar to the claims at issue in Research
Corp, which “required the manipulation of computer data structures” and
“could not, as a practical matter, be performed entirely in a human’s mind.”
Cybersource, 654 F.3d at 1376 (citing Research Crop. Techs. v. Microsoft
Corp., 627 F.3d 859, 868 (Fed. Cir. 2010)).
Second, the claims do not recite steps that fit within any of the other
categories enumerated by the Revised Guidance—mathematical concepts
and certain methods of organizing human activity. Revised Guidance, 84
Fed. Reg. at 52. Thus, we are not persuaded that the claims recite an
abstract idea.
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Moreover, even if we agreed with the Examiner that the claims recite
an abstract idea, we are persuaded that the claims as a whole are directed to
a particular improvement in data replication. The steps of the claim solve
the technical problem that “replication of [a] modification to secondary data
stores is a complex operation that may be time consuming,” by “avoid[ing]
locking when the modification is being replicated, which may increase
modification throughput by dec[r]easing time spent waiting for a lock to be
released.” Spec. ¶ 24; see also Revised Guidance, 55 (describing exemplary
consideration indicative that a combination of elements may have integrated
the exception into a practical application, including “reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field”); MPEP § 2106.05(a) (“An indication that the
claimed invention provides an improvement can include a discussion in the
specification that identifies a technical problem and explains the details of an
unconventional technical solution expressed in the claim, or identifies
technical improvements realized by the claim over the prior art.”). Thus, the
claim as a whole integrates any potential mental process into a practical
application.
Accordingly, we do not sustain the rejection of the pending claims
under 35 U.S.C. § 101.
Rejection of Claims 1–5, 7–11, and 13–20 under 35 U.S.C. § 102
The Examiner finds that claims 1–5, 7–11, and 13–20 are anticipated
by Hoffmann. Final Act. 5–11. Specifically, the Examiner contends that
Hoffmann discloses “apply the update to a cached version of the data item
when a lock is held,” as recited by each of the independent claims, 1, 8, and
16. Final Act. 6 (citing Hoffmann ¶¶ 341, 693), 7–8, 9–10.
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Appellant argues that Hoffmann is silent as to whether committing
database changes involves updating a cached version of the data item—
whether it occurs when a lock is held or not. Appeal Br. 18; Reply Br. 19–
20.
We agree with Appellant that the Examiner does not sufficiently
explain, nor is it clear from the cited portions of Hoffmann, if or how
Hoffmann’s replication model makes use of a cached version of the data
item.3 And the Examiner’s Answer does not persuade us otherwise. See
Ans. 4 (citing Hoffman ¶¶ 341, 379, 1586). Although the Examiner states
“while the technique adds a record update to the transaction, the data should
be in cache so the update should add little overhead” (Ans. 4), the portion of
Hoffmann to which the Examiner points, paragraph 1586, discusses only a
“null update (an update that does not change any data) of the record to be
locked,” which does not clearly apply to the limitation as claimed. Thus,the
Examiner has not sufficiently explained how Hoffman discloses “apply the
update to a cached version of the data item when a lock is held,” as claimed.
Because we agree with at least one of the dispositive arguments
advanced by Appellant, we need not reach the merits of Appellant’s other
arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (finding an administrative agency is at liberty to reach a decision
based on “a single dispositive issue”).

3 We note that we review solely the rejection presented by the Examiner and
do not speculate as to any other potential rejection, including whether “apply
the update to a cached version of the data item when a lock is held” may be
obviousness over Hoffmann, as the issue of obviousness is not before us for
review.
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We, therefore, do not sustain the Examiner’s rejection of claims 1–5,
7–11, and 13–20 as anticipated by Hoffmann.
Rejection of Claims 6 and 12 under 35 U.S.C. § 103
The Examiner finds that claims 6 and 12 would have been obvious
over Hoffmann. Final Act. 11–12. Claims 6 and 12 depend from claims 1
and 8, discussed above, and the Examiner relies on Hoffmann in the same
manner as in the anticipation rejection for the limitations of the independent
claims, including “apply the update to a cached version of the data item
when a lock is held.” See Final Act. 12. For the same reasons discussed
previously, we do not sustain the Examiner’s rejection of claims 6 and 12 as
obvious over Hoffmann.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
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DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1–20 Double Patenting 1–20
1–20 § 101 1–20
1–5, 7–11,
13–20
§102 over Hoffman 1–5, 7–11,
13–20
6, 12 §103 over Hoffman 6, 12
Overall
Outcome
1–20
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED