Alexander D. Munk

Patent Trials and Appeals Board

Aug 16, 2019

14610777 - (D) (P.T.A.B. Aug. 16, 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.
14/610,777 01/30/2015 Alexander D. Munk SP0120.01US/247870 9102
128058 7590 08/16/2019
Shook, Hardy & Bacon L.L.P.
(Splunk Inc.)
2555 Grand Blvd.
Kansas City, MO 64108
EXAMINER
FU, HAO
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
08/16/2019 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):
IPRCDKT@SHB.COM
Patentofficecorrespondence@splunk.com
docketing.shb@clarivate.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALEXANDER D. MUNK
____________________

Appeal 2018-005798
Application 14/610,777
Technology Center 3600
____________________

Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and
IFTIKHAR AHMED, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1–30, which are all of the pending claims. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 Appellant indicates the real party in interest is Splunk, Inc. App. Br. 3.
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Illustrative Claim
Illustrative claims 1 and 18 under appeal read as follows (emphasis,
formatting, and bracketed materials added):
1. A computer-implemented method comprising:
[A.] receiving, from one or more data sources, raw
machine data corresponding to activity or
operation of one or more components in a data
processing environment;
[B.] processing the raw machine data to generate
processed machine data, wherein processing the
raw machine data comprises
[i.] parsing the raw machine data into events
comprising a time-stamped portion of the
raw machine data,
[ii.] determining one or more events associated
with a time range to store the one or more
events in association with a bucket that
stores the one or more events associated
with the time range based on the time-
stamped portion of the raw machine data,
and
[iii.] generating metadata for the events;
[C.] storing the processed machine data in a data store
searchable for information about security or
performance of the data processing environment,
wherein the one or more events are stored in
association with the bucket;
[D.] monitoring the data store to track the processed
machine data maintained in the data store;
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[E.] based on the processed machine data maintained in
the data store, determining an allocated data size
that is a size of the raw machine data
corresponding with the processed machine data
maintained in the data store, the size of the raw
machine data being different from a size of the
processed machine data maintained in the data
store;
[F.] determining that the allocated data size exceeds a
data threshold; and
[G.] based on the determination that the allocated data
size exceeds the data threshold, automatically
performing, via a computer device, a
predetermined action in association with at least
some of the processed machine data.
18. (as construed by this Panel)2 The method of claim 1,
wherein the processed machine data stored in the data store is
associated with an account, wherein a data threshold for the
account corresponds to a purchased storage amount, the
method further comprising:
[H.] upon or after determining that the allocated data
size exceeds . . . the data threshold for the
account[,] . . . automatically initiating a purchase
of an additional storage amount.

2 Claim 18 currently contains typographical and grammatical errors,
specifically “a the” and failing to delete “; and”. For purposes of this appeal,
we construe claim 18 as set forth above. Additionally, corresponding
changes should be made to claims 14–17. Claims 14–18 can be compared to
claims 4–13, which deleted “; and” and do not require changes. See
Amendment 3–7 (Aug. 27, 2015).
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Rejection3
The Examiner rejects claims 1–30 under 35 U.S.C. § 101 “because the
claimed invention is directed to non-statutory subject matter,” that is,
because the subject matter of the claimed invention is patent-ineligible.
Non-Final Act. 7–20.
As to this rejection, our decision as to the § 101 rejection of claim 18
is determinative as to the § 101 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 101
rejection of claims 1–17 and 19–30.

Issues on Appeal
Has the Examiner erred in rejecting claim 18 as being directed to
patent-ineligible subject matter?

ANALYSIS4
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments that the Examiner has erred.
A. Section 101
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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and

3 All citations herein to the “Non-Final Action” are to a Non-Final Action
mailed on September 7, 2017.
4 Any Manual of Patent Examining Procedure (MPEP) citations herein are to
MPEP Rev. 08.2017, January 2018.
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abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
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
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, 69 (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 (1853))); 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
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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 to limit the use of the formula to a particular technological
environment.” Id. (citation omitted) (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 (quotation marks 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.
B. USPTO § 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of § 101. USPTO’s
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance,
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84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance,
we first look to whether the claim recites:
(1) (see Memorandum Step 2A – Prong One) 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) (see Memorandum Step 2A – Prong Two) additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).5
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:
(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 Memorandum Step 2B.

5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See Memorandum 51.
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C. Examiner’s § 101 Rejection – Alice/Mayo - Steps 1 and 2
C.1. 2019 Memorandum Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines claim 18
recites an abstract idea.
In the instant case, the claims are directed towards allocating a
data size for storing data. Determining an allocated data size
for storing data is essentially creating a contract between a
storage user and a storage provider, and thus the present claimed
invention is a fundamental economic practice and thus, the
claims include an abstract idea.
Non-Final Act. 7 (emphasis added).
C.2. 2019 Memorandum Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
claim 18 is directed to an abstract idea.
The claims do not include limitations that are “significantly
more” than the abstract idea because the claims do not include
an improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment.
Non-Final Act. 7 (emphasis added).
Continuing this reasoning in the Non-Final Action’s and the Answer’s
Alice/Mayo analysis, the Examiner determines:
Applicant further argued [in the response filed on July 31, 2017,]
that the claimed invention can result in fast computation time
than prior methodologies and can further results [sic] in
improving user access to allocated data storage space. Examiner
disagrees and points out that the present claims are merely
directed to “managing storage of machine data” (see paragraph
0023 of specification). Processing raw data, such as indexing
raw data to make it searchable, was well known prior to the
present invention as evident in Das et al. (Pub. No.: US
2013/0054537).
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Non-Final Act. 9 (emphasis added).
[T]he present invention does not actually make processing raw
data into processed machine data any faster, because the
processing/indexing is the same as existing technologies.
Non-Final Act. 11 (emphasis added).
[T]he amended claimed features (i.e. wherein processing the raw
machine data comprises parsing the new machine data into
events comprising a time-stamped portion of the new raw
machine data, and generating metadata for the events) do not
amount to improvement in computer technology, since such data
processing was known at the time of invention. Examiner cite[s]
Bingham et al. (Pub. No.: US 2014/0324862), which teaches raw
machine data can be segmented, time stamped and stored as data
events in a time-series index.
Non-Final Act. 13 (emphasis added).
Examiner points out that this feature is also well-understood in
the field of data storage. For example, Ago et al. (Pub. No.: US
2016/0092558) teaches a cloud-based data intake and query
systems.
Ans. 6 (emphasis added).
Kakadia et al. (Pub. No.: US 2015/0023170) also teaches similar
feature. Kakadia teaches associating received data with a time
bucket.
Ans. 7 (emphasis added).
Rus et al. (Patent No.: US 9,229,657) teaches a distributed
storage system, and in particular, methods of redistributing data
in a distributed storage system based on attributes of the data.
Ans. 7 (emphasis added).
C.3. 2019 Memorandum Step 2B
Further applying the Alice/Mayo analysis, the Examiner determines:
Note that the limitations, in the instant claims, are done by the
generically recited computer device. The limitations are merely
instructions to implement the abstract idea on a computer and
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require no more than a generic computer to perform generic
computer functions that are well-understood, routine and
conventional activities previously known to the industry.
Non-Final Act. 7 (emphasis added).
D. Appellant’s § 101 Arguments6 & Panel’s Analysis
D.1. 2019 Memorandum Step 2A, Prong 1
Claim 18 recites the following limitation:
automatically initiating a purchase of an additional storage
amount.
We agree with the Examiner that “the present claimed invention is an
attempt to solve a business issue.” Non-Final Act. 8. We determine that
claim 18 recites a method of initiating purchasing, i.e., a marketing and sales
activity; and marketing and sales activity is one of certain methods of
organizing human activity identified in the 2019 Memorandum, and thus an
abstract idea. 84 Fed. Reg. at 52.
D.2. 2019 Memorandum Step 2A, Prong 2
D.2.a.
Having determined that claim 18 recites an abstract idea, we now turn
to whether claim 18 is directed to that abstract idea, or instead integrates the
judicial exception into a practical application. Appellant contends the
Examiner erred in rejecting claim 18 as being directed to patent-ineligible
subject matter. Appellant particularly contends:
[The claimed] technique improves systems for storing and
managing raw machine data. . . . [I]nstead of tracking the storage
footprint like conventional systems, the claimed technique tracks

6 The contentions we discuss herein are determinative as to the § 101
rejection on appeal. Therefore, we do not discuss Appellant’s other § 101
contentions herein.
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the data taken in, thereby reducing the complexity of
conventional tracking techniques in raw machine data storage
and management systems. By reducing the complexity of
tracking techniques, the claimed technique represents an
improvement in data storage technology. Moreover, at a
fundamental level, an improvement in data storage technology is
an improvement in computer technology. By reducing the
complexity of conventional tracking techniques for data storage,
the processing demands on computer storage systems are
reduced, freeing up computational resources for other tasks.
App. Br. 10.
D.2.b.
We are persuaded by Appellant’s argument. First, the Examiner’s
conclusion that claim 18 does not integrate the judicial exception into a
practical application is premised on determining that claim 18 “do[es] not
include limitations that are ‘significantly more’” than the abstract idea.
Non-Final Act. 7. The Examiner supports this determination by citing to
prior art teachings or asserting that claim limitations are existing well-known
technology. See Final Act. 9–14; Ans. 4–9. On January 7, 2019, subsequent
to the Examiner’s Answer, the USPTO issued the Memorandum explicitly
precluding an examiner from using such an analysis at step 2A.
Examiners should note, however, that revised Step 2A
specifically excludes consideration of whether the additional
elements represent well-understood, routine, conventional
activity. Instead, analysis of well-understood, routine,
conventional activity is done in Step 2B. Accordingly, in revised
Step 2A examiners should ensure that they give weight to all
additional elements, whether or not they are conventional, when
evaluating whether a judicial exception has been integrated into
a practical application.
84 Fed. Reg. at 55 (emphasis added).
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Second, even if the Examiner’s step 2A “not significantly more”
analysis were permitted, the analysis relies heavily on U.S. patents and
published application as references to teach a claim element (e.g., “was well
known prior to the present invention as evident in Das et al. (Pub. No.: US
2013/0054537)” Non-Final Act. 9 (emphasis added)). However, the
Examiner’s analysis does not include showing how the reference
demonstrates the claim element was widely prevalent or in common use as is
now required. On April 19, 2018, again subsequent to the Examiner’s
Answer, the USPTO issued guidance requiring such a demonstration for
U.S. patents and published applications. The Office’s Berkheimer Memo
sets forth the requirements in a determination of “well-understood, routine or
conventional.” For example, the determination can be supported by:
A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional nature
of the additional element(s). . . . [However], while U.S. patents
and published applications are publications, merely finding the
additional element in a single patent or published application
would not be sufficient to demonstrate that the additional
element is well-understood, routine, conventional, unless the
patent or published application demonstrates that the additional
element are widely prevalent or in common use in the relevant
field.
Berkheimer Memo § III.A.3.7
Based on the Office guidance issued subsequent to the Examiner’s
Answer, the Examiner’s rejection does not provide sufficient analysis to
show claim 18 does not integrate the judicial exception into a practical

7 USPTO memorandum issued on April 19, 2018, titled “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).”
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application; and we are unable to otherwise determine why claim 18 does
not integrate the recited judicial exception into a practical application that
improves the functioning of a computer or improves another technology.
We conclude that when evaluated under the Memorandum, the
Examiner has not demonstrated that claim 18 does not provide an inventive
concept. We do not sustain the rejection of claim 18 under 35 U.S.C. § 101.

CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1–30 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
(2) On this record, the Examiner has not shown claims 1–30 to be
unpatentable.

DECISION
The Examiner’s rejection of claims 1–30 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter is reversed.

REVERSED