Amazon Technologies, Inc.Download PDFPatent Trials and Appeals BoardDec 23, 20202020002890 (P.T.A.B. Dec. 23, 2020) Copy Citation 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. 14/538,718 11/11/2014 QUAN BINH TO 5924-89900 5227 35690 7590 12/23/2020 KOWERT, HOOD, MUNYON, RANKIN & GOETZEL, P.C. 1120 S. Capital of Texas Hwy Building 2, Suite 300 Austin, TX 78746 EXAMINER BYRD, UCHE SOWANDE ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 12/23/2020 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): patent_docketing@intprop.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte QUAN BINH TO, CHRISTOPHER WHITAKER, SHESHADRI SUPREETH KOUSHIK, BENJAMIN DAVID NEWMAN, JULIEN JACQUES ELLIE, and ZACHARY THOMAS CROWELL ___________ Appeal 2020-002890 Application 14/538,718 Technology Center 3600 ____________ Before ALLEN R. MACDONALD, ERIC B. CHEN, and MICHAEL J. STRAUSS, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2020-002890 Application 14/538,718 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a service provider system to implement an enterprise catalog service that manages catalogs or portfolios of software products on behalf of service provider customer organizations. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject matter, with bracketing added: 1. A system, comprising: a plurality of computing nodes that collectively provide services to an organization that is a customer of a service provider, each of the computing nodes comprising at least one processor and a memory, wherein one or more of the plurality of computing nodes implement an enterprise catalog service; and an administrator interface through which an administrator within the customer organization interacts with the enterprise catalog service to manage server products on behalf of end users in the customer organization; wherein the enterprise catalog service is configured to: [i] receive, through the administrator interface, a request from the customer organization to create a portfolio for server products hosted by the service 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.) Appeal 2020-002890 Application 14/538,718 3 provider that are to be made available to the end users in the customer organization; [ii] create, in response to the request, a portfolio to store one or more server products; [iii] receive, through the administrator interface, input from the customer organization indicating selection of one or more server products to be added to the portfolio, wherein the one or more server products are configured to execute on service provider resources to perform a service, and wherein the one or more server products comprise at least one server product that is sourced by an entity other than the customer organization or the service provider; [iv] add, in response to the input, the one or more server products to the portfolio; [v] associate one or more access or usage policies with the portfolio and make the portfolio available to one or more end users in the customer organization, but not available to other users or customers of the provider network; [vi] receive a request to launch one of the one or more server products in the portfolio; and [vii] in response to receiving the request to launch one of the one or more server products, initiate execution of the one of the one or more server products on one or more of the plurality of computing nodes of the service provider in accordance with the one or more access or usage policies associated with the portfolio, [viii] wherein the one of the one or more server products provides one or more services to one or more end users in the customer organization or to other users. REJECTION Claims 1–23 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Appeal 2020-002890 Application 14/538,718 4 OPINION We are unpersuaded by Appellant’s arguments (Appeal Br. 14–25; see also Reply Br. 4–6, 16) that independent claims 1, 6, and 19 are directed to patent-eligible subject matter under 35 U.S.C. § 101. With respect to independent claims 1, 6, and 19, the Examiner determined that “[t]hese claim elements are considered to be abstract ideas because they are directed to a method of organizing human activity [as in Alice].” (Ans. 4.) In particular, the Examiner determined that “[t]he legal interaction is entered into when the users . . . sign up for the enterprise services and there [is] a cost associated with the use of the services, which [services] are monitored [and] implemented” and “[t]he managing personal behavior is entered into when the user activities within the enterprise services are monitored, in which rules are implemented to make sure the user products and policies are followed.” (Id. at 4–5.) Moreover, regarding the additional elements of these claims (e.g., computing nodes, processor, and memory) the Examiner determined that “claims 1, 6, [and] 19 merely include[] instructions to implement an abstract idea on a computer (or merely uses a computer as a tool to perform an abstract idea) while the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as a server).” (Final Act. 7.) We agree with the Examiner’s determinations and ultimate conclusion that the claims are directed to 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 Appeal 2020-002890 Application 14/538,718 5 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). 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, 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 Appeal 2020-002890 Application 14/538,718 6 statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; 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. at 191 (citing Benson and Flook); see also, 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. (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 published revised guidance on the application of § 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019 Update: Appeal 2020-002890 Application 14/538,718 7 Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019). 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) (9th ed. 2019)). 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 84 Fed. Reg. 56. Are the claims at issue directed to a patent-ineligible concept? Step One Claim 1 is a system claim, and claim 19 is a computer-readable storage medium, which fall within the “manufacture” category of 35 U.S.C. § 101. Claim 6 is a method claim, which falls within the “process” category of 35 U.S.C. § 101. Therefore, each of claims 1, 6, and 19 falls within one of the four statutory categories of patentable subject matter identified by 35 U.S.C. § 101. Appeal 2020-002890 Application 14/538,718 8 Although claims 1, 6, and 19 fall within the statutory categories, we must still determine whether the claims are directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 216. Thus, we must determine whether the claims recite a judicial exception and whether the exception is integrated into a practical application. See 84 Fed. Reg. at 52– 55. If a claim recites a judicial exception without integrating the judicial exception into a practical application, the claim is directed to a judicial exception under the first step of the Alice/Mayo test. See id. Step 2A, Prong One Independent claim 1 recites the following limitations: “[i] receive, through the administrator interface, a request from the customer organization to create a portfolio for server products hosted by the service provider that are to be made available to the end users in the customer organization,” “[ii] create, in response to the request, a portfolio to store one or more server products,” “[iii] receive, through the administrator interface, input from the customer organization indicating selection of one or more server products to be added to the portfolio,” and “[iv] add, in response to the input, the one or more server products to the portfolio.” Such limitations of claim 1 recite a patent-ineligible abstract idea of certain methods of organizing human activity, such as creating of a contractual relationship between a vendor and an information technology (IT) administrator of a customer organization to acquire a software portfolio for a computer system. See, e.g., Alice, 573 U.S. at 220 (concluding that “a method of organizing human activity” is an abstract idea); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (holding that “creating a contractual relationship—a Appeal 2020-002890 Application 14/538,718 9 ‘transaction performance guaranty’” is an abstract idea). As further evidence that the claims are directed to certain methods of organizing human activity, in the “Background” section, Appellant’s Specification discloses that “[m]any companies and other organizations operate computer networks that interconnect numerous computing systems to support their operations, such as with the computing systems being co-located (e.g., as part of a local network)” (Spec. ¶ 1) and “within a large enterprise, individual business units often procure their own software and services” (id. ¶ 3 (emphasis added)). Moreover, independent claim 1 further recites: “[v] associate one or more access or usage policies with the portfolio and make the portfolio available to one or more end users in the customer organization, but not available to other users or customers of the provider network,” “[vi] receive a request to launch one of the one or more server products in the portfolio,” “[vii] in response to receiving the request to launch one of the one or more server products, initiate execution of the one of the one or more server products on one or more of the plurality of computing nodes of the service provider in accordance with the one or more access or usage policies associated with the portfolio,” and “[viii] wherein the one of the one or more server products provides one or more services to one or more end users in the customer organization or to other users.” Such limitations of claim 1 recite a patent-ineligible abstract idea of certain methods of organizing human activity, such as the IT administrator following the rules and policies of the software vendors. See, e.g., Alice, 573 U.S. at 220 (concluding that “a method of organizing human activity” is an abstract idea); see also In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) (concluding that “[a]pplicants’ Appeal 2020-002890 Application 14/538,718 10 claims, directed to rules for conducting a wagering game” are abstract). As further evidence that the claims are directed to certain methods of organizing human activity, in the “Background” section, Appellant’s Specification discloses that “[d]ifferent organizations have taken a variety of approaches to increase standardization and enforce compliance.” (Spec. ¶ 3 (emphasis added).) Accordingly, claim 1 recites a judicial exception. Claims 6 and 19 recite limitations similar to those discussed with respect to claim 1. Thus, claims 6 and 19 also recite a judicial exception. Step 2A, Prong Two Because claim 1 and, similarly, claims 6 and 19 recite a judicial exception, we next determine if the claims recite additional elements that integrate the judicial exception into a practical application. Independent claim 1 recites “a plurality of computing nodes that collectively provide services to an organization that is a customer of a service provider, each of the computing nodes comprising at least one processor and a memory, wherein one or more of the plurality of computing nodes implement an enterprise catalog service” (emphases added). The additional elements recited in claim 1, including “node,” “processor,” and “memory” are merely tools for performing the abstract idea. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“[T]he claims are directed not to an improvement in cellular telephones but simply to the use of cellular telephones as tools in the aid of a process focused on an abstract idea.”). Appeal 2020-002890 Application 14/538,718 11 Accordingly, claim 1 does not recite additional elements that integrate the judicial exception into a practical application. Claims 16 and 19 recite similar limitations. Is there something else in the claims that ensures that they are directed to significantly more than a patent ineligible concept? Step 2B Because claims 1, 6, and 19 are directed to a judicial exception, we next determine, according to Alice, whether these claims recite an additional element, or combination of elements, that is enough to ensure that the claim is directed to significantly more than a judicial exception. Claim 1 is a system claim, which includes the following additional elements: “node,” “processor,” and “memory.” Likewise, method claim 6 and computer-readable storage medium claim 19 recite a “computer.” With respect to the claimed additional elements, Appellant’s Specification discloses the following: In various embodiments, computer system 1500 may be a uniprocessor system including one processor 1510, or a multiprocessor system including several processors 1510 (e.g., two, four, eight, or another suitable number). Processors 1510 may be any suitable processors capable of executing instructions. For example, in various embodiments, processors 1510 may be general-purpose or embedded processors implementing any of a variety of instruction set architectures (ISAs), such as the x86, PowerPC, SPARC, or MIPS ISAs, or any other suitable ISA. (Spec. ¶ 155.) System memory 1520 may be configured to store instructions and data accessible by processor(s) 1510. In various embodiments, system memory 1520 may be implemented using any suitable memory technology, such as static random access Appeal 2020-002890 Application 14/538,718 12 memory (SRAM), synchronous dynamic RAM (SDRAM), nonvolatile/Flash-type memory, or any other type of memory. In the illustrated embodiment, program instructions and data implementing one or more desired functions, such as those methods, techniques, and data described above for managing and deploying desktop applications and services through an enterprise catalog service, are shown stored within system memory 1520 as code 1525 and data 1526. For example, data 1526 . . . may be stored in any of a variety of data structures or database tables within memory 1520 on one or more computing nodes of a service provider system and/or client computing device used in managing and deploying desktop applications and services through an enterprise catalog service, as described herein. (Id. ¶ 156.) The generalized functional terms by which the additional elements are described reasonably indicate that Appellant’s Specification discloses: (i) conventional computer system 1500 (id. ¶ 155) or conventional computing nodes (id. ¶ 156); (ii) conventional processors 1510 (e.g., PowerPC, SPARC, or MIPS ISAs) (id. ¶ 155); and (iii) conventional system memory 1520 (e.g., SRAM, SDRAM, or nonvolatile/Flash-type memory) (id. ¶ 156). Moreover, Appellant’s Figure 15 illustrates a block diagram of computer system 1500 (or node), which includes processor 1510a–1510n, system memory 1520. Accordingly, Appellant’s Specification, including Figures 15, discloses that: (i) conventional computer system 1500 (or computing node); (ii) conventional processors 1510; and (iii) conventional system memory 1520, function cooperatively as an ordered combination. In view of Appellant’s Specification, the claimed “computer” (or “node”), “processor,” and “memory” reasonably may be determined to be generic, purely conventional additional elements. Appeal 2020-002890 Application 14/538,718 13 Thus, claims 1, 6, and 19 do no more than require generic additional elements to perform generic computer functions, rather than improve computer capabilities. First, Appellant argues that “[t]he Office Action does not go beyond a cursory explanation regarding how the claimed subject matter recites concepts that amount to ‘Certain Methods of Organizing Human Activity’” and “[t]here are no contracts or business relations that are managed in the presented claims.” (Appeal Br. 14; see also Reply Br. 4–6.) Contrary to Appellant’s arguments, the Examiner has identified the appropriate judicial exceptions as “certain methods of organizing human activity” and the Examiner has compared the claimed concepts of independent claim 1 to the appropriate Supreme Court decision (i.e., Alice). Accordingly, the Examiner has met the burden of a general prima facie notice requirement. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (“[A]ll that is required of the [Patent] [O]ffice to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [section] 132.” ). Second, Appellant argues the following: The inventive focus of the claim is technical in nature, and is dependent upon the technical environment of an enterprise catalog service. Among other things, the claims recite an enterprise catalog service using specific technical elements that perform specific tasks and communicate in a specific way. (Appeal Br. 15.) Here, the plain focus of the claims is directed to an improvement on computer functionality, i.e., various embodiments of providing an enterprise catalog service using a Appeal 2020-002890 Application 14/538,718 14 plurality of computing nodes. The recited improvements represent computer functionality, and they are patent eligible under Enfish. (Id. at 16.) However, Appellant has not adequately explained why the claim “purport[s] to improve the functioning of the computer itself” or “any other technology or technical field.” Alice, 573 U.S. at 225. In particular, Appellant has not explained why “providing an enterprise catalog service using a plurality of computing nodes,” which executes the steps of forming a contractual relationship to acquire software and following the rules of a software vendor, improves the function of a computer or other technology. Third, Appellant argues the following: Like Finjan and Ancora, the claimed subject matter of the current application also “make[s] non-abstract improvements to computer technology.” The Specification [at paragraph 20] teaches and the claims recite a “particular way” of implementing an enterprise catalog service. As one example, this particular way includes “to create catalogs and portfolios of software products (e.g., enterprise-wide catalogs, portfolios, and/or other catalogs containing desktop applications and/or server products) and to share them with specific sets of users.” (Appeal Br. 17–18.) Similarly, Appellant argues the following: In particular, an enterprise catalog service [as disclosed in paragraph 20] can “offer a standard set of products for common use cases to the end users.” “The enterprise catalog service may allow administrators (e.g., IT administrators or buyers) to discover software products, provision service provider resources on which to deploy those software products, and manage those software products through a service provider management console.” Accordingly, . . . this feature, among others, integrates the claimed subject matter into a “practical application.” Therefore, the claims should not be rejected under § 101. Appeal 2020-002890 Application 14/538,718 15 (Id. (citations omitted).) However, Appellant has not adequately explained how the features of “create catalogs and portfolios of software products . . . and to share them with specific sets of users” or “enterprise catalog service” improves computer technology. The features of “create catalogs and portfolios of software products” relates to forming a contractual relationship to acquire software from a vendor, rather than improving the function of a computer or other technology. Similarly, as discussed previously, the “enterprise catalog service” executes the steps of forming a contractual relationship to acquire software and following the rules of a software vendor, rather than improving the function of a computer or other technology. Fourth, Appellant argues the following: In this case, however, the recited computer elements are not being used simply for their “conventional” function in a “general computer.” Rather, the computer elements of the claims recite the computerize context for which the claimed invention is designed for. In particular, the claimed solutions in this case are designed to address problems that stems from the computerized context. . . . As one example [from paragraph 2 of the Specification], the claims solve one or more of the technical problems of “deploying and managing applications at scale,” deploying updates and patches “without affecting user productivity,” deploying “applications on-demand” and deploying a company’s “own line of business applications.” Because of the focus of the recited subject matter, it is necessarily “rooted” in computer technology. (Appeal Br. 23.) Appellant respectfully submits that claim 1 in this case is similar to the Federal Circuit’s 2014 decision in DDR Holdings v. Hotels.com. Appeal 2020-002890 Application 14/538,718 16 (Id. at 25.) However, in DDR, the Federal Circuit articulated that “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR, 773 F.3d at 1257. Even if Appellant is correct that the claims are “necessarily rooted in computer technology,” Appellant has not demonstrated that the claims “overcome a problem specifically arising in the realm of computer networks,” as required by DDR. Fifth, Appellant argues the following: The Specification [at paragraph 20] teaches an improvement (the enterprise catalog service) to an existing computer system (typical data centers), comprising, in some embodiments, “to create catalogs and portfolios of software products (e.g., enterprise-wide catalogs, portfolios, and/or other catalogs containing desktop applications and/or server products) and to share them with specific sets of users.” These features are similar to the features found “significantly more” in the Berkheimer decision. (Appeal Br. 25 (citations omitted); see also Reply Br. 16.) Again, as discussed previously, the “enterprise catalog service” executes the steps of forming a contractual relationship to acquire software and following the rules of a software vendor, rather than improving the function of a computer or other technology. Last, Appellant argues that “while it may be true that ‘computing nodes’ and ‘server products’ are known components in the prior art, here the combination of recited elements describes an unconventional enterprise catalog service, which was not known in the prior art and improves the operation of typical data centers.” (Appeal Br. 25 (emphases omitted).) However, Appellant improperly conflates the requirements for eligible subject matter with the independent requirements of novelty and non- Appeal 2020-002890 Application 14/538,718 17 obviousness. “The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89. Thus, we agree with the Examiner that claims 1, 6, and 19 are directed towards patent-ineligible subject matter. Accordingly, we sustain the rejection of independent claims 1, 6, and 19 under 35 U.S.C. § 101. Claims 2–5, 7–18, and 20–23 depend from independent claims 1, 6, and 19, and Appellant has not presented any additional substantive arguments with respect to these claims. We sustain the rejection of claims 2–5, 7–18, and 20–23 under 35 U.S.C. § 101 for the same reasons discussed with respect to independent claim 1. CONCLUSION We affirm the Examiner’s decision rejecting claims 1–23 under 35 U.S.C. § 101. DECISION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–23 101 Eligibility 1–23 Appeal 2020-002890 Application 14/538,718 18 TIME PERIOD FOR 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation