BRITISH TELECOMMUNICATIONS PLCDownload PDFPatent Trials and Appeals BoardMay 1, 202014915716 - (D) (P.T.A.B. May. 1, 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. 14/915,716 03/01/2016 Trevor P LINNEY RYM-36-2574 2722 23117 7590 05/01/2020 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER LEE, JAI M ART UNIT PAPER NUMBER 2636 NOTIFICATION DATE DELIVERY MODE 05/01/2020 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TREVOR P. LINNEY, DAVID J. THORNE, LESLIE D. HUMPHREY, and CHRISTOPHER M. CROOT ____________ Appeal 2019–001302 Application 14/915,716 Technology Center 2600 ____________ Before: ROBERT E. NAPPI, JOHN A. EVANS, and MICHAEL T. CYGAN, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL1 Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Final rejection of Claims 1 and 2. Appeal Br. 7, 12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies British Telecommunications public limited company as the real party in interest. Appeal Br. 3. 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief filed June 25, 2018, (“Appeal Br.”); the Reply Brief filed November 28, 2018, (“Reply Br.”); the Examiner’s Answer Appeal 2019–001302 Application 14/915,716 2 STATEMENT OF THE CASE The claims relate to a proxy for reverse-powered distribution point units in a Fibre to the Distribution Point (FTTDP) optical fibre network. See Abstract. Invention Claims 1 and 2 are independent. An understanding of the invention can be derived from a reading of Claim 2, rejected under § 101, which is reproduced in Table 1. REFERENCES AND REJECTIONS References. Name Publication Number Date Arnold US 2008/023801 A1 Sep. 25, 2008 Chandrachood US 7,610,357 B1 Oct 27, 2009 Smith US 8,818,192 B1 Aug. 26, 2014 Rejections.3 The claims stand rejected as follows: 1. Claim 2 stands rejected under 35 U.S.C. § 101 as directed to a judicial exception. Non-Final Act. 8–10. mailed October 2, 2018, (“Ans.”); the Non-Final Action mailed February 1, 2018, (“Final Act.”); and the Specification filed July 6, 2017, (“Spec.”) for their respective details. 3 The Application is being examined under the AIA first inventor to file provisions. Final Act. 2. Appeal 2019–001302 Application 14/915,716 3 2. Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as unpatentable over Arnold, Smith, and Chandrachood. Non-Final Act. 11–17. ANALYSIS We have reviewed the rejections of Claims 1 and 2 in light of Appellant’s arguments that the Examiner erred. We have considered in this Decision only those arguments Appellant actually raised in the Brief. Any other arguments which Appellant could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. We consider Appellant’s arguments as they are presented in the Appeal Brief, pages 7–18 and the Reply Brief, pages 2–11. Claim 2: INELIGIBLE SUBJECT MATTER De novo review We review the record de novo. SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.”). Based upon our review of the record in light of recent policy guidance with respect to patent-eligible subject matter rejection under 35 U.S.C. § 101, we reverse the rejection of Claim 2 for the specific reasons discussed below.4 4 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance, 84 Fed. Reg.”). Appeal 2019–001302 Application 14/915,716 4 35 U.S.C. § 101 Section 101 provides that a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” See 35 U.S.C. § 101. The Supreme Court has long recognized, however, that 35 U.S.C. § 101 implicitly excludes “[l]aws of nature, natural phenomena, and abstract ideas” from the realm of patent-eligible subject matter, as monopolization of these “basic tools of scientific and technological work” would stifle the very innovation that the patent system aims to promote. Alice Corp. Pty. Ltd. 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)); see also Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–78 (2012); and Diamond v. Diehr, 450 U.S. 175, 185 (1981). Under the mandatory Revised Guidance, we reconsider whether Appellant’s claims recite: 1. any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions 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 reach the issue of whether the claim: Appeal 2019–001302 Application 14/915,716 5 3. adds a specific limitation beyond the judicial exception that is 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. A. Whether the claims recite a judicial exception The Revised Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract-idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se): (a) mathematical concepts,5 i.e., mathematical relationships, mathematical formulas, equations,6 and mathematical calculations;7 (b) certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal 5 Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“The concept of hedging . . . [reduced] to a mathematical formula . . . . is an unpatentable abstract idea.”). 6 Diehr, 450 U.S. at 191 (“A mathematical formula as such is not accorded the protection of our patent laws.”); Parker v. Flook, 437 U.S. 584, 594 (1978) (“[T]he discovery of [a mathematical formula] cannot support a patent unless there is some other inventive concept in its application.”). 7 SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a “series of mathematical calculations based on selected information” are directed to abstract ideas). Appeal 2019–001302 Application 14/915,716 6 obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions);8 and (c) mental processes—concepts performed in the human mind (including observation, evaluation, judgment, opinion).9 The preamble of independent Claim 2 recites: [a] management apparatus for an optical fibre network, the optical fibre network including an optical fibre network section, a plurality of distribution units linking the optical fibre network section to a plurality of customer premises units via a plurality of electrical wired segments, each distribution unit being electrically powered by at least one of the customer premises units, the management apparatus comprising. The Examiner finds: “claim 2 describes the concept of gathering data, storing and transmitting the data, which corresponds to concepts identified as abstract ideas by the courts, such as using categories to organize, store, and transmit information in Cyberfone.”10 Non-Final Act. 8. We disagree. 8 Alice, 573 U.S. at 219–20 (concluding that use of a third party to mediate settlement risk is a “fundamental economic practice” and thus an abstract idea); see also Revised Guidance, at 52 n.13 for a more extensive listing of “certain methods of organizing human activity” that have been found to be abstract ideas. 9 Mayo, 566 U.S. at 71 (“[M]ental processes[ ] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). 10 Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed.Appx. 988 (2014). Appeal 2019–001302 Application 14/915,716 7 “In accordance with judicial precedent and in an effort to improve consistency and predictability, the 2019 Revised Patent Subject Matter Eligibility Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas.” 84 Fed. Reg. 52. We agree with Appellant that the abovementioned limitations do not recite any method of organizing human behavior similar to methods identified by our reviewing courts as reciting an abstract idea. See 2019 Guidance, 84 Fed. Reg. at 52 n.13 (collecting cases). Such behavior includes fundamental economic principles or practices, commercial or legal interactions, managing personal behavior or relationships or interactions between people. Id. The Examiner has not identified, nor do we discern, any similar activity recited in claim 2. USPTO Guidance identifies two further categories of abstract ideas: mathematical concepts, and mental processes that can be practically performed in the human mind. The Examiner has not identified, not do we discern, any mathematical concept recited in claim 2. With respect to mental processes, the hallmarks of such mental processes are “observation, evaluation, judgment, [and] opinion.” Id. Claim 2, setting forth an apparatus having structural features including an optical fibre network section linking distribution units, each of which are powered by customer premises units, having a processor and memory to receive and answer requests from devices regarding the status information of a distribution unit, evinces no such qualities. With respect to the Examiner’s invocation of Cyberfone, the claimed invention at issue in Cyberfone involved the concept of “collecting information in classified form, then separating and transmitting that Appeal 2019–001302 Application 14/915,716 8 information according to its classification,” where such information is disseminated by a telephone operating in its conventional manner. Cyberfone, 448 Fed. Appx. at 992–993. Claim 2 is not merely reciting the classification of information by a computer processor in its ordinary manner, but instead recites the structural cooperation, memory, distribution units, and optical fibre network to answer requests by devices for status information of other distribution units using stored status information. “Claims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas.” 84 Fed. Reg. 53. In view of the foregoing, we decline to sustain the rejection of Claim 2 under 35 U.S.C. § 101. CLAIMS 1 AND 2: OBVIOUSNESS OVER ARNOLD, SMITH, AND CHANDRACHOOD. Reverse powering. Claim 1 recites, inter alia: at least one proxy management unit in communication with at least one of the plurality of distribution nodes and operable to receive management data from said distribution unit, store the received management data, and to process requests for the stored management data on behalf of said distribution unit regardless of the power status of said distribution unit. Appeal Br. 19. Claim 2 contains commensurate recitations: a communications interface [persistent management agent 21, “PMA”] configured to receive status information from a distribution unit of the plurality of distribution units . . . and answer the requests for the stored status information from other devices on behalf of said distribution unit regardless of the power status of said distribution unit. Appeal 2019–001302 Application 14/915,716 9 Id. The Examiner finds Arnold substantially teaches the limitations of the claims except Arnold fails to teach (1) linking the optical fibre network section to a plurality of customer premises units via a plurality of electrical wired segments and (2) each distribution node being electrically powered by at least one of the customer premises units. Non-Final Act. 12. Electrically powering the distribution node by the customer premises unit is known as “reverse powering.” Id. The Examiner finds Smith teaches teach (1) linking the optical fibre network section to a plurality of customer premises units via a plurality of electrical wired segments and (2) each distribution node being reverse powered by at least one of the customer premises units. Id. The Examiner finds it would have been obvious to add the reverse powering of Smith to the system of Arnold “in order to provide power to remote standalone devices over network interfaces without requiring a dedicated power source on site to save money by not having to install dedicated power source.” Non-Final Act. 13 (citing Smith, col. 3, ll. 7–14). Appellant contends the most obvious choice would be to power the optical network units (“ONU”) would be to use the existing forward powering mechanism of the existing hybrid fiber coaxial cable network (“HFC”). Appeal Br. 12.11 Appellant argues Arnold teaches a mixed HFC/PON (passive optical network, “PON”) that is already provided a forward powering system. Id. Appellant argues there are three possible 11 Quoting from Non-Final Act. 5, Response to Appellant’s arguments filed 12/19/2017. Appeal 2019–001302 Application 14/915,716 10 mechanisms to power an HFC network: forward power, reverse power, or local power (e.g. battery). Id. Appellant further argues that when installing ONUs for the PON portion of the currently existing network the “skilled person would recognize that the forward powering solution has the benefits that it is already installed and being used on the HFC network, so the ONUs could be simply and cheaply added to that powering solution, and it provides a known, reliable power supply.” Id., 12–13. The Examiner finds Smith: teaches that reverse powering systems are used to power remote standalone devices over network interfaces without requiring a dedicated power source on site. These reverse power systems save service providers money by obviating the need to have an AC power drop/power meter installed at the reverse powered device location. Ans. 15. Appellant cites the Examiner as finding: a potential benefit of reverse powering solutions that they may ‘power remote standalone devices over network interfaces without requiring a dedicated power source on site.’ This would have some weight in a scenario where there is no dedicated power source already available, but there is an already existing power source on the HFC network in Arnold. Appeal Br. 13. In view of this finding, Appellant argues a: person of ordinary skill in the art having common sense at the time of the invention would not have reasonably looked to reverse powering solutions to solve a problem already solved by the already existing power source of Arnold. Id. (Compare to Ex Parte Rinkevich Appeal No. 20071317 (BPAI, 2007)“… Appeal 2019–001302 Application 14/915,716 11 The Examiner finds Appellant assumes Arnold uses the existing forward powering mechanism of the existing HFC network. Ans. 15. The Examiner finds contrary to Appellant’s assertion, Arnold does not disclose how the HFC/PON system is powered at all. Id. The Examiner finds Appellant assumes the HFC/PON system of Arnold is only compatible with forward powering, Smith discloses a HFC/PON system which uses reverse powering mechanism. Id. We find Appellant’s Ex Parte Rinkevich argument would be dispositive where evidence of Record shows the existing HFC network is forward powered and that problems found by the Examiner to exist in Arnold that would be solved by Smith are already solved by Arnold itself. Rinkevich at 9 (“we conclude that a person of ordinary skill in the art having common sense at the time of the invention would not have reasonably looked to Wu to solve a problem already solved by Savill. Therefore, we agree with Appellants that the Examiner has impermissibly used the instant claims as a guide or roadmap in formulating the rejection.”). However, “Appellant concedes that Arnold does not explicitly teach how the HFC is powered.” Reply Br. 8. Absent such evidence, we are not persuaded the Examiner errs. Forwarding requests onto a managed device. The Examiner finds “Chandrachood teaches a system responding to the request with prefetched response data.” Non-Final Act. 6. Appellant acknowledges this teaching, but argues Chandrachood labels this as a lesser-preferred system. Appeal Br. 15–16. Appellant argues the KSR opinion indicates that a particular selection is not obvious to Appeal 2019–001302 Application 14/915,716 12 try unless there is a design need or market pressure. Id. at 16 (citing KSR, 550 U.S. at 421). The Examiner finds Appellant’s statement that Chandrachood characterizes the prefetching solution as “atypical” is merely conclusory for which appellant fails to proffer evidence. Ans. 17. Appellant’s Reply does not rebut this finding. See Reply Br. 10–11. In view of the foregoing, we are not persuaded the Examiner errs. CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2 101 Eligibility -- 2 1, 2 103 1, 2 -- Overall 1, 2 -- 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation