DELL PRODUCTS L.P.

Patent Trials and Appeals Board

Aug 4, 2020

13679508 - (D) (P.T.A.B. Aug. 4, 2020)

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.
13/679,508 11/16/2012 Sridhar Mudugu 43738-P055US 3018
96061 7590 08/04/2020
Shackelford, Bowen, McKinley & Norton, LLP
9201 N. Central Expressway Fourth Floor
Dallas, TX 75231
EXAMINER
YESILDAG, MEHMET
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/04/2020 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):
dlovell@shackelford.law
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SRIDHAR MUDUGU, KAMESWARA RAO K.N.V.,
JERISH JOSEPH, SIDDHARTH JAMDAR,
SUNDAR VARADA RAJ PERANGUR, and JULIAN TURNER
____________

Appeal 2019-006550
Application 13/679,508
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., MICHAEL J. STRAUSS,
and MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3, 6–10, 12–16, and 18–20, which
are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We refer herein to the Appeal Brief (“Appeal Br.”) filed Mar. 11, 2019, the
Examiner’s Answer (“Ans.”) mailed June 5, 2019, the Final Office Action
(“Final Act.”) mailed Oct. 11, 2018, and the original Specification (“Spec.”)
and Figures (“Figs.”) filed Nov. 16, 2012.
2 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as DELL PRODUCTS L.P.
Appeal Br. 3.
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Introduction
Appellant describes the disclosed invention as generally related to
“assessing outcome options for application migration to a target
environment.” Spec. ¶ 1.
Typically, a consultant with a cloud vendor works with the
enterprise to evaluate the cloud models and a feasibility of
migrating to the cloud. Significantly, though, the evaluation by
the consultant is inherently subjective. Each consultant
generally uses their own criteria in a subjective manner.
Because there is not generally a way to enforce consistent
application of objective criteria, traditional cloud assessments
do not generally yield optimal results.
Spec. ¶ 4.
Claims 1, 10, and 15 are independent. Claim 1 is illustrative:
1. A method of application migration, the method
comprising:
centrally maintaining, by a computer system comprising
at least one server computer, master data comprising a
parameter bank including a plurality of parameters and a
question bank including a plurality of questions;
creating, by the computer system, a cloud model
assessment comprising a plurality of questions designed to
evaluate one or more cloud implementation models for
migrating an application to a target environment;
wherein the creating comprises:
receiving a selection of parameters from the
parameter bank;
wherein each parameter in the selection of
parameters is a factor determined to have a direct
relationship with an appropriateness of at least one of the
one or more cloud implementation models;
providing a list of questions attached to at least one
parameter in the selection of parameters;
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configuring weight settings responsive to user
input, the weight settings comprising an integer weight
pool that represents an integer number of weights that
can be distributed among the selection of parameters;
receiving a selection from the list of questions, the
selection comprising the plurality of questions; and
receiving a selection of the one or more cloud
implementation models;
receiving, by the computer system, from a user,
parameter weights for the selection of parameters, the
parameter weights representing a distribution of the integer
weight pool among the selection of parameters;
the computer system providing the cloud model
assessment to the user;
responsive to the providing of the cloud model
assessment, receiving, by the computer system, assessment
answers from the user; and
generating, by the computer system, a recommendation
for each of the one or more cloud implementation models
based, at least in part, on the received assessment answers and
the parameter weights, the generating comprising ignoring
parameters in the selection of parameters that have been
assigned a zero weight in the parameter weights.
Appeal Br. 18–19 (Claims App’x).
Rejections and References
The Examiner rejected claims 1, 3, 6–10, 12–16, and 18–20 under
35 U.S.C. § 101 as directed to a judicial exception (i.e., an abstract idea),
without reciting significantly more. Final Act. 2–4.
The Examiner rejected claims 1, 3, 6, 9, 10, 12, 15, 16, and 20 under
35 U.S.C. § 103(a) as unpatentable over Maddux (US 2004/0267607 A1;
Dec. 30, 2004), Ferris (US 2011/0295986 A1; Dec. 1, 2011), and Halageri
(US 2013/0189659 A1; July 25, 2013). Final Act. 4–8.
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The Examiner rejected claims 7, 8, 13, 14, 18, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Maddux, Ferris, Halageri, and Kannan (US
2010/0138282 A1; June 3, 2010). Final Act. 8–9.
ANALYSIS
The § 101 Rejection
For the § 101 rejection, Appellant argues all pending claims together
as a group. Appeal Br. 7–11. We select claim 1 as representative. See
37 C.F.R. § 41.37(c)(1)(iv).
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept.” Id. at 218. In this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which we “consider 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.” Id. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court
describes the second step as a search for “an ‘“inventive concept”’—i.e., 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.’” Id. (quoting Mayo, 566 U.S. at 72–73).
In 2019, the USPTO published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–
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57 (Jan. 7, 2019) (“Guidance”) see also October 2019 Patent Eligibility
Guidance Update, 84 Fed. Reg. 55942–53 (Oct. 17, 2019) (providing
“examples as well as a discussion of various issues raised by the public
comments” to the Guidance). Under the 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) (referred to as Step 2A, prong 1
in the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to as Step 2A, prong 2 in the Guidance).
See Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to Step
2B of the Guidance, in which we look to whether the claim:
(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.
See Guidance, 84 Fed. Reg. at 56.
Alice/Mayo Step One, 2019 Guidance Step 2A, Prong One
(Does Claim 1 Recite a Patent-Ineligible Concept?)
For our prong one analysis, we consider the following limitations
shown here in italics to be the only limitations that do not describe (recite) a
part of an abstract idea:
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1. A method of application migration, the method
comprising:
[a] centrally maintaining, by a computer system
comprising at least one server computer, master data
comprising a parameter bank including a plurality of parameters
and a question bank including a plurality of questions;
[b] creating, by the computer system, a cloud model
assessment comprising a plurality of questions designed to
evaluate one or more cloud implementation models for
migrating an application to a target environment;
wherein the creating comprises:
[1] receiving a selection of parameters from the
parameter bank;
[2] wherein each parameter in the selection of
parameters is a factor determined to have a direct
relationship with an appropriateness of at least one of the
one or more cloud implementation models;
[3] providing a list of questions attached to at least
one parameter in the selection of parameters;
[4] configuring weight settings responsive to user
input, the weight settings comprising an integer weight
pool that represents an integer number of weights that
can be distributed among the selection of parameters;
[5] receiving a selection from the list of questions,
the selection comprising the plurality of questions; and
[6] receiving a selection of the one or more cloud
implementation models;
[c] receiving, by the computer system, from a user,
parameter weights for the selection of parameters, the
parameter weights representing a distribution of the integer
weight pool among the selection of parameters;
[d] the computer system providing the cloud model
assessment to the user;
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[e] responsive to the providing of the cloud model
assessment, receiving, by the computer system, assessment
answers from the user; and
[f] generating, by the computer system, a
recommendation for each of the one or more cloud
implementation models based, at least in part, on the received
assessment answers and the parameter weights, the generating
comprising ignoring parameters in the selection of parameters
that have been assigned a zero weight in the parameter weights.
Step (a) requires “centrally maintaining . . . master data comprising a
parameter bank including a plurality of parameters and a question bank
including a plurality of questions.” We find a human record keeper can be
instructed to keep track of “master data comprising a parameter bank
including a plurality of parameters and a question bank,” as recited. The
record keeper can do this using, at most, no more technology than pen and
paper. Step (b) requires “creating . . . a cloud model assessment comprising
a plurality of questions designed to evaluate one or more cloud
implementation models for migrating an application to a target
environment.” We find a human analyst can create the recited cloud model
assessment, using no more technology than pen and paper. Those
limitations of steps (a) and (b) are abstract because, as the 2019 Guidance
explains, they encompass (recite) a mental process. 84 Fed. Reg. at 52.
Because they also describe a method to manage interactions between people
(including following rules or instructions), those limitations also recite one
of certain methods or organizing human activity that, as the 2019 Guidance
identifies, have been deemed abstract. Id.
We note the further limitations (1)–(6) of the creating step (b) recite
various requirements related to parameters, weight settings, selections, etc.
With the exception of “by the computer system,” we find all of these
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limitations are steps a human analyst may perform, e.g., following rules or
instructions. Steps (c)–(f) similarly also describe abstract ideas in the
categories of certain methods of organizing human activities (e.g.,
“receiving . . . from a user, parameter weights” (step (c))) and mental
processes (e.g., “generating . . . a recommendation” (step (f))). Thus, each
step of claim 1 recites abstract limitations that are part of, as the preamble
describes, the claim’s overall idea for “[a] method of application migration.”
Here, “[a]dding one abstract idea . . . to another abstract idea . . . does not
render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co. LTD.,
855 F.3d 1322, 1327 (Fed. Cir. 2017); see also FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (patent-ineligible
claims were directed to a combination of abstract ideas).
Accordingly, under the 2019 Guidance, claim 1 recites a judicial
exception, and our analysis proceeds to prong two.
Alice/Mayo Step One, 2019 Guidance Step 2A, Prong Two
(Does Claim 1 Integrate the Abstract Idea into a Practical Application?)
We next consider whether the claim integrates the abstract idea into a
practical application. 2019 Guidance, 84 Fed. Reg. at 54. To determine this,
we identify whether there are “any additional elements recited in the claim
beyond the judicial exception(s)” and evaluate those elements to determine
whether they integrate the judicial exception into a practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also MPEP § 2106.05(a)–(c),
(e)–(h).
Here, as discussed above, beyond the limitations describing the
abstract idea, claim 1 recites only that certain steps are performed “by the
computer system.” Computer system technology is described in the
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Specification at a high, generic level. See, e.g., Spec. ¶¶ 19–23. Requiring a
computer system to carry out the abstract idea does not result in an
improvement to a technology or technical field—instead, this is a case of a
claim of using generic technology for the performance of an abstract idea.
There is no improvement to “the functioning of the computer itself” or “any
other technology or technical field.” See MPEP § 2106.05(a) (quoting Alice,
573 U.S. at 225). Neither do these computer limitations qualify as applying
the judicial exception with “a particular machine,” because the “computer
system” provides its conventional functions and requires no more than
general purpose computer equipment. See MPEP § 2106.05(b); see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014); TLI
Commc’ns LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016)
(explaining that mere recitation of concrete or tangible components is not an
inventive concept).
Appellant’s arguments similarly do not persuade us that claim 1
effects a transformation of any recited articles, which are simply used for
their ordinary purposes, or that claim 1 includes any other meaningful
(technological) limitations, i.e., limitations beyond simply “linking the use”
of the abstract idea to generic technology. See MPEP § 2106.05 (c), (e)–(f);
see also id. at (g)–(h) (use of well-known limitations beyond the judicially
excepted matter constitutes “insignificant extra-solution activity” (g) and
claim limitations “merely indicating a field of use or technological
environment in which to apply a judicial exception do not amount to
significantly more” (h)).
Accordingly, we determine the recited judicial exception is not
integrated into a practical application, and that the Examiner did not err in
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determining claim 1 is directed to an abstract idea. Accordingly, we proceed
to step two of the Alice/Mayo analysis (2019 Guidance Step 2B)
Alice/Mayo Step Two; 2019 Guidance Step 2B
(Does Claim 1 Recite Significantly More than the Abstract Idea?)
In step two of the Alice/Mayo analysis, we consider whether there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. at 72–73, 77–79 (2012)). As the 2019 Guidance explains, many of
the considerations to determine whether a claim amounts to “significantly
more” under step two of the Alice framework are already considered as part
of determining whether the judicial exception has been integrated into a
practical application. 84 Fed. Reg. at 56. Thus, at this point of our analysis,
we determine if claim 1 adds a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field; or whether it simply recites well-understood, routine, conventional
activities at a high level of generality. Id.
Here, as the Examiner finds, and we agree, claim 1 does not recite
limitations (or a combination of limitations) additional to those for the
abstract idea that are beyond what were known to those of ordinary skill in
the art to be well-understood, routine, and conventional prior to the
invention. Final Act. 3–4; Ans. 4–5. The high-level, generic disclosure of
computer technology in Appellant’s Specification related to claim 1 confirm
this. See, e.g., Spec. ¶¶ 19–20.
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§ 101 Conclusion
Appellant’s arguments of error in the § 101 rejection are unpersuasive
in view our above analysis. For example, we find unpersuasive Appellant’s
arguments that, under the 2019 Guidance, claim 1 does not recite any mental
process or one of certain methods of organizing human activity that are
deemed abstract. See Appeal Br. 8. We also find unpersuasive that claim 1
“recites a technical solution” because “[s]electing an appropriate cloud
implementation model for a given software application is technically
challenging due to the numerous technical factors that can impact the
decision.” Appeal Br. 9. As discussed above, we find that a human analyst
can select an appropriate cloud implementation model for a given software
application using no more technology than pen and paper.
Accordingly, we sustain the § 101 rejection of claim 1 and, along with
it, claims 3, 6–10, 12–16, and 18–20, which Appellant argues are patent
eligible for the same reasons as claim 1 (see Appeal Br. 7–11).
The § 103 Rejections
Claim 1 recites “configuring weight settings responsive to user input,
the weight settings comprising an integer weight pool that represents an
integer number of weights that can be distributed among the selection of
parameters” (hereafter, the “disputed limitation”). The Examiner finds
Maddux teaches the disputed limitation. Final Act. 5, 10 (citing Maddux
¶¶ 46, 53, 57–58, 60–61, 63, 65, 69, 74, 77). Appellant contends the
Examiner errs in this finding because Maddux nowhere
discloses any integer weight pool that represents an integer
number of weights that can be distributed among any of the
Examiner-alleged “parameters” in Maddux such as, for
example, title, type, target length, recommendation scheme, test
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organization scheme, subject, topic, subtopic, question types,
quantity of questions and level of difficulty. The Examiner has
further failed to demonstrate that Maddux discloses any
configuration of weight settings that include such an integer
weight pool, where such configuration is responsive to user
input as required by claim 1.
Appeal Br. 13.
Appellant’s argument is persuasive. The Examiner unpersuasively
answers that the cited disclosure of “Maddux clearly teaches, under [the]
broadest reasonable interpretation,” the disputed limitation. Ans. 5 (citing
Maddux ¶¶ 46, 53, 57–58, 60–61, 63, 65 (all previously cited)).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn). We agree
with Appellant because the Examiner does not explain how or why an
ordinarily skilled artisan would have understood Maddux’s disclosure
related to (a) configuring parameter settings and (b) allowing a user to
customize parameters within a certain range suggests “configuring weight
settings responsive to user input,” with the weight settings including “an
integer weight pool,” as recited. Maddux’s disclosure for establishing
parameter values within ranges is for creating test questions with unique
values, not for setting weights for the parameters as claimed.
Thus, we do not sustain the § 103 rejection of claim 1. We likewise
do not sustain the § 103 rejection of independent claims 10 and 15, both of
which include a commensurate limitation for which the rejection relies on
the same disclosure from Maddux. Appeal Br. 20–22 (Claims App’x); Final
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Act. 5–7. We also, accordingly, do not sustain the §103 rejections of the
dependent claims 3, 6–9, 12–14, and 18–20.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3, 6–10,
12–16, 18–20
101 Eligibility 1, 3, 6–10, 12–16, 18–20
1, 3, 6, 9, 10,
12, 15, 16, 20 103(a)
Maddux,
Ferris,
Halageri

1, 3, 6, 9,
10, 12, 15,
16, 20
7, 8, 13, 14,
18, 19 103(a)
Maddux,
Ferris,
Halageri,
Kannan
7, 8, 13, 14, 18, 19
Overall
Outcome
1, 3, 6–10, 12–16, 18–20
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