Ex Parte Arabshian et al

Patent Trial and Appeal Board

Mar 28, 2017

13834038 (P.T.A.B. Mar. 28, 2017)

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.
13/834,038 03/15/2013 Knarig Arabshian 67108-414PUS1;813494US-NP 2692
46368 7590 03/30/2017
CARLSON, GASKEY & OLDS, P.C./Alcatel-Lucent
400 W MAPLE RD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
HTAY, LIN LIN M
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
ptodocket @ cgolaw. com
cgolaw@yahoo.com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KNARIG ARABSHIAN and PETER DANIELSEN
Appeal 2016-008074
Application 13/834,03 81
Technology Center 2100
Before JOSEPH L. DIXON, STEPHEN C. SIU, and JOYCE CRAIG,
Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge, SIU
Opinion Concurring filed by Administrative Patent Judge, CRAIG
SIU, Administrative Patent Judge
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Alcatel-Lucent USA
Inc. (Appeal Brief, filed December 3, 2015 (“App. Br.”) 1).
Appeal 2016-008074
Application 13/834,038
The disclosed invention relates generally to devices that provide
information regarding database contents. Spec 14. Independent claim 1
reads as follows:
1. A device for providing information regarding
database contents, the device comprising:
a data storage; and
a processor associated with the data storage, the
processor being configured to:
identify a database including a plurality of members and
feature information regarding at least one feature of the
members, respectively;
determine at least one categorizing indicator from a
source that is external to the database;
determine whether there are any associated indicators in
the feature information that correspond to the categorizing
indicator;
identify the members of the database having the
associated indicators; and
associate the identified members with a category based
on the categorizing indicator.
The Examiner rejects claims 1—10 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter and claims 1—20 under 35 U.S.C,
§ 103(a) as unpatentable over Baikov (US 2007/0255720 Al, published
November 1, 2007, “Baikov”) and Geller et al. (US 2013/0013580 Al,
published January 10, 2013, “Geller”).
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ISSUE
Did the Examiner err in rejecting claims 1—20?
ANALYSIS
35 U.S.C. $ 101-claims 1-10
The Examiner finds that claim 1 recites subject matter that is directed
to non-statutory subject matter because the claims recite “a software
component,” constitute no more than “functional descriptive material per
se,” and “lack the necessary physical articles or objects to constitute a
machine or a manufacture.” Final Act. 3. However, the Examiner does not
explain sufficiently, much less assert, how a device for performing claimed
steps constitutes no more than “functional descriptive material per se” or
how the claimed device constitutes, for example, no more than an abstract
idea of manipulating data. Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134 S.
Ct. 2347, 2350 (2014) (citing Gottschalkv. Benson, 409 U.S. 63, 67, 71, 72,
93 (1972)). Therefore, we cannot agree with Examiner’s findings.
The Examiner erred in rejecting claims 1—10 under 35 U.S.C. § 101.
35 U.S.C. $ 103-claims 1-20
Claim 1 requires identifying a database including a plurality of
members and feature information of the members, determining at least one
categorizing indicator, and determining whether there are indicators in the
feature information that correspond to the categorizing indicator.
The Examiner finds that Baikov discloses the “categorizing
indicator,” as recited in claim 1. Final Act. 4—6. In particular, the Examiner
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states that Baikov discloses an “extension interface [that] is analogous to an
indicator of one or more groups of APIs” and a “process of collecting and
grouping web service[] functionalities [that] is analogous to a method of
categorizing.” Ans. 3^4 (citing Baikov ^fl[ 22, 23, 26, 27, 28). Hence, the
Examiner equates the “extension interface” of Baikov with the claimed
“categorizing indicator.”
Claim 1 recites a “categorizing indicator” that is “determine[d].”
Claim 1 also recites determining “indicators” that “correspond to the
categorizing indicator.” Hence, the “categorizing indicator,” as recited in
claim 1, is required to be “determine[d]” and is required to be
“determine [d]” to correspond (or not) to any “indicators in the feature
information.” Claim 1 does not recite further characteristics of the
“categorizing indicator.”
As the Examiner indicates, Baikov teaches a database that includes a
plurality of members (i.e., a computer system that includes application
programming interfaces and web services — Baikov 17), feature information
regarding a member (i.e., information that “relate to web services” and/or
“various web services client functionalities” — Baikov ^fl[ 7, 27) and a
categorizing indicator determined to be associated with indicators in the
feature information (i.e., web services client functionalities are collected and
grouped into various groups — Baikov ^fl[ 27, 28) and categorized (i.e.,
“collected and grouped into groups” and “assigned an extension interface
such that each group is represented by” an extension interface — Baikov
128). Hence, Baikov teaches an “extension interface” that is determined
and is further determined to correspond (or not) to desired web services
client functionalities (i.e., “indicators in the feature information”).
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Appellants argue that “a categorizing indicator is useful as a label for
a category within an ontology in which database members should be
included” and that Baikov supposedly fails to disclose this feature. App. Br.
4. We are not persuaded by Appellants’ argument because claim 1 does not
recite that a categorizing indicator must be “useful as a label for a category
within an ontology in which database members should be included.” Even
assuming that claim 1 recites this limitation, as previously discussed, Baikov
discloses this feature. For example, Baikov teaches an “extension interface”
that is useful as a label for a category (of desired web services client
functionalities).
Appellants argue that Baikov fails to disclose a “determination
whether there are associated indicators corresponding to a categorizing
indicator.” App. Br. 5. However, Appellants do not explain a meaningful
difference between the determination in Baikov that the “extension
interface” corresponds to desired web services client functionalities and
determining whether there are indicators that correspond to the categorizing
indicator, as recited in claim 1. In both cases, a determination is made that
an indicator corresponds to another indicator.
In addition, we note that Baikov further confirms that a “categorizing
indicator” and a “determin[ation] whether there are any associated indicators
. . . corresponding] to the categorizing indicator,” as recited in claim 1, was
known in the art. For example, Baikov discloses that prior to the time of the
instant invention, one of skill in the art would have known to “search
through an online registry” and “find a listing in the registry for web based
access to a service that the user desires to have performed.” Baikov 12. In
other words, Baikov teaches that it would have been known in the art to
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determine and input a search term (i.e., a “categorizing indicator” that is
“determined” by the user) to search through an online registry (i.e.,
searching information in a “database”) and to find a listing in the registry
(i.e., finding associated “indicators” and determining that the “indicators”
correspond to the search term, or “categorizing indicator”).
The Examiner finds that Geller teaches an external source. Final Act.
7 (citing Geller 1101). As the Examiner indicates, Geller discloses
searching a database for “the top 1000 male and female first names” in
which a “mining program passed the first name Robert to Google and then
extracted the last names . . . [which were] checked . . . against... the US
census database.” Geller 1101. In other words, Geller teaches determining
an “indicator” from one source and determining an association with
indicators in another source. Appellants argue that Geller fails to disclose an
“external source” (App. Br. 6) but fail to explain persuasively a meaningful
difference between Geller and the claimed “external source.”
The Examiner finds that Baikov discloses identifying members of a
database and determining whether the indicators correspond to a
categorizing indicator but that Baikov does not disclose or suggest that the
categorizing indicator is determined from a source external to a database.
The Examiner further finds that Geller discloses that one of skill in the art
would have known that data may be obtained from a source that is external
to a database that is being searched. Final Act. 7. Appellants argue that
“there is no reason to make the . . . proposed combination of the Baikov and
Geller references.” App. Br. 6. We are not persuaded by Appellants’
argument at least for reasons set forth by the Examiner.
For example, we agree with the Examiner that it would have been
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obvious to one of ordinary skill in the art to have combined the known
process of identifying members of a database and determining whether
indicators regarding members of a database correspond to a desired indicator
(or “categorizing indicator”) (Baikov) and the known process of determining
the desired indicator from a source external to the database (Geller) to
achieve the predictable result of determining whether an externally derived
indicator matches an indicator within a database. We also note that one of
skill in the art would have understood that there is a finite number of
locations for determining an “indicator” with which to search — namely,
either from within the database or external to the database. Given that one
of skill in the art is not an automaton, it would have been within the purview
of one of skill in the art to have selected from the finite list of (two)
possibilities (searching using data that is internal or external to the database)
to achieve the predictable result of determining an “indicator” with which to
search a database. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007).
Appellants do not provide additional arguments in support of the other
claims subject to appeal. The Examiner did not err in rejecting claims 1—20.
DECISION
We affirm the Examiner’s rejection of claims 1—20 under 35 U.S.C.
§ 103(a) as unpatentable over Baikov and Geller. We reverse the
Examiner’s rejection of claims 1—10 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KNARIG ARAB SHI AN and PETER DANIELSEN
Appeal 2016-008074
Application 13/834,038
Technology Center 2100
Before JOSEPH L. DIXON, STEPHEN C. SIU, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge, CONCURRING
I respectfully concur with the majority’s opinion with respect to the
Examiner’s final rejections of claims 1—10 under 35 U.S.C. § 101 and claims
1—20 under 35 U.S.C. § 103(a). I would also enter a new ground of rejection
under 37 C.F.R. § 41.50(b) rejecting claims 1—20 under 35 U.S.C. § 101
because they are drawn to an abstract idea of identifying and categorizing
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existing data from a database. I would, therefore, reject claims 1—20 under
35 U.S.C. § 101 as directed to a patent-ineligible abstract idea under Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014).
Following the two-part Alice analysis, claim 1 is first examined to
determine if it is directed toward an abstract idea. Claim 1 is directed to
associating identified members of a database with a category based on a
categorizing indicator. Claim 1 describes a device “for providing
information regarding database contents,” which is described as the
categorization of existing information from a database. Specifically, claim 1
recites a processor configured to “identify a database including a plurality of
members and feature information regarding at least one feature of the
members, respectively,” “determine at least one categorizing indicator from
a source that is external to the database,” “determine whether there are any
associated indicators in the feature information that correspond to the
categorizing indicator,” “identify the members of the database having the
associated indicators,” and “associate the identified members with a
category based on the categorizing indicator.” App. Br. 8 (Claims App’x).
In other words, claim 1 recites a processor that looks up records in a
database and categorizes them, the recited “associate the identified members
with a category based on the categorizing indicator.” The categorized
members are generated by searching fields of a database (i.e., the recited
“associated indicators in the feature information”) using search criteria or an
index (i.e., the recited “categorizing indicator”), taking existing records of a
database (i.e., “members of the database having the associated indicators”),
and organizing this information into a new form. As the patent itself
observes, the invention relates to “a device for providing information
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regarding database contents.” Spec. 1. As our reviewing court recently
reiterated, “organizing and accessing records through the creation of an
index-searchable database, includes longstanding conduct that existed well
before the advent of computers and the Internet,” and patent claims have
been held ineligible for reciting similar abstract concepts that merely collect,
classify, or otherwise filter data. Intellectual Ventures ILLC v. Erie
Indemnity Co., Nos. 2016-1128, 2016-1132, 2017 WL 900018, at *7 (Fed.
Cir. March 7, 2017). Moreover, the Federal Circuit has held “[wjithout
additional limitations, a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014). Thus, claim 1 is directed to an abstract
concept of identifying and categorizing data and is, therefore, directed to an
abstract idea.
The second part of the Alice analysis requires an examination of the
claim elements individually and as a whole to determine whether they
provide an “inventive concept” that is enough to transform the claim into
something significantly more than the abstract idea itself. See Alice, 134 S.
Ct. at 2355. With regard to claim 1, in addition to the categorization of
identified database members using a generic processor, the claim requires “a
data storage,” and a processor configured to “identify a database,”
“determine at least one categorizing indicator,” “determine whether there are
any associated indicators” in the database “that correspond to the
categorizing indicator,” and “identify the members of the database having
the associated indicators.” Taken individually, the remaining limitations
recite routine computer functions and amount to no more than the
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performance of well-understood, routine, and conventional activities known
to the data processing industry. Thus, while the claims limit the idea of
categorical data search, retrieval, and categorization to a device with a
processor, the claimed computer functionality is merely generic or
conventional. Thus, evaluating these claimed elements either individually or
as a whole, claim 1 recites no more than routine activities involving generic
computer components and conventional computer data processing activities
to accomplish the well-known concept of identifying and categorizing data.
As such, the remaining limitations are abstract and fail to transform the
claim into something sufficiently more than an abstract idea.
Claims 2—10 depend from claim 1. None of the additional recitations
in claims 2—10 provides an “inventive concept” that is enough to transform
the recitations of claim 1 into something significantly more than an abstract
idea. Claim 2 further recites “wherein the feature information comprises a
plurality of terms; the categorizing indicator comprises at least one term.”
Claim 3 further recites “wherein the processor is configured to automatically
identify terms used by the source to describe at least one feature of subject
matter within a selected category.” Claim 4 further recites “wherein the
processor is configured to identify the terms from a plurality of sources,
respectively; and provide an indication of the source of each identified
term.” Claim 5 further “wherein the processor is configured to generate an
ontology of the database including the category with the associated
members.” Claim 6 further recites “a plurality of categorizing indicators”
and “respective categories based on the respective categorizing indicators,”
and that the processor is configured to “include the respective categories in
the generated ontology, wherein the database members are organized
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according to identified categories.” Claim 7 further recites that “the
database members comprise application programming interfaces,” “the
associated indicators comprise terms describing at least one feature of the
associated application programming interface,” and “the categorizing
indicators comprise terms from a resource that provides information
regarding a selected topic corresponding to a candidate category that would
be suitable for at least one of the application programming interfaces.”
Claim 8 further recites “wherein the processor is configured to identify the
database based on user input indicative of a user selection of the database,”
“select the source based on user input indicative of a user selection of the
source external,” and “associate a descriptor with the category based on user
input indicative of the descriptor.” Claim 9 further recites “wherein the
processor is configured to determine a rank of the associated indicators
based on a selected criteria” and “present the associated indicators in a
manner that is indicative of the rank.” Claim 10 further recites “wherein the
processor is configured to place information in the data storage regarding
any of the database members that has been associated with the category” and
“provide an indication distinguishing any of the database members that has
been associated with the category previously from any of the database
members that has not been previously associated with the category.”
Independent claim 11 recites limitations similar to those recited in
claim 1 but is directed to a method. App. Br. 10 (Claims App’x). Thus,
claim 11 is directed to patent-ineligible subject matter for the reasons
discussed above for claim 1. Claims 12—19 depend from claim 11 and recite
limitations similar to those recited in claims 2—9, discussed above. Id. at 10-
12. None of the additional recitations in claims 12—19 provides an
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“inventive concept” that is enough to transform the recitations of claim 11
into something significantly more than an abstract idea.
Independent claim 20 is similar to claims 1 and 11, but is directed to a “non-
transitory computer readable medium containing a plurality of computer-
executable instructions.” Id. at 12. For the reasons discussed above with
regard to claim 1, claim 20 is also directed to patent-ineligible subject
matter.
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