Ex Parte Baldo et al

Patent Trials and Appeals Board

Nov 9, 2018

14175644 - (D) (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/175,644 02/07/2014
46583 7590 11/14/2018
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
Nicholas J. Baldo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920l30l97US1 1076
EXAMINER
AGUILERA, TODD
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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):
docketing@rmsc2.com
lga11augher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS J. BALDO, ANAND K. HARIHARAN,
MARKP. O'CONNOR, and SUSAN E. SMITH
Appeal2018-002709
Application 14/175,644 1
Technology Center 2100
Before JOHNNY A. KUMAR, JOHN A. EV ANS, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1---6, 8-13, 15-19, and 21, which are all the claims
pending and rejected in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
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Application 14/175,644
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
software development, and more particularly to defect turnaround time
analytics. See generally Spec. 1. Claim 1 is exemplary:
1. A method for generating defect turnaround time metrics
for assessing project status for reducing defects in a software
product, the method comprising:
a computer retrieving defect turnaround time criteria of
the software product from a database;
the computer importing defect turnaround time data of
the software product including a timestamp of when the defect
in the software product is reported and when the defect moves
through life cycle phases, wherein the defect turnaround time
criteria identify a measurement against a threshold of the defect
turnaround time data;
the computer analyzing the timestamp of when the defect
moves through the life cycle phases based, at least in part, on
the defect turnaround time criteria and the defect turnaround
time data;
the computer mapping a state of the defect to a phase in
the life cycle phases based on the timestamp of the defect
moving through the life cycle phases, wherein the phase
includes a triage phase, a resolution phase, and a retest phase;
the computer generating defect turnaround time metrics
based on the time stamp, the defect turnaround time criteria,
and the defect turnaround time data, wherein the defect
turnaround time metrics relate to the defect failing to meet the
threshold and information regarding a root cause of the defect,
wherein the information regarding the root cause of the defect
includes defect categories, specific failing applications
associated with the defect, project teams or units to measure or
evaluate that are associated with the defect, a list of core defects
and design defects associated with the defect of the software
product, and a list of core defect turnaround times; and
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the computer displaying a graph on a graphical user
interface of the defect turnaround time metrics for the software
product over a period of time, wherein the graph enables a
visual indication of a trend in the defect turnaround time
metrics.
Rejections2
Claims 1---6, 8-13, 15-19, and 21 stand rejected under 35 U.S.C.
§ 112(a) because they fail to comply with the written description
requirement. Final Act. 8-10.
Claims 1---6, 8-13, 15-19, and 21 stand rejected under 35 U.S.C. § 101
because they are directed to patent-ineligible subject matter. Final Act. 10-
12.
ANALYSIS
35 U.S. C. § l l 2(a)
The Examiner determines claims 1---6, 8-13, 15-19, and 21 fail to
comply with the written description requirement with respect to "reducing
defects" in a software product, which is recited in all of the claims. See
Final Act. 8-9; Ans. 2--4.
We disagree. To satisfy the written description requirement, the
disclosure must reasonably convey to skilled artisans that Appellants
possessed the claimed invention as of the filing date. See Ari ad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
2 Throughout this opinion, we refer to the (1) Final Rejection dated Apr. 18,
2017 ("Final Act."); (2) Appeal Brief dated Sept. 18, 2017 ("App. Br.");
(3) Examiner's Answer dated Nov. 16, 2017 ("Ans."); and (4) Reply Brief
dated Jan. 16, 2018 ("Reply Br.").
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Specifically, the description must "clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed" and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id. (internal quotations and citations omitted).
Appellants cite several paragraphs of the Specification for supporting
the disputed claim limitation. See App. Br. 7-8; Reply Br. 2--4. In
particular, the Specification describes defects in software development and
explains "when large defect volumes are involved, it is imperative that a
project manager quickly identify and address the root cause of a negative
trend." Spec. ,r 12. The Specification then describes "corrective action
plans" and "development of corrective actions" to correct defects during
software development. Spec. ,r,r 12-13. As a result, we agree with
Appellants that the Specification reasonably conveys to ordinarily skilled
artisans that Appellants possessed the claimed invention with respect to
"reducing defects" in a software product as of the filing date. See App. Br.
7-8; Reply Br. 2--4.
Because the Examiner has not articulated a sufficient basis for the
rejection, we reverse the Examiner's rejection of claims 1---6, 8-13, 15-19,
and 21 under 35 U.S.C. § 112(a).
35 u.s.c. § 101
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
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appeal is taken (Final Act. 10-12) and (ii) the Answer (Ans. 5-17) to the
extent they are consistent with our analysis below. 3
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 10-12; Ans.
5-17. In particular, the Examiner concludes the claims are directed to the
abstract idea of collecting, analyzing, and displaying information, and are
similar or analogous to the claims in Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1353-56 (Fed. Cir. 2016). See Ans. 6. The Examiner
determines the claims do not identify an inventive concept to transform the
nature of the claims into a patent-eligible application. See Final Act. 11-12;
Ans. 7-17. Appellants argue the Examiner erred. See App. Br. 8-25; Reply
Br. 4--18.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides "[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title." 35 U.S.C. § 101. That provision "contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
3 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
"[w]hat else is there in the claims before us?" To answer that
question, 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. We have described
step two of this analysis 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."
Alice Corp., 134 S. Ct. at 2355 (citations omitted) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1294,
1296-98 (2012)).
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., 830
F.3d at 1353; Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed.
Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has "treated collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas."
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a
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similar vein, we have treated analyzing information [including manipulating
information] by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category." Elec. Power, 830 F.3d at 1354 (emphasis added);
see also In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016). "And we have recognized that merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis." Elec. Power, 830 F.3d at
1354 (emphasis added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 714--15 (Fed. Cir. 2014).
The rejected claims "fall into a familiar class of claims 'directed to' a
patent-ineligible concept." Elec. Power, 830 F.3d at 1353. Contrary to
Appellants' arguments (App. Br. 8-25; Reply Br. 4--18), the claims are
similar to the claims of Electric Power, as pointed out by the Examiner
(Ans. 5). See Elec. Power, 830 F.3d at 1354. For example, claim 1 is
directed to collecting information ("retrieving ... importing ... "), analyzing
information ("analyzing ... mapping ... generating ... "), and displaying
information ("displaying ... "). And independent claims 8 and 15 are
similarly directed to colleting, analyzing, and displaying information. Id. at
1353. The dependent claims are directed to similar functions or processes,
and Appellants have not persuasively shown such claims are directed to
other non-abstract functions or processes. See claims 2---6, 9-13, 16-19, and
21.
Contrary to Appellants' assertion (App. Br. 12; Reply Br. 5---6, 9-10),
the rejected claims are not analogous to the claims in Enfzsh. In Enfzsh, the
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court determines:
The ... patents are directed to an innovative logical model for a
computer database .... A logical model generally results in the
creation of particular tables of data, but it does not describe how
the bits and bytes of those tables are arranged in physical
memory devices. Contrary to conventional logical models, the
patented logical model includes all data entities in a single
table, with column definitions provided by rows in that same
table. The patents describe this as the "self-referential"
property of the database.
Enfzsh, 822 F.3d at 1330.
[T]he plain focus of the claims is on an improvement to
computer functionality itself, not on economic or other tasks for
which a computer is used in its ordinary capacity .
. . . [T]he claims . . . are directed to a specific
improvement to the way computers operate, embodied in the
self-referential table.
Id. at 1336.
The rejected claims are not analogous to the claims of Enfzsh because
they are not "an improvement to computer functionality itself." Id. at 1336.
Instead, they are similar to the claims of Electric Power, because "the focus
of the claims is not on such an improvement in computers as tools, but on
certain independently abstract ideas that use computers as tools." Elec.
Power, 830 F.3d at 1354. In particular, Appellants' assertion that the claims
recite "improvement[ s] to computer functionality" and "are not abstract
idea[s]" (App. Br. 12, see also App. Br. 14--25; Reply Br. 4--18) is
unpersuasive, as Appellants have not shown managing data with generic
computers constitutes improvement to computer functionality.
Regarding Appellants' assertion about paragraph 13 of the
Specification (Reply Br. 7; Spec. ,r 13 ("Embodiments of the present
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invention recognize that efficiency can be gained by implementing a tool
that can analyze significant amounts of ... data and provide ... information
that ... enables development of corrective actions that would not otherwise
be feasible.")), our reviewing court has declared:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself. See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.").
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) ( emphases added).
Applying this reasoning to the rejected claims, we similarly find any
purported efficient techniques come from the capabilities of general-purpose
computers (the recited "computer," "computer program product," and
"computer system"), rather than the claimed steps or functions. Similar to
the claims of FairWarning, the rejected claims "are not directed to an
improvement in the way computers operate" and "the focus of the claims is
not on ... an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools." FairWarning, 839
F.3d at 1095.4
4 Appellants also "disagree[] with the Examiner's position that the invention
recited in claim 1 can be performed mentally with aid of pen and paper and
is an abstract idea of itself." App. Br. 13. However, Appellants do not
persuasively explain why the Examiner's finding is incorrect. In any event,
our analysis does not require that finding.
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Regarding Alice step two, contrary to Appellants' assertion (App. Br.
8-25; Reply Br. 4--18), Appellants have not shown the claims in this case
require any "inventive concept" or inventive set of components or methods,
or invoke any assertedly inventive programming. Elec. Power, 830 F.3d at
1355.
Further, contrary to Appellants' arguments (App. Br. 8-25; Reply Br.
4--18), the claims are similar to the claims of Electric Power, because they
do not require any nonconventional computer, network, or display
components, or even a "non-conventional and non-generic arrangement of
known, conventional pieces," but merely call for performance of the claimed
information collection, analysis, and display functions on generic computer
components and display devices. See Elec. Power, 830 F.3d at 1355; see
also Claim 1 (reciting "a computer ... a database"); Claim 8 (reciting "a
computer program product ... comprising[] one or more computer-readable
storage media"); Claim 15 (reciting a "computer system ... comprising[]
one or more computer processors; one or more computer-readable storage
media"). The dependent claims call for similar generic components and
devices, and Appellants have not shown such claims require any non-
conventional components or devices. See claims 2---6, 9-13, 16-19, and 21.
Similar to the claims of Electric Power, the rejected claims specify
what information is desirable to gather, analyze, and display, but they "do
not include any requirement for performing the claimed functions of
gathering, analyzing, and displaying ... by use of anything but entirely
conventional, generic technology." Elec. Power, 830 F.3d at 1356.
Therefore, similar to the claims of Electric Power, the rejected claims "do
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not state an arguably inventive concept in the realm of application of the
information-based abstract ideas." Id.
Appellants' argument (App. Br. 16-17; Reply Br. 11) about DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) is
equally unpersuasive. In DDR Holdings, the Court finds:
[T]he claims at issue here specify how interactions with the
Internet are manipulated to yield a desired result-a result that
overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink. Instead of the
computer network operating in its normal, expected manner by
sending the website visitor to the third-party website that
appears to be connected with the clicked advertisement, the
claimed system generates and directs the visitor to the above-
described hybrid web page that presents product information
from the third-party and visual "look and feel" elements from
the host website. When the limitations of the '399 patent's
asserted claims are taken together as an ordered combination,
the claims recite an invention that is not merely the routine or
conventional use of the Internet.
DDR Holdings, 773 F.3d at 1258-59 (emphases added).
Unlike the claims of DDR Holdings, the claims here do not "specify
how interactions with the Internet are manipulated to yield ... a result that
overrides the routine and conventional sequence of events." Id. at 1258.
Further, this case is distinguished from DDR Holdings because as discussed
above, the claims here recite inventions that are merely the routine or
conventional use of the technology-the opposite of what the claims of DDR
Holdings represent. Id. at 1258-59.
Appellants further cite BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 17-18), but
do not persuasively explain why that case is similar to the present case. In
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BASCOM, the court determined that at the pleading stage and construed in
favor of the nonmovant,
[t]he inventive concept described and claimed ... is the
installation of a filtering tool at a specific location, remote from
the end-users, with customizable filtering features specific to
each end user. This design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a
filter on the ISP server. BASCOM explains that the inventive
concept rests on taking advantage of the ability of at least some
ISPs to identify individual accounts that communicate with the
ISP server, and to associate a request for Internet content with a
specific individual account.
Id. at 1350 (emphasis added).
The rejected claims are unlike the claims of BASCOMbecause they
are not directed to an "installation of a filtering tool at a specific location,
remote from the end-users, with customizable filtering features specific to
each end user." Id. at 1350. Nor do they "give[] the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server." Id. In fact, the pending claims do not even recite any "ISP server."
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks are "insufficient to pass the test of an inventive
concept in the application" of an abstract idea and, therefore, do not add
significantly more to that idea. Elec. Power, 830 F.3d at 1355.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1---6, 8-13, 15-19, and 21 under
35 U.S.C. § 101.
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DECISION
We reverse the Examiner's decision rejecting claims 1-6, 8-13, 15-
19, and 21 under 35 U.S.C. § 112(a).
We affirm the Examiner's decision rejecting claims 1---6, 8-13, 15-19,
and 21 under 35 U.S.C. § 101.
Because we affirm at least one ground of rejection with respect to
each claim, we affirm the Examiner's decision rejecting claims 1---6, 8-13,
15-19, and 21. See 37 C.F.R. § 4I.50(a)(l).
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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