Ex Parte Banerjee et al

Patent Trial and Appeal Board

Oct 31, 2017

13774233 (P.T.A.B. Oct. 31, 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.
13/774,233 02/22/2013 Pradipta K. Banerjee IN920120062US2 4031
82553 7590
Walter W. Duft
P.O. Box 378
Clarence Center, NY 14032
EXAMINER
MASUD, ROKIB
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
wduft @ duftlawoffice. com
xbmufss@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRADIPTA K. BANERJEE, VAIDYANATHAN SRINIVASAN,
and VIJAY K. SUKTHANKAR
Appeal 2016-0050961
Application 13/774,2332
Technology Center 3600
Before NINA L. MEDLOCK, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, and 5—7 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants’ Appeal Brief (“App. Br.,” filed
Oct. 13, 2015) and Reply Brief (“Reply Br.,” filed Apr. 11, 2016), the
Examiner’s Answer (“Ans.,” mailed Feb. 10, 2016), and the Final Office
Action (“Final Act.,” mailed May 21, 2015).
2 Appellants identify “International Business Machines Corporation” as the
real party in interest. App. Br. 2.
3 Claims 3, 4, and 8—21 have been canceled. Id. at 21—22 (Claims App’x).
Appeal 2016-005096
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STATEMENT OF THE CASE
Claimed Subject Matter
Appellants’ “disclosure relates to cloud-based computing systems.
More particularly, the disclosure concerns power management on cloud
server hosts running virtual machines on behalf of customers.” Spec. 11.
Sole independent claim 1
1. A resource manager server method for fairly distributing
power savings benefits to virtual machines (VMs) provisioned
to customers in a computing cloud, comprising:
said resource manager server implementing program
logic for provisioning one or more VMs on a target cloud host
in response to resource requests received from one or more
customer devices;
said resource manager server implementing program
logic for monitoring host power savings on said target host;
said resource manager server implementing program
logic for using said host power savings as a variable component
in determining per-customer cloud usage for accounting
purposes;
said host power savings being used to calculate metered
cost savings that are distributed proportionately to said V[M]s;
and
said metered cost savings being distributed to said VMs
based on VM size and utilization.
App. Br. 21, Claims App’x.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
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Banklnt’l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66, 82—84 (2012), “for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. 66, 79, 78).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner maintains:
Here, the claims are directed to [a] method comprising the steps
of provisioning one or more virtual machines, monitoring host
power savings, using savings as [a] variable [in] determining
cloud usage that are calculated to determine metered cost
savings and distributing the savings. This is considered to be
an abstract idea of calculating cost savings to distribute to
virtual machines based on variables, because it [] amounts to
nothing more than a mathematical formula to distribute savings.
Ans. 3. Proceeding to the second step, the Examiner determines that the
additional elements recited are generic computer components
performing functions similar to the computer functions
described in Alice Corp. as being well-understood, routine, and
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conventional. More specifically, the recited elements such as
processor, memory merely perform generic functions such as
processing and calculating data. These features are similar to
computer operations such as “creating and maintaining []
accounts,” “obtaining data,” “adjusting account balances” and
“issuing automated instructions,” which the Court in Alice
Corp. considered “purely conventional.”
Id. at 4.
Independent claim 1
Appellants initially contend that a prima facie case has not been
established because the Examiner does not adequately explain why the
subject matter of claim 1 is considered to be an abstract idea and why it
preempts such an idea. App. Br. 10-11. Appellants further contend that “the
Examiner has not cited any case law in which concepts similar to the alleged
abstract idea of applicants’ claims have been found to be abstract.” Reply
Br. 6 (citing examples from USPTO Guidelines of July 30, 2015).
As to the question of establishing a prima facie case, the Federal
Circuit has made clear that “the prima facie case is merely a procedural
device that enables an appropriate shift of the burden of production.” Hyatt
v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992)). 35 U.S.C. § 132 sets forth a general
notice requirement whereby the applicant is notified of the reasons for a
rejection together with such information as may be useful in judging the
propriety of continuing with prosecution of the application. See, e.g., In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). In this case, the Examiner
provided adequate explanation to meet the notice requirement. The
Examiner set forth the statutory basis of the rejection, applied Alice’s two-
part framework, and sufficiently articulated reasoning in an informative
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manner, thus, meeting the notice requirement of 35 U.S.C. § 132. Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when
a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.”). There is no
requirement for the Examiner to cite examples from PTO guidelines or any
additional case law to establish a prima facie case.
There also is no requirement under Alice for the Examiner to make an
explicit finding as to preemption. Although the Supreme Court has
described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre­
emption,” see Alice Corp., 134 S. Ct. at 2354, characterizing pre-emption as
a driving concern for patent eligibility is not the same as characterizing pre­
emption as the sole test for patent eligibility. “The Supreme Court has made
clear that the principle of preemption is the basis for the judicial exceptions
to patentability” and “[f]or this reason, questions on preemption are inherent
in and resolved by the §101 analysis.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp.,
134 S. Ct. at 2354). Yet although “preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.” Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701 (2015)
(“[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract.”). Therefore, the Examiner properly established a prima facie case
of unpatentability, and the burden then shifted to Appellants to rebut the
prima facie case.
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In the Reply Brief, Appellants contend that the change in the
Examiner’s characterization of the alleged abstract idea from the final
rejection is unfair and “warrants a remand back to the Examiner with an
order directing that prosecution be reopened for the purpose of entering a
new Office Action that allows Applicants to consider a full range of
available response options.” Reply Br. 5. But if Appellants genuinely
believed that the Answer improperly introduced a new ground of rejection,
Appellants had ample opportunity to raise this issue by filing a timely
petition under 37 C.F.R. § 1.181.4 Appellants instead chose to maintain the
appeal and provide arguments for review and consideration by the Board
responsive to the Examiner’s Answer by filing a Reply Brief under 37
C.F.R. § 41.41. Thus, Appellants cannot reasonably complain now that they
have been denied a fair opportunity to respond to the rejection.
Turning now to the merits under the first step of Alice, we must
evaluate “the ‘focus of the claimed advance over the prior art’ to
determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
In that regard, Appellants’ Specification discloses that:
power management features in cloud server host hardware and
subsequent exploitation at the operating system level enables
4 Any request to seek review of the examiner’s failure to designate a
rejection as a new ground of rejection in an examiner’s answer must be by
way of a petition to the Director under 37 C.F.R. § 1,181 filed within two
months from the entry of the examiner’s answer and before the filing of any
reply brief. Failure of appellant to timely file such a petition will constitute
a waiver of any arguments that a rejection must be designated as a new
ground of rejection. See 37 C.F.R. § 41.40(a).
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significant cost savings due to efficiently managing server
power consumption based on utilization. The lower the
utilization, the higher the power savings. For a data center
provider, cost savings due to power usage savings drive better
ROI (Return On Investment) for a virtualized or cloud scenario.
Currently, however, all such benefits are enjoyed by the
provider only. Customers typically pay a fixed charge to the
provider based on cloud resource usage. As far as known,
current systems do not pass on the benefits of low power usage
to the user.
Spec. 12. According to Appellants, the exclusive retention of such cost
savings by the provider without passing any benefit to customers is
disadvantageous because there is no motivation for customers “to select a
cloud provider with more power efficient hardware and software that would
contribute to reduction in energy utilization.” Id. The inventors solved this
problem by providing “a distribution mechanism to pass on the benefits
accruing from data center power savings to customers. Id. 13.
In light of the Specification’s description of the problem and solution,
the advance over the prior art by the claimed invention is in providing an
incentive or motivation for a customer to choose an energy efficient
provider. Cost “savings are used as a variable component in determining
per-customer cloud usage for accounting purposes.” Id. 14. In other words,
Appellants’ alleged innovation lies in calculating and distributing to
customers proportional metered power cost savings “(e.g., a power savings
credit).” Id. 127. The claimed invention is drawn to a “method for fairly
distributing power savings benefits to virtual machines (VMs) provisioned to
customers in a computing cloud,” or calculating and distributing a
proportional share of cost savings to a customer based on the customer’s
resource utilization. Offering an incentive in the form of a savings credit is
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simply an age-old marketing ploy to entice a customer to enter into an
agreement with a provider—the determination of which involves a
mathematical formula/calculation, thus encompassing an abstract concept.5
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining claims directed to “the
mere formation and manipulation of economic relations” and “the
performance of certain financial transactions” have been held to involve
abstract ideas).
There is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other. The Federal Circuit applied this
distinction in Enfish6 in rejecting a § 101 challenge at the step-one stage in
the Alice analysis because the claims at issue focused, not on asserted
advances in uses to which existing computer capabilities could be put, but on
a specific type of data structure, i.e., a self-referential table for a computer
database, designed to improve the way a computer carries out its basic
functions of storing and retrieving data. Id. at 1335—36. Unlike the claims
found non-abstract in prior cases, the claims here use generic computer
technology calculate metered cost savings, wherein each VM is allocated a
share of cost savings based on its size and utilization, and the claims do not
recite an improvement to a particular computer technology. See, e.g.,
5 Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016)
(“An abstract idea can generally be described at different levels of
abstraction.”).
6 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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McRO,1 837 F.3d at 1314—15 (finding claims not abstract because they
“focused on a specific asserted improvement in computer animation”). The
alleged advantages that Appellants tout do not concern an improvement to
computer capabilities, but instead relate to an alleged improvement in
customer acquisition by providing an incentive or motivation for a customer
to choose an energy efficient provider, for which a computer is used as a tool
in its ordinary capacity to calculate said incentive. Thus, we are not apprised
of error as to the Examiner’s determination of the abstract idea.
Appellants contend that even if the pending claims are directed to an
abstract idea, “the claims recite subject matter that improves the function of
a cloud computing environment by providing a novel solution to an
identified power consumption and energy usage problem.” App. Br. 13; see
also Reply Br. 11 (“these operations provide an improvement in the
operation of a cloud computing environment that addresses a problem of
minimizing power consumption and energy usage.”). We find Appellants’
contentions unpersuasive because, as discussed above, there is no inventive
concept or technological advance here that would support patent eligibility.
Claim 1 is not focused on an improvement to the claimed “resource manager
server.” Cf. In re TLI Communications LLC Patent Litigation, 823 F.3d
607, 613 (Fed. Cir. 2016) (The claims’ focus “was not on an improved
telephone unit or an improved server.”). And merely limiting the scope of
the claims to a particular technological environment or application, without
more, does not change the outcome.
1 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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It is well-established by now that the introduction of a generic
computer or computing environment into the claims does not alter the
analysis here because
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice at 2358 (citations omitted). The relevant question is whether the claim
here does more than simply instruct the practitioner to implement the
abstract idea on a generic computer. Id. at 2359. We conclude that it does
not.
Instead, we agree with the Examiner that the claimed invention
merely requires generic computer implementation and fails to transform the
abstract idea into a patent eligible invention. The introduction of a server or
virtual machines in a computing cloud environment does not alter the
analysis under the second step of Alice. See Alice, 134 S. Ct. at 2358; see
also, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
1314, 1324—25 (Fed. Cir. 2016) (explaining that “generic computer
components such as an ‘interface,’ ‘network,’ and ‘database’ ... do not
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satisfy the inventive concept requirement” (citations omitted)). The
functions performed by the claimed process and method embody basic
functions of a computer that amount to nothing more than programming
conventional software or hardware to perform a mathematical operation.
See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.),
cert, denied, 136 S. Ct. 701 (2015) (“relying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible”); see also Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in
light of the specification, requires anything other than off-the-shelf,
conventional computer, network[,] and display technology for gathering,
sending, and presenting the desired information”).
Taking the claim elements separately, the function performed by the
computer in each step of the claimed process is purely conventional. Using
a server for storing data, receiving and processing requests, and performing a
calculation embodies some of the most basic functions of a computer. All of
these computer functions are well-understood, routine, and conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ system add nothing that is not already present when the
limitations are considered separately.
Contrary to Appellants’ arguments (Reply Br. 9—11), the recited claim
language is not sufficient to make the invention “rooted in computer
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technology” like the claims in DDR Holdings8 or Research Corporation
Technologies.8 9 Cf. Intellectual Ventures ILLCv. Capital One Bank (USA),
792 F.3d 1363, 1371 (Fed. Cir. 2015) (“The patent claims here do not
address problems unique to the Internet, so DDR has no applicability.”). For
example, in DDR Holdings, the Federal Circuit determined that, although the
patent claims at issue involved conventional computers and the Internet, the
claims addressed the problem of retaining website visitors who, if adhering
to the routine, conventional functioning of Internet hyperlink protocol,
would be transported instantly away from a host’s website after “clicking”
on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d
at 1257. The Federal Circuit, thus, held that the claims were directed to
statutory subject matter because they recite a solution “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” Id. Unlike the situation in DDR
Holdings, Appellants do not identify any problem particular to computer
networks and/or the Internet that claim 1 allegedly overcomes.
Appellants’ reliance on the Research Corporation Technologies
decision is also misplaced. There, the court observed that the claimed
methods (i.e., claims 1 and 2 of US 5,111,310 and claim 11 of US
5,341,228) “address ‘a need in the art for . . . halftone rendering of gray
scale images in which a digital data processor is utiled in a simple and
precise manner to accomplish the halftone rendering.’” Research
Corporation Technologies, 627 F.3d at 868—69 (citations omitted). Even
8 DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
9 Research Corporation Technologies, Inc. v. Microsoft Corporation, 627
F.3d 859 (Fed. Cir. 2010).
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though the claimed combination incorporated, in significant part, algorithms
and formulas that control the masks and half-toning, the court found that
“[t]he invention presents functional and palpable applications in the field of
computer technology.” Id. at 869. Here, in contrast, no analogous
improvement in the field of computer technology is recited. Rather, the
claimed method performs a business marketing scheme by employing a
mathematical operation implemented by a generic server (claim 1). The
server is used to perform a function commonly performed by generic
computers; that is, to conduct a “mathematical operation.” Cf. Bancorp
Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278
(Fed. Cir. 2012) (citing Gottschalkv. Benson, 409 U.S. 63, 67 (1972)) (a
computer used “for its most basic function, the performance of repetitive
calculations”). Thus, in contrast to Research Corporation Technologies, the
instant claim describes purely conventional computing functions.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 101.
Dependent claims 2, 5, 6, and 7
We have considered Appellants’ contentions as to dependent claims 2,
5, 6, and 7, but we are not persuaded that these claims add anything
significantly more to transform the abstract idea. For example, claim 2
further identifies the host power savings as a variable component in a cloud
usage calculation result. Claims 5—7 describe the correlation between VM
size and utilization in calculating cost savings share for a given VM. In
other words, the dependent claims limit the scope of the abstract idea to
which independent claim 1 is directed, but its character remains unchanged,
especially given that these dependent claims provide no insight to
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improvements in computer functionality beyond what one would expect
from using a generic computer as a tool in performing the scheme as
claimed.
Accordingly, we are not apprised of error, and, thus, we sustain the
rejection of claims 2 and 5—7.
DECISION
The Examiner’s rejection under 35 U.S.C. § 101 is affirmed.
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
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