Ex Parte Binswanger et al

Patent Trial and Appeal Board

Mar 20, 2018

12192664 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/192,664 08/15/2008
37945 7590 03/22/2018
DUKEW. YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
KEVIN M. BINSW ANGER
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.
RSW920070427US 1 3199
EXAMINER
PADOT, TIMOTHY
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN M. BINSWANGER, SAMUEL R. EPSTEIN,
DAVID L. KAMINSKY, JONATHAN M. WAGNER,
and LIFENG ZHANG
Appeal2016-003815 1
Application 12/ 192, 664 2
Technology Center 3600
Before ANTON W. PETTING, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 4--10, and 12-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed Aug. 3,
2015), the Examiner's Answer ("Ans.," mailed Dec. 18, 2015), and Final
Office Action ("Final Act.," mailed Mar. 2, 2015).
2 Appellants identify International Business Machines Corporation. App.
Br. 3.
Appeal 2016-003815
Application 12/192,664
CLAIMED INVENTION
Appellants' claimed invention relates to "service level management in
a service environment having multiple management products implementing
product level policies." Spec. i-f 1.
Claims 1, 10, 12, and 20 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for managing service level policies across
management products in a service environment comprising:
a computer, compnsmg hardware and software,
identifying a change in service level for a service for an entity
from a first service level to a second service level;
the computer retrieving individual ones of active policies
associated with the first service level, wherein the individual
ones of the active policies are policies of a plurality of different
management products of a service environment, wherein a
management product is a component that provides one or more
capabilities affecting an execution of a service within a service
environment;
the computer tagging each policy of each management
product with a service level identifier and a policy domain,
wherein values for the policy domain comprise domains for at
least two of security, performance, monitoring, and business
logic;
the computer, for each management product, deactivating
individual ones of the active policies associated with the first
service level;
the computer retrieving individual ones of policies
associated with the second service level, which at the time of
retrieving are not active for the service for the entity; and
the computer, for each management product, activating the
individual ones of the policies associated with the second service
level.
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REJECTION
Claims 1, 4--10, and 12-20 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
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
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court has instructed us to use a two-step framework to
"distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp., 134 S. Ct. at 2355. At the first step, we determine
whether the claims at issue are "directed to" a patent-ineligible concept. Id.
If they are, we then "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. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78, 79 (2012)).
Starting at step one, we must first examine the "claimed advance" to
determine whether the claims are directed to an abstract idea. Affinity Labs
of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). In
cases involving software innovations, this inquiry often turns on whether the
claims focus on "the specific asserted improvement in computer capabilities
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... or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
Turning to the invention, claim 1, for example, recites a method for
managing service level policies across management products in a service
environment. The method performs the following steps: (1) identifying a
change in service level for a service for an entity from a first level to a
second level; (2) retrieving individual ones of active policies associated with
the first service levels; (3) tagging each policy of each management product
with a service level identifier and a policy domain; (4) for each management
product, deactivating individual ones of the active policies associated with
the first service level; ( 5) retrieving individual ones of policies associated
with the second service level; and ( 6) activating the individual ones of the
policies associated with the second service level. According to the
Specification, management products often provide different service levels,
such as gold, silver, and bronze service levels, associated with different
execution characteristics. Spec. i-f 4. Known systems manage service level
policies for one management product separately from the service level
policies for other management products. Id. i-f 5. Thus, changing a service
level typically requires making multiple policy changes in multiple
management products. Id. This process is performed manually by
"[ d]ifferent human administrators" or technicians for different management
products, rendering it both inefficient and error-prone. Id.
To address this known shortcoming in the art, the Specification
describes tagging policies with service level data to correlate policies and
service levels. See, e.g., id. i-fi-124--25, 29. In one exemplary embodiment,
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the system extracts policies of a set of management products and places the
policies in a data store, where the policies are tagged with service level data.
Id. i-f 29. When a request is received for a user to downgrade from a gold to
a silver service level, a record change is made for the user, and the system
removes policies associated with the user at the gold level in the
management products data store and adds policies for the silver level. Id. In
other words, the heart of the invention involves using service level tags to
facilitate the management of service level policies across management
products (i.e., retrieving policies, deactivating policies, activating policies).
Therefore, we do not see legal difficulty with the Examiner's
determination that the claims are drawn to the abstract idea of "managing
service levels" (Final Act. 4), which "involves the use of categories to
organize, store, and transmit information related to management of service
level policies for the management products" (id. at 5). In our view, the
claimed method for managing service levels is not meaningfully distinct
from claims involving the collection, organization, manipulation, or display
of data that have been deemed patent-ineligible by the Federal Circuit. For
example, in Intellectual Ventures I LLC v. Erie Indemnity, 850 F.3d 1315,
1328 (Fed. Cir. 2017), the Federal Circuit held that creating and using an
index to search for and retrieve data is an abstract idea. In that case, the
court determined that
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. For
example, a hardcopy-based classification system (such as
library-indexing system) employs a similar concept .... There,
classifiers organize and cross-reference information and
resources (such as books, magazines, or the like) by certain
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identifiable tags, e.g., title, author, subject. Here, tags are
similarly used to identify, organize, and locate the desired
resource.
Id. at 1327. The court further determined that the claims were not "focused
on how usage of the [] tags alters the database in a way that leads to an
improvement in the technology of computer databases, as in Enfzsh," but
instead focuses "at a high level on searching a database using an index." Id.
at 1328.
In Intellectual Ventures I LLC v. Capital One Financial Corp., 850
F.3d 1332, 1339--40 (Fed. Cir. 2017), the claims related to preserving
compatibility between XML documents after they had been edited by
different users. In that case, a "dynamic document" containing data
extracted from the original XML document was created such that changes
made by users editing the data displayed in the dynamic document were
"dynamically propagated" back into the original XML document. Id. at
1339. There, the Federal Circuit concluded that the claims were, "at their
core, directed to the abstract idea of collecting, displaying, and
manipulating data." Id. at 1341.
Likewise, here, we find the claims focus at a high-level on the use of
service level tags to retrieve and manage (e.g., remove, add) policies for a set
of managed products, i.e., organizing, accessing, and manipulating data.
Therefore, we conclude that the claims are directed to an abstract concept
under step one and move to step two of the analysis.
At step two, we "must determine whether the claims do significantly
more than simply describe [the] abstract method" and, thus, transform the
abstract idea into patent eligible subject matter. Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). We look to see whether there are
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"additional features" in the claims that constitute an "inventive concept,"
rendering the claim eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 77, 79.
Here, we agree with the Examiner that the claims do not include
additional features that constitute an inventive concept. See Final Act. 5.
Appellants point to the tagging as an improvement to the technology of a
service environment. Br. 21. However, employing tags to better manage the
policies "is simply not enough to transform the patent ineligible abstract idea
here into a patent-ineligible invention." Erie Indemnity, 850 F.3d at 1328;
see also id ("we fail to see how the []use of a well-known tag, i.e., XML
tag-to form an index-sufficiently transforms the claims").
Moreover, the remaining limitations recite routine computer
functions, such as identifying information, retrieving information and
manipulating information, e.g., activating and deactivating policies,
performed by a generic "computer." These are no more than the
"performance of 'well-understood, routine, [and] conventional activit[ies]'
previously known to the industry." Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir.
2014) (quoting Mayo, 566 U.S. at 73). Thus, while the claims necessarily
cabin the abstract idea to a "service environment" comprising a "computer"
having "hardware and software" for performing the recited steps and a
"management product" effecting an execution of a service within the service
environment, the claimed computer functionality can only be described as
generic or conventional. See, e.g., Spec. i-f 30 ("service environment 220 can
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represent any computing environment able to provide one or more services
240"); see also id. i-fi-f 11-21, 32-37 (indicating that nothing more than
generic technology is required).
We are not persuaded by Appellants' argument that it is "logically
inconsistent" to reject the claims under 35 U.S.C. § 101 when the claims are
not rejected under 35 U.S.C. §§ 102 or 103. Br. 14--15. Appellants charge
that the shortcomings in the known prior art, as evidenced by the lack of
rejections under§§ 102 and 103, "shows that the claims MUST (by
definition) include meaningful limitations." Id. at 15. However, a finding of
novelty or non-obviousness does not automatically lead to the conclusion
that claimed subject matter is patent-eligible. Although the second step in
the Mayo/Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "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
(citation omitted). "Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the§ 101 inquiry." Ass 'n. for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
17 5, 188-89 (1981) ("The 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.").
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We also are not persuaded by Appellants' argument that the Examiner
fails to distinguish the claims from those in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Br. 15-16. Appellants
argue that the Specification at paragraph 30 provides constraints and
requirements for a service environment to operate, and, thus, requires more
than "any computer." Id. at 16. For example, Appellants charge that pocket
calculators and mobile telephones are generic computers, but these
computers could not be used here. Id. Appellants also assert that the
Examiner's assertion that "management products in a service environment
predates computer technology" is "not strictly true." Id. (citing Final Act.
3).
However, we do not find any parallel between the pending claims and
those in DDR Holdings. The claims at issue in DDR Holdings changed the
routine, conventional functioning of Internet hyperlink protocol to direct a
user of a host website to a "store within a store" on the host website, rather
than to an advertiser's third-party website, when the user clicks an
advertisement. DDR Holdings, 773 F.3d at 1257-58. The court determined
that the invention was "necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks," and that the claimed invention did not simply use computers to
serve a conventional business purpose. Id.
In contrast, here the claimed invention manages service level policies.
Managing service level policies is a business problem, not a problem rooted
in technology. For example, the Specification explains that conventionally
policy changes have been "manually performed by human administrators"
and are "inherently error prone and inefficient." Spec. i-f 5. Appellants do
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not identify, and we do not find, any indication that technology is used other
than in its normal, expected, and routine manner. Instead, the claimed
invention simply uses a generic computer to serve the conventional business
purpose of managing service level policies of managed products, which is
not enough. Likewise, limiting the claims to a particular environment, such
as a service environment, is not sufficient to transform Appellants' otherwise
patent-ineligible abstract idea into patent-eligible subject matter. See Alice
Corp., 134 S. Ct. at 2358.
We also are not persuaded of Examiner error by Appellants'
arguments regarding preemption. Br. 20-21. "Where a patent's claims are
deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). In addition, "the absence of complete
preemption does not demonstrate patent eligibility." Id. (citing Alice Corp.,
134 S. Ct. at 2354).
To the extent that Appellants argue that the claims are patent-eligible
because they satisfy the transformation prong of the machine-or-
transformation test set forth in Bilski v. Kappas, 130 S. Ct. 3218 (2010) (see
Br. 22), we note that the alleged "transformation" is a manipulation of data,
i.e., changing the state of policies associated with a plurality of management
products, which is not sufficient to meet the transformation prong under
§ 101. See Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972) (a computer-
based algorithm that merely transforms data from one form to another is not
patent-eligible).
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We are not persuaded, for the reasons set forth above, that the
Examiner erred in rejecting claims 1, 4--10, and 12-20 under 35 U.S.C.
§ 101. Therefore, we sustain the Examiner's rejection.
DECISION
The Examiner's rejection of claims 1, 4--10, and 12-20 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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