Ex Parte Burton et al

Patent Trial and Appeal Board

Sep 24, 2018

12834692 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/834,692 07/12/2010
45216 7590 09/26/2018
Kunzler, PC.
50 W. Broadway
10th Floor
SALT LAKE CITY, UT 84111
FIRST NAMED INVENTOR
Helena C. Burton
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.
TUC920100077US1 8940
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
docket@kunzlerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELENA C. BURTON, BRIAND. CLARK,
JUAN A. CORONADO, BETH A. PETERSON,
and RICHARD A. RIPBERGER
Appeal2017-007616
Application 12/834,692 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Helena C. Burton et al. ("Appellants") seek our review under
35 U.S.C. § 134(a) from the Final Rejection of claims 1-6, 8-11, and 14--20.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 2.
Appeal2017-007616
Application 12/834,692
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An apparatus for generating an advanced function
usage planning report, the apparatus comprising:
a storage controller managing data storage on one
or more storage devices;
a detection module configured to detect use of an
advanced function on the storage controller
in response to the storage controller
accessing a logical volume of a storage
device assigned to the advanced function,
the advanced function being one of a
plurality of advanced functions available on
the storage controller, the advanced function
comprising an optional storage operation of
the storage controller, the advanced function
beyond a standard function set of the storage
controller;
an initialization module configured to initialize a
predefined monitoring routine separately for
each advanced function of the plurality of
advanced functions, a monitoring routine for
a particular advanced function being defined
by one or more monitoring parameters for
the particular advanced function;
a monitoring module configured to monitor the use
of the advanced function on the storage
controller according to the predefined
monitoring routine, the monitoring module
configured to monitor characteristics
particular to the advanced function, the
characteristics comprising one or more of
defined device pair characteristics, defined
relationship characteristics, and Parallel
Access Volumes ("PAV") base volume
characteristics, the monitoring module
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monitoring actual storage used based on the
advanced function, the predefined
monitoring routine defining one or more
alert thresholds associated with the
advanced function;
an alert module configured to generate one or more
alerts based on one or more of the monitored
use and a user attempting to use an advanced
function, wherein the alert module generates
an alert in response to the storage controller
reaching an alert threshold for the advanced
function defined by the monitoring routine;
and
a planning report module configured to generate a
planning report based at least in part on the
actual storage used.
THE REJECTIONS
The following rejections are before us for review:
Claims 1---6, 8-11, and 14--20 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
Claims 1---6, 8-11, and 14--20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
ISSUES
Did the Examiner err in rejecting claims 1---6, 8-11, and 14--20 under
35 U.S.C. § 101 as being directed to judicially-excepted subject matter; and
did the Examiner err in rejecting claims under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement?
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Application 12/834,692
ANALYSIS
The rejection of claims 1-6, 8-11, and 14-20 under 35 US. C. § 1 OJ as
being directed to judicially-excepted subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Id. at 2355.
In that regard, the Examiner determined that "[t]he claims are directed
to the concept of generating usage planning report which is a method of
organizing human activities and an idea of itself." Final Act. 4.
The Appellants argue that "the claims at issue, viewed as an ordered
combination, provide a specific improvement to existing computer storage
technology that should not be dismissed at the high level of abstraction put
forward by the Office Action." App. Br. 7 (citing Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
The court in Enfzsh put the question as being "whether the focus of the
claims is on [a] specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfish, 822 F.3d at 1335-1336.
The court found that the "plain focus of the claims" was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336.
From a plain reading of claim 1, we see the abstract idea identified by
the Examiner recited in the preamble ("generating an advanced function
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usage planning report"). See Two-Way Media Ltd. v. Comcast Cable
Communications, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) ("First, we see
no error here in the district court citing to the preamble in its review of
whether the claims are directed to an abstract idea. See, e.g., Bascom Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir.
2016) (citing preamble for distillation of abstract idea). The district court's
inquiry centered on determining the 'focus' of the claims, and was thus in
accord with our precedent. E.g., Elec. Power Grp. [LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)].")
The "directed to" inquiry in the claims applies a stage-one filter to the
claims, considered in light of the Specification, based on whether "their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015);
see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir.
2016); Enfzsh, 822 F.3d at 1335 (Inquiring into "the focus of the claimed
advance over the prior art.").
Here, the Appellants' Specification2 discloses that the invention
"particularly relates to generating an advanced function usage planning
report." Spec. ,r 1. By way of background, the Specification explains that
"storage controllers offer advanced functionality that allows a user to
perform tasks beyond standard data storage" and "these advanced functions
[are] often separately licensed to the user." Spec. ,r 2. According to the
Specification, the problem solved by the invention is as follows:
2 The Appellants' Specification is entitled "GENERATING AN
ADVANCED FUNCTION USAGE PLANNING REPORT."
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Typically, advanced functions are licensed to the user based on
the user's anticipated need. Thus, if a user over anticipates
advanced function use, the user will waste money on unused
advanced function capacity. If a user under-anticipates
advanced function use, the user may lack the advanced function
capacity for required tasks.
Id. See also, id. ,r 70 ("If the user under-plans, the user will not have the
advanced function capacity to perform desired advance functions. If the
user over-plans, the user has paid for unused advanced function capacity.").
According to the Specification, the invention helps solve this problem by
generating an advanced function usage planning report. Id. ,r 3. With the
advanced function usage planning report, "a user may see which advanced
functions are used, how much advanced function capacity each advanced
function uses, and the like to facilitate better planning and licensing of
advanced functions." Id. ,r 73.
In this case, we find that claim 1, as a whole, is focused on generating
an advanced function usage planning report, i.e., a report that contains
information to facilitate better planning and licensing of advanced functions.
Generating an advanced function usage planning report to facilitate better
planning and licensing of advanced functions is an economic task similar to
abstract ideas identified by our reviewing court. "[W]e 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 Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(collecting cases). See also, FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1094 (Fed. Cir. 2016) ("the claims here are directed to
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collecting and analyzing information to detect misuse and notifying a user
when misuse is detected.").
We have reviewed all the arguments as to the step one determination
but do not find them persuasive as to error in the determination that claim 1
is directed to an abstract idea.
Step two of the Alice framework is "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, 134 S. Ct. at 2355 (alteration in
original) ( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72-73 (2012)).
In that regard, the Examiner determined that the additional
"limitations are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to perform generic
computer functions that are well-understood, routine and conventional
activities previously known to the industry." Final Act. 4.
The Appellants argue, inter alia, that "the claims at issue recite an
improvement to a technology or technical field - namely detecting and
monitoring use of advanced storage functions of a storage controller on a
per advanced storage function basis." App. Br. 8. In particular, the
Appellants contend that "the advanced functions are tied to a particular
storage device and can be detected by the detection module when the storage
controller accesses the logical volume assigned to the advanced function."
Id. According to the Appellants, "this provides an efficient way to detect
use of an advanced function (e.g., only when the portion of the logical
volume assigned to the advanced function is accessed) instead of requiring
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continuous detected use of an advanced function, characteristics of the
advanced function, or the like, which improves the manner in which use of
the advanced function is detected." Id.
Responding to the Appellants' arguments in the Answer, the
Examiner determines that "these 'additional limitations' perform basic
computer functions of retrieving, storing, manipulating, and processing data,
which are well-understood, routine and conventional." Ans. 3. According
to the Examiner, the Specification does not disclose an improvement to
computer technology, and "[a]t best, the improvement is related to the
abstract idea of generating a usage planning report." Id. at 4. The Examiner
does not substantively address the Appellants' argument that assigning
logical volumes to advanced functions provides a more efficient way to
detect use of an advanced function.
The evidence of record weighs more in favor of the Appellants' view
that the claims include significantly more than the abstract idea of generating
an advanced function usage planning report.
The Appellants' Specification describes assigning logical volumes to
advanced functions as a feature that is separate and distinct from generating
a planning report. See Spec. ,r 65 ("A user may assign or associate a logical
volume or portion of a logical volume (an extent) of a storage device with an
advanced function."); ,r 81 ("the detection module 420 detects use of a
particular advanced function in response to the storage controller 230
accessing at least a portion of a logical volume (such as one or more extents)
associated with and/or assigned to the particular advanced function.").
Claim 1 contains limitations directed to the arguably inventive concept
described in the Specification, namely "a detection module configured to
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detect use of an advanced function on the storage controller in response to
the storage controller accessing a logical volume of a storage device
assigned to the advanced function." App. Br. 13 (Claims App.).
Independent claims 8 and 16 contain similar limitations.
In this case, given the discussion in the Specification and that the
Examiner has not put forward an opposing detailed reasoning or evidence
( other than to say that the invention employs basic computer functions
(Ans. 3)), we find the record weighs in favor of finding that "the claims
recite an invention that is not merely the routine or conventional use of'
computer technology. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1259 (Fed. Cir. 2014).
For that reason, we find the additional elements in the claims
transform the nature of the claim into a patent-eligible application.
Accordingly, the rejection is not sustained.
The rejection of claims 1-6, 8-11, and 14-20 under 35 US.C. § 112,first
paragraph, as failing to comply with the written description requirement.
The Examiner determined that "[ n ]ewly amended limitation 'an
initialization module configured to initialize a predefined monitoring
routine' does not appear to be supported by the original disclosure." Final
Act. 5.
The Appellants have not provided a substantive response to this
rejection. See App. Br. 2-12; Reply Br. 2-6. Accordingly, the rejection is
summarily affirmed. See 37 C.F.R. § 4I.37(c)(l)(iv).
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CONCLUSIONS
The rejection of claims 1---6, 8-11, and 14--20 under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter is reversed.
The rejection of claims 1---6, 8-11, and 14--20 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is affirmed.
DECISION
The decision of the Examiner to reject claims 1-6, 8-11, and 14--20 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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