Ex Parte Drew et al

Patent Trial and Appeal Board

Mar 28, 2017

12789314 (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.
12/789,314 05/27/2010 Julie Ward Drew 82263353 8396
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIE WARD DREW, RUXIAN WANG,
GUILLERMO GALLEGO, MING HU, ENIS KAYIS,
FILIPPO BALESTRIERI, SHELEN JAIN, JOSE LUIS BELTRAN, and
DOUGLAS M. GILBERT
Appeal 2014-0023711
Application 12/789,3142
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-16 and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
Sept. 24, 2013) and Reply Brief (“Reply Br.,” filed Dec. 10, 2013), and the
Examiner’s Answer (“Ans.,” mailed Oct. 23, 2013) and Final Office Action
(“Final Act.,” mailed Apr. 30, 2013).
2 Appellants identify “Hewlett-Packard Development Company, L.P.” as
the real party in interest. App. Br. 2.
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CLAIMED SUBJECT MATTER
Appellants’ “invention relates generally to the field of Operations
Research and Dynamic Programming (DP) of real-life decision problems
such as product warranties.” (Spec. ^ 4).
Claims 3 and 23 are the independent claims on appeal. Claim 3,
reproduced below with added bracketed matter and reformatting, is
illustrative of the subject matter on appeal:
3. A method of determining design parameters a service
provider should use for a refundable periodic product warranty
offered to a plurality of customers, said method executed by a
processor based on computer-readable instructions stored on a
non-transient computer-readable medium and comprising:
[(a)] determining a service provider’s expected discounted
profit from product replacements, out-of-warranty repairs and
warranty sales from a single customer by performing the
following steps in predetermined time periods:
[(b)] determining a customer’s maintenance and
replacement decision based on a functional state of a product;
[(c)] computing a service provider’s expected
discounted profit ensuing from the maintenance and
replacement decision;
[(d)] determining a customer’s warranty coverage
decision, and
[(e)] computing a service provider’s expected
discounted profit ensuing from the customer’s warranty
coverage decision.
(App. Br. 18-19, Claims Appendix).
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REJECTIONS
The following rejections are before us on appeal.
Claims 1, 2, 5, 14, and 15 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description and enablement
requirements.
Claims 1, 2, 5-15, and 23 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.3
Claims 14-16 and 23 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
Claims 3, 4, and 23 are rejected under 35 U.S.C. § 102(b) as
anticipated by Bhatt (US 2003/0033170 Al, pub. Feb. 13, 2003).
Claims 6-8, 11-13, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bhatt and DiCostanzo (US 2004/0030574 Al, pub.
Feb. 12, 2004).
Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bhatt, DiCostanzo, and Heida (“What is In Store Credit and How Does
it Work?”, published Mar. 16, 2010).
Claims 1, 2, 5, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bhatt.
3 Although a statement of the rejection indicates that claims 1-16 and 23 are
rejected under 35 U.S.C. § 112, second paragraph, only claims 1, 2, 5-15,
and 23 are actually rejected in the Final Action. See Final Act. 16-17.
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ANALYSIS
Written Description
We are persuaded that the Examiner erred in rejecting claims 1, 2, 5,
14, and 15 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement (App. Br. 5-8 and Reply Br. 3-6).
At the outset, we note that the Examiner rejected claims 1, 2, 5, 14,
and 15 as failing to comply with the written description requirement and the
enablement requirement, but the Examiner relied on the same analysis for
both grounds. See Final Act. 3-16; see also Ans. 3-19.
The Examiner found “the specification and claims are silent as to how
to go about the process of the value for p that will maximize the equation.
Further still, the specification lacks any explanation, guidelines, or example
of ever using this equation.” Final Act. 3; Ans. 7. The Examiner posed
numerous questions as to whether the determination of the values is properly
described and sufficiently explained in the Specification. See Final Act. 3-
11. According to the Examiner, Appellants’ Specification states that “[t]he
provider’s problem of finding design parameters {pt, tcT} is a nonlinear
optimization problem. One could implement any of several well-known
optimization procedures, such as line search, to find the optimal
parameters.” Id. at 11 (quoting Spec. ^ 139). “Based on this statement, the
Examiner asserts that the applicant is relying on a practitioner of the
invention to perform undue experimentation without any real guidance.” Id.
In response to the Examiner’s questions, Appellants provide further
explanation and indicate where support for each variable is provided in the
disclosure. See, e.g., App. Br. 6-7 (providing an explanation as to variables
y, p, ps, g(i), Z1s(ps).). Appellants argue “that one having ordinary skill in the
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mathematical arts would be well apprised how to maximize a coefficient
based on the disclosure without need for an example.” App. Br. 6.
According to Appellants:
There are a variety of techniques available, as would be
readily understood by one having ordinary skill in the art
after becoming familiar with the teaching herein. This is
explained in the specification. By way of further illustration,
and without intending to be limiting in any manner, a
practitioner would recognize that an exhaustive search may
be performed over all possible values of the parameters in
the design vector to find the ones that are best suited for the
particular application. But exhaustive search techniques
such as these are not considered experimentation by
practitioners, but rather a well-understood optimization
procedure. Again, when implemented by a computer device
takes little time or effort to complete.
Reply Br. 6.
The first paragraph of 35 U.S.C. 112 contains a written description
requirement that is separate and distinct from the enablement requirement.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir.
2010) (en banc). To satisfy the written description requirement, the
specification must describe the claimed invention in sufficient detail that one
skilled in the art can reasonably conclude that the inventor had possession of
the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63
(Fed. Cir. 1991). “[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant
technolo ay. ” A riad. 59 8 F. 3 d at 1351.
We find that Appellants’ statement in the Specification supra about
‘implementing any one of several well-known optimization procedures, such
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as line search, to find the optimal parameters” supports Appellants’
arguments about the level of skill in the pertinent art and what an artisan
would reasonably understand from the disclosure. Considering the teachings
of the Specification, the scope of the clai ms, and the relative simplicity and
predictability of the relevant technology, we are persuaded that the Examiner
has not shown that the Specification fails to convey with, reasonable clarity
to those skilled in the art that Appellants were in possession of the invention
as set forth in dependent claims 1, 2, 5, 14, and 15, at the time the
application was filed.
We do not sustain the rejection of claims 1, 2, 5, 14, and 15 as failing
to comply with the enablement requirement.
Enablement
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993). Factors to consider include
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). But neither the Final
Action nor the Answer provides any discussion of the Wands factors, either
explicitly or implicitly. As a result, the Examiner has failed to articulate a
prima facie case of lack of enablement. Therefore, we do not sustain the
rejection of claims 1, 2, 5, 14, and 15 as failing to comply with the
enablement requirement.
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Indefiniteness
Claims 1, 2, 5, 14, and 15
The Examiner found that claims 1, 2, 5, 14, and 15 are indefinite
because “there are essential elements that are missing to properly perform
the process that has been claimed in the preamble and further fails to provide
the necessary process(es) required for selecting the vector p and tying the
vector to the equation and, in turn, to the process claimed in the preamble.”
Final Act. 17.
A claim which omits matter disclosed to be essential to the invention
as described in the specification or in other statements of record may be
subject to rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112,
para. 2. See In re Mayhew, 527 F.2d 1229 (CCPA 1976); In re
Venezia, 530 F.2d 956 (CCPA 1976); and In re Collier, 397 F.2d 1003
(CCPA 1968).
We will not sustain the rejection because the Examiner has not
pointed to any disclosure in the Specification that indicates the alleged
omitted matter is essential or critical to the invention, as required supra. On
the contrary, as discussed above with respect to the § 112, first paragraph
rejection, the teachings of the Specification indicate the opposite. See Spec.
139 (“One could implement any of several well-known optimization
procedures, such as line search, to find the optimal parameters.”). As such, a
prima facie case of indefmiteness for omitting essential matter has not been
established.
Claims 1 and 23
We will not sustain the rejection of claims 1 and 23 as indefinite
because the claims do not recite
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any step for determining the design parameters, for determining
optimum design parameters, or that the service provider's
expected discounted profit, customer's maintenance and
replacement decision, and customer's warranty coverage
decision are being used in order to determine the design
parameters or how they are being used and/or manipulated in
order to determine the design parameters, let alone optimum
design parameters.
Final Act. 17. As Appellants observe, there “is not a requirement under
Section 112 that all the steps be recited in the claim, so long as it would be
understood from the specification.” App. Br. 9.
Claims 6-13
The Examiner rejected claims 6-13 as indefinite for “fail[ing] to
provide sufficient disclosure to differentiate a ‘refundable warranty’ from
any other warranty, what makes it a ‘refundable warranty’, and the criticality
that the warranty must be a ‘refundable’ warranty.” Final Act. 18.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
Among several examples of extended warranties, the Specification
describes a refundable extended warranty with a pro-rated refund as a simple
type of refundable warranty with no copayments and “refunds that are pro­
rated based on how much of the warranty term has expired.” Spec. ^ 83.
The Examiner does not determine whether a reasonable meaning can be
ascribed to the term “refundable warranty,” and instead, concludes that a
“refundable warranty” cannot be differentiated from any type of warranty.
See Final Act. 18. We disagree. Those skilled in the art would understand
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what is claimed given the ordinary meaning of the term “refundable
warranty” and the teachings of the Specification supra. As such, we will not
sustain the rejection of claims 6-13 as indefinite.
Claims 11-13
The Examiner found insufficient antecedent basis for “customer’s
expected discounted net utility” and rejected claims 11-13 as being
indefinite. Id. Appellants acknowledge the error. See App. Br. 10.
Therefore, we sustain the rejection of claims 11-13 as indefinite, for lack of
antecedent basis.
New Ground of Rejection—Non-Statutory Subject Matter
At the outset, we note § 101 case law has developed significantly
since the briefing was submitted by Appellants and the Examiner in 2013.
The Supreme Court decision in Alice Corp. Party Ltd. v. CLS Bank
International, 134 S. Ct. 2347 (2014) is now controlling. Accordingly, we
review rejected claim 23 anew under Alice.
Alice 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. Alice, 134 S. Ct. at 2355. Independent claim 23 is
directed to the abstract idea of determining a service provider’s expected
profit from product replacements, out of warranty repairs and warranty sales
from a customer. The steps recited in each of the independent claims are
directed to mathematical operations; that is, claim 23 recites operations for
(b) determining a customer’s maintenance and replacement decision; (c)
computing a service provider’s expected profit from the customer’s decision
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in (b); (d) determining a customer’s warranty coverage decision; (e)
computing a service provider’s expected profit from the customer’s decision
in (d); independent claim 3 recites the same operations (b)-(e). Equations
corresponding to these claimed mathematical operations are described in
paragraphs 57-67 of the Specification. As reasonably broadly construed in
light of the Specification, the claimed series of operations amount to a
mathematical formula. Cf. In re Maucorps, 609 F.2d 481 (CCPA 1979). A
mathematical formula is an abstract idea. See Parker v. Flook, 437 US 584
(1978). Because the claims are directed to a mathematical formula, an
abstract idea, the claims at issue are directed to patent-ineligible subject
matter.
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.’” Id.
Turning now to the elements of the claims to determine whether they
contain an inventive concept sufficient to transform the claimed
mathematical formula into a patent-eligible application, we find none. The
steps of “determining” and “computing” fail to transform the formula to an
inventive concept as these steps do no more than gather data and perform
generic computing, respectively. Cf. id. at 594 (“Respondent’s process is
unpatentable under § 101, not because it contains a mathematical algorithm
as one component, but because once that algorithm is assumed to be within
the prior art, the application, considered as a whole, contains no patentable
invention. Even though a phenomenon of nature or mathematical formula
may be well known, an inventive application of the principle may be
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patented. Conversely, the discovery of such a phenomenon cannot support a
patent unless there is some other inventive concept in its application.”).
We find claim 23 does not focus on a specific means or method that
improves the relevant technology, but instead is directed to a result or effect
that itself is the abstract idea and merely invokes generic processes and
machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016). The use of the term “computer” in the preamble of independent
claim 23 does not add anything of inventive significance because it covers
employing a general purpose computer. “[T]he 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
if” is not enough for patent eligibility.” Alice, 134 S. Ct. 2358.
As our analysis deviates substantially from the Examiner on the
underlying basis as to why claim 23 is not directed to statutory subject
matter, we designate our affirmance of independent claim 23 as a new
ground of rejection under 35U.S.C. § 101.
We reach the same conclusion as to independent claim 3 because the
recitation of a generic “processor” in the preamble fails to add anything
inventive as well. Thus, we enter a new ground of rejection under 35 U.S.C.
§ 101 as to independent claim 3.
Because we find that dependent claims 1, 2, and 4-16 lack additional
elements that would render the claims patent-eligible, we also enter a new
ground of rejection under § 101 of these dependent claims on the same basis
as the independent claims from which they depend.
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Anticipation
We are persuaded by Appellants’ arguments that the Examiner erred
in rejecting independent claims 3 and 23 under 35 U.S.C. § 102(b) because
the relied upon paragraphs in Bhatt fail to describe “determining a
customer’s maintenance and replacement decision based on a functional
state of a product.” App. Br. 12; Reply Br. 9-10.
In rejecting this disputed limitation, the Examiner relies on Bhatt’s
disclosure of consumer options for purchasing different warranty types.
Final Act. 21; Ans. 26 (citing Bhatt ^ 18, 19, 21-24, and 34-36.).
In other words, “customer’s maintenance and replacement
decision” is nothing more than the customer deciding what
warranty to purchase, which would be based on a plurality of
factors associated with the product, e.g., age, failure rate,
replacement cost based on whether the product has a full,
limited, scaled warranty, or no warranty, and the type of
warranty and its associated terms and conditions.
Id. (emphasis omitted). On pages 27 and 28 of the Answer, the Examiner
asserts “the act of the customer purchasing a warranty or not or determining
whether to replace/repair their product is the customer’s maintenance and
replacement decision.” Emphasis added. Appellants argue that “Bhatt does
not actually disclose the italicized portion - this is the Examiner’s own
statement.” Reply Br. 9-10.
We agree with Appellants that “‘the act of the customer purchasing a
warranty’ is not the same as ‘determining a customer’s maintenance and
replacement decision based on a functional state of a product.” Id. at 10;
App. Br. 12. We fail to see the performance of this step described in any of
the cited paragraphs in Bhatt, and the Examiner does not adequately explain
how a “customer deciding what warranty to purchase” anticipates
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limitation (b) “determining a customer’s maintenance and replacement
decision based on a functional state of a product.” Limitation (d) of claim 3
requires a determination of a customer’s warranty decision, not
limitation (b). Regarding a customer’s replacement decision, the
Specification discloses that if a product is in a functional or working state,
“the customer may choose to keep it or replace it.” Spec. ^ 41. Thus, a
customer’s choice to keep or replace the product represents the claimed
replacement decision based on a functional state of the product; deciding
what type of warranty to purchase, as proffered by the Examiner, cannot
reasonably be interpreted as a determination to keep or replace a product in
light of the Specification. We conclude the Examiner’s interpretation that a
customer’s purchase decision as to a type of warranty anticipates
“determining a customer’s maintenance and replacement decision based on a
functional state of a product” is inconsistent with the Specification and the
plain language of the claim.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 3 and 23 under 35 U.S.C. § 102(b). For the same
reasons, we also do not sustain the rejection of dependent claim 4.
Obviousness
Each of claims 1, 2, and 5-16 depends, directly or indirectly, from
independent claim 3 or 23. The Examiner’s rejections of these dependent
claims based on Bhatt, alone and in combination with DiCostanzo and/or
Heida, does not cure the deficiency in the Examiner’s rejection of claims 3
and 23. Therefore, we do not sustain the Examiner’s rejections of claims 1,
2, and 5-16 under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejections under 35 U.S.C. § 112, first paragraph, are
REVERSED.
The Examiner’s rejection of claims 11-13 under 35 U.S.C. § 112,
second paragraph, for lack of antecedent basis is AFFIRMED; the rejection
of claims 1, 2, 5-10, 14, 15, and 23 under 35 U.S.C. § 112, second
paragraph, is REVERSED.
The Examiner’s rejection of claims 14-16 and 23 under 35 U.S.C.
§ 101 is SUSTAINED and designated as a New Ground of Rejection.
A NEW GROUND OF REJECTION of claims 1-13 under 35 U.S.C.
§ 101 is entered.
The Examiner’s rejection under 35 U.S.C. § 102(b) is REVERSED.
The Examiner’s rejections under 35 U.S.C. § 103(a) are REVERSED.
NEW GROUND OF REJECTION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner....
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(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; 37 C.F.R, § 41.50(b)
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