Ex Parte Geheb et al

Patent Trial and Appeal Board

May 16, 2018

14611587 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/611,587 02/02/2015 Adam C. Geheb
52021 7590 05/18/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CAM920140013US2_8150-0547 1039
EXAMINER
SOLTANZADEH, AMIR
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
05/18/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM C. GEHEB, PRASANNA R. JOSHI,
andAPURVA S. PATEL
Appeal2018-000227
Application 14/611,587
Technology Center 2100
Before DENISE M. POTHIER, CATHERINE SHIANG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-7, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
computer program development, and more specifically to implementing
changes in a computer program. See generally Spec. 1. Claim 1 is
exemplary:
Appeal2018-000227
Application 14/611,587
1. A method, comprising:
identifying a fix defining a plurality of unique changes to
a computer program;
applying the fix, including the plurality of unique
changes, to the computer program to generate a test version of
the computer program and, as each of the plurality of unique
changes is applied, identifying, in real time using a processor,
program code units in the computer program changed by the
unique changes and generating corresponding data entries in a
first data structure;
determining a number of test cases available to test the
program code units in the computer program changed by the
unique changes by accessing the data entries in the first data
structure and matching, using the processor, each of the
program code units to corresponding data entries contained in a
second data structure that correlates program code units to test
cases;
responsive to determining the number of test cases
available to test the program code units in the computer
program changed by the unique changes, automatically
generating, using the processor, a test readiness index
indicating a readiness of the fix to be tested, the test readiness
index based on a number of unique changes to the computer
program defined by the fix and the number of test cases
available to test the unique changes to the computer program
defined by the fix; and
outputting the test readiness index.
Rejection1
Claims 1-7 stand rejected under 35 U.S.C. § 101 because they are
directed to patent ineligible subject matter.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
1 The Examiner withdrew a non-statutory double patenting rejection of
claims 1-7. Ans. 3.
2
Appeal2018-000227
Application 14/611,587
contention that the Examiner erred in finding claims 1-7 are directed to
patent ineligible subject matter. See Appeal Brief filed March 27, 2017
("Appeal Br.") 9-22; Reply Brief filed October 9, 2017 ("Reply Br.") 2-9.
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 Banklnt'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass '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
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.
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
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Application 14/611,587
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., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); Enfish, 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). For the reasons discussed below, we
proceed to Alice step-two analysis.
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014), the
Federal Circuit determines the claims satisfy Alice step two because "the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR Holdings, 773 F.3d at 1257. As a result, the DDR court holds the
claims are patent eligible regardless of whether they are characterized as an
abstract idea under Alice step one. See DDR Holdings, 773 F.3d at 1257.
Similar to the claims in DDR, the claims here are necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer program development. See claims 1-7; DDR
Holdings, 773 F.3d at 1257; see also Spec. 1-3. As a result, the claims are
patent eligible regardless of whether they are characterized as an abstract
idea under Alice step one. See DDR Holdings, 773 F.3d at 1257.
In particular, the claims address the problem of errors in computer
programs. See claims 1-7; see also Spec. 1-3. To that end, the claims
provide an improved method for implementing changes in a computer
program to fix errors. See claims 1-7. For example, independent claim 1
recites a method comprising the steps of
identifying a fix defining a plurality of unique changes to a
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Appeal2018-000227
Application 14/611,587
computer program; applying the fix ... to the computer
program to generate a test version of the computer program
and ... identifying, ... program code units ... changed by the
unique changes and generating corresponding data entries in a
first data structure; determining a number of test cases available
to test the program code units ... changed by the unique
changes ... and matching ... each of the program code units to
corresponding data entries contained in a second data structure
that correlates program code units to test cases; responsive to
determining the number of test cases available to test the
program code units in the computer program changed by the
unique changes, automatically generating ... a test readiness
index indicating a readiness of the fix to be tested ... ; and
outputting the test readiness index.
Claim 1. Claims 2-7 depend on claim 1, and include all of the above
detailed steps. Contrary to the detailed computer program development
steps discussed above, the Examiner incorrectly determines the claims
merely perform genetic computer functions (Final Office Action dated
October 20, 2016 ("Final Act.") 2-3, 10; the Examiner's Answer dated
August 10, 2017 ("Ans.") 7, 13, 16), and are directed to arranging numbers
or interpreting numbers, and constitute mathematical algorithms or
mathematical computations (Final Act. 2, 10; Ans. 4--5, 8-12, 14).
Further, the Examiner's finding that the last step of claim 1 was
known in the art (Ans. 6) does not show why the claims are not patent
eligible under the Alice step-two analysis. See Bascom Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (2016) ("The
inventive concept inquiry requires more than recognizing that each claim
element, by itself, was known in the art. As is the case here, an inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.").
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Instead of adhering to the conventional way of computer
development, the claims provide an improved method of implementing
changes in a computer program to fix errors. See claims 1-7; DDR
Holdings, 773 F.3d at 1258-59. Therefore, similar to the claims of DDR and
contrary to the Examiner's assertion (Final Act. 2-3, 10; Ans. 7, 13, 16),
"[ w ]hen the limitations of [this invention] are taken together[], the claims
recite an invention that is not merely the routine or conventional use of'
general-purpose computers. See claims 1-7; DDR Holdings, 773 F.3d at
1259.
Finally, "[i]t is also clear that the claims at issue do not attempt to
preempt every application of the idea of' fixing computer program errors.
"Rather, they recite a specific way" based on the detailed steps discussed
above. DDR Holdings, 773 F.3d at 1259. As a result, the claims include
"additional features" that ensure the claims are "more than a drafting effort
designed to monopolize the [abstract idea]." Id. (citing Alice, 134 S.Ct. at
2357). In short, "the claimed solution amounts to an inventive concept for
resolving this particular" computer program development problem,
rendering the claims patent eligible. Id.
Accordingly, we reverse the Examiner's rejection of claims 1-7 under
35 U.S.C. § 101.
DECISION
We reverse the Examiner's decision rejecting claims 1-7 under
35 U.S.C. § 101.
REVERSED
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