Ex Parte Habdank et al

Patent Trial and Appeal Board

Aug 29, 2018

14132968 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/132,968 12/18/2013
149379 7590 08/31/2018
Clarivate Analytics, Legal Department
(C/0 Janice Read)
1500 Spring Garden Street
4th Floor
Philadelphia, PA 19130
FIRST NAMED INVENTOR
Jozef Habdank
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.
509984US 2406
EXAMINER
CELANI, NICHOLAS P
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
clarivate.docketing@clari vate. com
oblonpat@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOZEF HABDANK and
KRISTIAN LOEKKEGAARD
Appeal2017-007043
Application 14/13 2,968 1
Technology Center 2400
Before IRVINE. BRANCH, JOSEPH P. LENTIVECH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-9, 11, and 13-21, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to scheduling network scanning tasks and
modifying the execution frequency based on the results of the scanning.
Spec. Abstract.
1 According to Appellants, the real party in interest is Camelot UK Bidco
Limited. App. Br. 2.
Appeal2017-007043
Application 14/132,968
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. A computer-implemented method for dynamically
scheduling network scanning tasks, the method comprising:
receiving an identification of a scanning task associated
with an electronic item that is accessible via a network;
scheduling, using a processor, the scanning task to be
repeatedly executed according to an execution frequency,
wherein the execution frequency corresponds to a time interval
between each execution of the scanning task;
receiving a first set of scan results generated by a first
execution, at a first execution time, of the scanning task, the first
set of scan results comprising information associated with a first
set of detected activities associated with the electronic item;
receiving a second set of scan results generated by a
second execution, at a second execution time, of the scanning
task, the second set of scan results comprising information
associated with a second set of detected activities associated with
the electronic item;
comparing the first and second sets of scan results,
wherein the information associated with the first and second sets
of detected activities associated with the electronic item
comprises a first set of network identifiers and a second set of
network identifiers, respectively; and
in response to determining that the second set of network
identifiers contains network identifiers not included in the first
set of network identifiers, increasing the execution frequency.
Rejections
Claims 1, 3-9, 11, and 13-21 stand rejected under 35 U.S.C. § 101
because the claims are directed to patent ineligible subject matter. Final
Act. 3--4.
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Application 14/132,968
Claim 3 stands rejected under 35 U.S.C. § 112(a) as lacking
enablement. Final Act. 4.
Claims 1, 3-9, 11, and 13-21 stand rejected under 35 U.S.C. § 112(a)
for failing to comply with the written description requirement and under
35 U.S.C. § 112(b) as being indefinite. Final Act. 5.
Claims 1, 3-6, 8, 18, 19, and 21 stand rejected under 35 U.S.C. § 103
as unpatentable over the combination of BitTorrent ("Measuring the
BitTorrent Ecosystem: Techniques, Tips, and Tricks," Kryczka, September,
2011) and Shah (US 2006/0182115 Al; published Aug. 17, 2006). Final
Act. 6-10.
Claims 7 and 20 stand rejected under 35 U.S.C. § 103 as unpatentable
over BitTorrent, Shah, and Gutierrez (US 2010/0257051 Al; published Oct.
7, 2010). Final Act. 10-11.
ANALYSIS
The 35 U.S.C. § 101 Rejection
Section 101 defines patent-eligible subject matter as "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
"long held that this provision contains an important implicit exception[:]
Laws of nature, natural phenomena, and abstract ideas are not patentable."
Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589
(2013) (internal brackets omitted) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)).
To distinguish "patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications of those
concepts," the Supreme Court has set up an analytical framework. Alice
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Application 14/132,968
Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo, 566
U.S. at 71-73). In the first step of the analysis, we determine whether the
claims at issue are "directed to" a judicial exception, such as an abstract
idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc.
v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to
be directed to an abstract idea, then we consider under step two whether the
claims contain an "inventive concept" sufficient to "transform the nature of
the claim into a patent-eligible application." Alice, 134 S. Ct. at 2355
( quotations and citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look
to whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that in itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfish, 822 F.3d at 1336.
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Application 14/132,968
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Claim 1 is directed to scheduling network scanning tasks that includes
scanning a network for electronic items, gathering results, including network
identifiers, and changing the frequency of the tasks based on results of scans.
Independent claim 18 recites similar subject matter. Other claims specify
information to be scanned ( e.g., claim 7 searches for "a uniform resource
locator linking to [an] electronic item"), the type of network (e.g., claim 6
scans "the Internet"), and/or a specific methodology for changing the scan
frequency (e.g., claims 9, 11, 13, 14, and/or 16 recite statistically analyzing
the results to determine "swarm size" and "device identifiers included in [a]
list of previously captured network identifiers"). The Examiner concludes
that the claims are directed towards the "abstract idea" of "comparing new
and stored information and using rules to identify options." Ans. 6. We
agree, and adopt the Examiner's findings as our own.
Appellants raise several arguments challenging the Examiner's
conclusion that the claims are directed to an abstract idea. See App. Br. 6-9.
We are not persuaded by Appellants' arguments for the reasons stated by the
Examiner (Ans. 5-11). We do not find Appellants to have persuasively
rebutted (see Reply Br. 2-3) the Examiner's conclusion that the claims are
directed to the abstract idea of "comparing new and stored information and
using rules to identify options." Contrary to Appellants' contention (id. at
3), we find the claims here similar to those the Federal Circuit has found
ineligible in SmartGene, Inc. v Advanced Biological Labs., 555 Fed. Appx.
950 (Fed. Cir. 2014).
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Accordingly, because we agree with the Examiner, at step one of the
Alice analysis, that the claims are directed to an abstract idea, we tum to the
second step of the Alice analysis, in which we must determine whether the
additional elements of the claims transform them into patent-eligible subject
matter.
Step Two: Whether Additional Elements Transform the Abstract Idea
Into Patent-Eligible Subject Matter
The Examiner finds that the claims do not amount to significantly
more than the abstract idea. Ans. 12-16. In particular, the Examiner finds it
is conventional "to respond to piracy by performing scans to identify
infringers to take legal action against them, and it is entirely conventional to
perform scans on a scheduled basis and to modify that schedule in response
to information that motivates one to want a different scan schedule." Id. at
12. We agree with and adopt the Examiner's conclusion that the claims do
not include limitations that amount to "significantly more," such that the
abstract idea becomes patent eligible.
We have reviewed Appellants' rebuttal to the Examiner's findings
that the Examiner's assertions are not supported by a preponderance of the
evidence of record and/or are presented for the first time in the Examiner's
Answer. Reply Br. 3--4. Appellants do not persuasively rebut the
Examiner's findings and conclusion. To the extent Appellants argue error
because the newly-presented material amounts to an undesignated new
ground of rejection, Appellants waived the right to petition to have the
material designated a new ground upon filing a Reply Brief. See 37 C.F.R.
§ 41.40. The alleged new grounds of rejection are properly before us for
consideration.
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Accordingly, for the foregoing reasons, we are not persuaded the
Examiner erred in rejecting all pending claims as directed to patent ineligible
subject matter.
The Enablement Rejection of Claim 3
Claim 3 recites "wherein the first set of detected activities associated
with the electronic item comprises instances of legally unauthorized access
of electronic items via the network." The Examiner rejects claim 3 under
35 U.S.C. § 112(a), finding that claim 3 "fails to find any enabling support
in the specification for teaching one of skill in the art how to code
determining legally unauthorized access to a work." Final Act. 4.
Appellants contend that the Examiner's rejection of claim 3 based on
enablement is reversible because "the Examiner failed to consider the Wands
factors." Reply Br. 4 (referring to In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988)).
We are unpersuaded of error at least because Appellants do not point
to - and we do not find - the required enabling disclosure in Appellants'
Specification for coding a computer to detect instances of legally
unauthorized access.
Should further prosecution of the presently-pending claim ensue, the
Examiner might also consider whether claim 3 is unpatentable under
35 U.S.C. § 112(b) as indefinite because the language of the claim is such
that a person of ordinary skill in the art could not interpret the metes and
bounds of the claim so as to understand how to avoid infringement.
See Morton Int'!, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, (Fed. Cir.
1993).
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The Rejections of Claims 1, 3-9, 11, and 13-21 Under
35 U.S.C. §§ 112(a) and (b)
We are persuaded of error, and we do not sustain, the Examiner's
rejections of claims 1, 3-9, 11, and 13-21 under 35 U.S.C. § 112(a) for
failing to comply with the written description requirement and§ 112(b) for
the reasons stated by Appellants. In particular, on this record, we do not find
an adequate explanation for the basis of these rejections.
The Obviousness Rejection
The Examiner finds BitTorrent discloses all elements of claim 1,
except that "BitTorrent does not explicitly teach scheduling." Final Act. 6-
7. The Examiner finds Shah discloses scheduling and the combination of
BitTorrent and Shah discloses "in response to determining that the second
set of network identifiers contains network identifiers not included in the
first set of network identifiers, increasing the execution frequency." Id. at 7-
8. The Examiner concludes that "[i]t would have been obvious to an artisan
of ordinary skill at the time of Applicant's invention to combine the method
of BitTorrent with the schedule in order to perform scans on a regular basis."
Id. at 8.
Appellants argue error in the Examiner's obviousness rejection as
follows: "Because Shah scans less frequently when Shah identifies a
problem, Shah cannot be interpreted to teach the claimed increase in
execution frequency." App. Br. 19; see Reply Br. 6. Appellants also argue
error because Shah is non-analogous art. App. Br. 20-21; see Reply Br. 6-
7.
We are unpersuaded of error based on Appellants' argument that Shah
scans less frequently when Shah identifies a problem. See App. Br. 19.
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Appellants do not persuasively rebut that Shah discloses a "dynamic"
scanning interval that "increases when reachability events are rapidly
received and it decreases when the time between received events increases."
Shah ,r 5.
We also are unpersuaded of error based on Appellants' assertion that
Shah is non-analogous art. See App. Br. 20-21. Our reviewing court has set
forth a two-prong test for determining whether a prior art reference is
analogous: (1) whether the reference is from the same field of endeavor as
the claimed invention, and (2) if the reference is not within the same field of
endeavor, whether the reference is reasonably pertinent to the particular
problem with which the inventor is involved. In re Klein, 647 F.3d 1343
(Fed. Cir. 2011). The Examiner finds that Shah's disclosure of "scanning
techniques" is reasonably pertinent to Appellants' particular problem.
Ans. 32. Appellants do not provide sufficient persuasive argument or
evidence to convince us that either Shah does not disclose scanning
techniques or that scanning techniques would not have been at least
reasonably pertinent to Appellants' problem. Accordingly, even if Shah
were found not to be from Appellants' field of endeavor, we are persuaded
that Shah is analogous art because it meets at least the second prong of the
analogous art test. Klein, 647 F.3d at 1343.
In view of the foregoing, we are unpersuaded of error in the
Examiner's obviousness rejection of claim 1 and of claims 3---6, 8, 18, 19,
and 21, argued collectively. See App. Br. 18-21. Because Appellants do
not present arguments for claims 7 and 20, we also affirm the Examiner's
rejection of these claims.
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CONCLUSION
We affirm the Examiner's rejection of claims 1, 3-9, 11, and 13-21
under 35 U.S.C. § 101.
We affirm the Examiner's rejection of claim 3 under 35 U.S.C.
§ 112(a) as lacking enablement.
We reverse the Examiner's rejections of claims 1, 3-9, 11, and 13-21
under 35 U.S.C. §§ 112(a) and (b) as being indefinite and failing to comply
with the written description requirement.
We affirm the Examiner's rejections of claims 1, 3-8, 18, and 19-21
as obvious under 35 U.S.C. § 103.
DECISION
Because all pending claims stand rejected under at least one ground,
we affirm the Examiner's decision that claims 1, 3-9, 11, and 13-21 are
unpatentable.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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