Ex Parte Indukuru et al

Patent Trial and Appeal Board

Apr 30, 2018

12858497 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/858,497 08/18/2010 Venkat Rajeev Indukuru
139307 7590 05/01/2018
IBM CORPORATION (POU)
c/o MITCH HARRIS, ATTORNEY AT LAW, L.L.C.
P.O. Box 1269
ATHENS, GA 30603-1269
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.
AUS920100037US1 5997
EXAMINER
HENSON, MISCHITA L
ART UNIT PAPER NUMBER
2865
MAIL DATE DELIVERY MODE
05/01/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VENKAT RAJEEV INDUKURU
and ALEXANDER ERIK MERICAS
Appeal2017-006772
Application 12/858,497
Technology Center 2800
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1-7 and 10-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In our Opinion, we refer to the Specification filed August 18, 2010
("Spec."); the Non-Final Office Action mailed February 18, 2016 ("Non-
Final Act."); the Appeal Brief filed July 13, 2016 ("App. Br."); the
Examiner's Answer mailed January 26, 2017 ("Ans."); and the Reply Brief
filed March 22, 2017 ("Reply Br.").
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 4.
Appeal2017-006772
Application 12/858,497
The invention is related to performance measurements in processing
systems, in particular, a processor core having a saturating event counter.
Spec ,r 1. Performance monitoring can be implemented using counters that
count occurrences of performance-related events indicative of low
performance, high performance, or both. See id. ,r,r 2-3. According to the
Specification, a counter-based event monitoring approach typically requires
frequency monitoring of the performance counter count values so that
overflow of the counters and consequent wrap-around due to an occurrence
of a large number of performance events is not missed. Id. ,r 3. The
invention uses saturating counters to provide an indication of the relative
frequency of occurrence of performance-related events. Id. ,r 5.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of monitoring performance of a computer
system, the method comprising:
within a processor core of the computer system, detecting
events indicative of the performance of the computer system;
within the processor core, responsive to detecting
individual ones of the events, incrementing a saturating counter
circuit integrated within the processor core;
at first predetermined periods, updating a periodic
counter that times a second predetermined period, wherein the
second predetermined period has a duration greater than the
first predetermined period;
determining whether or not the periodic counter has
reached a count indicating the second predetermined period has
elapsed;
responsive to determining that no event has been detected
and that the periodic counter has reached the count indicating
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the second predetermined period has elapsed, decrementing the
saturating counter;
reading the saturating counter to obtain the count value;
and
computing a performance level of the processor from the
count value.
App. Br. 19 (Claims App.).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Floyd et al. ("Floyd") US 7,340,378 Bl
Cota-Robles et al. US 2008/0163254 Al
("Cota-Robles")
REJECTIONS
Mar. 4, 2008
July 3, 2008
The Examiner maintains the following rejections: (1) claims 1-7 and
10-20 under 35 U.S.C. § 101 as directed to non-statutory subject matter; and
(2) claims 1-7 and 10-20 under 35 U.S.C. § I03(a) over Cota-Robles in
view of Floyd. Non-Final Act. 5, 9.
OPINION
Rejection of claims under§ 1 OJ
A patent may be obtained for "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." Alice Corp. Pty. Ltd. v.
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CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014) (internal quotations and
citation omitted). The Supreme Court reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step "determine[ s] whether the claims at issue are directed to one of
those patent-ineligible concepts"-such as an abstract idea. Id. We
determine 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 itself is the abstract idea and merely invoke generic processes and
machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016).
The inquiry ends if the claims are not directed to an abstract idea. If
the inquiry proceeds to the second step, the elements of the claims are
considered "individually and 'as an ordered combination,' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355.
The first-stage inquiry looks at the "'focus' of the claims, their
'character as a who le,"' and, if the second stage is reached, the second stage
inquiry looks at what the claim elements add-whether they identify an
"inventive concept" in the application of the ineligible matter to which the
claim is directed. Elec. Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). Therefore, we look to: (1) whether the claims focus
on a specific means or method that improves the relevant technology, or (2)
are directed to a result or effect that itself is the abstract idea, in which the
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claims merely invoke generic processes and machinery. See Enfzsh, 822
F.3d at 1336.
Under the first step of the Alice/Mayo framework, the Examiner finds
that the claims amount to no more than mathematical concepts, which fall
within the "abstract idea" judicial exception to patentable subject matter.
Final Act. 6-7. The Examiner further finds that claim elements "a processor
core of the computer system," "memory," "control logic," "functional
elements," and "saturating counter" amount to no more than recitation of
generic computer structure. Id. at 8. According to the Examiner, "the
generic recitation [ of] circuits, hardware or otherwise, do[ es] not amount to
significantly more than the abstract idea if it does not amount to more than a
generic computer performing generic computer functions." Id. at 4. The
Examiner finds that the recitations to, e.g., a computer system or processor,
"merely amount to merely generally linking the use of the abstract idea to
the particular technological environment of computer technology." Id. at
4--5.
Appellants argue that claims 10 and 1 7 are directed to a processing
system and processor core having specific hardware features. App. Br. 8.
Appellants argue that claim 1 is directed to specific operation of a control
logic circuit and a saturating counter within a processor core. Id. at 9.
Appellants contend, therefore, that the claims are not directed to an abstract
idea, but instead are directed to improvements in computer technology. Id.
Nonetheless, according to Appellants, if the claims contain an abstract
idea, they are patentable because they recite elements that are not
mathematical algorithms or conventional business practices. Id. at 9.
Appellants contend that the claims are directed to circuits and a method of
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operation of those circuits. Id. at 10. Citing Enfish, Appellants argue that
the claims fall within the domain of chip architecture and, therefore, are not
directed to an abstract idea. Id. at 9.
We are unpersuaded by Appellants' arguments. Based on our
comparison of the pending claims to similar claims previously before our
reviewing court that were found to be directed to abstract ideas, we
determine that the claims are directed to an abstract idea
Appellants argue the claims as a group. App. Br. 8-11. We find no
meaningful distinction between the method and processing system/processor
core claims for the purpose of our analysis under Alice.
Claim 1 is drawn to a method of monitoring performance of a
computer system. App. Br. 19 (Claims App.). The claim recites the steps of
"detecting events . . . , " "incrementing a saturating counter . . . , " "updating a
periodic counter ... ," "determining whether or not the periodic counter has
reached a count ... ," " ... decrementing the saturating counter," "reading
the saturating counter ... ," and "computing a performance level
.... " Id. The invention describes the concept of generating, gathering, and
combining data with mathematical techniques. These steps are similar to
those in In re Grams, 888 F.2d 835 (Fed. Cir. 1989), in which conditions
were determined and parameters set. Like the claims in Grams, these steps
are, in essence, a mathematical algorithm representing a procedure for
solving a given type of mathematical problem. See Gottschalk v. Benson,
409 U.S. 63, 65 (1972).
The "realm of abstract ideas" includes "collecting information,
including when limited to particular content." Elec. Power Grp., 830 F3d at
1353. "[A]nalyzing information by steps people go through in their minds,
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or by mathematical algorithms, without more, ... [is] essentially mental
processes within the abstract-idea category." id. The claims in the instant
case manipulate data, but not in a non-abstract way. See Two-VVay lvfedia
Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1338 (Fed. Cir.
2017).
\Ve tum to the second step under A.lice, and consider the elements of
the claim, both individually and as an ordered combination, to assess
whether additional elements transfonn the nature of the claim into a patent-
eligible application of the abstract idea. Content Extraction & Transmission
LLC v. FVells Fargo Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "l\,ferely
reciting the use of a generic computer or adding the words 'apply it with a
computer' cannot convert a patent-ineligible abstract idea into a patent-
eligible invention." Two-rVay Jviedia, 874 F.3d at 1338 (quoting Alice, 134
S. Ct. at 2358). Saving a patent application at step two requires that an
inventive concept must be evident in the claims. RecogniCorp, LLC v.
Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Appellants contend that the claims are directed to a processing system
and processor core, and circuits and methods of operating circuits. App. Br.
8, 10. Viewing the claims as a whole, as we must, we find these elements
are no more than merely generic computer components performing generic
computer functions. As such, they do not establish that the claims are
directed to patentable subject matter. Alice, 134 S. Ct. 2359-60; see also
OIP Techs., Inc. v. Ama::.on.cmn, Inc., 788 F.3d 1359, 1364 (Fed. Cir.2015)
("Just as Diehr could not save the claims hLAlice, which were directed to
'implement[ing] the abstract idea of intennediated settlement on a generic
computer', ... it cannot save OJP's claims directed to implementing the
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abstract idea of price optimization on a generic computer'~) (internal citation
omitted).
Appellants' contention that the claims are directed to improvements in
computer technology is unpersuasive as well. The claims "comput[e] a
performance lever' (c1aim 1) or '"provide[] an indication of [the]
performance of the processor~' (claims 10 and 17). See A.pp. Br, 19, 21, 23
(Claims App.). These activities, however, do not improve the functioning of
a computer itself. S'ee Enjzsh, 822 F.3d at 1336. Appellants identify no
technological improvement It is well settled that arguments of counsel
cannot take the place of factually supported objective evidence. See, e.g., In
re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996); In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).
For the reasons above, we sustain the Examiner's rejection of claims
1-7 and 10-20 because the claimed subject matter is judicially excepted
from patent eligibility under § 101.
Rejection of claims under§ 103(a)
The Examiner rejects all pending claims as obvious over Cota-Robles
in view of Floyd, specifically interpreting Cota-Robles' event counter 170 as
the saturating counter of the claims. Non-Final Act. 9, 16, 23. Appellants'
sole challenge to the rejection is that the cited prior art does not teach a
saturating counter. App. Br. 12-13.
The Examiner finds that event counter 170 of Cota-Robles provides a
relative measure of event frequency. Non-Final Act. 9. The Examiner finds
that Appellants have not set forth any special definition of "saturating
counter." Ans. 5. The Examiner further finds that the broadest reasonable
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interpretation of "saturating counter" is "a counter that provides a relative
measure of event frequency." Id. The Examiner finds that the features on
which Appellants rely to distinguish the claimed saturating counter from
Cota-Robles' event counter 170 are not recited in the rejected claims, and,
thus, would improperly read limitations into the claims. Id. at 4--5.
While "saturating counter" is not explicitly defined in the
Specification, Appellants point to instances in the Specification where
properties of the saturating counter are identified. Reply Br. 10.
We determine the broadest reasonable interpretation of "saturating
counter" consistent with the Specification. In re Am. A cad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must be
read in light of the specification, as it would have been interpreted by one of
ordinary skill in the art at the time of the invention. Id. The Specification
clarifies that the saturating counter claimed saturates at a maximum value if
it receives more performance event signals than may be recording the count
value. Spec. ,r,r 19, 22. On this basis, we find that Cota-Robles does not
teach a saturating counter.
We reverse the Examiner's rejection of claims 1-7 and 10-20 as
obvious over Cota-Robles in view of Floyd.
DECISION
The Examiner's decision to reject claims 1-7 and 10-20 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).
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AFFIRMED
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