Ex Parte Jackson

Patent Trial and Appeal Board

Mar 29, 2017

11668564 (P.T.A.B. Mar. 29, 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.
11/668,564 01/30/2007 James E. Jackson AU920060001US1 4082
45092 7590 03/31/2017
HOFFMAN WARNTOK T T C EXAMINER
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STARKS, WILBERT L
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2122
NOTIFICATION DATE DELIVERY MODE
03/31/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES E. JACKSON
Appeal 2016-005167
Application 11/668,5641
Technology Center 2100
Before JASON V. MORGAN, CATHERINE SHIANG, and
SHARON FENICK, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
1 Appellant identifies International Business Machines Corporation as the
real party in interest. App. Br. 1. This appeal is related to Appeal No. 2011-
011444, decided May 5, 2014, which Appellant did not identify as being
related. App. Br. 2. We remind Appellant of the duty to identify
all other prior and pending appeals, interferences, trials before
the Board, or judicial proceedings . . . [that] involve an
application or patent owned by the appellant or assignee, are
known to appellant, the appellant’s legal representative, or
assignee, and may be related to, directly affect or be directly
affected by or have a bearing on the Board’s decision in the
pending appeal.
37C.F.R. §41.37(c)(ii) (2014).
Appeal 2016-005167
Application 11/668,564
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—6 and 8—25. Claim 7 is canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
Invention
Appellant invented “a method, system, and program product for
creating and/or using unified dynamic information systems that integrate
human process data and, optionally, technology component data.” Abstract.
Exemplary Claim
Claim 1, reproduced below with key limitations emphasized, is
exemplary':
1. A method for integrating human process data and technology
component data in a unified dynamic information system
(UDIS), the method comprising:
embedding a unifying metasystem in a dynamic
information system (DIS) using a computer system processing
unit, wherein the DIS is stored in a memory of the computer
system and contains technology component metadata;
linking human process metadata with the technology
component metadata in the unifying metasystem using the
computer system processing unit and a metadata linking system
stored in the memory of the computer system; and
employing the metasystem to carry out a task related to the
UDIS.
Rejection
The Examiner rejects claims 1—6 and 8—25 under 35 U.S.C. § 102(b)
as being anticipated by Thanathip Sum-im, Economic Dispatch by Ant
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Application 11/668,564
Colony Search Algorithm, Proceedings of the 2004 IEEE Conf. on
Cybernetics and Intelligent Systems, Singapore, 416—21 (2004) (“Sum-im”).
Issue'. Do the Examiner’s findings show Sum-im discloses “linking human
process metadata with the technology component metadata in the unifying
metasystem using the computer system processing unit and a metadata
linking system stored in the memory of the computer system,” as recited in
claim 1?
Sum-im’s discloses a power system having N units constrained such
that—in attempting to minimize the total fuel cost at thermal power plants
(i.e., the economic dispatch problem)—the total output generation of the N
units
must equal the sum of the total power demand (Pd) and the total real power
loss in system transmission (PL). Sum-im 417, eq. 2. In rejecting claim 1,
the Examiner finds Sum-im’s equation and related disclosure anticipates the
claimed linking of human process metadata (the total power demand) with
the technology component metadata (the total real power loss). Final Act.
3^4 (citing Sum-im 417, eq. 2); Ans. 24.
Appellant contends the Examiner erred because merely using an
equation to note the existence of a relationship between total power demand
and total real power loss in system transmission falls short of disclosing the
linking of human process metadata with technology component metadata in
a unifying metasystem. See App. Br. 8—9; Reply Br. 6. We agree with
Appellant that the Examiner erred. The equation on which Appellant relies
ANALYSIS
N
i=1
3
Appeal 2016-005167
Application 11/668,564
N
YJPi-PD-PL = 0
i=1
merely represents a power balance constraint for power systems (i.e., power
generated in excess of demand is lost).
The Examiner finds that Sum-im’s total real power demand (Pd)
discloses human process metadata. Ans. 3^4 (citing Sum-im 417; Spec.
133). However, the Examiner does not cite to persuasive evidence that
Sum-im’s total real power demand necessarily relates to a human process
such as “data related to the use, operation, maintenance and/or management
of the system” (Spec. 133). Sum-im’s total real power demand is, in fact,
part of IEEE 30 bus test system, with the demand determined by a daily load
curve rather than by human processes. See Sum-im 416, 420—21.
Because the Examiner’s findings do not show that Sum-im’s total real
power demand discloses human process metadata, such findings do not
show that Sum-im’s power balance constraint equation discloses “linking
human process metadata with the technology component metadata in the
unifying metasystem using the computer system processing unit and a
metadata linking system stored in the memory of the computer system,” as
recited in claim 1.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 102(b)
rejection of claim 1, and claims 2—6 and 8—25, which contain similar
recitations.
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Appeal 2016-005167
Application 11/668,564
NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
of claims 1—6 and 8—25 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
Claim 1, which is directed to a method for integrating human process
data and technology component data in a unified dynamic information
system, is representative. The claimed method includes steps directed to
embedding a unifying metasystem in a dynamic information system, linking
human process metadata with technology component metadata in the
unifying system, and employing the metasystem to carry out tasks related to
the unified dynamic information system.
To determine whether claims are patent eligible under § 101,
we apply the Supreme Court’s two-step test articulated in Alice
Corp. Party v. CLS Bank International, 134 S. Ct. 2347 (2014).
First, we determine whether the claims are directed to a patent-
ineligible concept: laws of nature, natural phenomena, and
abstract ideas. Id. at 2354—55. If so, we then proceed to the
second step and “examine the elements of the claim to determine
whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible
application.” Id. at 2357 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72—73, 79—80 (2012)). The
Supreme Court has explained that “the mere recitation of a
generic computer cannot transform a patent ineligible abstract
idea into a patent-eligible invention.” Alice, 134 S. Ct. at 2358.
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Application 11/668,564
First we note that the claimed steps, given a reasonably broad
interpretation in light of the Specification, encompass human-driven
diagramming of a dynamic information system (an abstract idea) on a
computer system within that dynamic information system and describing
human process metadata as part of the diagram. An example of a type of
diagram that may be developed as part of such a system is illustrated—albeit
without human process metadata being linked (e.g., diagramed)—is the
abstract viable system model. See claim 5; Spec. Fig. 1, || 10—11, 23—24.
Next, we recognize that the method is limited to applications that
involve a computer system. In particular, the dynamic information system is
stored in a memory of a computer system and the linking of human process
metadata with technology component metadata is performed using the
computer system processing unit and a metadata linking system stored in the
memory of the computer system. Further, the metasystem is employed to
carry out a task related to the unified dynamic information system.
Nonetheless, the use of a computer system in the claimed manner
encompasses merely using the computer system as a diagram tool for
human-driven diagramming. That is, the claim encompasses a diagram
stored in a computer memory, where the diagram includes a component,
such as a diagram arrow, to link human process metadata and technology
component metadata. See Spec. Fig. 6, ]Hf 34, 42. Moreover, the employing
step encompasses merely rendering a diagram for use in a task related to the
unified dynamic information system. See claims 4, 5. “[M]ere recitation of
a generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 134 S. Ct. at 2358. A method broadly
directed to diagramming processes and system, even when the processes and
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Application 11/668,564
systems involve a computer on which the diagram is rendered, is not
directed to anything significantly more than a patent-ineligible abstract idea,
and thus the invention of claim 1 is directed to patent-ineligible subject
matter.
For these reasons, we newly reject claim 1 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Claims 2—6 and 8—25 are
similarly deficient. That is, their limitations fail to transform the abstract
idea of diagramming processes in a system into patent-eligible matter.
Therefore, we also newly reject claims 2—6 and 8—25 under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
DECISION
We reverse the Examiner’s decision rejecting claims 1—6 and 8—25.
We newly reject claims 1—6 and 8—25 under 35 U.S.C. § 101.
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new
ground 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 prosecution
will be remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an amendment or
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Application 11/668,564
new Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of
rejection designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
The request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which
rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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.
§ 41.50(f).
REVERSED
37 C.F.R, $ 41.50(b)
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