Ex Parte Kim et al

Patent Trial and Appeal Board

Nov 21, 2018

13870165 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/870, 165 04/25/2013
144578 7590 11/26/2018
FAY SHARPE LLP / CONDUENT
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
FIRST NAMED INVENTOR
Hyun Joo Kim
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.
20120788US01-CNDT2981US01 1303
EXAMINER
LI,SIDNEY
ART UNIT PAPER NUMBER
2136
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
docketing@faysharpe.com
Conduent.PatentDocketing@conduent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HYUN JOO KIM and GUEYOUNG JUNG
Appeal2018-002762 1
Application 13/870,165 2
Technology Center 2100
Before MICHAEL W. KIM, KAL YANK. DESHPANDE, and
RAMA G. ELLURU, Administrative Patent Judges.
ELLURU, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-8, 10-19, and 21. We have
jurisdiction under § 6(b ).
We AFFIRM.
1 We reference the Specification ("Spec.," filed Apr. 25, 2013), Appeal Brief
("App. Br.," filed Aug. 29, 2017), and Reply Brief ("Reply Br.," filed Jan.
16, 2018), as well as the Examiner's Answer ("Ans.," mailed Nov. 15, 2017)
and Final Office Action ("Final Act.," mailed Mar. 31, 2017).
2 According to the Appeal Brief, the real party in interest is CONDUENT
BUSINESS SERVICES, LLC. Appeal Br. 1.
Appeal2018-002762
Application 13/870,165
SUBJECT MATTER ON APPEAL
The invention "is directed to the data management arts, data storage
arts, data analytics arts, cloud computing arts and the like." Spec. ,r 1. More
specifically, the invention contemplates "a system and method ... for
autonomic data placement and movement for increasing big data based on
the priority of data and various costs." Spec. ,r 16.
Claims 1, 11, and 18 are the independent claims on appeal.
Independent claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for autonomic data storage and movement,
comprising: calculating at least one cost associated with received
data; responsive to at least one calculated cost, determining a
processing type associated with the received data;
classifying the received data as one of a set of hierarchical
storage classes in accordance with the determined processing
type;
identifying a storage location associated with the one of
the set of hierarchical storage classes in which the received data
was classified; and
storing the received data in the identified storage location,
wherein at least one of the calculating, classifying, identifying,
and storing is performed with a computer processor.
App. Br. 53 (Claims Appendix).
REJECTION
Claims 1-8, 10-19, and 21 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 2-3.
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Application 13/870,165
ANALYSIS
Claims 1---8, 10---19, and 21 rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter
Appellants argue claims 1-8, 10-19, and 21 as a group. 3
App. Br. 11-26; Reply Br. 3-12. \Ve select independent claim 1 as
representative. The remaining claims of the group stand or faH with
independent claim L 37 C.F.R. § 4I.37(c)(l)(iv).
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 provided a two-step
framework. Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355
(2014). The first step considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea. Id. ( citing Mayo, 132 S. Ct.
at 1296-97). If so, the second step then considers whether the claim recites
an inventive concept-an element or combination of elements sufficient to
ensure the claim amounts to significantly more than the abstract idea and
transforms the nature of the claim into a patent-eligible application. Id.
(citing Mayo, 132 S. Ct. at 1294, 1297-98).
In determining that independent claim 1 is directed to an abstract idea,
the Examiner finds that claim 1 is directed to a method consisting of the
steps "estimating a storing cost of data, estimating a processing cost of the
data, determining [sic] processing type for the data, classifying the data,
3 Though Appellants argue that Examiner failed to analyze each dependent
claim separately, we are unpersuaded that these claims require separate
analyses. App. Br. 12, 14. Appellants did not provide any arguments for
dependent claims 18 and 21 that differed from those made for claim 1.
Compare App. Br. 1-21, with App. Br. 26-36, and App. Br. 40-50.
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Application 13/870,165
identifying a storage location, and storing the data." Ans. 3; Final Act. 3.
The Examiner also finds that "[t]he recited elements in the claim, 'a data
analytics platform,' 'a cost calculator,' 'a plurality of hierarchical storage
locations,' 'a priority calculator,' 'memory which stores instructions,' and 'a
processor' are generic computer elements." Final Act. 4. The Examiner
determines that "[i]nstructing one to 'apply' an abstract idea and reciting no
more than generic computer elements performing generic computer tasks
does not make an abstract idea patent eligible." Ans. 4. The Examiner
further determines that nothing in claim 1, except for its reciting a generic
computer to implement the steps, precludes a person from performing the
claim's steps either mentally or with a pen and paper. Final Act. 3--4;
Ans. 3.
Under the first step of the Alice analysis, Appellants argue that the
claims are not directed to an abstract idea, because they claim "a limited and
specific apparatus or method for achieving the end result." App. Br. 13. In
support, Appellants cite Diamond v. Diehr and argue that the judicial
exception applies to prevent patenting claims that abstractly cover the results
where it matters not by what process or machine the result is accomplished;
in other words, whether the claims are directed to an effect or an end result
rather than the process itself. Id. (citing Diamond v. Diehr, 450 U.S. 175
(1981)). We are not sufficiently persuaded by Appellants' argument.
In Diehr, the Supreme Court did not discern whether the patentee was
claiming the process incorporating the mathematical formula or the product
created by that process, as urged by Appellants. Rather, the Supreme Court
focused on whether the invention as a whole-irrespective of its using the
mathematical formula-accomplished something that one could not
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Application 13/870,165
otherwise accomplish simply by applying the mathematical formula. Diehr,
450 U.S. at 187 ("Obviously, one does not need a 'computer' to cure natural
or synthetic rubber, but if the computer use incorporated in the process
patent significantly lessens the possibility of 'overcuring' or 'undercuring,'
the process as a whole does not thereby become unpatentable subject
matter.") ( emphasis added).
Here, as the Examiner found, the claimed steps include "estimating a
storing cost of data, estimating a processing cost of the data, determining
[sic] processing type for the data, classifying the data, identifying a storage
location, and storing the data." Ans. 3. The Examiner further found that
"[ c ]onceptually, the claim is not much different than a person, mentally or
with pen and paper" calculating and deciding where to store the data. Id.
So, unlike the patent at issue in Diehr, the current invention's use of the
computer does nothing more than make "estimating a storing cost of data,
estimating a processing cost of the data, determining [sic] processing type
for the data, classifying the data, identifying a storage location, and storing
the data." And, while these multiple calculations "may be better suited for
use with a computer technology," (Reply Br. 6), we agree with the Examiner
that one can nevertheless accomplish these calculations mentally or using
pen and paper. See Ans. 3.
Appellants further argue that the claims are not directed to an abstract
idea, because the complex process cited in the claims solve an extremely
technical problem "in the realm of data management and data storage
technology, and, in particular to autonomic storage and movement of data."
App. Br. 14. In this regard, Appellants cite Enfzsh v. Microsoft for its
holding valid a patent directed at an improvement to computer technology.
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Application 13/870,165
App. Br. 14 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016)). We are not persuaded by this argument.
The invention at issue in Enfish was directed at a wholly new type of
logical model for a computer database: a self-referential table that allowed
the computer to store many different types of data in a single table and index
that data by column and row information. See 822 F.3d at 1330-32. In
finding the claims "not directed to an abstract idea," but "to a specific
improvement to the way computers operate," the Federal Circuit noted that
"the claims are not simply directed to any form of storing tabular data, but
instead are specifically directed to a self-referential table for a computer
database." 822 F.3d at 1336-37 (emphasis in original).
Unlike the patent at issue in Enfish, we find the current invention is
not directed to any specific thing that improves data storage technology, but
is a general combination of calculations and determinations that one may or
may not perform using a computer. We agree with the Examiner that the
"multiple steps of estimating, determining, classifying, and identifying" can
be performed by "any type of computer elements." Ans. 7. We, therefore,
conclude Appellants' invention is directed to a judicial exception, an abstract
idea, and tum next to the second step of the Alice analysis.
Under the second step of the Alice analysis, Appellants argue that
even were we to find the invention at issue directed to an abstract idea, the
claims nevertheless "recite features that make them amount to significantly
more than an abstract idea."4 Appeal Br. 16. In support of this argument,
4 Appellants also argue that the claims "act to narrow, confine, and
otherwise tie down the claim so as not to cover the general allegedly abstract
idea of just calculating and deciding where data is being stored."
App. Br. 17. In so arguing, Appellants cite Tuxis Techs., LLC v.
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Appellants cite Example 36 of the PTO's December 15, 2016 claim set, and
notes the PTO's explanation for the claim's eligibility. Id. at 15-16.
The PTO's rationale for finding Example 36 directed to patent eligible
subject matter is not applicable to Appellants' alleged invention. Unlike the
invention at issue, the PTO explained that for Example 36, "at the time of
this invention, using a high resolution camera array with overlapping views
to track items of inventory was not [sic] well understood, routine,
conventional activity to those in the field of inventory control." USPTO,
Subject Matter Eligibility Examples: Business Methods 16 (Dec. 2016).
Here, we are unpersuaded that the alleged invention does anything more
than arrange generic abstract ideas in a routine way, and it employs generic
computer components to accomplish the claimed steps. See Ans. 9. Merely
implementing these abstract steps using a processor or a computer is a
routine implementation of calculations by "generic technical components,"
and renders the invention short an inventive concept. See Bascom Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir.
2016).
Because we do not find Appellants' invention to include an inventive
concept under the second step of Alice, we affirm the Examiner's rejection
Amazon.com, Inc. No. 13-cv-1771 RGA, 2014 WL 4382446 (D. Del.
Sept. 3, 2014). However, we agree with the Board's previous holding in Ex
Parte Raikula that "[Tuxis] is not controlling law and does not have legal
weight commensurate with guidance from the Federal Circuit .... 'While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility."' 2017-
002352, 2018 WL 3586196 at *5 (P.T.A.B. July 10, 2018) (citingAriosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
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Application 13/870,165
of claims 1-8, 10-19, and 21 as directed to patent-ineligible subject matter
under 35 U.S.C. § 101.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner's determination that independent claim 1 is patent ineligible.
DECISION
The Examiner's decision to reject claims 1-8, 10-19, and 21 under
35 U.S.C. § 101 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). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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