Ex Parte Laredo et al

Patent Trials and Appeals Board

May 28, 2019

14198780 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/198,780 03/06/2014
35526 7590 05/30/2019
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 190809
DALLAS, TX 75219
FIRST NAMED INVENTOR
Jim A. Laredo
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.
YOR920130811US1 6609
EXAMINER
ALLEN, AKIBA KANELLE
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM A. LAREDO, ARJUN NATARAJAN,
and MAJA VUKOVIC1
Appeal 2018-00297 6
Application 14/198,780
Technology Center 3600
Before CAROLYN D. THOMAS, JAMES B. ARPIN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-3 and 6-18 (see Claims Appendix).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to bundling application
programming interfaces (see Abstract).
1 Appellants name International Business Machines Corporation as the real
party in interest (App. Br. 2).
Appeal 2018-00297 6
Application 14/198,780
Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A computer-implemented method for bundling
application programming interfaces, the computer-implemented
method comprising:
merging, by a computer, dependent application
programming interfaces with corresponding application
programming interfaces within a set of application
programming interfaces and with corresponding composite
application programming interfaces within a set of composite
application programming interfaces consumed by a selected
cluster of application programming interface consumers;
verifying, by the computer, interoperability within
the set of application programming interfaces and their
corresponding dependent application programming interfaces
based on a first set of application programming interface
method signatures that define inputs and outputs for methods
associated with the set of application programming interfaces
and their corresponding dependent application programming
interfaces and terms of service features;
verifying, by the computer, interoperability within
the set of composite application programming interfaces and
their corresponding dependent application programming
interfaces based on a second set of application programming
interface method signatures that define inputs and outputs for
methods associated with the set of composite application
programming interfaces and their corresponding dependent
application programming interfaces and the terms of service
features;
generating, by the computer, a set of application
programming interface bundles by combining related
application programming interfaces within the set of application
programming interfaces and their corresponding dependent
application programming interfaces with related composite
application programming interfaces within the set of composite
application programming interfaces and their corresponding
dependent application programming interfaces based on
functional and non-functional properties of the related
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Appeal 2018-00297 6
Application 14/198,780
application programming interfaces and the related composite
application programming interfaces;
pruning, by the computer, the set of application
programming interface bundles based on a determined
application programming interface budget pattern that
corresponds to the selected cluster of application programming
interface consumers; and
pricing, by the computer, the pruned set of
application programming interface bundles based on an
application programming interface bundle pricing model.
Appellants appeal the following rejection2 :
Claims 1-3 and 6-18 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter (Final
Act. 2-3); and
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Rejection under§ 1 OJ
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
2 The Examiner withdrew the rejections under 35 U.S.C. § 103 (see Ans. 3).
3
Appeal 2018-00297 6
Application 14/198,780
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with the framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk."). For example, concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594-95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63,
69 (1972)).
Recently, the USPTO published revised guidance on the application
of 35 U.S.C. § 101. USPTO's 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance").
Under the Revised Guidance "Step 2A," the office first looks to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). Revised
Guidance, 84 Fed. Reg. at 51-52, 55.
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Appeal 2018-00297 6
Application 14/198,780
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance "Step 2B") look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance, 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 1, and similarly, system
claim 14 and computer readable storage medium claim 16, 3 the Examiner
determines that the claims are directed to "mathematical concepts such as
mathematical relationships and calculations, and specifically organizing and
manipulating information through mathematical correlations" (Final Act. 2).
Pursuant to the Revised Guidance, we disagree with the Examiner.
Appellants' Specification discloses:
Illustrative embodiments may cluster application programming
interfaces and composite application programming interfaces by
using consumption data regarding the application programming
interfaces and composite application programming interfaces.
For example, illustrative embodiments may generate a vector
corresponding to each application programming interface and
composite application programming interface as input for
3 Pending claims 1-3 and 6-15 are directed to enumerated categories of
statutory subject matter. MPEP § 2106.03; see Revised Guidance, 84 Fed.
Reg. at 53 ( discussing "Step l" of the eligibility analysis); but see infra
note 4 ( discussing pending claims 16-18).
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Appeal 2018-00297 6
Application 14/198,780
clustering of the application programming interfaces and
composite application programming interfaces.
Spec. ,i 60.
Illustrative embodiments may then compute similarity of or
distance between the generated vectors corresponding to the
different application programming interfaces and composite
application programming interfaces. Illustrative embodiments
may apply a k-means clustering algorithm given a set of
numeric points in a dimensional space d and an integer k.
Illustrative embodiments use the k-means clustering algorithm
to generate k or fewer clusters as follow: 1) assign each vector
to a cluster at random; 2) repeat process until clusters are stable
(i.e., no new clusters are created); 3) compute a centroid for
each cluster; and 4) reassign each vector to a nearest centroid.
Jd.iJ61.
However, because claim 1 may use mathematical relationships is not
sufficient to determine the claim "falls within the subject matter groupings
of abstract ideas enumerated" in the Revised Guidance. Revised Guidance, ,
84 Fed. Reg. at 54 (Section 111 (A)(l) (Prong One: Evaluate Whether the
Claim Recites a Judicial Exception)). Particularly, although some of the
limitations may be based on mathematical concepts, we note that the specific
mathematical concepts are not recited in the claim. lJnder the Revised
Guidance, the claims do not recite a mathematica1 concept S'ee, e.g.,
Subject Matter Eligibility Examples: _Abstract Ideas, at 7 (Jan. 7, 2019)
(discussing Example 38 and noting that "[t]he claim does not recite a
mathematical relationship, formula, or calculation. \Vhik some of the
limitations may be based on mathematical concepts, the mathematical
concepts are not recited in the claims.").
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Appeal 2018-00297 6
Application 14/198,780
Nor has the Examiner determined that the claim recites certain
methods of organizing human activity or mental processes (see Final Act. 2-
3). While building application programming interfaces, i.e., a set of
routines, protocols, and tools for building software applications, generally
can be performed by a hmnan, the claims here are directed to a specific
implementation including the steps of merging dependent application
programming interfaces with corresponding interfaces, verifying
interoperability within the set of application programming interfaces and
their c01Tesponding dependent application programming interfaces based on
signatures, and generating a set of application programming bundles based
on functional and non-functional properties. These are not steps that can
practically be performed mentally. Nor do we see how the claimed
invention recites organizing human activity. For example, the claims do not
include fundamental economic principles or practices, commercial or legal
interactions, rnanaging personal behavior or relationships or interactions
betvveen people. As such, the claims do not recite a mental process nor a
method of organizing human activity.
Therefore, the Examiner has not shown that claim 1 recites an abstract
idea under Step 2A, Prong 1. As such, this ends our § 101 analysis.
Accordingly, we reverse the Examiner's rejection of claims 1-3 and
6-18 under 35 U.S.C. § 101.
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Appeal 2018-00297 6
Application 14/198,780
DECISI0N4
We reverse the Examiner's§ 101 rejection.
REVERSED
4 In the event of further prosecution, we leave it to the Examiner to consider
if the computer program product claim, claim 16, should be rejected under
35 U.S.C. § 101 because the ordinary and customary meaning of "computer
readable storage medium" to a person of ordinary skill in the art is broad
enough to encompass both non-transitory and transitory media. Signals are
not patentable eligible subject matter under§ 101. In re Nuijten, 500 F.3d
1346, 1357 (Fed. Cir. 2007). See also MPEP § 2106(1) (8th ed. Rev. 9 Aug.
2012) andExparteMewherter, 107USPQ2d 1857 (PTAB 2013)
(precedential).
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