Ex Parte Lew et al

Patent Trial and Appeal Board

Aug 24, 2017

11853576 (P.T.A.B. Aug. 24, 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.
11/853,576 09/11/2007 Melvin Lew GOLDl 1-00040 3277
132787 7590
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
EXAMINER
ROJAS, HAJIME S
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
j ohn. maxin @ gs. com
patents @ munckwilson. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MELVIN LEW, SYED HUSAIN,
PERRY FOTINATOS, and JOHN WOSCHINKO
Appeal 2016-007788
Application 11/853,576
Technology Center 3600
Before HUNG H. BUI, JOSEPH P. LENTIVECH, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-007788
Application 11/853,576
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1,7, 10, 18, 19, and 25—29, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to “[reconciling corresponding data
reported by multiple data sources and pertaining to hardware, software, and
telecommunications assets distributed throughout an organization.”
(Abstract.) Claim 1, reproduced below, exemplifies the subject matter on
appeal:
1. A processor-implemented method for reconciling data within
a global inventory warehouse that maintains a global inventory
of all or substantially all of hardware, software, and
telecommunications assets distributed throughout an
organization, comprising:
receiving data from the global inventory warehouse and
maintained by a first data source considered an authoritative data
source, the data pertaining to a portion of the hardware, software,
and telecommunications assets distributed throughout the
organization;
receiving second data from the global inventory warehouse
and maintained by a second data source, the second data
pertaining to the portion of the hardware, software, and
telecommunications assets distributed throughout the
organization;
1 Appellants identify Goldman, Sachs & Co. as the real party in interest.
(See App. Br. 2.)
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comparing, via a processor, the first data maintained by the
first data source to the second data maintained by the second data
source effective to determine at least one difference between the
first data maintained by the first data source and the second data
maintained by the second data source;
automatically reconciling the first data source and the second
data source by altering the second data in the second data source
to match the first data in the first data source considered the
authoritative data source;
generating exception data in response to the determined at
least one difference between the first data maintained by the first
data source and the second data maintained by the second data
source;
assigning at least one importance level to the generated
exception data, the importance level reflecting a priority of the
generated exception data relative to other exceptions; and
varying the at least one importance level, based at least in
part, upon dynamically changing conditions of the generated
exception data.
THE REJECTIONS
1. Claims 1,7, 10, 18, 19, and 25—29 stand rejected under 35
U.S.C. § 101 because “[t]he claimed invention is directed to non-statutory
subject matter because the claims as a whole, considering all claim elements
both individually and in combination, do not amount to significantly more
than an abstract idea.” (See Final Act. 2 4.)
2. Claims 1,7, 10, 18, 19, and 25—29 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Apte et al. (US 2009/0019089 Al;
published Jan. 15, 2009) in view of Official Notice. (See Final Act. 5—8.)
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ANALYSIS
Section 101
The Examiner finds “the claims are directed to the abstract idea of
reconciling inventory, which is an example of a fundamental economic
practice.” (Final Act. 3.) The Examiner further finds “[t]he additional
elements or combination of elements . . . amount to no more than: (i) mere
instructions to implement the idea on a computer, and/or (ii) recitation of
generic computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional activities
previously known” and that, accordingly, “[vjiewed as a whole, these
additional claim elements do not provide meaningful limitations to transform
the abstract idea into a patent eligible application of the abstract idea.” (Id.)
Regarding the “abstract idea” portion of the Mayo!Alice analysis,
Appellants argue that “[w]hile Claim 1 relates to reconciling inventory,
Claim 1 does not claim the mere concept of reconciling inventory,” as the
claim “recites a specific implementation that performs specific operations
using specific data related to specific hardware, software, and
telecommunications assets in an organization,” operations that “represent
more than just an abstract idea.” (App. Br. 11.) We are not persuaded.
Claim 1, for example, is directed a method that (a) receives data from an
authoritative data source; (b) receives data from a second data source; (c)
compares the data; (d) alters the data from the second source to match the
authoritative source; (e) generates exception data; (f) assigns an importance
level to the exception data; and (f) varies the importance level based upon
dynamically changing conditions (e.g., the age) of the exception data.
Receiving, comparing, and generating data are abstract ideas. See, e.g.,
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Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(claims directed to collection, manipulation, and display of data);
Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (customizing information and presenting it to users
based on particular characteristics); Content Extraction and Transmission
LLC v. Wells Fargo Bank, National Ass ’n, 776 F.3d 1343, 1347 (Fed. Cir.
2014) (“collecting data,. . . recognizing certain data within the collected
data set, and . . . storing that recognized data in a memory”). That these
claims are directed to an abstract idea is confirmed by the fact that the
claimed system of identifying errors in inventory and assigning levels of
importance to the errors is of the type that could be performed manually.
See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed.
Cir. 2011) (“[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.”).
Regarding the “inventive step” portion of the Mayo!Alice analysis,
Appellants argue that “[w]hen looking at the limitations of Claim 1 as an
ordered combination, it is clear that Claim 1 as a whole amounts to
significantly more than any alleged abstract idea,” that “Claim 1
meaningfully limits the claimed invention in various ways,” and that “[t]he
elements of Claim 1 are significantly more than simply routine or
fundamental functions.” (App. Br. 15.) We do not agree. Individually, the
elements are nothing more than conventional steps of receiving, comparing,
and altering data, and the ordered combination is simply a computerized
system in which those conventional steps implement the abstract idea.
Claims such as these, which recite a business process executed on a
conventional computer for speed or convenience, are not eligible for
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patenting under current law. See, e.g., Intellectual Ventures ILLC v. Capital
One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“[MJerely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.”).
Appellants separately argue claim 10, which adds to claim 1 “altering
or implementing a workflow process to avoid exceptions of a same type as
the generated exception.” (App. Br. 17—18.) We find that “altering or
implementing a workflow process” is simply another abstract idea that is
insufficient to impart patent eligibility.
Because we agree that Appellants claim an “abstract idea” and that
abstract idea is not saved by an “inventive concept,” we sustain the rejection
of claims 1,7, 10, 18, 19, and 25—29 under 35 U.S.C. § 101.
Section 103: Claims 1,18, and 26-29
Regarding claim 1, Appellants assert that “[njothing in [paragraph 76]
of Apte discloses or suggests assigning at least one importance level to
generated exception data, where the importance level reflects a priority of
the generated exception data relative to other exceptions” and that “[a]
system that merely allows a user to focus on important discrepancies does
not disclose or suggest anything about a system that actually determines
which discrepancies are the most important.” (App. Br. 20.)
The Examiner responds that the subject limitation “is interpreted as
some exceptions being more important than others, [and] does not require a
system performing a step of ‘determining’ which discrepancies are most
important.” (Ans. 9.) The Examiner further finds that “[g]iven the overall
system disclosed by Apte, a person having ordinary skill in the art at the
time of the invention would conclude that the disclosure of [0076] of
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allowing a user to focus on those discrepancies that are most important, is
equivalent to the claimed limitation,” and that “[specifically, a user would
not be able to focus on discrepancies that are the most important (i.e.,
discrepancies with a priority level relative to other discrepancies) if these
discrepancies were not identified or assigned as most important.” (Ans. 10.)
We agree with the Examiner. Apte describes segregating
discrepancies into those that “may need to be reviewed” and “others [that]
can be easily corrected without human intervention,” which we find
sufficient to teach “assigning at least one importance level to the generated
exception data, the importance level reflecting a priority of the generated
exception data relative to other exceptions.” The exceptions that need to be
reviewed are a higher “priority” than those that do not need to be reviewed.
Appellants also argue with respect to claim 1 that the Examiner
improperly relies on Official Notice for the concept of varying the
importance level based on dynamically changing conditions of the generated
exception data. (App. Br. 21—22.) Specifically, Appellants assert that the
Examiner “provides no supporting documentation to support the assertion
that these features are ‘old and well known,’” that “[n]one of the prior art
references of record discloses or suggests these features” and that “these
features are not ‘capable of instant and unquestionable demonstration as
being well known.’” (App. Br. 21, citing MPEP § 2144.03.) We do not
agree. As described in the Specification, the claimed feature corresponds to
increasing the importance level according to age. (See Spec. 1127.) We
agree with the Examiner that prioritizing older items, such as the “help desk”
tickets identified by the Examiner, is well known. Appellants’ focus on the
specific help desk context of the Examiner’s example is too narrow; the
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Examiner’s point, which is well taken, is that the more general concept of
prioritizing older items over newer items is common.
Because we find Appellants’ arguments unpersuasive, we sustain the
Section 103 rejections of claims 1 and 18 and, because claims 10 and 25—29
are not argued separately, we sustain those Section 103 rejections as well.
Section 103: Claims 7 and 25
Claim 7 recites that “the global inventory warehouse is configured to
grade the first data or the second data, the grade being based, at least in part,
on whether the first data or the second data has been reconciled or whether
the first data or the second data has been deemed authoritative.” Claim 25 is
similar.
The Examiner cites Apte’s “Figure 7, wherein a symbol to the left of
TND01’ is shown, indicating that, similar to [Appellants’] Specification,
data has been received from an authoritative source and has not yet been
reconciled.” (Ans. 12.) Appellants argue “Figure 7 merely shows that
Discovery location code ‘INDOl ’ and ARM location code ‘LOCI 100051’
differ from each other and that, based on a rule, the ARM location code will
be updated with the Discovery location code.” (Reply Br. 14.) Appellants
further argue “the ‘!’ symbol shown in Figure 7 next to the ‘FSTDOl’ is not a
grade of either the Discovery location code ‘IND01 ’ or the ARM location
code ‘LOCI 100051,’” but instead “is merely a warning symbol that is
associated with the condition that the ARM location code and the Discovery
location code differ in value.” (Id.)
We agree with the Examiner. Paragraph 52 of Apte describes Figure
7, explaining that it shows a “sample exception listing which lists the
attributes as stored in the asset repository compared to how they exist in the
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discovery data.” We see no reason why identifying the data as unreconciled
does not constitute “grading” it “based, at least in part, on whether [it] has
been reconciled.” Appellants do not offer a construction of “grade” that
would avoid what is described and shown in Apte.
The Section 103 rejections of claims 7 and 25 are sustained.
Section 103: Claim 10
Claim 10 depends from claim 1, and adds “altering or implementing a
workflow process to avoid exceptions of a same type as the generated
exception.”
The Examiner cites paragraph 55 of Apte and further states that “the
limitation ‘to avoid exceptions of a same type as the generated exception’ is
regarded as intended use language.” (Ans. 13.)
We do not agree that “to avoid exceptions of a same type as the
generated exception” is a non-limiting “intended use.” Instead, it is
functional language defining the workflow that is altered or amended as one
that prevents exceptions from occurring. (See, e.g., Spec. 1131.) Giving
meaning to that claim language, we do not agree with the Examiner that the
claimed subject matter is taught or suggested in Apte. Paragraph 55
describes rules for handling exceptions that arise (“the user can specify
actions to take place for an exception”) but not rules or workflows for
avoiding exceptions in the first place. For this reason, we decline to sustain
the Section 103 rejection of claim 10.
Section 103: Claim 19
Claim 18 is directed to a system for reconciling data collected by a
first data source and corresponding data collected by a second data source.
Claim 19 adds that “the first data source comprises a discovery tool to
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automatically scan Internet Protocol (IP) addresses to identify each of the
multiple hardware assets within the organization” and “the second data
source comprises a software agent to identify each of the multiple hardware
assets within the organization.” The Examiner finds this subject matter to be
“intended use.” (See Final Act. 7—8.) We do not agree that the discovery
tool and software agent are intended uses. Beyond that, the Examiner cites
paragraphs 44, 64, and 72 of Apte. (Id.) Paragraph 44 simply explains that
the asset information may include network addresses. Paragraph 64
describes how automatic reconciliation may be restricted, for example when
the IP address of the asset falls within a particular range. Paragraph 72
relates to an optional rule called “Asset Retirements: serial ID not in
discovery,” which “applies to those assets that are in the asset repository but
have not been discovered.” Because the Examiner fails to explain how these
passages teach or suggest the claimed discovery tool and software agent, we
decline to sustain the Section 103 rejection of claim 19.
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DECISION
The rejection of claims 1, 7, 10, 18, 19, and 25—29 under 35 U.S.C.
§ 101 is affirmed.
The rejection of claims 1,7, 18, and 25—29 under 35 U.S.C. § 103 is
affirmed.
The rejection of claims 10 and 19 under 35 U.S.C. § 103 is reversed.
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner 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).
AFFIRMED
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