Ex Parte LIANG et al

Patent Trial and Appeal Board

Sep 11, 2018

13682308 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/682,308 11/20/2012 Lu LIANG
73109 7590 09/13/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CAM920120063US 1_8150-0239 2334
EXAMINER
PAULINO, LENIN
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
09/13/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LU LIANG, ZHI QIANG SUN, BRIAN C. SCHIMPF, and
YUHONGYIN
Appeal2017-011612 1
Application 13/682,308
Technology Center 2100
Before JOHNNY A. KUMAR, JENNIFER L. McKEOWN, and
CATHERINE SHIANG, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 12-25. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 The Appellants identify International Business Machines Corporation
(IBM) as the real party in interest.
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STATEMENT OF THE CASE
Appellants' disclosed and claimed invention is directed to a
"[s]oftware lifecycle management include[ing], searching, using a processor,
historical development data including prior development tasks for a software
system." Abstract.
Claim 12 is illustrative of the claimed invention and reads as follows:
12. A system for software lifecycle management,
compnsmg:
a processor programmed to initiate executable operations
compnsmg:
searching historical development data comprising prior
development tasks for a software system, wherein the searching
is performed according to a current development task for the
software system;
determining that the current development task has an
affinity with a selected prior development task implemented
within the software system; and
providing a recommendation for the current development
task based upon the selected prior development task.
THE REJECTIONS
The Examiner provisionally rejected claims 12-25 on the ground of
non-statutory obviousness-type double patenting as being unpatentable over
claims 1-11 of copending Application No. 14/023,549. Final Act. 7.
The Examiner rejected claims 12 and 23 under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 8-10.
The Examiner rejected claims 12, 15, 17, 19, 20, and 23 under
35 U.S.C. § I03(a) as unpatentable over Olson (US 2008/0141214 Al; June
12, 2008); and Garimella (US 2011/0161913 Al; June 30, 2011). Final Act.
11-16.
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The Examiner rejected claims 13, 14, 16, 18, 24, and 25 under 35
U.S.C. § I03(a) as unpatentable over Olson, Garimella, and Wagner (US
2005/0262482 Al; Nov. 24, 2005). Final Act. 15-19.
The Examiner rejected claims 21 and 22 under 35 U.S.C. § I03(a) as
unpatentable over Olson, Garimella, and Travison (US 2008/0222501 Al;
Sept. 11, 2008). Final Act. 19-20.
ANALYSIS
THE OBVIOUSNESS-TYPE DOUBLE PA TENTING REJECTION
Claims 12-25
Appellants present no arguments pertaining to the Examiner's
provisional obviousness-type double patenting rejection. See App. Br. 3,
fn. 1 (noting that the provisional obviousness-type double patent rejection is
not the subject of the appeal). Accordingly, we summarily sustain this
rejection.
THE REJECTION UNDER 35 U.S.C. 101
Claims 12 and 23
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 12 and 23 as directed to patent ineligible subject
matter.
The Examiner determines that claims 12 and 23 are directed to the
abstract idea without significantly more. Final Act. 8-9; Ans. 2-8.
Specifically, the Examiner explains that claims 12 and 23 are directed to an
idea of itself (Final Act. 8) and further elaborates that claims 12 and 23 are
directed to the abstract idea of "automat[ing] the process of providing
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recommendation to a developer by searching historical development data,
determining affinity between current development task and a selected prior
development task, and providing a recommendation based on the selected
prior development task." Ans. 7; see also Ans. 5-7 ( citing Accenture Global
Services, GMBH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir 2013)
as support). See also Final Act. 8-9 ( citing and relying on In re Maucorps,
609 F.2d 481,482,486 (CCPA 1979) and SmartGene v. Advanced
Biological Labs. SA, 555 F. App'x 950 (Fed. Cir. 2014)).
The Examiner further determines that
[T]he additional limitations that the searching, determining and
providing is implemented by a processor in a [ method] for
software lifecycle management but the mere recitation of "a
processor" is akin to adding the words "apply it" with a computer
in conjunction with the abstract idea. However, such limitations
are not enough to add significantly more to the [ method] for
searching, determining and providing. The steps describe
nothing more than a computer's basic function of searching,
determining and providing information and do not meaningfully
limit the performance of processor.
Final Act. 9.
Appellants argue that the Examiner's reliance on Accenture is
misplaced because claims 12 and 23 merely involves an abstract idea, but
are not directed to an abstract idea. Reply Br. 3; App. Br. 13-14.
Appellants allege that the Examiner erred in finding that the claimed
invention is directed to "'searching, determining, and providing
information."' App. Br. 13-14. According to Appellants, "[i]n this
instance, the claims certainly do more than 'simply instruct' one to
implement 'searching, determining and providing information' on a generic
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computer. Thus, the claims are not 'directed to' the Examiner's alleged
abstract idea." App. Br. 14.
Appellants further explain that
The Examiner's analysis fails in that it does not appreciate
that the claimed invention, as a whole, is directed to more than
11 generating tasks [based on] rules ... to be completed upon the
occurrence of an event. 11 In this instance, the claimed invention
contemplates finding a prior development task for a software
system based upon a search using a current development task in
the same software system. Once a prior development task is
found, a determination is made whether the prior development
task has an affinity with the current development task and a
recommendation is provided on that basis. Accordingly, the
claimed invention results in an improvement to the development
of software, which is a technical task necessarily rooted in
computer technology. Consequently, the Examiner cannot
properly assert that the facts of the present application are
sufficiently similar to the facts of Accenture Global Services so
as to rely upon the rationale provided by the Federal Circuit.
Reply Br. 3--4; App. Br. 14; see also App. Br. 12 (distinguishing Maurcorps
because the claimed invention is directed to the technological improvement,
"i.e., the creation of software.").
We find Appellants' arguments unpersuasive. Notably, Appellants do
not identify improvements to the functioning of the computer itself, or
meaningful limitations that do more than generally linking the use of the
abstract idea to a particular technological environment. See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)(finding the claims
are not directed to an abstract idea because "the plain focus of the claims is
on an improvement to computer functionality itself, not on economic or
other tasks for which a computer is used in its ordinary capacity."); Electric
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Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016)( distinguishing and discussing Enfzsh ).
While generally developing software may be considered a
technological task, claims 12 and 23 here do not identify any improvement
in the functioning of either software or hardware of a computer. 2 Rather, as
the Specification explains, the claimed invention is directed to improving the
efficiency for the mental processes of a software developer. Spec. ,r,r 1-2;
Ans. 6-7 ( explaining that the claims merely automate a process). See also
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
("relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible")
We similarly agree with the Examiner that SmartGene, while not
precedential, is persuasive in this case. The Federal Circuit concluded the
claims at issue in SmartGene were patent ineligible because they did "no
more than call on a 'computing device,' with basic functionality for
comparing stored and input data and rules, to do what doctors do routinely."
SmartGene, 555 Fed. Appx. at 954. In the instant case, claims 12 and 23
calls on a processor to compare stored and inputted data, i.e., historical
developmental tasks and current developmental task, to determine if there is
a similarity, i.e., affinity, to do what a developer does routinely. See, e.g.,
Final Act. 8-9; see also Spec ,r 2 (noting that developers would gain
software historical data from other developers). In other words, the claimed
2 With respect to the recited "recommendation," we note that the
Specification explains the recited "recommendation" may merely be
displaying "a list of references such as links, to records located within the
historical development data." Spec. ,r 52. Moreover, claim 1 does not
require the developer to implement or use the provided "recommendation."
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steps do not rely on an inventive device or technique for displaying
information or new techniques for analyzing information, but rather
constitute a generic recitation of steps for manipulating data. See also
Electric Power Group, 830 F.3d at 1354 (citations omitted) (discussing that
the Federal Circuit has "treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.").
Moreover, the Federal Circuit has found claims that simply
manipulate data, like those at issue here, are patent ineligible. See, e.g.,
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed.
Cir. 201 7) ("creating an index and using that index to search for and retrieve
data") (citation omitted); Elec. Power Grp. v. Alstom S.A., 830 F.3d at 1353
(Fed. Cir. 2016) (collection, manipulation, and display of data); Intellectual
Ventures I LLC 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").
Accordingly, we affirm the Examiner's rejection of claim 1 as
directed to patent ineligible subject matter. 3
3 Upon further prosecution, the Examiner should consider whether
dependent claims 12-22, 24, and 25 should also be rejected as directed to
patent ineligible subject matter.
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THE REJECTIONS BASED ON OLSON AND GARIMELLA
Claims 12, 15, 17, 19, 20, and 23
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 12, 15, 17, 19, 20, and 23.
Appellants contend that Olson fails to teach or suggest "searching
historical development data comprising prior development tasks for a
software system, wherein the searching is performed according to a current
development task for the software system," as recited in claim 1. App. Br.
15-16; see also App. Br. 21. Appellants, in particular, note that Olson
generally describes "several factors associated with 'best practices,' but
"none of these correspond to the claimed 'a current development task for the
software system."' App. Br. 16.
We disagree. The Examiner explains that Olson's collected data
including information about activities (i.e. tasks) such as edit file, open file,
save file, build started, build ended, debug and design edit correspond to the
claimed historical development data comprising prior development tasks for
a software system. Ans. 9-10; Olson ,r 24; see also Spec ,r,r 24, 27
(identifying a change request and change set as examples of development
tasks). This collected information is used, based on a user request, to form
best practices, which as Appellants acknowledge can be based on several
factors. See App. Br. 16. For example, Olson teaches that best practices
may be presented for project activities. Olson ,r 20; Ans. 9; see also Olson
,r 10 ( discussing collecting historical task information to provide insight for
a given task). In other words, Olson teaches searching the collected
information, i.e. historical development data comprising prior development
tasks, based on a project task to obtain the best practices for that project task.
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Olson also discloses comparing a current project with the best practices.
Olson ,r,r 2, 27-29. These teachings would at least suggest searching based
on a current project task to a skilled artisan. Final Act. 11-12; Ans. 9-10.
As such, we agree with the Examiner that Olson teaches this disputed
limitation.
Appellants next assert that Olson fails to teach the recited prior and
current development tasks for the same software system. App. Br. 16-19.
According to Appellants, Olson compiles industry wide information and, as
such, "it is not clear that the data associated with 'best practices' refer to the
current software system being developed." App. Br. 16; see also App. Br.
19 ("any teachings regarding prior software projects within an industry do
not necessarily (i.e., inherently) correspond to limitations (i.e., the prior
development task) associated with the same software system.); Reply Br. 4--
6.
We find Appellants' argument unpersuasive. We recognize that
Olson discusses industry wide best practices, however, Olson also teaches
collecting data from one subscriber and obtaining best practices from the
stored data for that one subscriber. See, e.g., Olson ,r 13, ,r 21, Abstract
( describing that information is collected for a software development project
with one or more users working on the project); Olson ,r 10 (noting it is
desirable to collect data from tools used for software development). Olson
also expressly teaches that the described system may function with only one
organization as a subscriber. Olson ,r 30.
Similarly, we find Appellants' contention that the combination of
Olson and Garimella fails to teach or suggest "determining that the current
development task has an affinity with a selected prior development task
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implemented within the software system" unavailing. App. Br. 22-24. For
example, Olson teaches the best practices may be generated "based on
project phase, project tasks, or any other project related attribute." Olson
,r 21; Ans. 10. Further, the best practices "show the timeline of a project and
the important tasks and phases that should be completed." Olson ,r 21. In
other words, in generating the best practice data for presentation to the user,
Olson teaches that a current development task has an affinity with the
generated best practices, i.e. selected prior development tasks. See Final
Act. 11-12; Ans. 10-11; Olson ,r,r 20, 21, 27; see also Olson ,r 28 (teaching
that Olson's system compares a current project with best practices
constantly).
Moreover, the Examiner additionally relies on Garimella as teaching
this limitation. See Final Act. 13. Namely, Garimella teaches "searching a
service repository, where the query is configured to find an existing service
that fulfills the requirements of a particular service solution component/
business task." Garimella ,r 7 5. Garimella teaches determining an affinity
between current and prior business tasks.
Finally, Appellants allege that Olson and Garimella fail to teach or
suggest providing a recommendation for the current development task based
upon the selected prior development task." App. Br. 24--25. According to
Appellants, neither Olson nor Garimella disclose that the recommendation is
"based on the selected prior development task." App. Br. 25. As noted
above, however, the Specification explains that the recited
"recommendation" may be simply displaying the prior development task and
any linked records. Spec. ,r 52 ("In one aspect, the recommendation is a list
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of references such as links, to records located within the historical
development data.").
Olson teaches displaying the generated best practices, including "the
timeline of a project and the important tasks and phases that should be
completed." Olson ,r 21. Olson's system may also include an alert module
"that constantly compares the progress of the current project with best
practices and alerts a user if there is a deviation or if the deviation is more
than a predetermined value." Olson 28; Final Act. 11. Moreover, Garimella
generates "based on the gathered information" and other parameters, "a
'skeleton' of service artifacts for fulfilling the functionality of the selected
service solution component," i.e. a recommendation for the current
development task based upon the selected prior development task.
Garimella ,r 88; Final Act. 12-13. As such, we are not persuaded of error in
the Examiner's findings.
With respect to claim 15, Appellants assert that
nothing in the Examiner's analysis refers to "a current change
set" or "prior change sets." Instead, the Examiner only refers to
"project data," and the Examiner presents no evidence to
establish that project data refers to "a current change set."
Moreover, the Examiner presents no evidence to establish that
"metrics and best practices" refer to "prior change sets."
App. Br. 25-26. Appellants also contend that the Examiner incorrectly
relies on Olson's metrics as change sets. App. Br. 25-27.
While Olson does not expressly recite the term "change sets," Olson
describes that the best practice metrics may include information about
activities such as edit file, open file, save file, build started, build ended,
debug and design edit." Olson ,r 24 (emphasis added). The Examiner finds,
and we agree that these teachings would "require[] a change in the current
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software development project." Ans. 12. Also, as discussed above, Olson
teaches comparing current development tasks with past development data.
As such, we are not persuaded of error in the Examiner's findings.
Accordingly, for the reasons discussed above, we affirm the
Examiner's rejection of claims 12, 15, 17, 19, 20, and 23 as unpatentable
over Olson and Garimella.
THE OBVIOUSNESS REJECTION BASED ON OLSON, GARIMELLA, AND WAGNER
Claims 13, 14, 16, 18, 24, and 25
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 13, 14, 16, and 18 as unpatentable over Olson,
Garimella, and Wagner.
Appellants contend that Wagner's dependency changes are distinct
from the change request recited in claim 13. App. Br. 28-29. In particular,
Appellants contend that
A "change request" is a development task for a software system
- it is a request to change a particular aspect of the software
system. On the other hand, the "dependency changes" of Wagner
refer to changes in the dependency relationships of software
systems. Referring to paragraphs [0023]-[0024] of Wagner,
many components of software applications are dependent upon
other components. For example, a source file may be dependent
upon a class file. In Wagner, these dependencies are embodied
in a "dependency representation." The teachings of Wagener
involve using these dependency representations during software
development to keep track of how various components of the
software applications relate to one another.
App. Br. 28.
Appellants' argument, fails to explain why changes to the dependency
relationships within a software system would not satisfy the recited change
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request. Namely, these changes would change "a particular aspect of the
software system." The Examiner, in particular, cites Wagner's paragraph 18
that describes that these dependency changes may occur when a software
developer alters source code. Wagner ,r 18; Final Act. 16; see also Final
Act. 17 ( explaining that Wagner's teaching improves "the responsiveness of
integrated development environment through improved dependency
handling to incorporate the comparison of a change request to one made to a
software project before the current request in order to see if it is the same
request or different in order to eliminate double the work if it determines that
the change request is the same."). As such, we are not persuaded of error in
the Examiner's rejection.
Accordingly, for the reasons discussed above, we affirm the rejection
of claims 13 and 14 as unpatentable over Olson, Garimella, and Wagner.
We also affirm the rejection of claims 16, 18, 24, and 25 not argued with
particularity.
THE OBVIOUSNESS REJECTION BASED ON OLSON, GARIMELLA, AND TRA VISON
Claims 21 and 22
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 21 and 22 as unpatentable over Olson, Garimella,
and Travison.
Appellants argue that Travison fails to teach "matching a minimum
percentage of the current development task with the prior development
task." App. Br. 29; see also Reply Br. 10. Specifically, Appellants allege
that Travison only compares a percentage of a failure. App. Br. 29--30.
Because "a 'failure' is not comparable to a 'development task,"' Travison
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cannot be this cannot be combined with Olson and Garimella to teach the
limitations of claim 21. Id.
The Examiner, however, finds that "Travinson's current failure and
historical failures are comparable to a development task because current
failure and historical failures pertains to software testing, software testing is
a task done during the lifecycle of software development." Ans. 12.
Moreover, as discussed above, Olson teaches comparing current and prior
development tasks. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413,426 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As such, we are not
persuaded of error in the Examiner's findings.
Accordingly, for the reasons discussed above, we affirm the
Examiner's rejection of claims 21 and 22 as unpatentable over Olson,
Garimella, and Travison.
DECISION
We affirm the Examiner's decision to provisionally reject claims 12-
23 on the ground of nonstatutory double patenting.
We affirm the Examiner's decision to reject claims 12 and 23 as
directed to patent-ineligible subject matter.
We affirm the Examiner's decision to reject claims 12-23 as
unpatentable over the cited combinations of prior art.
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). See
37 C.F.R. § 41.50(±)(2016).
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AFFIRMED
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