Ex Parte Majeed et al

Patent Trial and Appeal Board

Mar 26, 2018

13184015 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/184,015 07/15/2011 Basim Majeed
24024 7590 03/28/2018
Calfee, Halter & Griswold LLP
The Calfee Building
1405 East Sixth Street
Cleveland, OH 44114-1607
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.
27154/04010 9514
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
ipdocket@calfee.com
wfrick@calfee.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BASIM MAJEED, XIAOFENG DU, and BEHZAD BORDBAR
Appeal2017-001009
Application 13/184,015 1
Technology Center 3600
Before JOHNNY A. KUMAR, JAMES W. DEJMEK, and
MATTHEW J. McNEILL, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-26. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Khalifa University of Science, Technology, and
Research; British Telecommunications plc; and Emirates
Telecommunications Corporation as the real parties in interest. App. Br. 4.
Appeal2017-001009
Application 13/184,015
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to methods and systems "for distributed
and collaborative monitoring." Spec. i-f 1. In particular, Appellants describe
a Service Oriented Architecture (SOA) wherein one or more business
processes may use various services. Spec. i-fi-1 2-5. "By monitoring tasks by
service and not by the processes which use those services, if there are any
problems in a specific service then all processes that use the service will
receive the diagnostics (or predictions) without having to deploy a diagnose
for each individual process." Spec. i-f 24. Appellants disclose the
monitoring may be on a regular (i.e., periodic) or event-driven basis and may
include the monitoring of message traffic between the service and its
consumers. Spec. i-fi-127-28. Further, according to the Specification,
monitoring business processes at the service level allows for collected
service monitoring information to be used to prevent a failure or recover
from a failure in all relevant business processes. Spec. i-f 25.
Claims 1 and 7 are exemplary of the subject matter on appeal and are
reproduced below with the disputed limitations emphasized in italics:
1. A method of monitoring the performance of services
within a business process environment, the method including the
steps of, for each of a plurality of services within said
environment, locally to said service:
with a computer system automatically monitoring the
peiformance of said service in real time; and
storing a history of events in the performance of said
service.
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7. A method of designing a business process which uses one
or more services within a business process environment, the
method including the steps of, when a service is chosen to be
included in said business process:
specifying at least one criterion for the performance of said
service;
with a computer system automatically retrieving service
status information in real-time about said service, retrieving
historical performance information for said service or predicting
future performance characteristics of said service;
comparing said service status information, historical
performance information or future performance characteristics to
said criterion; and
determining, on the basis of said comparison, whether to
include said service in said business process.
The Examiner's Rejections
1. Claims 1-26 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Ans. 3-5.2
2. Claims 1, 2, 5-7, 9-11, 14, 15, 18-22, and 24 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by D 'Alessandro (US
6,556,974 Bl; Apr. 29, 2003). Final Act. 2-3.
3. Claims 3, 4, 8, 12, 16, 17, 23, and 25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over D' Alessandro and Grah (US
2008/0247320 Al; Oct. 9, 2008). Final Act. 3-6.
4. Claims 13 and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over D' Alessandro, Grah, and Applicants' Admitted
Prior Art ("AAP A"). Final Act. 6-7.
2 The Examiner entered the rejection of claims 1-26 under 35 U.S.C. § 101
as a New Ground of Rejection in the Answer.
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ANALYSIS 3
Rejection under 35 USC§ 102(b)
The Examiner rejects all of the independent claims, inter alia, under
35 U.S.C. § 102(b) as being anticipated byD'Alessandro. Final Act. 2-3.
More specifically, the Examiner finds D 'Alessandro discloses the limitations
of claim 1 and rejects the other independent claims (i.e., claims 7, 11, 14, 20,
22, and 24), collectively therewith. Final Act. 2-3.
As an initial matter, we note, as do Appellants, the other independent
claims recite additional or different limitations from claim 1. App. Br. 22-
23. For instance, other limitations required by the independent claims
include: (i) specifying at least one criterion for the performance of said
service; (ii) comparing service status information wo the specified criterion;
(iii) determining whether to include a service in a business process, based on
the comparison of performance to a specified criterion; and (iv) determining
whether there are any problems or predicted problems with the service based
on the information collected.
Regarding the rejection of claim 1, Appellants assert that
D 'Alessandro does not actually monitor the performance of any services, but
rather, surveys people for their opinions about the businesses providing
those services. App. Br. 22. "Surveying people about businesses is
fundamentally different than actually monitoring services." App. Br. 22.
3 Throughout this Decision, we have considered the Appeal Brief, filed
December 12, 2014 ("App. Br."); the Reply Brief, filed June 8, 2015
("Reply Br."); the Examiner's Answer, mailed April 8, 2015 ("Ans."); and
the Final Office Action, mailed March 13, 2014 ("Final Act."), from which
this Appeal is taken.
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In response, the Examiner notes that the claimed limitation "service"
is not defined in Appellants' Specification. The Examiner finds
D 'Alessandro's disclosure of services such as health care accreditation
services, educational services, and child welfare services are encompassed
by Appellants' claimed "services." Ans. 7-8 (citing D' Alessandro, col. 4, 11.
5-13). Further, the Examiner explains that by surveying these services, the
"service is actually being monitored." Ans. 8.
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
We are mindful, however, that limitations are not to be read into the claims
from the Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
The Examiner's construction of a service, however, is not consistent
with how one of ordinary skill in the art would understand a service, as
described in Appellants' Specification. Rather, a service is described as part
of a Service Oriented Architecture (SOA) wherein particular functionality is
partitioned into "coherent reusable services." Spec. i-fi-1 2-3. Multiple
services may be used together as part of an overall business process. Spec.
i19.
We agree with Appellants that surveying people about a business is
different from monitoring the performance of a service, as claimed. See
Br. 22. Because we find it dispositive that D' Alessandro, as relied upon by
the Examiner, does not disclose "automatically monitoring the performance
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of said service," as required by independent claim 1, we need not address
other issues raised by Appellants' arguments.
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner's rejection under 35 U.S.C. § 102(b) of
independent claims 1, 7, 11, 14, 20, and 22. Additionally, we do not sustain
the Examiner's rejection under 35 U.S.C. § 102(b) of claims 2, 5, 6, 9, 10,
15, 18, 19, 21, and 24, which depend directly or indirectly therefrom.
Rejections under 35 US.C. § 103(a)
Dependent claims 3, 4, 8, 12, 13, 16, 17, 23, 25, and 26 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over, inter alia, the combined
teachings and suggestions of D 'Alessandro and Grah. Final Act. 3-7.
Grah is generally directed to "[ n ]etwork service operational status
monitoring." See Grah, Abstract, Title. Grah describes an active and a
passive monitoring scheme wherein the operational status of a network
service may be determined. See Grah i-fi-f 13-17; see also Grah i188, Fig. 2.
Grah describes an operational status "determines the operational status of a
network service by monitoring communication traffic associated with usage
of the network service by network service users." Grah i-f l 04 ("the
operational status monitor 56 might passively listen to service-related
communication traffic without interrupting the flow of such traffic").
The Examiner, however, does not rely on Grah to cure the
deficiencies related to the rejection of the independent claims. 4 Thus,
4 In the event of further prosecution, we leave it to the Examiner to
determine whether Grah, either alone or in combination with other prior art
references, discloses or suggests the claimed "service" limitation recited in
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constrained by the record before us, we do not sustain the Examiner's
rejections of dependent claims 3, 4, 8, 12, 13, 16, 17, 23, 25, and 26.
Rejection under 35 USC§ 101
Appellants dispute the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Reply
Br. 2-5. In particular, Appellants argue the claims are not directed to (or
otherwise limited to) monitoring the performance of services within a
business process environment. Reply Br. 3.
The Supreme Court's two-step framework guides our analysis. Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). Ifa claim
falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture or composition of matter) then the first
inquiry is whether the claim is directed to one of the judicially recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Alice, 134 S. Ct. at 2355. If so, the second step is to determine whether any
element, or combination of elements, amounts to significantly more than the
judicial exception. Alice, 134 S. Ct. at 2355.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Ans. 3-5. In
particular, the Examiner concludes claims 1-13 (i.e., the method claims) are
the independent claims. Although the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02 (9th ed. Rev. 08.2017, Jan. 2018).
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directed to the abstract idea of a "method of monitoring the performance of
services within a business process environment." 5 Ans. 3--4.
Instead of using a definition of an abstract idea, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea."). As part of this
inquiry, we must "look at the 'focus of the claimed advance over the prior
art' to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Our reviewing court has concluded that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection,
storage, and recognition of data are directed to an abstract idea").
5 The Examiner makes a similar conclusion for claims 14--26 (i.e., the
system claims). See Ans. 5.
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Additionally, the collection of information and analysis of information (e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power, 830 F.3d at 1353. Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Also, more
recently, our reviewing court has also concluded that acts of parsing,
comparing, storing, and editing data are abstract ideas. Berkheimer v. HP
Inc., 881F.3d1360, 1366 (Fed. Cir. 2018).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F .3d
1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another
abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
Here, Appellant's claims generally relate to monitoring information
(such as by retrieving or collecting information) related to the performance
of a service in a business process environment. See, e.g., claims 1, 7, 11, 14,
20, and 22. The information is analyzed to determine the occurrence of past
or predicted events, wherein the information or portions thereof may be
stored. Further, based on the determined occurrence of past or predicted
events, a determination may be made whether to include the service in a
business process.
In the Specification, Appellants describe the monitoring of a service
to include monitoring messages between the service and its consumers.
Spec. i-f 28. Additionally, the retrieving (or collecting) of service status
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information "makes use of a method of monitoring" the service. Spec. i-f 43.
Thus, the claimed limitations of monitoring, retrieving, or collecting service
performance information are similar to the abstract ideas of collecting,
analyzing, and manipulating data. See, e.g., Content Extraction, 776 F.3d at
1347; Elec. Power, 830 F.3d at 1353. Additionally, limitations comparing
the collected data to a threshold and determining a status based on the
comparison (e.g., is the service's performance acceptable such that it should
be included in a particular business process?) are similar to the abstract ideas
of recognizing certain data within the collected data, analyzing the data, and
comparing the data. See, e.g., Content Extraction, 776 F.3d at 1347; Elec.
Power, 830 F.3d at 1353; Berkheimer, 881 F.3d at 1366; see also Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1337 (Fed.
Cir. 201 7) (identifying various functional steps in a claimed method, but
noting the "does not sufficiently describe how to achieve these results in a
non-abstract way" (citing Affinity Labs, 838 F.3d at 1258-59)). Similarly,
storing the collected data is also an abstract idea. See Content Extraction,
776 F.3d at 1347. Accordingly, we agree with the Examiner that the claims
are directed to an abstract idea.
Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two of Alice to determine if there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to "significantly more" than the abstract idea. Alice, 134
S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1294, 1297-98 (2012)). The implementation of the abstract
idea involved must be "more than [the] performance of 'well-understood,
routine, [and] conventional activities previously known to the industry."'
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Content Extraction, 776 F.3d at 1347--48 (quoting Alice, 134 S. Ct. at 2359)
(alteration in original).
Here, we agree with the Examiner that the additional limitations,
separately, or as an ordered combination, do not provide meaningful
limitations (i.e., do not add significantly more) to transform the abstract idea
into a patent eligible application. Ans. 4. Appellants do not provide
persuasive evidence or argument to support the assertion that "the claims
include 'transformative' elements and are directed to a 'particular
machine."' Reply Br. 4. It is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(attorney argument is not evidence). Appellants' Specification describes the
computer system not as a particular machine but as a generic computer to
perform generic computer functions. See Spec. i-f 14 7; see also buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer
receives and sends the information over a network-with no further
specification-is not even arguably inventive.").
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claims 1, 7, 11, 14, 20, and 22 under 35 U.S.C. § 101. Additionally, we
sustain the Examiner's rejection of claims 2---6, 8-10, 12, 13, 15-19, 21, and
23-26, which depend directly or indirectly therefrom and were not argued
separately. See Reply Br. 2-5; 37 C.F.R. § 41.37(c)(l)(iv)(2013).
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DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 5-7, 9-11,
14, 15, 18-22, and 24 under 35 U.S.C. § 102(b).
We reverse the Examiner's decision rejecting claims 3, 4, 8, 12, 13,
16, 17, 23, 25, and 26 under 35 U.S.C. § 103(a).
We affirm the Examiner's decision rejecting claims 1-26 under
35 U.S.C. § 101.
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(f).
AFFIRMED
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