Ex Parte Marwah et al

Patent Trial and Appeal Board

Mar 28, 2018

13562389 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/562,389 07 /31/2012 Manish Marwah
56436 7590 03/30/2018
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
83038747 1089
EXAMINER
AN,IGTAI
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
hpe.ip.mail@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANISH MAR WAH,
CHANDRAKANT PATEL, and
AMIP J. SHAH
Appeal2016-002494
Application 13/562,389 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
AMEE A. SHAH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Manish Marwah et al. ("Appellants") seek our review under
35 U.S.C. § 134(a) of the Final Rejection of claims 2--4, 6-13, 15, 16, 18,
20-22, and 24--31. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION.
1 The Appellants identify Hewlett-Packard Development Company, LP as
the real party in interest. App. Br. 1.
Appeal2016-002494
Application 13/562,389
THE INVENTION
Claim 4, reproduced below, is illustrative of the subject matter on
appeal.
4. A method comprising:
receiving, by a system having a processor, identification
of a constituent component;
clustering, by the system, components identified in bills
of materials into clusters of the components, wherein the bills
of materials are for corresponding product assemblies that are
indicated as potentially containing the constituent component;
mapping, by the system, centroids of the clusters to
respective nodes of a data structure that stores information
containing at least one metric for each of a plurality of
components, the at least one metric indicating an impact of the
corresponding component on an environment;
determining, by the system in response to the mapping,
an estimated quantity of the constituent component in a given
product mix; and
modifying, by an enterprise, products provided by the
enterprise based on the determined estimated quantity.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ettl
Hage
Cesarotti
us 5,946,662
US 2003/0172008 Al
US 6,999 ,965 B 1
2
Aug.31, 1999
Sept. 11, 2003
Feb. 14,2006
Appeal2016-002494
Application 13/562,389
The following rejections are before us for review:
1. Claims 2--4, 6-13, 15, 16, 18, 20-22, and 24--31 are rejected under
35 U.S.C. § 101 as being directed to judicially-excepted subject
matter. 2
2. Claims 2--4, 6-13, 15, 16, 18, 20-22, 24--27, 29, and 30 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Hage and Ettl. 3
3. Claims 28 and 31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hage, Ettl, and Cesarotti.
ISSUES
Did the Examiner err in rejecting claims 2--4, 6-13, 15, 16, 18, 20-22,
and 24--31under35 U.S.C. § 101 as being directed to non-statutory subject
matter?
Did the Examiner err in rejecting claims 2--4, 6-13, 15, 16, 18, 20-22,
24--27, 29, and 30 under 35 U.S.C. § 103(a) as being unpatentable over Hage
and Ettl?
Did the Examiner err in rejecting claims 28 and 31 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Hage, Ettl, and Cesarotti?
2 The statement of the rejection included claim 5. Final Act. 3. However,
claim 5 has been cancelled. See App. Br., i (Claims App'x) ("Claims 1, 5,
14, 17, 19 and 23 have been cancelled.")
3 The statement of the rejection included claim 23. Final Act. 6. However,
claim 23 was cancelled. See n.2 supra.
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ANALYSIS
The rejection of claims 2-4, 6-13, 15, 16, 18, 20-22, and 24-31 under
35 US.C. § 101 as being directed to non-statutory subject matter.
The rejection of claim 10 is reversed pro forma because it depends
from a canceled claim (claim 1 ).
The Appellants argued these claims as a group. See App. Br. 7-15;
Reply Br. 3-8. We select claim 4 as the representative claim for this group,
and the remaining claims 2, 3, 6-9, 11-13, 15, 16, 18, 20-22, and 24--31
stand or fall with claim 4. 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under
35 U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that the
[b ]ased upon consideration of all the relevant factors with
respect to the claim as a whole, claims 2 - 13, 15 - 16, 18, 20 -
22 and 24 - 31 are deemed to claim an abstract idea (receiving
component identifications, determining estimate quantity of
component in a given product mix, clustering components in a
bill of material, and mapping the clusters to respective nodes of
the data structure) and are rejected under § 101. The claim
elements of receiving component identifications, determining
estimate quantity of component in a given product mix,
clustering components in a bill of material, and mapping the
clusters to respective nodes of the data structure can be done by
human activities and the claims merely amount to the
application or instructions to apply the abstract idea on a
computer, and amount to nothing more than requiring a generic
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computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry. Furthermore, the claim elements of
receiving component identifications, determining estimate
quantity of component in a given product mix, clustering
components in a bill of material, and mapping the clusters to
respective nodes of the data structure does not improve to the
function of a computer itself. Furthermore, the claim does not
move beyond a general link of the use of an abstract idea to a
particular technological environment.
Final Act. 3--4.
Step two is "a search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72-
73).
In that regard, the Examiner determined
[ t ]here are no meaningful limitations that transform the
exception into a patent eligible application. The claims only
manipulate abstract data elements. The generic computing
elements recited are known and conventional. None of the
hardware recited "offers a meaningful limitation beyond
generally linking 'the use of the [method] to a particular
technological environment,' that is, implementation via
computers." Id., slip op. at 16 (citing Bilski v. Kappos, 561
U.S. 610, 611 (U.S. 2010)).
Final Act. 4.
The Appellants disagree, "submi[ting] that [independent] claim 4 is
directed to patent-eligible subject matter." App. Br. 8. "Independent
claim 9 and its method claim also recite patent-eligible subject matter, for
reasons similar to those stated above for claim 4." App. Br. 14. The central
reason given by the Appellants for challenging the determination that claims
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4 and 9 are not judicially-excepted for covering an abstract idea is that they
contain the limitation "modifying, by an enterprise, products provided by the
enterprise based on the determined estimated quantity" (claims 4 and 9
(emphasis added)). Regarding the Alice step one analysis, the Appellants
argue, inter alia, that "[ t ]he fact that claim 4 calls for physical interaction
between the claimed process and a physical entity (namely, 'modifying, by
an enterprise, products provided by the enterprise based on the determined
estimated quantity') clearly establishes that claim 4 does not merely recite an
'idea itself."' App. Br. 11. Regarding step two, the Appellants argue
• "the subject matter in the 'modifying' clause of claim 4 transforms
the process of claim 4 into an inventive application of the process
that is recited in claim 4" (App. Br. 12);
• "[t]he presence of the subject matter in the 'modifying' clause of
claim 4 supplies an inventive concept 'in the physical realm of
things' that provides a 'new and useful application' of the claimed
subject matter to the physical realm" (App. Br. 13);
• "claim 4 improves an existing technological process, namely using
the process according to claim 4 to modify products provided by
the enterprise based on an estimated quantity determined using the
process of claim 4" (App. Br. 14); and,
• "[ c ]laim 4 specifically recites modifying products provided by the
enterprise based on the determined estimated quantity-the products
of claim 4 are not abstract data elements" (App. Br. 14).
In other words, according to the Appellants, because claims 4 and 9 call for
"modifying ... products," they are necessarily patent-eligible.
However, we are not placed in a position to meaningfully review the
question of whether the claims are patent-eligible because they include the
limitation "modifying ... products." This is so because the record fails to
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provide written descriptive support for "modifying ... products." That in
tum raises a question of indefiniteness.
The Examiner takes the position that "modifying ... products" "is
mere data modification function due to it is data process of computer."
Ans. 19; see also Ans. 28 ("Modifying product data provided by the
enterprise merely change data in a data storage.")
The Appellants take the position that "modifying ... products"
involves physical objects.
As specifically stated in the Specification of the present
application, "[a] constituent component, such as a raw material
or other type of constituent component, can be present in
various products that are offered by or used by an enterprise
(e.g. business concern, government agency, educational
organization, individual, etc)." Specification, i-f [0003].
Examples of products provided in the Specification include a
computer or a hard disk drive in a computer. Id. As further
stated in the Specification, "[a ]s an example, tantalum is a metal
that is used in various electronic products, such as computers,
mobile phones, display devices, and so forth." Id., i-f [0003].
From at least the foregoing passages, it is clear that the
term "products" as used in claim 4 refers to a physical entity
which can include a raw material or other constituent
component. The Examiner's Answer has clearly erred in
asserting that "products" is interpreted to be just "product data."
Ans. 4.
But the Specification does not describe modifying, whether it be data
or physical objects. "[M]odify" is used in the Specification but never in the
context of "modifying ... products" as that term is used in claims 4 and 9.
See Spec., paras. 23, 24, 25, 46 (describing modifying clusters and a distance
metric). The Specification provides no written descriptive support for
"modifying ... products."
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Because there is no written descriptive support for the phrase
"modifying ... products" in claims 4 and 9, the meaning of "modifying ...
products" is unclear, as reflected in the differing positions of the Examiner
and the Appellants on whether the products being modified is data or
physical objects. Without written descriptive support for "modifying ...
products" in claims 4 and 9 and one that explains what type of product is
intended to be modified, the meaning of "modifying ... products" in
claims 4 and 9 is a matter of considerable speculation. In re Steele, 305 F .2d
859, 862 (CCPA 1962) ("Our analysis of the claims indicates that
considerable speculation as to meaning of the terms employed and
assumptions as to the scope of such claims were made by the examiner and
the board.").
For these reasons, we will reverse the rejection as to claims 4 and 9
and claims 2, 3, 6-8, 21, and 25-28 that depend from claim 4.
The Appellants do not challenge the rejection of independent claims
11 and 20. They do not contain the aforediscussed "modifying ... products"
limitation in claims 4 and 9. Accordingly, we sustain the rejection of claims
11 and 20, claims 10, 12, 13, 15, 16, 18, 22, 29, 30, and claims 24 and 31
that depend from claims 11 and 20, respectively.
The rejection of claims 2-4, 6-13, 15, 16, 18, 20-22, 24-27, 29, and 30
under 35 US.C. § 103(a) as being unpatentable over Hage and Ettl.
The rejection of claim 10 is reversed proforma because it depends
from a canceled claim (claim 1 ).
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Application 13/562,389
Claim 4 calls for "clustering, by the system, components identified in
bills of materials into clusters of the components." According to the
Examiner,
[Hage] at least paragraph 6 and 11 - 12; via a "BOM" is any
collection of data that identifies various components, elements,
services, or processes that make up a product, a service, a
process, or a project. For example, a bill of materials may
identify multiple components that are used to assemble a
finished product. In this example, the bill of materials may
specify various information regarding each component, such as
part numbers, quantities and the manner in which the multiple
components are assembled with one another. In another
example, a bill of materials identifies multiple services that are
performed to complete a particular project ... [.] A particular
bill of materials may contain any number of entries related to
any number of products, services, processes or projects.
According to the www.thesaurus.com, cluster is defined is
group of something. The Bill of material tree contains group of
components therefore, bill of materials containing collection of
components teach the limitation of the claim. Furthermore,
Figure 2B 106 discloses retrieving data from rollup table
wherein rollup table, which discloses components related data
for different parts (See Figure 5). Abstract and Figure 4 of
Hage discloses tree structures specification of BOM.
Final Act. 8.
But, as the Appellants point out,
[ w ]hat the Examiner has done is identified bills of materials in
Hage, and argued that the presence of such bills of materials by
themselves satisfies the clustering performed in claim 4. Such
an assertion is clearly erroneous, as all the Examiner has done is
establish that Hage describes bills of materials. There is no
separate clustering of components identified in bills of
materials into clusters of components, as claimed, in Hage.
App. Br. 17.
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We agree. Hage uses the term "collection" rather than "cluster".
Hage par 12. Specifically, the cited disclosure describes bill of materials
(BO Ms) - "any collection of data that identifies various components,
elements, services, or processes that make up a product, a service, a process,
or a project." Id. However, claim 4 requires more than just a collection.
"[C]omponents identified in bills of materials [are clustered] into clusters of
the components" (claim 4).
Accordingly, the rejection of independent claim 4 and claims 2, 3, 6-
8, 21, and 25-28 depending therefrom is not sustained.
Independent claims 9 and 11 require clustering using "a distance
metric that represents similarity of the components."
The Examiner cites "at least paragraphs 9 and 12 - 13" of Hage as
evidence that this is disclosed in the prior art. See Final Act. 14 (discussing
claim 21 which includes said limitation).
We have reviewed the cited passages but cannot find there clustering
using "a distance metric that represents similarity of the components".
Accordingly the rejection of independent claims 9 and 11, and claims
12, 13, 15, 16, 18, 22, 29 and 30 depending from claim 11, is not sustained.
Independent claim 20 requires mapping centroids of "clusters to nodes
of a data structure that stores information containing at least one metric for
each of a plurality of components, the at least one metric indicating an
impact of the corresponding component on an environment." We agree with
the Appellants that the Examiner has not shown this to be disclosed in Hage
as alleged.
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[T]he leaf nodes in the tree structure of Hage represent sub-
assemblies, and can be "designated with internal part numbers
(IPNs)." Hage, i-f [0031]. There is no indication whatsoever
that the tree structure including the leaf nodes in i-f [0031] of
Hage includes at least one metric "indicating an impact of the
corresponding component on an environment," as claimed. The
IPN s merely identifies parts, namely the sub-assemblies
mentioned in i-f [0031] of Hage. The Examiner has not
explained how part numbers constitute a metric indicating an
impact of a corresponding component on an environment.
App. Br. 20.
Accordingly, the rejection of claim 20 and claim 24 depending
therefrom is not sustained.
The rejection of claims 28 and 31 are rejected under 35 USC§ 103(a) as
being unpatentable over Hage, Ettl, and Cesarotti.
Claims 28 and 31 depend from claims 4 and 20, respectively. Their
rejection is not sustained for the reasons discussed in not sustaining the
rejection of claims 4 and 20.
NEW GROUNDS OF REJECTION
Claim 10 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claim 10 depends from cancelled claim 1. See App. Br., i (Claims
App'x) ("Claims 1, 5, 14, 17, 19 and 23 have been cancelled.").
Claims 2--4, 6-9, 21, and 25-28 are rejected under 35 U.S.C. § 112,
first paragraph, for failing to comply with the written description
requirement.
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Compliance with the written description requirement is a question of
fact. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.
Cir. 1985). In that regard, we have reviewed the Specification but have been
unable to find any mention of "modifying ... products."
The Appellants direct our attention to Fig. 3 and paras. 40 and 41 of
the Specification as providing support for said subject matter. See App.
Br. 3 and 4 for claims 4 and 9, respectively.
Fig. 3 shows a graph of the cost impact of three product mixes over
time. "The graph correlates time (horizontal axis) to the cost impact
(vertical axis) due to presence of a particular constituent component (or
constituent components) in a product mix." Spec., para. 39.
Paras 40 and 41 read as follows:
[0040] The graph depicted in Fig. 3 is an example of an output that
can be provided to a user to allow what-if analysis of cost impacts of
different product mixes. Based on the graph, the user can select one of
the product mixes as being more optimal than the other product mixes
depicted in Fig. 3.
[ 0041] Using techniques or mechanisms according to some
implementations, the effort of estimating the quantity of a particular
constituent component in a product mix is reduced. Hot-spot analysis
can be performed of products in terms of their usage of a particular
constituent component. This allows an enterprise to quickly identify
which of their products would be impacted by a particular constituent
component. For example, if a government regulation specifies that
enterprises are to perform diligence on their use of a particular raw
material, starting at a particular time, then the enterprise can quickly
perform hot-spot analysis to determine which of their products include
the impacted raw material.
These disclosures do not describe modifying a product. They describe
tools for more efficiently analyzing the cost impact of selecting a particular
product. Fig. 3 "can be provided to a user to allow what-if analysis of cost
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impacts of different product mixes. Based on the graph, the user can select
one of the product mixes as being more optimal than the other product
mixes" (para. 41 ). According to some implementations, certain techniques
or mechanisms can reduce "the effort of estimating the quantity of a
particular constituent component in a product mix" (para. 41 ).
"To satisfy this requirement, the specification must describe the
invention in sufficient detail so 'that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of the filing
date sought."' In re Alonso, 545 F.3d 1015 (Fed. Cir. 2008) (quoting
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Fig. 3 and paras. 40 and 41 do not provide sufficient detail to provide
adequate written descriptive support for "modifying ... products" as
claimed.
Claims 2--4, 6-9, 21, and 25-28 are newly under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
The phrase "modifying ... products" renders claims 4 and 9 (and the
claims depending therefrom) indefinite. The intrinsic record provides no
guidance for ascertaining the types of products that are to be modified.
The Examiner assumes "products" means data. The Appellants
dispute that, arguing that "products" refers to physical objects. The
disagreement cannot be resolved because the Specification does not disclose
"modifying ... products" at all. There are no details that would help resolve
the matter.
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One of ordinary skill in the art reading the claims in light of the
Specification would be uncertain about the types of products - data or
physical objects - that the claimed methods are modifying.
CONCLUSIONS
The rejection of claims 2--4, 6-10, 21, and 25-28 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter is reversed.
The rejection of claims 11-13, 15, 16, 18, 20, 22, 24, and 29-31 under
35 U.S.C. § 101 as being directed to non-statutory subject matter is affirmed.
The rejection of claims 2--4, 6-13, 15, 16, 18, 20-22, 24--27, 29, and
30 under 35 U.S.C. § 103(a) as being unpatentable over Hage and Ettl is
reversed.
The rejection of claims 28 and 31 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hage, Ettl, and Cesarotti is reversed.
Claim 10 is newly under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention.
Claims 2--4, 6-9, 21, and 25-28 are newly under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Claims 2--4, 6-9, 21, and 25-28 are newly rejected under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description
requirement.
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DECISION
The decision of the Examiner to reject claims 2--4, 6-13, 15, 16, 18,
20-22, and 24--31 is affirmed-in-part.
Claims 2--4, 6-10, 21, and 25-28 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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