Ex Parte Olson

Patent Trial and Appeal Board

Aug 22, 2018

14472527 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/472,527 08/29/2014
64843 7590 08/24/2018
NEOIP
P.O. BOX 52546
DURHAM, NC 27717
FIRST NAMED INVENTOR
Todd Adam Olson
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.
4006-003 4702
EXAMINER
PAULINO, LENIN
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
jinan@neoipassets.com
admin@neoipassets.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD ADAM OLSON
Appeal2017-005895
Application 14/472,527
Technology Center 2100
Before JOSEPH L. DIXON, JUSTIN BUSCH, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1--4, 6-7, 10-11, and 21-32, which are all the claims
pending and rejected in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
gathering data and comparing it with best practices to establish status of a
project and corrective actions. See generally Spec. 1. Claim 1 is exemplary:
Appeal2017-005895
Application 14/472,527
1. A method for providing software development lifecycle best
practices comprising:
at each of a plurality of computers, recording usage time data in each
of a plurality of software development activities of at least one software
development tool across a plurality of software development projects,
wherein the plurality of computers is across at least a first and a second
company;
for each of the at least first and second companies, collecting and
updating a dataset that includes company attributes and the recorded usage
time data, wherein the company attributes include an indication of company
identity;
in response to a request to determine status of a specified software
development project based on at least a first specified parameter,
aggregating the datasets based, at least in part, on the first specified
parameter and without the indication of company identity to derive privacy
preserving best practices data;
comparing usage time data of the specified software development
project against the derived privacy preserving best practices data to
determine the status of the specified software development project with
respect to the privacy preserving best practices data.
Kolawa
Le
References and Rejections
US 2006/0123389 Al
US 2004/0093584 Al
June 8, 2006
May 13, 2004
Claims 1--4, 6-7, 10-11, and 21-32 are rejected under 35 U.S.C.
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Application 14/472,527
§ 101 because they are directed to patent-ineligible subject matter.
Claims 1--4, 6-7, 10-11, and 21-32 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kolawa and Le.
ANALYSIS
35 us.c. § 101
We disagree with Appellant's arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken (Final Act. 4--5) 1 and (ii) the Answer (Ans. 2-9) to the extent
they are consistent with our analysis below. 2
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 4--5; Ans. 2-
9. In particular, the Examiner concludes the claims are directed to the
abstract idea of information manipulation, and can be done by a human
using a pen and paper. See Ans. 2-9. The Examiner determines the claims
do not identify an inventive concept to transform the nature of the claims
into a patent-eligible application. See Ans. 2-9. Appellant argues the
Examiner erred. See App. Br. 6-8; Reply Br. 1-3.
Appellant has not persuaded us of error. Section 101 of the Patent Act
provides "[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
1 The Examiner entered a new ground of rejection in the Answer, but did not
withdraw the original rejection. Ans. 2-9.
2 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 4I.41(b)(2).
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Application 14/472,527
and requirements of this title." 35 U.S.C. § 101. That provision "'contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
"[ w ]hat else is there in the claims before us?" ... To answer
that question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application .... We have
described step two of this analysis as 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 Corp., 134 S.Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
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Regarding Alice step one, the Federal Circuit has "treated collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas."
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a
similar vein, we have treated analyzing information [including manipulating
information] by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category." Elec. Power, 830 F.3d at 1354 (emphasis added);
see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016).
The rejected claims "fall into a familiar class of claims 'directed to' a
patent-ineligible concept." Elec. Power, 830 F.3d at 1353. Contrary to
Appellant's arguments (App. Br. 6-8; Reply Br. 1-3), the claims are similar
to the claims of Electric Power, and are focused on the combination of
abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354.
For example, claim 1 is directed to collecting and analyzing information
("recording ... ; collecting and updating ... ; in response to a request ...
aggregating ... ; comparing ... to determine .... "). See Elec. Power, 830
F .3 d at 13 5 3. Claims 21 and 25 are directed to similar functions or
processes. The dependent claims are directed to similar functions or
processes, and Appellant has not shown such claims are directed to other
non-abstract functions or processes. See claims 2--4, 6-7, 10-11, 22-24, and
26-32.
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Appellant's assertion regarding pre-emption (Reply Br. 2) is
unpersuasive, because "[w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility .... \\There a patent's claims are deemed only to disclose
patent ineligible subject matter under the 1\1ayo framework, as they are in
this case, preemption concerns are fully addressed and rnade moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP, 788 F.3d at 1362---63 ("that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract").
Regarding Alice step two, contrary to Appellant's assertion (App.
Br. 6-8; Reply Br. 1-3), Appellant has not shown the claims in this case
require an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Further, contrary to Appellant's arguments (App. Br. 6-8; Reply
Br. 1-3), the claims are similar to the claims of Electric Power, because they
do not require any nonconventional computer or network components, or
even a "non-conventional and non-generic arrangement of known,
conventional pieces," but merely call for performance of the claimed
information collection and analysis functions on generic computer
components and network devices. See Elec. Power, 830 F.3d at 1355; see
also Claim 1 (reciting "a plurality of computers"); Claim 21 ( reciting "[a] set
of one or more non-transitory machine readable media having stored thereon
program code"); Claim 25 (reciting "a processor; a network interface; and a
machine readable medium having instructions stored therein"). The
dependent claims call for similar generic components and devices, and
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Appellant has not shown such claims require any non-conventional
components or devices. See claims 2--4, 6-7, 10-11, 22-24, and 26-32.
Similar to the claims of Electric Power, the rejected claims specify
what information is desirable to gather and analyze, but they "do not include
any requirement for performing the claimed functions of gathering,
analyzing ... by use of anything but entirely conventional, generic
technology." Elec. Power, 830 F.3d at 1355. Therefore, similar to the
claims of Electric Power, the rejected claims "do not state an arguably
inventive concept in the realm of application of the information-based
abstract ideas." Elec. Power, 830 F.3d at 1356.
Contrary to Appellant's assertion (Reply Br. 2-3), the rejected claims
are unlike the claims in Amdocs (Israel) Limited v. Openet Telecom, Inc.,
841 F.3d 1288 (2016). In Amdocs, the court found:
claim 1 of the '065 patent is tied to a specific structure of
various components (network devices, gatherers, ISMs, a
central event manager, a central database, a user interface
server, and terminals or clients). It is narrowly drawn to not
preempt any and all generic enhancement of data in a similar
system, and does not merely combine the components in a
generic manner, but instead purposefully arranges the
components in a distributed architecture to achieve a
technological solution to a technological problem specific to
computer networks.
. . . claim 1 of the '065 patent depends upon a specific
enhancing limitation that necessarily incorporates the
invention's distributed architecture-an architecture providing
a technological solution to a technological problem. This
provides the requisite 'something more' than the performance
of "well-understood, routine, [and] conventional activities
previously known to the industry."
Amdocs, 841 F.3d at 1301 (emphases added).
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The rejected claims are unlike the claims of Amdocs because they do
not "necessarily incorporate[] the invention's distributed architecture-an
architecture providing a technological solution to a technological problem."
Amdocs, 841 F.3d at 1301. As discussed above, the recited claims are
directed to collecting and analyzing information.
In short, Appellant has not shown the claims, read in light of the
Specification, require anything other than conventional computer and
network technology for collecting and analyzing the desired information.
See Elec. Power, 830 F.3d at 1354. Such invocations of computers and
networks are "insufficient to pass the test of an inventive concept in the
application" of an abstract idea. See Elec. Power, 830 F.3d at 1355.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1--4, 6-7, 10-11, and 21-32 under
35 U.S.C. § 101.
35 USC§ 1033
We have reviewed the Examiner's rejection in light of Appellant's
contentions and the evidence of record. We concur with Appellant's
contention that the Examiner erred in finding the cited portions of Kolawa
and Le collectively teach "aggregating the datasets based, at least in part, on
the first specified parameter and without the indication of company identity
to derive privacy preserving best practices data," as recited in independent
claim 1 ( emphasis added). See App. Br. 8, 10-11; Reply Br. 3--4.
3 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Initially, the Examiner cites Kolawa's paragraph 50 for teaching the
above claim limitation, but does not specifically map the italicized
limitation. See Final Act. 6. Nor does the Examiner make any specific
finding about the italicized limitation.
In response to Appellant's arguments, the Examiner further cites
Kolawa's Figures 4, 22, and 23, and paragraphs 49, 52, 63, 64, and 71-81,
and Le's Figure 1. See Ans. 11-13. We have reviewed the cited Kolawa
and Le portions, and they do not describe "aggregating the datasets based, at
least in part, on the first specified parameter and without the indication of
company identity to derive privacy preserving best practices data," as
required by claim 1 (emphasis added). In particular, the Examiner's finding
that "Kolawa teaches a login and password system which gives individuals
access to reports" (Ans. 11) does not explain why Kolawa teaches the
italicized limitation. Likewise, the Examiner's finding that "[t]he reports
carried out and shown in Kolawa do not have any indication of identity from
previous organizations or companies" (Ans. 11-12) is insufficient. As
pointed out by Appellant, the cited figures of Kolawa represent information
about known entities ( or companies), and they do not teach "without the
indication of company identity to derive privacy preserving best practices
data," as required by claim 1. See Reply Br. 3--4. Similarly, the Examiner's
finding that "Le shows the aggregation of resource sets into the resource
database coming from multiple client system through the server system in
FIG. 1" (Ans. 12) does not explain why Le teaches the italicized limitation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 1.
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Each of independent claims 21 and 25 recites "aggregate the plurality
of datasets based, at least in part, on the first specified parameter and exclude
from the aggregated data organization identities to derive privacy
preserving best practices data" ( emphasis added). The Examiner rejects
claims 21 and 25 "for the same reasons as" claim 1. Final Act. 11-12. For
similar reasons discussed above, we reverse the Examiner's rejection of
claims 21 and 25.
We also reverse the Examiner's rejection of corresponding dependent
claims 2--4, 6-7, 10-11, 22-24, and 26-32.
DECISION
We affirm the Examiner's decision rejecting claims 1--4, 6-7, 10-11,
and 21-32 under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1--4, 6-7, 10-11,
and 21-32 under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision rejecting claims
1--4, 6-7, 10-11, and 21-32. See 37 C.F.R. § 4I.50(a)(l).
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(±).
AFFIRMED
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