Ex Parte OlsonDownload PDFPatent Trial and Appeal BoardAug 22, 201814472527 (P.T.A.B. Aug. 22, 2018) Copy Citation 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. 2 Appeal2017-005895 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). 3 Appeal2017-005895 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). 4 Appeal2017-005895 Application 14/472,527 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. 5 Appeal2017-005895 Application 14/472,527 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 6 Appeal2017-005895 Application 14/472,527 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). 7 Appeal2017-005895 Application 14/472,527 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. 8 Appeal2017-005895 Application 14/472,527 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. 9 Appeal2017-005895 Application 14/472,527 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 10 Copy with citationCopy as parenthetical citation