Ex Parte Palavalli et al

Patent Trial and Appeal Board

Mar 22, 2018

14261459 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/261,459
152606 7590
VMWare-OPW
P.O. Box 4277
Seattle, WA 98194
FILING DATE FIRST NAMED INVENTOR
04/25/2014 AMARNATH PALA VALLI
03/22/2018
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.
B525 2068
EXAMINER
JORDAN, KIMBERLY L
ART UNIT PAPER NUMBER
2194
MAILDATE DELIVERY MODE
03/22/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMARNATH PALA VALLI, KUMAR GA URA V,
PIYUSH BHARAT MASRANI, DATTATHREYA SATHYAMURTHY,
and GUY GINZBURG
Appeal2017-008171
Application 14/261,459
Technology Center 2100
Before THU A. DANG, DENISE M. POTHIER, and JOYCE CRAIG,
Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1' 2 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-21. App. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
1 Throughout this opinion, we refer to (1) the Final Office Action (Final
Act.) mailed April 26, 2016, (2) the Appeal Brief (App. Br.) filed November
28, 2016, (3) the Examiner's Answer (Ans.) mailed March 9, 2017, and (4)
the Reply Brief (Reply Br.) filed May 9, 2017.
2 The real party in interest is listed as VMware, Inc. App. Br. 1.
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Application 14/261,459
Invention
Appellants' invention relates to media, "methods[,] and systems for
calculating the cost of virtual machine central processors." Spec. i-f 2; see
also id., Abstract.
Zhang
Illustrative claim 8 is reproduced below:
8. A method stored in one or more data-storage devices
and executed using one or more processors for determining cost
per virtual processor unit for one or more virtual machines
("VMs") run on a multi-core processor, the method comprising:
calculating a total number of computing cycles used by
the one or more VMs based on utilization measurements of the
multi-core processor by the one or more VMs in each of a
number of time intervals;
calculating a total number of virtual processor units used
by the one or more VMs based on a count of virtual processor
units by the one or more VMs in each of the number of time
intervals;
calculating a cost per virtual processor unit based on the
total number of computing cycles, the total number of virtual
processors units, and cost per computing cycle; and
storing the cost per virtual processor unit in a data-
storage device.
The Examiner relies on the following as evidence of unpatentability:
US 2012/0185851 Al July 19, 2012
Oleksiy Mazhelis et al., Assessing Cloud Infrastructure Costs in
Communications-Intensive Applications, CLOSER 2011, pp. 277-293
(2012) ("Mazhelis").
The Rejections
Claims 1-21 are rejected under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter. Final Act. 2-3.
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Claims 1-21 are rejected under 35 U.S.C. § 103(a) (pre-AIA) or§ 103
as unpatentable over Zhang and Mazhelis. Final Act. 3-8.
THE PATENT-INELIGIBLE SUBJECT MATTER REJECTION
The Examiner finds independent claims 1, 8, and 15 are directed to an
abstract idea. Final Act. 3; Ans. 8-9. The Examiner states the claims "do
not include additional elements that are sufficient to amount to significantly
more than the judicial exception because the generically recited computer
elements ... do not add a meaningful limitation to the abstract idea because
they would be routine in any computer implementation." Final Act. 3; Ans.
9-10.
Appellants argue "[t]he Examiner has not addressed the preemption
issue as required by the Supreme Court in Alice." App. Br. 8; Reply Br.
2--4, 7-10. Specifically, Appellants contend claims 1through21 "are
directed to solving a particular problem" (App. Br. 9) "associated with
running applications in VMs of a data center" (id. at 10 (citing Spec.
i-fi-f l-2)). See Reply Br. 9-10 (stating the claims are drawn "to a specific
solution to a technical problem of calculating cost per virtual processor
unit."). Appellants conclude "the elements describe[ d] [in claims 1-21]
describe specific operations that do not preempt inventive activity." App.
Br. 10. Appellants argue the three "calculating" recitations in claims 1, 8,
and 15 describe "a specific type of calculation that is an inventive concept."
Id. at 10.
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Application 14/261,459
ISSUE
Under§ 101, has the Examiner erred in rejecting claim 8 by finding
that the claim is directed to patent ineligible subject matter?
ANALYSIS
Based on the record before us, we find no error in the Examiner's
rejection of representative claim 8. 3 Under 35 U.S.C. § 101, a patent may be
obtained for "any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof." The
Supreme Court has "'long held that this 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)). As noted by Appellants
(App. Br. 6), the Supreme Court in Alice reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355.
The first step in that analysis is to determine whether the claims are
directed to one of those patent-ineligible concepts, such as an abstract idea.
Abstract ideas may include, but are not limited to, fundamental economic
practices, methods of organizing human activities, an idea of itself, and
3 Appellants argue claims 1, 3-8, 10-15, and 17-21 as a group. App. Br.
4--12. We select claim 8 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
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mathematical formulas or relationships. Id. at 2355-57. If the claims are
not directed to a patent-ineligible concept, the inquiry ends. Otherwise, the
inquiry proceeds to the second step where the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id. at 2355 (quoting Mayo, 132 S. Ct. at 1298,
1297). Applying the two-step framework to claim 8, we conclude the claim
is not directed to a patent-eligible subject matter.
Regarding the first step, we agree with the Examiner that claim 8
is directed to an abstract idea involving mathematical algorithms or is
analogous to a method of organizing human behavior (e.g., calculating and
storing information). See Final Act. 2-3; see also Ans. 9. In essence, the
abstract idea in claim 8 involves calculating a cost per virtual processor unit
for virtual machines (VM(s)) running on a multi-core processor. App. Br.
19-20 (Claims App.); see also Spec. i-fi-14, 20 (discussing calculating the cost
of using a VM). That is, claim 8 recites "[a] method stored in one or more
data-storage devices and executed using one or more processors for
determining cost per virtual processor unit for one or more virtual machines
('VMs') run on a multi-core processor." App. Br. 19-20 (Claims App.).
Claim 8 's method for determining a cost per virtual processor unit or
vCPU for VMs running on a multi-core processor involves three steps of
"calculating" values (e.g., "a total number of computing cycles used by the
one or more VMs," "a total number of virtual processor units used by the
one or more VMs ... in each of a number of time intervals," and "a cost per
virtual processor unit") and one step of "storing" the desired "cost per virtual
processor unit." Id. (Claims App.). According to the disclosure, this "cost
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per virtual processor unit" for VM(s) is calculated using formulas 4, 6, and
8. See Final Act. 3; see also Spec. i-fi-133, 35, 37. As such, the method
"executed using one or more processors for determining cost per virtual
processor unit" involves performing mathematical calculations. See Final
Act. 3.
The courts warn that claims do not become patent ineligible under
§ 101 simply because they use mathematical formulas. See App. Br. 8
(quoting from Diamond v. Diehr, 450 U.S. 175 (1980) (stating "a claim
drawn to subject matter otherwise statutory does not become nonstatutory
simply because it uses a mathematical formula, computer program, or digital
computer.")). In that sense, the Examiner's statement that the claims are
abstract "since they comprise mathematical formulas or relations" (Final
Act. 2-3) simplifies the analysis of patent ineligibility under § 101.
However, the Examiner further relies on Gottshalk v. Benson, 409 U.S. 63
(1972), Parker v. Flook, 437 U.S. 584 (1978), and In re Grams, 888 F.2d
835 (Fed. Cir. 1989) in concluding claim 8, which contains mathematical
algorithms, is an abstract idea. See Ans. 9.
In the Reply Brief, Appellants contend "the Examiner does not
explain how the [above] assertion [containing Benson, Flook, and Grams
citations] is relevant." Reply Br. 9. To clarify, the court in each of these
cases illustrates claims containing and performing mathematical
formulas/algorithms are directed to an abstract idea and are patent-ineligible
applications under 35 U.S.C. § 101. See Benson, 409 U.S. at 71-72, Flook,
437 U.S. at 593-95, and Grams, 888 F.2d at 839-40.
Appellants further assert "the elements [in claim 8] describe specific
operations that do not preempt inventive activity." See App. Br. 10. In
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particular, Appellants argue claim 8 addresses "a specific type of problem
associated with running applications in VMs of a data center" (App. Br. 10)
and does not preempt inventive activity (id.). Appellants contend claims 1
through 21 "are directed to solving a particular problem" (id. at 9)
"associated with running applications in VMs of a data center" (id. at 10
(citing Spec. i-fi-f l-2)). See Reply Br. 9-10 (stating the claims are drawn "to
a specific solution to a technical problem of calculating cost per virtual
processor unit.")
As noted in Flook, claims may not "cover every conceivable
application of [a] formula" (e.g., not wholly preempt a mathematical
algorithm) and still be found to be patent ineligible. 4 Thus, even presuming
claim 8 does not cover every conceivable application of the recited
mathematical algorithms such that there remains uses for the formulas in the
public domain (see App. Br. 10), this alone is insufficient to demonstrate
claims are patent eligible under § 101. See id. That is, limiting the use of an
abstract idea to a particular technology environment (e.g., determining the
cost per vCPU for VMs running on a multi-core processor) is not enough for
patent eligibility. 5 Moreover, reciting a specific operation (e.g., calculating
a specific value) or application (e.g., determining cost per virtual processor
unit), without more, is also not enough to transform claim 8 into statutory
subject matter under § 101. 6
4 See Flook, 437 U.S. at 586-87, 589.
5 See Alice, 134 S.Ct. at 2358.
6 See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (stating "limiting the claims to a particular technological
environment ... is, without more, insufficient to transform them into
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Application 14/261,459
We thus are not persuaded by Appellants' assertion that claim 8
"describes a specific type of calculation that is an inventive concept." App.
Br. 10. Also, claims involving specific calculations that are based on other
calculations, like claim 8 's step of calculating a cost per vCPU based on the
calculated number of computing cycles and total number of vCPU s used by
VMs, may be patent-ineligible under§ 101.7 Accordingly, we are not
persuaded that a result obtain in one step used to compute another or final
step makes a claim patent eligble under § 101. See Reply Br. 6.
Notably, claim 8 does not recite what is done with the determined
costs per virtual processor unit. App. Br. 19-20 (Claims App.). The
Specification indicates the cost of using a VM may be used to predict VM
costs. See Spec. i-f 4. This disclosure, however, does not demonstrate and
Appellants have not shown sufficiently that claim 8 's method is directed to a
more efficient solution for determining cost per virtual processor unit for one
or more VMs running on a multi-core processor such that the claim
improves on an existing technological process.
As for step (2) of the Alice/Mayo framework, claim 8 involves
analyzing information similar to those steps people go through in their mind
(e.g., performing three calculations) without significantly more. 8 Also, the
additional step of storing a calculated value (e.g., "the cost per virtual
processor unit") is directed to an abstract idea, including organizing human
activities, without significantly more and does not transform the nature of
patent-eligible applications of the abstract idea at their core."); see also
Alice, 134 S.Ct. at 2358.
7 See Digitech Image Techs LLC v. Electronics for Imaging Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014); Grams, 888 F.2d at 836, 839-40.
8 See also Electric Power, 830 F.3d at 1354.
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claim 8 into a patent-eligible application. 9 In contrast with Diamond v.
Diehr, 450 U.S. 175 (1980), claim 8 does not recite a method which
transforms an article into a different state or thing. See id. at 187-88,
192-93. Rather, the claim determines a cost per virtual processor unit, based
on certain values, some of which are calculated, for one or more VMs
running on a multi-core processor.
Granted, the claims invoke processors and storage devices (see App.
Br. 19 (Claims App.)) to calculate and store values and to assist in
determining the cost of using VM( s ), which has indirectly been described as
difficult. See Spec. i-fi-1 4 (discussing "assessing the cost of IT services ...
may be difficult to determine"), 20. The steps of claim 8 also may require
computer programming to execute the recited calculations using one or more
processors. However, such recitations do not contain an inventive concept
sufficient to transform the generically recited processors and storage devices
into a patent eligible application. 1° For example, the Specification provides
inadequate evidence that anything other than conventional tools (e.g.,
generic processors and storage devices) are used to calculate and to store the
recited, determined "cost per virtual processor unit" in claim 8. See Spec.
i-fi-13, 21-24, Figs. 1-2. Accordingly, claim 8 does not transform an
unpatentable abstract idea into patentable-eligible process under § 101. 11
The Specification explains VMs "have been introduced to lower data
center capital investment in facilities and operational expenses and reduce
energy consumption." Spec. i1 4. The Specification also states"[ e ]nterprises
9 See Smart Systems Innovations LLC v. Chicago Transit Authority, 873
F.3d 1364, 1372 (Fed. Cir. 2017); see also Alice, 134 S. Ct. at 2355.
10 See Alice, 134 S.Ct. at 2358.
11 See Flook, 437 U.S. at 589-90.
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that purchase IT services and IT service providers seek methods and systems
for calculating and predicting the cost ofVMs." Id. Yet, claim 8 is not
directed to calculating the cost of VMs, lowering capital investment, or
reducing energy consumption. App. Br. 19--20 (Claims App.). Nor is there
sufficient evidence that such a process would involve anything other than
conventional or routine tools as previously stated.
The Specification also does not purport to improve on the functioning
of a multi-core processor, processors, storage devices, virtual processors, or
VMs. Nor is claim 8 directed to improving on these devices or their
functions. App. Br. 19-20 (Claims App.). Rather, as previously discussed,
claim 8 amounts to nothing more than instructions to implement an abstract
idea (i.e., determining the cost per virtual processor unit for one or more
virtual machines running on a multi-core processor) with routine
tools/activities. The additional step of storing the determined value merely
implements conventional storage devices. As such, claim 8 recites
computers (e.g., storage devices and processors) invoked merely as tools to
accomplish the claimed invention (e.g., to determine a cost per virtual
processor unit), 12 which is insufficient to be considered an inventive concept
of an abstract idea. 13
Accordingly, although claim 8 may be "associated with running
applications in VMs of a data center" (App. Br. 10 (citing Spec. i-fi-f l-2)),
this association does not amount to significantly more than the recited
abstract idea of determining costs per virtual processor unit for one or more
virtual machines running on a multi-core processor. When considering the
12 See Smart Systems, 873 F.3d at 1372-73.
13 See Electric Power, 830 F.3d at 1355.
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elements of claim 8 both individually and as an ordered combination as
discussed above, we determine the additional elements do not transform
claim 8 's nature into a patent-eligible application.
Claim 1 recites a "system" having processors(s) and data-storage
device(s) similar to claim 8. App. Br. 18 (Claims App.). Independent claim
15 is a "non-transitory computer-readable medium" having instructions to
implement a method similar to claim 8. Id. at 21-22 (Claims App.). These
claims recite conventional processors, storage devices, and media, and do
not transform the claims into patent-eligible subject matter. We refer to the
above analysis for more details.
Concerning dependent claims 2, 9, and 16, Appellants further argue
claims 2, 9, and 16 "are described in sufficiently specific terms as to not
prohibit inventive activity and, therefore, are not a drafting effort designed to
monopolize a building block of innovation." Id. at 11. These claims recite
more detailed calculations related to how the "total number of computing
cycles used by the one or more VMs over the period of time" is computed.
See, e.g., id. at 20 (Claims App.). As noted above, even if a claim does not
wholly pre-empt every application of its algorithms/formulae, this alone is
insufficient to demonstrate claims are patent eligible under § 101.
Moreover, similar to claims 1, 8, and 15, the limitations in claims 2, 9, and
16 perform mathematical calculations analogous to a method of organizing
human behavior and do not amount to significantly more than the abstract
idea of determining the cost per virtual processor unit discussed above
related to claims 1, 8, and 15.
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For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1, 2, 8, 9, 15, and 16 and remaining
dependent claims 3-7, 10-14, and 17-21, which are not separately argued.
THE OBVIOUSNESS REJECTION OVER ZHANG AND MAZHELIS
Regarding independent claim 1, the Examiner finds that Zhang
teaches all its limitations, except for the last "calculating" step. Final Act.
3--4 (citing Zhang i-fi-122-24, 48, 53---60). The Examiner turns to Mazhelis in
combination with Zhang to teach the last "calculating" step. Id. at 4--5
(citing Mazhelis 283, i-fi-12-5, Abstract).
Among other arguments, Appellants argue Zhang does not teach the
first "calculating" limitation or "calculating a total number of computing
cycles used by the one or more VMs based on utilization measurements of
the multi-core processor by the one or more VMs in each of a number of
time intervals." App. Br. 12-14; Reply Br. 10-11.
ISSUE
Under§ 103, has the Examiner erred in rejecting claim 1 by finding
Zhang and Mazhelis collectively would have taught or suggested a
"calculating a total number of computing cycles used by the one or more
VMs based on utilization measurements of the multi-core processor by the
one or more VMs in each of a number of time intervals?"
ANALYSIS
Based on the record before us, we are persuaded of error in the
rejection. Zhang teaches using various information, including resource
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utilization information 120, the information embodied in DFG (directed
factor graph) model 140, and "per-VM resource utilization information"
150. Zhang i-f 48, cited in both Final Act. 4 and Ans. 10-11. Zhang explains
the latter information, per-VM resource utilization information 150,
indicates various other information, including "utilization of the CPU for
each virtual machine 112 in terms of CPU cycles," and this information is
"within a specified time interval." Zhang i-f 48. The Examiner states
paragraph 48 in Zhang suggests "calculating a total number of computing
cycles used by the one or more VMs based on utilization measurements of
the ... processor by the one or more VMs in each of a number of time
intervals." Ans. 10-11. We disagree.
Because the recitation "a number of time intervals" is broad and does
not specify the "number," Zhang's discussion of computing information
within a specified time interval teaches information 150 is based on "a
number of time intervals" as recited. See Zhang i-f 48; see also Spec. i-f 5
(stating the total number of compute cycles is calculated "over a period of
time"), cited in Ans. 9. Zhang also teaches information that indicates CPU
usage for each virtual machine in terms of CPU cycles or is based on CPU
cycles. See id. However, claim 1 recites "calculating a total number of
computing cycles used by one or more VMs based on" certain information-
not calculating certain information based on computing cycles as Zhang
teaches. Compare App. Br. 18 (Claims App.) with Zhang i-f 48.
Possibly, the Examiner asserts Zhang suggests the "total number of
computing cycles" is calculated in order to determine the taught per-VM
physical resource information 150, which indicates CPU usage for each VM
in terms of CPU cycles. See Final Act. 4; see also Ans. 10-11. To extent
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this is the Examiner's position, the discussion in paragraph 48 does not
further suggests that a "total number of computing cycles used by the one or
more VMs" is calculated as specifically recited. App. Br. 18 (Claims App.).
Rather, Zhang's paragraph 48 at best suggests the CPU usage is based on
CPU cycles but does not suggest further determining the total number of
computing cycles. See Zhang i-f 48; see also Reply Br. 11.
Nor does this cited section of Zhang suggest that any such calculated,
total computing cycles used by the VM(s) is based on a processor's usage
measurements by any virtual machine as further recited in claim 1. App. Br.
18 (Claims App.). Instead, this cited section of Zhang is silent on how any
such "CPU cycles" are calculated. See Zhang i-f 48. The Examiner also fails
to explain adequately how cited paragraphs 53 through 60 (Final Act. 3--4;
Ans. 10-11) address how or whether the total number of CPU cycles
discussed in paragraph 48 are determined. See Zhang i-fi-1 48, 53---60; see also
App. Br. 12-14.
The rejection does not rely on Mazhelis to cure the above-noted
deficiency. See Final Act. 3-5; Ans. 10-11.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of (1) independent claim 1, (2) independent claims 8 and 15,
which recite commensurate limitations, and (3) dependent claims 2-7, 9-14,
and 16-21 for similar reasons.
DECISION
We affirm the rejection of claims 1-21under§101.
We reverse the rejection of claims 1-21 under § 103.
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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