Ex Parte Prieditis

Patent Trial and Appeal Board

May 15, 2017

13173592 (P.T.A.B. May. 15, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/173,592 06/30/2011 Armand Erik Prieditis NEUS.P002 9392
110660 7590 05/17/2017
Mahamedi IP Law LLP (Neustar)
1901 S. Bascom Ave.
Suite 600
Campbell, CA 95008
EXAMINER
DONABED, NINOS
ART UNIT PAPER NUMBER
2444
NOTIFICATION DATE DELIVERY MODE
05/17/2017 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):
eofficeaction @ appcoll.com
uspto@m-iplaw.com
mark@m-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARMAND ERIK PRIEDITIS
Appeal 2017-002637
Application 13/173,5921
Technology Center 2400
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1—20, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b). Claims 21 and 22 are cancelled.
App. Br. 3.
We reverse.
1 The real party in interest identified by Appellant is Neustar IP Intelligence,
Inc. App. Br. 3.
Appeal 2017-002637
Application 13/173,592
STATEMENT OF THE CASE
Appellant’s disclosed invention relates to “predicting the geographic
location of an Internet Protocol (IP) address.” Spec. 11. Claim 1, which is
illustrative, reads as follows:
1. A method of controlling access to server resources
over a network, the method comprising:
receiving, at a server on the network, a request for server
resources from a network device;
receiving a geographic prediction model to predict
geographic coordinates of the network device, wherein the
geographic prediction model includes conditional multivariate
normal distributions grouped into one or more subclasses, each
distribution having a mean vector representing typical traceroute
information between a plurality of training network devices and
one or more beacons;
receiving traceroute information between the network
device and Internet Protocol (IP) addresses for the one or more
beacons associated with the geographic location prediction
model without requiring a geographic location for at least one of
the beacons;
generating, by use of a processor, predicted geographic
coordinates for the network device by using the geographic
prediction model to compare the traceroute information with
geographic locations of the plurality of training network devices;
and
generating a result including the predicted geographic
coordinates of the network device and an associated covariance
matrix, wherein the result causes the server to grant the network
device access to one or more server resources.
Claims 1—20 stand rejected under 35 U.S.C. § 101, as being directed
to non-statutory subject matter. See Final Act. 2-4; Adv. Act. 2.
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Rather than repeat the arguments here, we refer to the Briefs
(“App. Br.” filed July 21, 2016; “Reply Br.” filed Dec. 5, 2016), the Request
for After Final Consideration Pilot Program (AFCP 2.0) (“Amend, after
Final” filed Dec. 21. 2015), and the Specification (“Spec.” filed June 30,
2011) for the positions of Appellant, and the Final Office Action
(“Final Act.” mailed Sept. 21, 2015), the Advisory Action (“Adv. Act.”
mailed Jan. 21, 2016), and Examiner’s Answer (“Ans.” mailed Oct. 4, 2016)
for the reasoning, findings, and conclusions of the Examiner.
ISSUE
The dispositive issue2 presented by Appellant’s arguments is whether
the Examiner errs in concluding claim 1 is directed to an abstract idea under
the analysis set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289 (2012) and Alice Corp. Party Ltd. v. CLS
Bank International, 134 S. Ct. 2347 (2014).
ANALYSIS
The Examiner finds Appellant’s claimed invention is “directed to the
abstract idea of predicting the geographic location of an IP protocol address
using a mathematical algorithm/model.” Final Act. 3.
In an amendment after the Final Action, Appellant amends
independent claims 1, 8, and 16 to overcome the rejection under 35 U.S.C.
§101. See Amend, after Final 2—6. In particular, independent claims 1, 8,
and 16 are amended to include (i) receiving, at a server on a network, a
2 Appellant’s arguments raise additional issues. Because the identified issue
is dispositive of the Appeal, we do not reach the additional issues.
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request for server resources from a network device, and (ii) causing the
server to grant the network device access to one or more server resources
using a generated result involving the network device’s predicted geographic
coordinates. See id.
In response to the Amendment after the Final Action, the Examiner
both entered and addressed Appellant’s amendment in an Advisory Action,
finding “[tjhe new limitations to the claims would not overcome the [§] 101
rejection because these limitations are routine for a generic computing
device to implement therefore the claims are geared towards an abstract idea
without significantly more.”3 Adv. Act. 2 (emphases added).
We disagree. To be statutorily patentable under 35 U.S.C. § 101, the
subject matter of an invention must be a “new and useful process, machine,
manufacture, or composition of matter, or [a] new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held there are implicit
exceptions to the categories of patentable subject matter identified in § 101,
including (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
Alice, 134 S. Ct. at 2355. Further, the Court has “set forth a framework for
distinguishing patents that claim [1] laws of nature, [2] natural phenomena,
and [3] abstract ideas from those that claim patent-eligible applications of
those concepts.” Id., citing Mayo, 132 S. Ct. 1289. The evaluation follows
the two-part analysis set forth in Mayo: 1) determine whether the claim is
directed to an abstract idea; and 2) if an abstract idea is present in the claim,
determine whether any element, or combination of elements, in the claim is
3 Nowhere in the Answer do we find the Examiner again specifically
addressing the amendments submitted in the Amendment after Final, and
entered in the Advisory Action.
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sufficient to ensure that the claim amounts to significantly more than the
abstract idea itself. See Alice, 134 S. Ct. at 2350. Using a “processor” to
implement the abstract idea fails to transform the idea into a patent-eligible
application of the idea to ensure that the claim amounts to significantly more
than that idea. See Alice, 134 S. Ct. at 2357. “[SJimply implementing a
mathematical principle on a physical machine, namely a computer, [is] not a
patentable application of that principle.” Mayo, 132 S. Ct. at 1301. To the
contrary, to transform such a nonpatentable phenomenon, process, or
concept into a patent-eligible application, one must do more than simply
state the phenomenon, process, or concept “while adding the words ‘apply
it.’” Id. at 1294.
Claim 1 is directed to a process, which is one of the four statutory
classes. Following the Court’s guidance, we turn to the first step of the
Mayo/Alice analysis to determine if the claim is directed to one of the
judicial exceptions, i.e., an abstract idea.
Appellant’s invention is directed to predicting the geographic location
of an Internet Protocol (IP) address. Spec., Abstract. We agree with the
Examiner’s finding that claim 1 includes the abstract idea of generating
predicted geographic coordinates. See Final Act. 2—3; Ans. 4—9. Claim 1
requires, in essence, receiving a geographic prediction model and traceroute
information, and generating the predicted geographic coordinates using the
geographic prediction model to compare the traceroute information with
other geographic locations. However, we do not agree that the claim as a
whole is directed to the abstract idea.
On this record we find Appellant’s claim 1 recites a specific way to
“[control] access to server resources over a network” using predicted
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geographic coordinates for a network device rather than the abstract idea of
generating the predicted geographic coordinates.
Appellant’s Specification supports the invention as claimed as being
an improvement for controlling access to server resources over a network.
The “Background” section of Appellant’s Specification discloses that
“[gjeographic information may also be utilized by network-based content
distribution systems ... to determine whether particular content may validly
be distributed to a certain network location,” (Spec. 14), i.e., “causing] [a]
server to grant the network device access to one or more server resources,”
as recited in claim 1, based on location. The Specification further discloses
“[t]here are various ways to determine the geographic location of a network
entity with varying levels of accuracy.” Id. ^1. In particular, Appellant’s
Specification discloses various techniques that “rely on the physics of
electronic propagation.” Id. 112. Alternatively, “[o]ne method currently in
use for determining the location of a network address relies on network
databases. . . . [but t]here are a number of shortcomings to this method.” Id.
12—13. Further, “three other approaches . . . used in an attempt to solve
the problem of accurate IP address geolocation . . . ha[ve] several
shortcomings.” Id. H 14—16.
Accordingly, Appellant’s Specification discloses “the described
embodiments solve the problem of finding a fine-grained geographic
location of an IP address based on a parametric model which relates
traceroute information (e.g., round-trip transit time and number of hops)
from one [or] more beacons to geographic coordinates of the target IP
address.” Id. 124 (emphasis added). Appellant’s Specification further
discloses “[t]he information indicative of the predicted geographic
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coordinates position that corresponds to the desired target network entity . . .
can be provided to a requesting party.” Id. 1 57.
Per the Supreme Court’s holding in Diamond v. Diehr, 450 U.S. 175
(1981), claims are patent eligible under § 101 “when a claim containing a
mathematical formula [or mental processes] implements or applies that
formula in a structure or process which, when considered as a whole, is
performing a function which the patent laws were designed to protect.”
Diehr, 450 U.S. at 192. In terms of the Alice test, the Diehr claims were not
directed to the mathematical formula or mental process alone, but rather to
an improvement in the rubber curing process. See Thales Visionix Inc. v.
United States, 850 F.3d 1343, 1347-A8 (Fed. Cir. 2017).
“Just as the claims in Diehr reduced the likelihood that the rubber
molding process would result in ‘overcuring’ or ‘undercuring,’”
(Thales, 850 F.3d at 1348), Appellant’s claims result in a method that
improves access to server resources over a network (Spec. 14) by finding “a
fine-grained geographic location of an IP address based on a parametric
model which relates traceroute information . . . from one [or] more beacons
to geographic coordinates of the target IP address” (id. 124). Such a method
is not directed merely to an abstract idea, e.g., mental steps, but is directed to
an improvement in how server access is granted to a network device that
sends a request for server resources. Accordingly, Appellant’s invention,
directed to finding the fine-grained geographic location of the IP address
based on a parametric model, improves a network device’s access to the
network and, thereby, solves the art-recognized problem of accurately
controlling access to server resources over the network.
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Thus, Appellant’s invention is a “specific asserted improvement in
computer capabilities” rather than “a process that qualifies as an ‘abstract
idea’ for which computers are invoked merely as a tool.” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016). Accordingly,
because “the claims are directed to a specific implementation of a solution to
a problem in the software arts,” id. at 1339, claim 1 is not directed merely
toward a patent-ineligible abstract idea.
“Because we find the claims are not directed to an abstract idea, we
need not proceed to step two.” Thales, 850 F.3d at 1348 (citing Alice, 134
S.Ct. at 2355; Enfish, 822 F.3d at 1339).
Accordingly, we do not sustain the rejections of (1) claim 1; (2)
independent claims 8 and 16, each of which includes a limitation
substantially similar to the limitation discussed supra (compare App. Br. 12
(Claims App’x), with id. at 13—16) and was rejected on substantially the
same basis as claim 1 (see Final Act. 2—4); and (3) claims 2—7, 9-15, and
17—20, which depend from claims 1, 8, and 16 respectively.
DECISION
The decision of the Examiner to reject claims 1—20 is reversed.
REVERSED
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