Ex Parte REDDINGTON et al

Patent Trial and Appeal Board

Aug 30, 2018

13680489 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/680,489 11/19/2012
76933 7590 09/04/2018
IBM (END-KLS)
c/o Kennedy Lenart Spraggins LLP
301 Congress Avenue
Suite 1350
AUSTIN, TX 78701
FIRST NAMED INVENTOR
FRANCIS X. REDDINGTON
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.
END920 l 20056US 1 3764
EXAMINER
GOLDBERG, IV AN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
office@klspatents.com
kate@klspatents.com
hanna@klspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS X. REDDINGTON and NEIL SAHOTA
Appeal2017-002407
Application 13/680,489 1
Technology Center 3600
Before THU A. DANG, CATHERINE SHIANG,
STEVEN M. AMUNDSON, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5-9, 11-15, 17, 18, and 20-24, which are all
the claims pending and rejected in the application. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. Appeal Brief dated June 22, 2016 ("App. Br.") 1.
Appeal2017-002407
Application 13/680,489
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to data
processing, and in particular, aligning analytical metrics with strategic
objectives. See generally Spec. 1.
Methods, apparatus, and products for aligning analytical
metrics with strategic objectives, including: identifying, by the
metric analytics generator engine, measurable metrics
associated with a business activity; identifying, by the metric
analytics generator engine, one or more strategic objectives
associated with the business activity; correlating, by the metric
analytics generator engine, the one or more measurable metrics
associated with the business activity to the one or more
strategic objectives associated with the business activity; and
generating, by the metric analytics generator engine, key
performance indicator formulas in dependence upon the one or
more measurable metrics associated with the business activity
and the one or more strategic objectives associated with the
business activity.
Spec. 1-2. Claim 1 is exemplary:
1. A computer-implemented method of aligning
analytical metrics with strategic objectives, the method
compnsmg:
automatically identifying, by a metric analytics generator
engine executed in the computer as stored in a memory of the
computer, one or more measurable metrics associated with a
business activity2 one or more strategic objectives associated
with the business activity, and one or more key performance
indicators associated with respective strategic objectives;
correlating, by the metric analytics generator engine, the
one or more measurable metrics associated with the business
2 We leave it to Appellants to determine whether"," is missing here.
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activity to the one or more strategic objectives associated with
the business activity, such that at least one of the one or more
measurable metrics is correlated with more than one strategic
objective;
automatically determining, by the metric analytics
generator engine, a value of a respective key performance
indicator based at least in part on the one or more measurable
metrics that correlate to the respective key performance
indicator;
automatically determining, by the metric analytics
generator engine, success or failure of a respective strategic
objective based at least in part on the value of the key
performance indicator associated with the respective strategic
objective;
automatically generating, by the metric analytics
generator engine, key performance indicator formulas in
dependence upon the one or more measurable metrics
associated with the business activity and the one or more
strategic objectives associated with the business activity; and
evaluating success of the business activity based at least
in part on the key performance indicator formulas and the
values of the key performance indicators.
References and Rejections
Claims 1-3, 5-9, 11-15, 17, 18, and 20-24 are rejected under
35 U.S.C. § 101 because they are directed to patent-ineligible subject matter.
Final Action dated March 16, 2016 ("Final Act.") 10-18.
Claims 1-3, 5-9, 11-15, 17, 18, 20, 21, and 24 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the collective
teachings of Hulen (US Pub. No. 2006/0161471; published July 20, 2006)
and Jaligama (US Pub. No. 2007 /0021967; published January 25, 2007).
Final Act. 18--42.
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Claim 22 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the collective teachings of Hulen, Jaligama, and Nicolov
(US Pub. No. 2009/0306967; published December 10, 2009). Final Act. 42-
44.
Claim 23 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the collective teachings of Hulen, Jaligama, and Fourman
(US Pub. No. 2007 /0055564; published March 8, 2007). Final Act. 44--46.
ANALYSIS
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken (Final Act. 10-46) and (ii) the Examiner's Answer ("Ans.")
2-15 to the extent they are consistent with our analysis below. 3
35 us.c. § 101
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 10-18; Ans.
2-11. In particular, the Examiner concludes the claims are directed to the
abstract idea of manipulating information. See Final Act. 10-18; Ans. 2-11.
The Examiner determines the claims do not identify an inventive concept to
transform the nature of the claims into a patent-eligible application. See
Final Act. 10-18; Ans. 2-11. Appellants argue the Examiner erred. See
3 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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App. Br. 6-19, 25-29; Reply Brief dated November 22, 2016 ("Reply Br.")
8-21, 27-31.
Appellants have 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
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
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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).
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
Appellants' arguments (App. Br. 6-19, 25-29; Reply Br. 8-21, 27-31), 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 or analyzing
information ("identifying ... "; "correlating ... "; "determining ... ";
"generating ... "; "evaluating ... "). See Elec. Power, 830 F.3d at 1353.
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Independent claims 7 and 13 are directed to similar functions or processes.
See claims 7, 13. The dependent claims are directed to similar functions or
processes, and Appellants have not shown such claims are directed to other
non-abstract functions or processes. See claims 2, 3, 5, 6, 8, 9, 11, 12, 14,
15, 17, 18, and 20-24.
Appellants' assertion regarding pre-emption (App. Br. 27, Reply Br.
29) is unpersuasive, because "[ w ]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility .... \Vhere a patent's claims are deemed only
to disclose patent ineligible subject matter under the 1Vfayo framework, as
they are in this case, preemption concerns are fully addressed and made
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 clairns 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 Appellants' assertion (App. Br.
6-19, 25-29; Reply Br. 8-21, 27-31), Appellants have 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 Appellants' arguments (App. Br. 6-19, 25-29;
Reply Br. 8-21, 27-31 ), 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
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generic computer components. See Elec. Power, 830 F.3d at 1355; see also
Claim 1 (reciting "a metric analytics generator engine executed in the
computer as stored in a memory of the computer"); Claim 7 (reciting "a
metric analytics generator engine executed in the computer as stored in a
memory of the computer"); Claim 13 (reciting "a metric analytics generator
engine executed in the computer as stored in a memory of the computer").
The Specification explains "the metric analytics generator engine (200) may
be embodied as a special purpose module of computer program instructions
executed on computer hardware such as, for example, a computer
processor." Spec. 6. Therefore, the recited "metric analytics generator
engine" may be a module of computer program instructions, which is
conventional in the art. The dependent claims call for similar generic
components and devices, and Appellants have not shown such claims require
any non-conventional components or devices. See claims 2, 3, 5, 6, 8, 9, 11,
12, 14, 15, 17, 18, and 20-24.
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.
Appellants' assertion (App. Br. 16-18; Reply Br. 18-20) about DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) is
unpersuasive. In DDR Holdings, the Court found:
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the claims at issue here specify how interactions with the
Internet are manipulated to yield a desired result-a result that
overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink. Instead of the
computer network operating in its normal, expected manner by
sending the website visitor to the third-party website that
appears to be connected with the clicked advertisement, the
claimed system generates and directs the visitor to the above-
described hybrid web page that presents product information
from the third-party and visual "look and feel" elements from
the host website. When the limitations of the '399 patent's
asserted claims are taken together as an ordered combination,
the claims recite an invention that is not merely the routine or
conventional use of the Internet.
DDR Holdings, 773 F.3d at 1258-59.
Unlike the claims of DDR, the claims here do not "specify how
interactions with the Internet are manipulated to yield ... a result that
overrides the routine and conventional sequence of events." DDR Holdings,
773 F.3d at 1258. Further, this case differs from DDR because as discussed
above, the claims here recite inventions that are merely the routine or
conventional use of the technology-the opposite of what the claims of DDR
represent. See DDR Holdings, 773 F.3d at 1258-59.
In short, Appellants have 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 Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1-3, 5-9, 11-15, 17, 18, and 20-
24 under 35 U.S.C. § 101.
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35 us.c. § 103
On this record, the Examiner did not err in rejecting claim 1.
I
Appellants contend Hulen does not teach "Identifying Metrics,
Objectives, And Key Performance Indicators" (App. Br. 19 ( emphasis
omitted)) with respect to the following claim 1 limitation:
automatically identifying, by a metric analytics generator
engine executed in the computer as stored in a memory of the
computer, one or more measurable metrics associated with a
business activity one or more strategic objectives associated
with the business activity, and one or more key performance
indicators associated with respective strategic objectives.
See App. Br. 19--22, 29; Reply Br. 21-24, 31-33. In particular, Appellants
contend "[ t ]here is nothing like this identification process taught or
suggested in Hulen. On the contrary, in sharp contrast to the identifying
process claimed here, Hulen' s data element relationships are all
hierarchically predefined in tree structures. See, e.g., Hulen's Abstract[.]"
App. Br. 20; see also Reply Br. 22. Appellants argue the cited Hulen
paragraphs do not teach the disputed limitations. See App. Br. 20-22, 29;
Reply Br. 22-24, 31-33.
Appellants have not persuaded us of error. It is well established that
during examination, claims are given their broadest reasonable interpretation
consistent with the specification and should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art, but
without importing limitations from the specification. See In re Am. Acad. of
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Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted);
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
Here, Appellants do not argue the Specification specifically defines
"identifying ... one or more measurable metrics associated with a business
activity one or more strategic objectives associated with the business
activity, and one or more key performance indicators associated with
respective strategic objectives." Given the broad limitations recited by claim
1, the Examiner correctly determines the "claim does not restrict how the
relationship is formed, merely all that is required is 'identifying' metrics.
Thus, par. 0137, where metrics are received from a data source in Hulen, is
sufficient to disclose the limitation." Ans. 12.
Further, the Examiner finds Hulen's metrics are associated with a
business activity. See Final Act. 19. Appellants fail to show Examiner error
because Appellants merely assert Hulen's metrics are not associated with a
business activity (Reply Br. 32), but do not explain why. See In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of
this court [ or this Board] to examine the claims in greater detail than argued
by an appellant, looking for [patentable] distinctions over the prior art.").
Similarly, the Examiner determines the "claim does not restrict how
the relationship is formed, merely all that is required is 'identifying'
strategic objectives, associated ... with a business activity." Ans. 12. The
Examiner finds "Hulen discloses defining a scorecard to quantify and
visualize performance in meeting an organizational strategy (See par. 0053),
this is sufficient to disclose 'identifying' strategic objectives (i.e.
organizational strategy) associated with business activity (i.e.
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performance)." Ans. 12. Appellants do not specifically address the
Examiner's above finding, and do not show Examiner error. See Baxter
Travenol Labs., 952 F.2d at 391.
Finally, the Examiner correctly finds Hulen's paragraph 53 teaches
"identifying [mapped to Hulen's "quantifying"] ... one or more key
performance indicators [mapped to Hulen's "performance"] associated with
respective strategic objectives [mapped to Hulen's "organizational
strategy"]." See Ans. 12; Hulen ,r 53.
II
Appellants contend Hulen does not teach "correlating ... metrics ...
to ... strategic objectives." See App. Br. 22-23, 29; Reply Br. 24--25, 31.
In particular, Appellants argue "Hulen discuss[ es] objectives that support
strategy, but neither paragraph 0054 nor anything else in Hulen discloses,
teaches, or suggests the causal correlation between metrics and strategic
objectives recited in the claims of the present application." App. Br. 22;
also Reply Br. 24.
Appellants have not persuaded us of error. Because the Examiner
relies on the combination of Hulen and J aligama to teach and suggest the
disputed claim limitations, Appellants cannot establish nonobviousness by
attacking Hulen individually. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
The Examiner finds-and Appellants do not dispute-Hulen teaches
"metrics" and "strategic objectives." See Final Act. 20-21. The Examiner
finds-and Appellants do not dispute-I aligama teaches "correlating ... to
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.... " See Final Act. 23-24. Therefore, Hulen does not need to separately
teach that claim element.
Cumulatively, the Examiner finds Hulen also teaches and suggests the
disputed limitation. See Final Act. 20-21. As discussed above, during
examination, claims are given their broadest reasonable interpretation
consistent with the specification and should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art, but
without importing limitations from the specification. See Am. Acad. of Sci.
Tech Ctr., 367 F.3d at 1364; SuperGuide Corp., 358 F.3d at 875. The
Specification explains:
In the example method of Figure 2, each correlation between a
measurable metric (208) and a strategic objective (212) represents a
relationship between the measurable metric (208) and the strategic
objective (212) such that a change to the value of the measurable
metric (208) impacts the ability of a business entity to achieve its
strategic objectives (212).
Spec. 8 ( emphasis added).
The above disclosure does not define "correlating," but merely
describes a non-limiting, exemplary embodiment of implementing a
correlation. The Examiner finds Hulen' s disclosure of "a series of
objectives within each of a set of designated perspectives are identified that
support the overall strategy" (Hulen ,r 54 ( emphasis added)) teaches and
suggests the disputed correlating limitation. See Ans. 13. Appellants
dispute that finding, but do not adequately explain why, as Appellants have
not shown the definition of "correlating" is limited to the disclosure on page
8 of the Specification.
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III
Appellants contend:
Regarding determining success or failure of a respective
strategic objective, all the reference points cited against this
limitation, third paragraph page 20 in the Office Action,
indicator levels, 3-level stop light scheme, and so on, describe
qualities of indicators, not success or failure of an objective.
Regarding generating key performance indicator formulas, all
the reference points cited against this limitation, first paragraph
page 21 in the Office Action, generate KPI based on attributes,
weighted average ofKPls, and so on, describe utilizing
formulas, not generating formulas.
Regarding evaluating success of the business activity, all the
reference points cited against this limitation, second paragraph
page 21 in the Office Action, indicator levels, 3-level stop light
scheme, grouped by themes, theme with a color of red, and so
on, evaluate indicators, not success or failure of a business
activity. In addition, although referenced evaluation of
indicators in Hulen may utilize formulas, none of them utilize
formulas generated under automation as described in the claims
of the present application.
App. Br. 23; Reply Br. 25; see also App. Br. 29; Reply Br. 31, 33.
Appellants have not persuaded us of error.
First, the Examiner finds: "Hulen discloses having a stoplight scheme
or bands corresponding to 'good' and 'bad.' ... green= good performance."
Ans. 14. Therefore, the Examiner maps the claimed "success or failure of a
respective strategic objective" to Hulen's good or bad result, and the claimed
"success of the business activity" to Hulen's good performance. See Ans.
14. Appellants' general assertion that "[g]ood and bad stoplight bands do
not teach or suggest evaluating success of business activity based on key
performance indicator formulas and values of key performance indicators"
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(App. Br. 29; see also Reply Br. 31, 33) lacks adequate critique of the cited
Hulen portions and the Examiner's additional specific findings (Final Act.
22-23). Therefore, Appellants fail to show Examiner error. See Baxter
Travenol Labs., 952 F.2d at 391.
Second, the Examiner explains why Hulen's paragraphs 41 and 47
teach and suggest "generating ... formulas," as recited in claim 1. See Ans.
14--15. Appellants do not specifically address the Examiner's above finding,
and do not show Examiner error. See Baxter Travenol Labs., 952 F.2d
at 391.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of independent claim 1, and independent
claims 7 and 13 for similar reasons.
We also sustain the Examiner's rejection of corresponding dependent
claims 2, 3, 5, 6, 8, 9, 11, 12, 14, 15, 17, 18, and 20-24, as Appellants do not
advance separate substantive arguments regarding those claims.
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 5-9, 11-15,
17, 18, and 20-24 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-3, 5-9, 11-15,
17, 18, and 20-24 under pre-AIA 35 U.S.C. § 103(a).
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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