Ex Parte Salle et al

Patent Trial and Appeal Board

Apr 3, 2017

11016119 (P.T.A.B. Apr. 3, 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.
11/016,119 12/17/2004 Mathias J. R. Salle 82189100 4770
56436 7590 04/05/2017
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
04/05/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIAS J. R. SALLE, CLAUDIO BARTOUNI,
ABDEL BOULMAKOUL, DAVID TRASTOUR,
ATHENA CHRISTODOULOU, and CHRISTOPHER W. PREIST
Appeal 2014-0037861
Application 11/016,1192
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
March 25, 2013) and Reply Brief (“Reply Br.,” filed Feb. 11, 2014), and the
Examiner’s Answer (“Ans.,” mailed Dec. 17, 2013).
2 Appellants identify “Hewlett-Packard Development Company, LP” as the
real party in interest. Appeal Br. 2.
Appeal 2014-003786
Application 11/016,119
CLAIMED INVENTION
Appellants’ claimed invention relates to methods and systems that
calculate a projected utility of information technology recovery plans based
on contractual agreements (Spec., Title).
Claims 1,6, 17, 24, and 27 are the independent claims on appeal.
Claim 1, reproduced below with added bracketed matter, is illustrative of the
subject matter on appeal.
1. A method comprising:
[(a)] receiving, by a processor, parameters of an
information technology (IT) infrastructure, wherein the
processor comprises programmable hardware;
[(b)] formulating, by the processor, a first IT recovery
plan and a second IT recovery plan based on the parameters, the
first IT recovery plan adheres to a contractual agreement and the
second IT recovery plan violates the contractual agreement; and
[(c)] calculating, by the processor, a projected utility for
each of the first and second IT recovery plans.
REJECTIONS
I. Claims 1, 3—9, and 17—24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Vytas (US 2006/0015593 Al, pub. Jan.
19, 2006) and Rakic (US 7,386,752 Bl, iss. June 10, 2008).
II. Claims 2, 10-14, and 28 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Vytas, Rakic, and Sistanizadeh
(US 6,681,232 Bl, iss. Jan. 20, 2004).
III. Claims 15 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Vytas, Rakic, and Galindo-Legaria
(US 6,721,724 Bl, iss. Apr. 13, 2004).
IV. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Vytas, Rakic, and Bhoj (US 6,304,892 Bl, Oct. 16, 2001).
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V. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Vytas, Rakic, and Stone (US 2003/0036886
Al, pub. Feb. 20, 2003).
ANALYSIS
New Ground of Rejection—Non-Statutory Subject Matter
Claims 1—26
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection to claims 1—26 under 35 U.S.C. § 101.
In Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), the
Supreme Court applied a two-step framework for determining whether the
claims at issue are directed to one or more patent-ineligible concepts, i.e.,
laws of nature, natural phenomenon, and abstract ideas. Id. at 2355 (citing
Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289,
1296—1297 (2012)). The first step is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id.
Abstract ideas have been identified by courts by way of example, including
fundamental economic practices, certain methods of organizing human
activities, an idea ‘of itself,’ and mathematical relationships/formulas. Id. at
2355-56.
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
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abstract idea and merely invoke generic processes and machinery.
See 'Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
“[E]ach of the independent claims relate generally to a system for
scoring potential plans to implement changes to an information technology
(IT) infrastructure.” Appeal Br. 2. Independent claim 1 relates to a method
for calculating a projected utility of IT recovery plans, and recites that the
method comprises receiving parameters of an IT infrastructure; formulating
IT recovery plans based on the parameters; and calculating a projected utility
for each of the recovery plans; each step is performed by a processor. Claim
1 as a whole is directed to mathematical relationship s/formulas and merely
invokes a generic processor to carry out conventional processes (e.g., data
gathering and processing operations); the only feature left in the claim is a
matter of mere mathematical computation—calculating a projected utility.
See Spec. 125 (“calculate the projected utility gain or loss associated with
each plan.”). We conclude that performing mathematical operations to
calculate a projected utility is an abstract idea.
Additionally, if a method can be performed by human thought alone,
or by a human using pen and paper, it is merely an abstract idea and is not
patent-eligible under § 101. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method that can be performed
by human thought alone is merely an abstract idea and is not patent-eligible
under § 101.”). Thus, mental processes like calculating a value by
performing mathematical operations, as recited in claim 1, remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. Id. at 1375 (“That purely
mental processes can be unpatentable, even when performed by a computer,
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was precisely the holding of the Supreme Court in Gottschalk v. Benson,
[409 U.S. 63 (1972)].”)-
Proceeding to step two of Alice, we consider whether the elements of
the claim, both individually and as an ordered combination, transform the
nature of the claim into a patent-eligible application to ensure that the patent
in practice amounts to significantly more than a patent upon the ineligible
concept itself. Alice, 134 S. Ct. 2355. Steps (a) and (b) recite conventional
data processing operations that fail to be transformative of the abstract idea
as discussed above. Step (c) recites a mathematical operation of calculating
a projected utility. The recitation of a “processor” to perform the steps are
recitations of generic computer implementations and do not render the claim
patent-eligible. Id. at 2358 (“[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.”). “[Ajfter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
purely conceptual realm is beside the point.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted). We conclude that claim 1 fails to transform
the abstract idea into a patent-eligible invention.
Therefore, we enter a new ground of rejection of claim 1 under
35U.S.C. § 101.
We find no meaningful distinction between independent method
claim 1 and either independent system claims 6 and 17 or independent
program product claim 24; all the claims are directed to the same underlying
invention. Therefore, we enter a new rejection of independent claims 6, 17,
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and 24 under § 101. As the Federal Circuit has made clear “the basic
character of a process claim drawn to an abstract idea is not changed by
claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium.” See
CyberSource, 654 F.3d at 1375—76 (citing In re Abele, 684 F.2d 902 (CCPA
1982)).
Because we find that the dependent claims lack additional elements
that would render the claims patent-eligible, we also enter a new ground of
rejection under § 101 of these dependent claims on the same basis as the
independent claims from which they depend.
New Ground of Rejection—Indefiniteness
Claims 27 and 28
We enter a new ground of rejection for claims 27 and 28 under 35
U.S.C. § 112 12 as indefinite because these claims recite a means-plus-
fimction limitation that lacks corresponding structure in Appellants’ written
description.
When a claim uses the term “means” to describe a limitation, as in
claim 27, a presumption inheres that the inventor used the term to invoke
§ 112,16. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir.
2003). Independent claim 27 recites “means for determining” a cause of an
IT fault or a contractual violation; “means for generating” recovery plans for
each IT fault and contractual violation determined; “means for calculating” a
projected cost utility of each recovery plan based on contractual agreements;
and “means for ranking” the recovery plans based on the projected cost
utility. No stmcture modifies any of these limitations. As the claim is
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devoid of language that provides the requisite structure, we conclude these
limitations are means-plus-fimction limitations.
We next consider whether Appellants’ written description contains
corresponding structure for each of the means-plus-fimction limitations of
claim 27. Cf. Aristocrat Techs. Austl. PtyLtd. v. Int'l Game Tech., 521 F.3d
1328, 1331 (Fed. Cir. 2008). In computer-implemented inventions such as
this one, the corresponding structure must include an “algorithm that
transforms [a] general purpose microprocessor to a special purpose computer
programmed to perform the disclosed algorithm.” Id. at 1338 (citation and
internal quotation marks omitted). Appellants’ written description simply
describes these means plus function limitations in functional terms. For
instance, Appellants’ summary of claimed subject matter cites these non-
structural elements as “means (e.g., [diagnosis layer] 106, [processor] 164,
[memory] 166, [contractual processing application] 168, [resource data] 184,
[contractual processing logic] 202) for determining a cause of at least one of
an IT fault or a contractual violation” (Appeal Br. 5), but we find no
corresponding algorithm disclosed here.
Accordingly, we conclude that the means-plus-function limitations of
claim 27 lack corresponding structure in the Specification, and are therefore
indefinite under 35 U.S.C. § 112 12. As claim 28 depends from claim 27
and does not provide sufficient structure for the “means for monitoring”
limitation, this claim is also indefinite under 35 U.S.C. § 112^2.
Because the scope of the “means” elements of claim 27 is unclear, we
therefore pro forma reverse the rejections of claims 27 and 28 under 35
U.S.C. § 103(a). See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It
should be understood that our decision to reverse the rejections of these
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claims is based solely on the indefiniteness of the claims, and does not
reflect on the merits of the underlying rejections.
Rejections I—V
Claims 1—26
We have reviewed Appellants’ arguments in the Briefs against the
Examiner’s Answer and the Final Office Action, but we are not persuaded of
error. We adopt the Examiner’s findings and rationale on pages 3—35 of the
Answer as our own, and we note the following for emphasis only.
Appellants’ argument that neither Vytas nor Rakic teaches an IT
recovery plan (Reply Br. 1—3; Appeal Br. 12—16) is unpersuasive because
Appellants are suggesting too narrow a construction of the claim term that
does not comport with its broadest reasonable interpretation. Appellants
assert:
Vytas never describes its IT infrastructure as normal or
abnormal, or usual or unusual. Instead, Vytas merely adjusts
resource allocation within its normal and usual IT infrastructure.
Second, the plain language of the independent claims expressly
recite an “IT infrastructure” and other features providing context
of the application of the IT recovery plan to recovery of
infrastructure. Conversely, no infrastructure is recovered in
Vytas.
Appeal Br. 15. But, Appellants’ assertions are not commensurate with the
language and scope of claim 1, because Appellants are essentially arguing
limitations not recited in the claim. Claim 1 requires, in part, (a) receiving
parameters of an IT infrastructure; (b) formulating IT recovery plans based
on the parameters; and (c) calculating a projected utility for each of the
recovery plans. There is no requirement in the claim, however, of IT
infrastructure being described as “normal or abnormal, or usual or unusual,”
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or “for recovery of infrastructure”. Therefore, we decline to read the argued
limitation into the claim because limitations not appearing in the claims
cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Appellants’ argument that the “specification plainly provides that an
IT recovery plan repairs or replaces a failing or faulty component of the IT
infrastructure, and is not a mere resource allocation as taught by Vytas” does
not apprise us of any errors in the Examiner’s findings. Appeal Br. 15. And
the fact that Vytas alone does not disclose a feature of the claim does not
apprise us of error in the obviousness rejection. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references.”).
In fact, the Examiner relies on the teachings of Rakic for formulating
an IT recovery plan that violates the contractual agreement. See Ans. 4—5;
see also Rakic 1:43—47 (“if the driver was corrupted due to a hardware
failure, the hardware may need to be replaced and a more complex recovery
involving restoring, reconfiguring, and restarting the applications on the new
hardware may be needed.”). The position the Examiner is taking is that the
combination of cited prior art disclosures would have led one of ordinary
skill in the art to the claimed subject matter. See Ans. 33. Thus, the relevant
question in considering obviousness is not whether the claimed invention is
different from the prior art, but rather “whether the difference between the
prior art and the subject matter in question ‘is a difference sufficient to
render the claimed subject matter unobvious to one skilled in the applicable
art.’” See Dann v. Johnston, 425 U.S. 219, 228 (1976). We are not
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persuaded sufficient difference exists, because on the record before us, the
preponderance of the evidence supports the Examiner’s position. Appellants
provide no evidence suggesting any unpredictability in combining the
disclosures of Vytas and Rakic.
Accordingly, we sustain the rejection of independent claim 1, and
independent claims 17 and 24, which are argued together. See Appeal Br.
12. We also sustain the rejection of claims 2—5, 18—23, 25, and 26, which
are not argued separately and depend from one of independent claims 1,17,
and 24, for the same reasons.
Regarding independent claim 6, we are unpersuaded by Appellants’
argument that Vytas does not “correct a service breach in its optimization of
resource allocation” (Appeal Br. 21), because the language of the claim
merely requires “the processor to receive plans and scheduling options to
correct a violation of one or more contractual agreements.” See claim 6. As
the Examiner observes, “the claims do not positively recite an active service
breach leading to a real time cost.” Ans. 34.
Accordingly, we sustain the rejection of independent claim 6, and
dependent claims 7—16, which are not argued separately. See Appeal Br. 22.
DECISION
A New Ground of Rejection of claims 1—26 has been entered under 35
U.S.C. § 101.
A New Ground of Rejection of claims 27 and 28 has been entered
under 35 U.S.C. § 11212.
The Examiner’s decision to reject claims 1—26 under 35 U.S.C. § 103
is AFFIRMED.
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The Examiner’s decision to reject claims 27 and 28 under 35 U.S.C.
§ 103 is REVERSED.
This decision contains new grounds of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant(s), WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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