Ex Parte Shah et al

Patent Trial and Appeal Board

Jun 27, 2016

12237695 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/237,695 09/25/2008 AmipJ. Shah
56436 7590 06/29/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82240469 1257
EXAMINER
ULLAH MASUD, MOHAMMAD R
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte AMIP J. SHAH, CHANDRAKANT PATEL, and
CULLEN E. BASH
Appeal2013-008584
Application 12/237,695 1
Technology Center 3600
Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Amip J. Shah et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-15. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellants identify Hewlett-Packard Development Company, LP as
the real party in interest. App. Br. 3.
Appeal2013-008584
Application 12/237,695
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of managing a structure to perform a service, said
method comprising:
determining, by a processor, a net power value for
implementing the structure;
calculating, by the processor, a structure available energy
value from the net power value;
calculating, by the processor, a fuel available energy
value from the structure available energy value, wherein the
fuel available energy value is a function of the structure
available energy value and an environmental sustainability of
the structure; and
managing, by the processor, implementation of the
structure based upon the calculated fuel available energy value.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kramer
Itoh
Nojima
US 6,757,591 B2
US 2005/0278040 Al
US 2007 /0038388 Al
The following rejections are before us for review:
June 29, 2004
Dec. 15, 2005
Feb. 15,2007
1. Claims 1-15 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which the Appellants regard as the invention.
2. Claims 1-15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ito, Kramer, and Nojima.
2
Appeal2013-008584
Application 12/237,695
ISSUES
Did the Examiner err in rejecting claims 1-15 are rejected under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the Appellants regard
as the invention?
Did the Examiner err in rejecting claims 1-15 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Ito, Kramer, and Nojima?
ANALYSIS
The rejection of claims 1-15 under 35 U.S. C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the Appellants regard as the invention.
The Examiner states:
Claims 1-5 and 9-15 recite limitation of managing
"implementation of the structure" and "implementing the
structure".
Since these claims do not set forth any steps involved in
the method/process, it is unclear what method/process applicant
is intending to encompass. A claim is indefinite where it merely
recites a use without any active, positive steps delimiting how
this use is actually practiced. The structure or method steps
which go to make up the device or method must be clearly and
positively specified.
Final Act. 2.
The Examiner's statements give no indication that the claims have
been read in light of the Specification. Nor has a claim construction analysis
been conducted in an attempt to ascertain the meaning of the claim terms
"implementation" or "implementing." Rather than clearly explaining why
"implementation of the structure" and "implementing the structure" renders
3
Appeal2013-008584
Application 12/237,695
the claims imprecise, the Examiner is demanding more; that is, additional
steps be included in the claims before they can be found definite. "If the
claims, read in the light of the specification, reasonably apprise those skilled
in the art both of the utilization and scope of the invention, and if the
language is as precise as the subject matter permits, the courts can demand
no more." Georgia-Pacific Corp. v. U.S. Plywood Corp., 258 F.2d 124, 136
(2d Cir. 1958). Given the lack of explanation, the demand that additional
steps be included in the claims reflects a concern over the breadth of the
claims. But "[b]readth is not indefiniteness." In re Gardner, 427 F.2d 786,
788 (CCP A 1970).
The rejection of claims 1-15 under 35 U.S. C. §103 (a) as being unpatentable
over Ito, Kramer, and Nojima.
The Examiner's position is that Itoh discloses all that is claimed in
independent claims 1, 11, and 15
but does not explicitly disclose an invention of calculating a fuel
available energy value from the structure available energy value,
wherein fuel available energy value is also a function of
environmental sustainability of the structure, and managing the
structure based upon the calculated fuel available energy value.
Final Act. 4. Kramer is relied upon as disclosing "managing structure to
calculate a fuel available energy value from the structure available energy
value, and managing the structure based upon the calculated fuel available
energy value (Claim 1)." Id. Nojima is relied upon for disclosing "fuel
available energy value is also a function of environmental sustainability of
the structure (figures 10-12 and paragraphs [0072]-[0073])." Id. The
Examiner finds that
4
Appeal2013-008584
Application 12/237,695
Id.
it would have been obvious for one of ordinary skill in the art of
structure management to have modified the invention of Itoh to
calculate a fuel available energy value from the structure
available energy value, and to manage the structure based upon
the calculated fuel available energy value as taught by Kramer
and wherein fuel available energy value is also a function of
environmental sustainability of the structure as taught by
Nojima, in order to manage an environmental friendly structure.
The Appellants disagree, in part, with the finding that Nojima
discloses "fuel available energy value is a function of ... an environmental
sustainability of the structure" (claims 1, 11and15). App. Br. 14 (emphasis
omitted). We agree.
As the Appellants point out, para. 73 ofNojima discloses that
[ t ]he fuel purchase system of above item (7), adapted to assist the
fuel supplier in fuel purchase by providing to the supplier a
database inclusive of environmental tax data and global warming
coefficient data and setting up a certain object fi.mction to
minimize costs as well as to minimize environmental pollution.
This passage describes how the fuel purchase system assists a fuel supplier
in purchasing fuel using environmental and global warming data. The
data- such as "environmentally influential substance emissions (Nojima i-f
72)", "costs of ... fuels manufactured" (id.), and global warming coefficient
data (id. i-f 73) - helps fuel suppliers make fuel purchases to minimize costs
and minimize environmental pollution. We see no disclosure in the cited
figures and passages to calculating a fuel available energy value based on
the environmental sustainability of the structure as claimed.
Accordingly, because a preponderance of the evidence does not
support finding Nojima discloses the claim limitation "fuel available energy
5
Appeal2013-008584
Application 12/237,695
value is a function of ... an environmental sustainability of the structure"
(claims 1, 11 and 15), and there being no other evidence in support thereof, a
prima facie case of obviousness has not been made out in the first instance
and the rejection cannot be sustained.
NEW GROUND OF REJECTION
Claims 1-15 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
We take the independent claims as representative of the claims on
appeal. The three independent claims are nominally directed to a process, an
apparatus, and article of manufacture (claims 1, 11, and 15, respectively).
However, they are directed to the same mathematical operations; that is, (a)
determining A; (b) calculating B from A; ( c) calculating C from B where C
is a function of B and D; and, ( d) managing implementation of a structure
based on C; where,
A = a net power value;
B =a structure available energy value;
C = a fuel available energy value; and,
D = an environmental sustainability of the structure.
Equations corresponding to these vaguely claimed mathematical operations
are described in the Specification (pages 11-12). As reasonably broadly
construed in light of the Specification, the claimed series of operations
amount to a mathematical formula. Cf In re Maucorps, 609 F.2d 481
(CCP A 1979). A mathematical formula is an abstract idea. See Parker v.
Flook, 437 US 584 (1978). Because the claims are directed to a
6
Appeal2013-008584
Application 12/237,695
mathematical formula, an abstract idea, the claims at issue are directed to a
patent-ineligible concept.
Turning now to the elements of the claims to determine whether they
contain an inventive concept sufficient to transform the claimed
mathematical formula into a patent-eligible application, we find none. The
steps of "determining" and "managing" fail to transform the formula to an
inventive concept as these steps do no more than gather data and present a
post-solution activity, respectively. Cf id. at 594 ("Respondent's process is
unpatentable under § 101, not because it contains a mathematical algorithm
as one component, but because once that algorithm is assumed to be within
the prior art, the application, considered as a whole, contains no patentable
invention. Even though a phenomenon of nature or mathematical formula
may be well known, an inventive application of the principle may be
patented. Conversely, the discovery of such a phenomenon cannot support a
patent unless there is some other inventive concept in its application.")
The repeated use of the term "processor" in claim 1 and "module" in
claim 11 and the phrase "one or more computer programs comprising a set
of instructions" in claim 15 do not add anything of inventive significance
because they cover employing a general purpose computer. "[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention. Stating an abstract idea "while adding
the words 'apply it"' is not enough for patent eligibility." Alice Corp. Pty.
Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2358 (2014). We see nothing in the
Specification that would suggest otherwise. The discussion therein
describes employing known electronic devices. See, e.g., Spec., para. 17.
7
Appeal2013-008584
Application 12/237,695
Therefore, we enter a new ground of rejection of claims 1-15 under
35 U.S.C. § 101.
For the foregoing reasons, the rejections are reversed but the claims
are newly rejected under § 101.
CONCLUSIONS
The rejection of claims 1-15 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Appellants regard as the
invention is reversed.
The rejection of claims 1-15 under 35 U.S.C. § 103(a) as being
unpatentable over Ito, Kramer, and Nojima is reversed.
Claims 1-15 are newly rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
DECISION
The decision of the Examiner to reject claims 1-15 is reversed.
Claims 1-15 are newly rejected.
NEW GROUND
This decision contains a new ground 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
8
Appeal2013-008584
Application 12/237,695
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
exammer ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
REVERSED; 37 C.F.R. § 41.50(b)
9