Ex Parte Shan

Patent Trial and Appeal Board

Dec 7, 2017

11880284 (P.T.A.B. Dec. 7, 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.
11/880,284 07/20/2007 Jerry Z. Shan 82235024 7523
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/11/2017 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 JERRY Z. SHAN
Appeal 2016-0032751
Application 11/880,2842
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHELLE R. OSINSKI, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3, 5, 6, 8—13, 15—17, 19, and 21—25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
September 9, 2015) and Reply Brief (“Reply Br.,” filed February 8, 2016),
and the Examiner’s Answer (“Ans.,” mailed December 9, 2015) and Final
Office Action (“Final Act.,” mailed April 16, 2015).
2 Appellant identifies Hewlett-Packard Development Company, LP as the
real party in interest. App. Br. 1.
Appeal 2016-003275
Application 11/880,284
CLAIMED INVENTION
Appellant’s claimed invention relates to a method and apparatus for
building a model representing the life cycle of an enterprise offering, i.e., a
product or service offered by an enterprise, e.g., a business, educational
organization, or government agency (see Spec. 14).
Claims 1,16, and 19 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method comprising:
[(a)] based on a time series of data values representing
demand of an enterprise offering, determining, by a computer,
boundary points of a life cycle of the enterprise offering, wherein
the boundary points define plural phases of the life cycle of the
enterprise offering, wherein determining the boundary points
comprises:
[(al)] providing candidate boundary points;
[(a2)] building linear functions based on the
candidate boundary points, wherein the linear functions
correspond to respective ones of the phases;
[(a3)] defining an objective function including a
sum derived from differences between the data values of
the time series and values output from the linear functions;
[(a4)] based on minimizing the sum derived from
the differences of the objective function, selecting a subset
of the candidate boundary points as the determined
boundary points,
[(b)] wherein determining the boundary points further
comprises first identifying a last one of the determined boundary
points and working backwardly to identify earlier ones of the
determined boundary points, and wherein the working
backwardly causes identification of a last of the phases first
followed by identification of earlier ones of the phases; and
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Application 11/880,284
[(c)] producing, by the computer, a model that includes
selected ones of the linear functions representing the
corresponding phases of the life cycle according to the
determined boundary points.
REJECTION
Claims 1, 3, 5, 6, 8—13, 15—17, 19, and 21—25 are rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories., Inc., 566 U.S. 66 (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 Corp., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. If the
claims are not directed to patent-ineligible concept, e.g., an abstract idea, 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 there are additional elements that
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‘“transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 78).
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, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner finds that the claims are directed to the abstract idea of
determining boundary points of a lifecycle enterprise offering; that the
claims “can be considered strongly related to a mathematical equation”; and
that the claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception itself (Final Act. 5;
see also id. at 2 (“Because the claims are strongly tied to a mathematical
formula (linear functions), the claims are considered directed to an abstract
idea.”)).
Independent Claims 1, 16, and 19 and Dependent Claims 3, 5, 6, 8—13, 15,
and 22—24
Focusing on independent claim 1, Appellant argues that although
claim 1 refers to linear functions, claim 1 does not merely recite linear
functions but instead recites “significant additional subject matter that
cannot merely be categorized as a mathematical formula” (App. Br. 8; see
also Reply Br. 4). Yet, the difficulty with Appellant’s argument, as the
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Application 11/880,284
Examiner observes, is that the limitations that Appellant identifies as
“significant additional subject matter,” i.e., determining boundary points of a
life cycle of the enterprise offering, wherein the boundary points define
plural phases of the life cycle of the enterprise offering (limitation (a) of
claim 1) and identifying a last one of the determined boundary points and
working backwardly to identify earlier ones of the determined boundary
points (limitation (b) of claim 1), are either part of the abstract idea itself or
are not considered significantly more (Ans. 3).
The Specification discloses, with reference to Figure 4, that the
process of determining boundary points begins with receiving a range of
candidate values for the last breakout (i.e., boundary) point in the life cycle
(Spec. 123).3 A candidate last breakout point is selected from the range of
values and is used to build a linear function, i.e., a mathematical algorithm,
that defines the linear segment between the last breakout point and the
terminating point in the life cycle; a residual sum of squares (RSS) also is
calculated, i.e., according to a mathematical formula, for this last segment
{id. 124). Next, linear regression segmentation is applied by considering
candidates for the earlier breakout points; RSS values are calculated for the
various earlier candidate points, and the breakout points with minimum total
RSS are identified {id. H 25, 26). Other candidate values of the last
breakout point are then considered; the total RSS is calculated for these
other candidate values, and the minimum RSS value is used to identify the
optimal last breakout point {id. 127). Working backwards from the last
breakout point, the optimal earlier breakout points are determined, in like
3 The Specification describes that this range can be received from users who
are knowledgeable about a particular type or class of product (Spec. 123).
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fashion, by considering possible candidate values and computing
corresponding total RSS values; the optimal breakout points corresponding
to the minimum total RSS value (id. 128).
It could not be clearer from the Specification, as described above, that
the limitations that Appellant identifies as “significant additional subject
matter” amount to the application of mathematical formulae and processes.
Although Appellant argues otherwise (App. Br. 10; see also Reply Br. 6—7),
we agree with the Examiner that claim 1 is akin to the claims in Parker v.
Flook,4 which the Court determined were patent-ineligible, i.e., claim 1
merely involves the application of linear regression, i.e., mathematical
algorithms, to identity optimal boundary points from which a model
representing the corresponding phases of a product life cycle is produced.
Appellant next argues that even if claim 1 is directed to an abstract
idea, claim 1 is nonetheless patent-eligible because the claim contains an
inventive concept sufficient to transform the claimed abstract idea into a
patent-eligible application (App. Br. 10). But, to the extent Appellant relies
on the Examiner’s indication that claim 1 would be allowable if the § 101
rejection were overcome (id. at 11 (“Appellant respectfully submits that this
[i.e., the Examiner’s acknowledgement that claim 1 would be allowable if
rewritten or amended to overcome the § 101 rejection] is sufficient to
transform the purported claimed abstract idea into a patent-eligible
application, according to the analysis of the second step of the Alice
framework”); see also Reply Br. 5, 8—9), Appellant misapprehends the
controlling precedent.
4 Parker v. Flook, 437 U.S. 584 (1978) (mathematical algorithm used for
adjusting an alarm limit).
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A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent—eligible.
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass ’n. for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). Although the second step in
the Mayo/Alice framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “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 [patent-ineligible concept] itself.’” Alice Corp., 134 S. Ct. at 2355.
A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. See also Diamond
v. Diehr, 450 U.S. 175, 188—89 (1981) (“The ‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.”).
We also are not persuaded of Examiner error by Appellant’s argument
that claim 1 confines the claim to a particular useful application (App.
Br. 12—13). Limiting the use of the abstract idea to a particular
technological environment, i.e., modeling the life cycles of a product
offering, does not make the claims any less abstract. See Alice Corp.,
134 S. Ct. at 2358. Nor is the recitation of a practical application for an
abstract idea sufficient to transform the abstract idea into a patent-eligible
invention. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1371 (Fed. Cir. 2011) (“The Court [in Parker v. Flook, 437 U.S. 584 (1978)]
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rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable.”).
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1. We also sustain the Examiner’s
rejection under § 101 of independent claims 16 and 19 and dependent
claims 3, 5, 6, 8—13, 15, and 22—24, which are not argued separately except
based on the arguments presented with respect to claim 1 (App. Br. 13).
Dependent Claims 17, 21, and 25
Claim 21 depends from independent claim 1, and recites that the
claimed method further comprises “releasing a product by an enterprise” and
“determining, by the computer using the model, a forecast demand for the
product released by the enterprise.” Claims 17 and 25 depend from
independent claims 16 and 19, respectively, and include language
substantially similar to the language of claim 21.
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting claim 21 under 35 U.S.C. § 101 because claim 21 cannot
be properly characterized as merely a mathematical equation and further
because the releasing of the product and the determining, using the model, of
a forecast demand for the product released by the enterprise, “supplies an
inventive concept ‘in the physical realm of things’ that provides a ‘new and
useful application’ of the claimed subject matter to the physical realm”
(App. Br. 14; see also Reply Br. 10-11). Instead, we agree with the
Examiner that releasing a product and determining a forecast demand for the
product constitute extra-solution activity, which is insufficient to transform
an abstract idea into patent-eligible subject matter. See Mayo, 566 U.S. at 82
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(“[Sjimply appending conventional steps, specified at a high level of
generality, to laws of nature, natural phenomena, and abstract ideas cannot
make those laws, phenomena, and ideas patentable.”).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 21 under 35 U.S.C. § 101. We also sustain the Examiner’s rejection
of claims 17 and 25, which Appellant argues are patent-eligible for reasons
similar to those set forth with respect to claim 21 (App. Br. 14—15).
DECISION
The Examiner’s rejection of claims 1, 3, 5, 6, 8—13, 15—17, 19, and
21—25 under 35 U.S.C. § 101 is affirmed.
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).
AFFIRMED
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