Ex Parte ShanDownload PDFPatent Trial and Appeal BoardDec 7, 201711880284 (P.T.A.B. Dec. 7, 2017) Copy Citation 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 2 Appeal 2016-003275 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 3 Appeal 2016-003275 Application 11/880,284 ‘“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 4 Appeal 2016-003275 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). 5 Appeal 2016-003275 Application 11/880,284 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). 6 Appeal 2016-003275 Application 11/880,284 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)] 7 Appeal 2016-003275 Application 11/880,284 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 8 Appeal 2016-003275 Application 11/880,284 (“[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 9 Copy with citationCopy as parenthetical citation