Ex Parte Stickle

Patent Trial and Appeal Board

May 31, 2018

13792399 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/792,399 03/11/2013
71247 7590 06/04/2018
Client 170101 c/o
THOMAS HORSTEMEYER, LLP
3200 WINDY HILL RD SE
SUITE 1600E
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Thomas Charles Stickle
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.
170114-1680 7903
EXAMINER
HACKENBERG,RACHELJ
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
uspatents@tkhr.com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS CHARLES STICKLE 1
Appeal2017-010686
Application 13/792,399
Technology Center 2400
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-18 and 20-24. Claim 19 has
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Amazon Technologies,
Inc. App. Br. 2.
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Application 13/792,399
Appellant's Invention
The invention generally relates to tracking application usage for
licensing purposes in a computing environment that employs virtual
machines and associated storage volumes. See Spec. ,r,r 1, 9-13. More
specifically, the invention obtains an application identifier of a copy of an
application installed on a storage volume, obtains a storage volume block
identifier of the storage volume, and, using an application programming
interface (API), generates a usage report upon installation or upon each
execution of the application. Spec. ,r,r 23, 25, 26, 31-32, 37, 46. The API
transmits the usage report to an application usage service or a client where
the usage report data can be viewed through an interface. Spec. ,r,r 39--43.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A non-transitory computer-readable medium storing an
application executable in a computing device, wherein when
executed the application causes the computing device to at least:
provide an application program interface, executable in
the computing device, that defines a network service call to
facilitate submission of a usage report generated by the
application program interface;
determine that the application is executed or installed in a
virtual machine instance in a computing environment, the virtual
machine instance being associated with a storage volume in the
computing environment, wherein the application is installed on
the storage volume;
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Application 13/792,399
define an application identifier to include in the usage
report, the application identifier uniquely identifying one
execution or installation of the application installed on the
storage volume of the virtual machine instance with respect to
other executions or installations of the application;
define a storage volume block identifier to include in the
usage report, the storage volume block identifier uniquely
identifying the storage volume where the application is installed,
with respect to other storage volumes of the virtual machine
instance in the computing environment, the storage volume block
identifier further being uniquely associated with one of the
storage blocks with respect to other storage blocks in the storage
volume;
monitor usage data corresponding to the application in the
virtual machine instance to include in the usage report, the usage
data comprising at least one of a time of execution or an
installation date; and
submit the usage report to a client via the application
program interface each time it is determined that the application
is executed or installed, allowing the client to track the usage
data.
Rejections on Appeal
The Examiner rejects claims 1-18 and 20-24 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Ans. 2-16. 2
The Examiner rejects claims 1-18 and 20-24 under 35 U.S.C.
§ I03(a) as being unpatentable over Nickolov (US 2009/0276771 Al; Nov.
5, 2009), Maki (US 2012/0011394 Al; Jan. 12, 2012), and Rowles (US
2013/0339284 Al; Dec. 19, 2013). Final Act. 2-28.
2 The§ 101 rejection was entered as a new ground of rejection in the Answer
with Technology Center Director approval. See Ans. 31.
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Application 13/792,399
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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, 134 S. Ct. at 2355.
Assuming that a claim nominally falls within one of the statutory categories
of machine, manufacture, process, or composition of matter, the first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 23 55-57. If the claim is directed to a judicial exception,
such as an abstract idea, the second step is to determine whether additional
elements in the claim "'transform the nature of the claim' into a patent-
eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This
second step is described as "a search for an "'inventive concept"'-i. e., an
element or combination of elements that is ' ... significantly more than ...
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Application 13/792,399
the [ineligible concept] itself."' Id. at 23 55 ( alteration in original) ( quoting
Mayo, 566 U.S. at 72-73).
Statutory Categories Under § 101
The Examiner finds claims 4--14 do not fall within any of the
statutorily defined categories of "process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof," under
§ 101. Ans. 2-3. Specifically, the Examiner finds that although
independent claim 4 is nominally directed to a "system," a "system must be
defined by at least two elements." Ans. 2. The Examiner finds dependent
claims 5-14 "do not further teach about the system being more than one
element." Ans. 3. Appellant contends claims 4--14 qualify as a "machine"
under § 101. Reply Br. 3. We agree with Appellant.
Even if, as the Examiner asserts, a "machine" requires at least two
elements, Appellant's claims 4--14 meet this standard. The broadest
reasonable interpretation of the claimed "computing device" that is
consistent with the Specification requires at least a processor and a memory.
See Spec. ,r 51. And in any case, claim 4 itself recites multiple concrete
parts in addition to the claimed "computing device," including "a network"
and "a data store." Accordingly, we find claims 4--14 properly fall within
the statutory category of "machine" under § 101. 3
3 We note, however, that for a patent-eligibility analysis, rather than looking
at "what statutory category ... a claim's language is crafted to literally
invoke, we look to the underlying invention." CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011). We find claims 4--14
are not patent-eligible for the same reasons, discussed in detail below, as
claims 1-3, 15-18, and 20-24.
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Application 13/792,399
Alice Step One
Regarding steps one and two of the Alice framework, Appellant
nominally argues the groups of claims 1-3, 4--14, and 15-18 and 20-24
separately. See Reply Br. 4--34. However, Appellant raises similar
arguments for each of the claim groups. See id. Accordingly, we address
claim 1 as representative of all claims in our analysis below. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
After determining that the claims nominally fall within a statutory
category, "the first step in the Alice inquiry ... asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36. "The abstract idea exception prevents patenting a
result where 'it matters not by what process or machinery the result is
accomplished."' McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v. Morse, 56 U.S. (15 How.)
62, 113 (1853)). "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 abstract idea and merely
invoke generic processes and machinery." McRO, 837 F.3d at 1314.
Appellant contends, noting that the Federal Circuit has endorsed
comparing claims in a patent-eligibility analysis to claims of a similar
descriptive nature in other cases, see Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016), that the claims in the
present case are not analogous to the patent-ineligible claims in either
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089 (Fed. Cir. 2016)
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Application 13/792,399
or Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016). Reply Br. 4--9. We disagree with Appellant.
The Examiner finds claim 1 is directed to "generating a usage report
each time an application is installed to track the usage of the application,"
which is similar to the concepts identified in the patent-ineligible claims in
Fair Warning and Electric Power. Ans. 4. The Federal Circuit in
Fair Warning noted that "the 'realm of abstract ideas' includes 'collecting
information, including when limited to particular content,"' "'analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more,"' and "'merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation)."' Fair Warning, 839 F.3d at
1093 (citing Elec. Power, 830 F.3d at 1353). The court then found the
claims at issue were "directed to a combination of these abstract-idea
categories" because they were "directed to collecting and analyzing
information to detect misuse and notifying a user when misuse is detect."
Id. at 1094. The Federal Circuit in Electric Power found the claims at issue
were directed to a similar combination of abstract ideas relating to data
collection, analysis, and presentation. See 830 F.3d at 1353-54.
Here, claim 1 is focused on obtaining information, specifically, the
"application identifier," "storage volume block identifier," and "usage data,"
including this information in a "usage report," and submitting the "usage
report" to a client, thereby "allowing the client to track the usage data." We
find this claim 1 functionality is no less abstract than the functionality of the
claims in Fair Warning and Electric Power. It matters not that claim 1
specifically defines the obtained information-"the application identifier
uniquely identif1ies] one execution or installation of the application installed
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on the storage volume of the virtual machine instance," "the storage volume
block identifier uniquely identif1ies] the storage volume where the
application is installed," and "the usage data compris[es] at least one of a
time of execution or an installation date"-because, as the court in
Fair Warning noted, "collecting information ... limited to particular
content" is still an abstract idea. 839 F.3d at 1093. Further, claim 1 does not
specify that including the collected information in a usage report for
submission to a client requires any more than "analyzing information by
steps people go through in their minds, or by mathematical algorithms." Id.
Finally, although claim 1 submits the usage report to a client, claim 1 does
not specify any particular way by which the client can track the usage data,
let alone "identif1y] a particular tool for presentation." Id. Accordingly, we
agree with the Examiner (Ans. 4) that the idea to which claim 1 is directed-
"generating a usage report each time an application is installed to track the
usage of the application"----combines abstract data collection, analysis, and
presentation concepts similarly to the claims in Fair Warning and Electric
Power.
Appellant also contends the claims are not directed to an abstract idea
because the claims "are not simply directed to tracking application usage in
the abstract, but are instead specifically directed to a technical approach
.... " Reply Br. 10-11. However, claim 1 does not define any specific way
of performing the functions recited such that "the focus of [ claim 1] is on the
specific asserted improvement in computer capabilities." Enfzsh, 822 F.3d at
1335-36. That is, claim 1 focuses on what information is included in a
usage report when an application is executed or installed, without describing
any technical details of how the identifiers are defined, how the usage data is
monitored, or how the usage report is submitted. In other words, claim 1
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does not "focus on a specific means or method that improves the relevant
technology," but rather is "directed to a result or effect that itself is the
abstract idea and merely invoke[s] generic processes and machinery."
McRO, 837 F.3d at 1314.
Appellant further contends that, like the claims in McRO, "the present
claims are similarly patent-eligible subject matter by including specific rules
using particular information and technique through the technical approach
discussed above." Reply Br. 11-12. However, we see no specific rules
recited in claim 1 that, like in McRO, define a process that is different than a
process previously performed by humans. See 837 F.3d at 1314. Rather, it
would be possible for a person to install an application in a virtual machine
associated with a storage volume in a computing environment, look up
application and storage volume block identifiers and usage data for the
application, put the identifiers and usage data in a report, and send the
report. While claim 1 recites an application program interface to "facilitate
submission of a usage report generated by the application program
interface," the application program interface merely automates what could
otherwise be a human process. The Federal Circuit in McRO distinguished
the patent-eligible claims from such claims "where the claimed computer-
automated process and the prior method were carried out in the same way."
Id.
Therefore, we find claim 1 is directed to an abstract idea, and proceed
to step two of the Alice framework.
Alice Step Two
The second step in the Alice analysis requires a search for an
"inventive concept" that "must be significantly more than the abstract idea
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itself, and cannot simply be an instruction to implement or apply the abstract
idea on a computer." Bascom Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). There must be more than
"computer functions [that] are 'well-understood, routine, conventional
activit[ies]' previously known to the industry." Alice, 134 S. Ct. at 2359
(second alteration in original) (quoting Mayo, 566 U.S. at 73).
Appellant contends the claims involve a "technical approach [that]
amounts to significantly more than an abstract idea at least because unlike
existing technologies, it enables tracking application usage where the
environment can be created and terminated in rapid fashion or on an on-
demand basis." Reply Br. 14. However, as discussed above, claim 1 does
not provide the technical details of how the claimed functions are performed,
let alone require the functions be performed in response to "rapid fashion"
changes in the computing environment, or "on an on-demand basis." Even
if claim 1 included the language "rapid fashion" and "on-demand" from
Appellant's argument (id.), merely making the practice of an abstract idea
more efficient by implementing the idea with a computer does not suffice to
meet the inventive concept requirement of Alice. See OIP Technologies Inc.
v. Amazon.com Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.")
Appellant also contends that, like the claims in Amdocs, "the claims
here recite an unconventional approach that involves the specific technical
approach discussed above." Reply Br. 14. That is, "[ e ]ven if certain
elements of the claims were considered generic, which Appellant denies, this
combination of elements renders these claims 'not merely the "routine or
conventional" use of technology."' Id. ( citing Amdocs, 841 F .3d at 1302).
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However, Appellant has not specifically identified any elements that are not
conventional, nor has Appellant specifically explained what it is about the
combination of elements in claim 1 that renders it a non-conventional
arrangement of conventional elements. See Bascom, 827 F.3d at 1349-50.
Accordingly, we are not persuaded claim 1 amounts to significantly
more than the abstract idea itself. We are not, therefore, persuaded the
Examiner erred in rejecting claim 1, and claims 2-18 and 20-24 which we
group therewith, as patent-ineligible.
Obviousness
The Examiner finds the combination ofNickolov, Maki, and Rowles
discloses all the limitations of independent claim 1, including that Rowles
teaches "submit the usage report to a client via the application program
interface each time it is determined that the application is executed or
installed." Final Act. 2-7; Ans. 20-22. Appellant contends Rowles does not
send a report upon execution or installation of an application, but upon
uninstallation, and therefore fails to teach the limitation for which it is relied
upon. App. Br. 9-10; Reply Br. 39--40. We agree with Appellant.
Rowles describes tracking and reporting software usage duration by a
process on a client system. Rowles, ,r 17. Specifically, Rowles describes
the following:
In the example shown, a check is performed to determine which
applications ( or other software) are installed on the device ( 402).
If newly-installed applications are found to be present ( 404), they
are added to a local list of installed applications ( 406), such as
the one shown in FIG. 2. If applications are found to have been
uninstalled ( e.g., they are on the current list but not found to be
present in the current check, performed periodically, in dynamic
reaction to a predefined system event such as application install
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or uninstall, and/or at startup, for example) ( 408), the local list is
updated and a report is sent to a remote service, such as the
tracking service 114 of FIG. 1 (410), indicating in some
embodiments the application, the date/time it was installed, the
date/time it was uninstalled, and depending on the embodiment
additional information such as an identification of the client
and/ or relevant attributes thereof.
Id. ( emphasis added). Here, we find Rowles discloses performing a periodic
check to determine which applications are installed on a device. Id. If an
application is newly installed, it is added to a local list. Id. If an application
is found to be uninstalled, which is evident when an application is on the
local list, but not found to be present during a current check, then "the local
list is updated and a report is sent to a remote service." Id. Accordingly,
although a periodic check may be performed in response to an application
installation, uninstallation, or at startup, Rowles only discloses sending a
report when a check confirms there has been an uninstallation. See id. We
thus find Rowles does not teach "submit the usage report to a client via the
application program interface each time it is determined that the application
is executed or installed," as recited in claim 1.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 1, independent claim 4 and 15 which
recite commensurate limitations, and dependent claims 2, 3, 5-14, 16-18,
and 20-24.
CONCLUSIONS
Appellant has not shown the Examiner erred in rejecting claims 1-18
and 20-24 under 35 U.S.C. § 101.
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Appellant has persuaded us the Examiner erred in rejecting claims 1-
18 and 20-24 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision to reject claims 1-18 and 20-24
because we sustain at least one ground of rejection for each claim. See 37
C.F.R. § 4I.50(a)(l) ("The affirmance of the rejection of a claim on any of
the grounds specified constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground specifically reversed.").
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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