Ex Parte Whitner

Patent Trials and Appeals Board

Mar 1, 2019

14868184 - (D) (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/868,184 09/28/2015
131406 7590 03/05/2019
Gilliam IP PLLC (CA)
7200 N. Mopac
Suite 440
Austin, TX 78731
FIRST NAMED INVENTOR
Richard Bennett Whitner
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.
104.US20160089US1 6333
EXAMINER
RIAD,AMINE
ART UNIT PAPER NUMBER
2113
NOTIFICATION DATE DELIVERY MODE
03/05/2019 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):
uspto@gilliamip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD BENNETT WHITNER
Appeal2018-005542
Application 14/868,184 1
Technology Center 2100
Before ERIC S. FRAHM, DENISE M. POTHIER, and JOHN A. EV ANS,
Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge FRAHM.
Opinion Concurring-in-Part and Dissenting-in-Part filed by Administrative
Patent Judge POTHIER.
FRAHM, Administrative Patent Judge
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies CA, Inc., as the real party in interest (App. Br. 3).
Appeal2018-005542
Application 14/868, 184
STATEMENT OF THE CASE
Disclosed and Claimed Invention
According to the Specification, the present invention relates to
computer systems, and more particularly to an event management system
and a method of providing back-up event management in case of a fault
(Spec. ,r,r 1, 2; Abstract), i.e., a "fault tolerant event management system"
(Title). According to Appellant:
Events are generated by a variety of sources or
components, including hardware and software. Events include
messages that can indicate numerous activities, such as an
application finishing a task or a server failure. An event
management system collects and processes events generated by
components. For example, an event management system may
distribute events to network monitoring applications,
trigger alerts based on events, assign events to an administrator,
filter and consolidate events, etc.
Spec. ,r 2.
Independent claim 1, with bracketed lettering and emphasis added, is
exemplary:
1. A method comprising:
[ A J receiving a first batch of events into a first buffer of a first
event manager and receiving the first batch of events into a second
buffer of a second event manager, wherein the first batch of events are
received into the first buffer from a communication bus which receives
events from a plurality of components of a network;
communicating, by the first event manager to the second event
manager, first state data that at least indicates state of processing of the first
batch of events by the first event manager;
based on indication of the first state data from the first event manager
to the second event manager,
the first event manager discarding the first batch of events from
the first buff er;
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Application 14/868, 184
without processing the first batch of events, the second event
manager discarding the first batch of events from the second buffer;
and
receiving a second batch of events into the first buffer of the
first event manager from the communication bus and receiving the
second batch of events into the second buffer of the second event
manager;
determining, by the second event manager, that the first event
manager is not operational; and
based on determining that the first event manager is not operational,
processing, by the second event manager, the second batch of
events from the second buff er based, at least in part, on the first state
data; and
updating, by the second event manager, the first state data
based, at least in part, on processing the second batch of events.
Remaining independent claims 11 (non-transitory machine-readable
media having code with instructions to perform the method of claim 1) and
13 (apparatus including a processor and machine-readable medium having
code executable to perform the method of claim 1) recite limitations
commensurate in scope with claim 1.
Examiner's Rejections
(1) Claims 1-20 were rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention (Final Act. 2). Because this
rejection has been withdrawn by the Examiner (see Ans. 8; see also Reply
Br. 9), this rejection is not before us on appeal.
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Application 14/868, 184
(2) Claims 1-20 are rejected under 35 U.S.C. § 101 because they are
directed to patent-ineligible subject matter. Final Act. 3--4; Ans. 6-7.
(3) Claims 1-20 are rejected under 35 U.S.C. § I02(a)(l) as being
anticipated by Chiu (US 2013/0179729 Al; published July 11, 2013). Final
Act. 5-9; Ans. 2---6.
ANALYSIS 2
35 us.c. § 101
We have reviewed the Examiner's rejection in light of Appellant's
contentions and the evidence of record. We concur with Appellant's
contention that the Examiner erred in this case.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS
Bankint'l, 573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
2 Appellant raises additional arguments. Because the identified issues are
dispositive of the appeal, we do not need to reach the additional arguments.
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Application 14/868, 184
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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Application 14/868, 184
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under the guidance set
forth in the Memorandum, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes) (hereinafter, "Step 1 of the Memorandum"); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)) (9th ed.
2018) (hereinafter, "Step 2 of the Memorandum").
Only if a claim ( 1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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Application 14/868, 184
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)) (hereinafter, "Step 3 of the Memorandum"); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception (hereinafter, "Step 4 of the
Memorandum").
See Memorandum at 54--56.
Turning to the Alice analysis (which relates to Steps 3 and 4 of the
Memorandum), "[t]he second step of the Alice test is satisfied when the
claim limitations 'involve more than performance of []well-understood,
routine, [and] conventional activities previously known to the industry."'
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (quoting
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'!
Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) and Alice, 573 U.S. at
225).
In this case, Appellant argues "that this § 101 rejection by the
Examiner fails to have any basis in law, reason, or fact and asserts that the
claims clearly recite a concrete improvement to technology and are directed
toward patent eligible subject matter" (Reply Br. 7). With respect to the
Alice step-two analysis (and thus, Berkheimer and Steps 3 and 4 of the
Memorandum), Appellant argues that the Examiner fails to provide the
"required support for dismissing claim elements as 'well-understood, routine
or conventional" (Reply Br. 9), such as "an express statement in the
specification, court decisions, or a publication that demonstrates the element
at issue is well-understood." (Reply Br. 9). Appellant contends "[t]he
Examiner failed to provide any such support and has therefore failed to
satisfy his burden" (Reply Br. 9).
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Application 14/868, 184
We agree with Appellant's arguments. The Examiner does not
respond with the requisite evidence (see Final Act. 4 and Ans. 8 addressing
the additional elements of buffers, event managers, a processor, and a
communication bus). Because the Berkheimer court held "[ w ]hether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination" (Berkheimer, 881 F.3d at
1369), the Examiner erred with respect to Steps 3 and/or 4 of the
Memorandum by not providing the required evidence and/ or factual support.
Therefore, we are constrained by the record to reverse the Examiner's
rejection of claims 1-20 on procedural grounds.
35 us.c. § 102
We have reviewed the Examiner's anticipation rejection (Final Act.
5-9) in light of Appellant's arguments (App. Br. 7-12; Reply Br. 3-7) that
the Examiner has erred, as well as the Examiner's response to Appellant's
arguments in the Briefs (Ans. 2-6). We concur with Appellant's contention
(App. Br. 8-9) that the Examiner erred in finding claims 1-20 as anticipated
by Chiu because Chiu fails to disclose specifically limitation [A] recited in
claim 1, and as commensurately recited in claims 11 and 13.
Disputed limitation [A] in claim 1 recites:
receiving a first batch of events into a first buffer of a
first event manager and receiving the first batch of events into a
second buffer of a second event manager, wherein the first
batch of events are received into the first buffer from a
communication bus which receives events from a plurality of
components of a network
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Application 14/868, 184
Claim 1. As further recited in claim 1, the event managers discard the
batches of events based on indication of the state data.
The Examiner finds (Final Act. 5---6) that Figures 1 and 3 of Chiu,
showing event managers 302a and 302b and connection 130, discloses
limitation [A]. The Examiner additionally finds (Ans. 3 citing Chiu Fig. 2)
that Chiu's log entry 212a corresponds to the recited state data, and Chiu's
checkpoints 21 Oa and 21 Ob correspond to the recited first and second
batches of events. The Examiner also finds (see Ans. 5-6 citing Chiu ,r,r 70,
71) that Chiu's replicating services (see Fig. 3, 304a and 304b) operate in
conjunction with the event managers 302a and 302b to perform the steps of
claim 1.
The Examiner states in the Examiner's Answer that replicating
services 304a and 304b (see Fig. 3) are "responsible for duplicating the
checkpoint and the log entries in different selected nodes" (Ans. 5). The
Examiner then states:
The batch of events recited in the claim are mapped
[sic] [to] the checkpoints and the log entries to state data. Thus,
both limitation[ s] concerning the first batch of event[ s ], and
state data being sent from a first event manager to a second
manager are met by the present reference because the
replicating service plays this role.
Ans. 5---6.
However, Chiu discloses (see ,r 44) a checkpoint that is a collection of
application data generated by application 108a that indicates a state of
processing of data for application 108a stored in local storage 106a. Thus,
Chiu's checkpoints and application data are therefore more akin to the "first
state data" recited in claim 1 ( and not the log entries 212a relied on by the
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Application 14/868, 184
Examiner) as indicating a state of processing of the first batch of events by
the first event manager as set forth in claims 1, 11, and 13. Chiu also
discloses (i) "generat[ing] log entries 212a of changes in the application data
for the application 108a that occur between checkpoints 210 of the
application data" (i-f 46); and (ii) deleting log entries 212a when a new
checkpoint 210 is taken (see ,r 48). However, claim 1 recites that events are
discarded, not log entries.
Appellant contends:
The Examiner's mapping of 'checkpoints' to events and 'log
entries' to state data is (1) not supported by Chiu nor consistent
with the claim language and (2) not consistent with the
Examiner's own application of Chiu to the claims.
Reply Br. 3. Appellant further contends (Reply Br. 4) that "the Examiner's
proposed mapping of elements is unreasonable," because "it is unreasonable
to construe 'application data that is in a consistent state on the computing
device 102a' as 'events from a plurality of components of a network."'
Appellant argues that such a construction ( of the recited "batches of events")
"requires ignoring the plain language of the claims as well as the context and
definition of 'events' found in the specification" (Reply Br. 4 citing Spec.
,r,r 2, 10). We agree with Appellant's arguments and contention enumerated
above.
We are also persuaded by Appellant's arguments (see App. Br. 7-12;
Reply Br. 3-7) because the Examiner's findings (see Final Act. 5-6; Ans. 3-
6) are insufficient to establish anticipation. A claim is anticipated only if
each and every element as set forth in the claims is found, either expressly or
inherently described in a single prior art reference, and arranged as required
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Application 14/868, 184
by the claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
We note that the Board is a reviewing body and not a place of initial
examination. Moreover, it is our view that the rigorous requirements of 35
U.S.C. § 102 essentially require a one-for-one mapping of each argued
limitation to the corresponding portion of the reference, which the Examiner
must identify with particularity. Here, in that the Examiner's anticipation
rejection is not well supported by the express disclosure of the Chiu
reference and relies on conjecture, such conjecture would require us to resort
to speculation, unfounded assumptions, or hindsight reconstruction. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We will not resort to such
speculation or assumptions to cure the deficiencies in the factual basis in
order to support the Examiner's anticipation rejection.
The prior art excerpts cited by the Examiner do not provide sufficient
details to teach limitation [A], including first and second event managers and
first and second batches of events, as required by claim 1, and as similarly
required by claims 11 and 13. Absent further explanation from the
Examiner, we do not see how the cited prior art portions teach the disputed
claim limitation.
In view of the above, we cannot sustain the rejection of independent
claim 1, and independent claims 11 and 13 which recite limitations
commensurate with limitation [A] in claim 1. We also do not sustain the
rejection of claims 2-10, 12, and 14--20 which depend from independent
claims 1, 11, or 13. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious ... "). Because our decision with regard to the
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Application 14/868, 184
disputed limitation (see e.g., limitation [A] in claim 1) is dispositive of the
rejection of all pending claims, we do not address additional arguments
raised by Appellant.
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD BENNETT WHITNER
Appeal2018-005542
Application 14/868, 184
Technology Center 2100
Before ERIC S. FRAHM, DENISE M. POTHIER, and JOHN A. EV ANS,
Administrative Patent Judges.
POTHIER, Administrative Patent Judge, concurring-in-part and
dissenting-in-part.
I concur with the majority's decision to reverse the rejection of claims
1-20 under 35 U.S.C. § 102 but disagree with the reason for reversing the
rejection of the claims under 35 U.S.C. 101.
Specifically, I concur that Chiu fails to disclose "the first event
manager discarding the first batch of events from the first buff er" in
independent claim 13 as argued. See Reply Br. 5. The Examiner cites
Figure 5 for this teaching. Final Act. 6. As the majority indicates, the
Examiner has mapped Chiu's checkpoint data to the recited "first batch of
events" and Chiu's log entry data to the recited "first state data." Ans. 3, 5.
Given this mapping, Chiu needs to teach its checkpoints are discarded from
3 Independent claims 11 and 13 recite similar limitations.
Appeal2018-005542
Application 14/868, 184
a buffer to disclose the recited "discarding the first batch of events from the
first buffer" step. However, as noted by the majority opinion, Chiu discloses
deleting log entries and not checkpoints. Chiu ,r 48; see id. ,r 86, Fig. 5 (step
512).
On the other hand, I dissent regarding the reason for reversing the
rejection under 35 U.S.C. § 101. Appellant asserts the Examiner has failed
to provide any of the support outlined in "the US PTO recently issued"
memorandum4 concerning claim elements found to be well-understood,
routine, or conventional. Reply Br. 9. I respectfully disagree.
The 2018 Memorandum states an additional element ( or combination
of elements) is not well-understood, routine or conventional to one skilled in
the art unless the Examiner finds and supports the § 101 rejection with one
or more the following: ( 1) a citation to an express statement in the
Specification or to statement made by applicants during prosecution
demonstrating the well-understood, routine, and conventional nature of the
additional elements, (2) a citation to one or more court decisions in MPEP §
2106.05(d)(II) as noting the well-understood, routine and conventional
nature of the additional elements, (3) a citation to a publication that
demonstrates the well-understood, routine, and conventional nature of the
additional elements, and ( 4) a statement that the Examiner is taking official
notice of the well-understood, routine, and conventional nature of the
additional elements. 2018 Memorandum 3--4. This latter option (i.e., a
4 Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.) (Apr. 10, 2018) ("2018 Memorandum"), available at
https ://www. uspto. gov/ sites/ default/files/ documents/memo-berkheimer-
20180419 .PDF.
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statement taking official notice) outlined in the 2018 Memorandum is
noticeably absent from the Reply Brief. See Reply Br. 9 (stating "the
examiner may cite an express statement in the specification, court decisions,
or a publication .... ").
On the record, I believe the Examiner has taken official notice that the
additional claimed elements to the first buffer, the second buffer, the first
event manager, the second event manager, and communication bus in claims
1, 11, and 13 are well-known, routine, and conventional and perform well-
known, routine, and conventional functions. That is, the Examiner states the
additional claimed elements to the first buffer, the second buffer, the first
event manager, the second event manager, and communication bus are well-
known, routine, and conventional and, as claimed, perform well-known,
routine, and conventional functions. See Final Act. 4; see also Ans. 8.
Admittedly, the Examiner has not explicitly stated that official notice is
being taken. However, in this instance, the statements made by the
Examiner suffice.
Additionally, Appellant has not challenged the Examiner's specific
underlying findings related to what is well-understood, routine and
conventional. At best, Appellant states the Examiner identifies "nine other
claim elements as well-understood." Reply Br. 9. What these "nine other
claim elements" (id.) are is not clear from the record because the Examiner
has only addressed five or six additional elements (i.e., the first and second
buffers, the first and second event managers, communication bus, and a
processor (claim 13)) are well-understood, routine and conventional and
perform well-known, routine, and conventional functions in the rejection.
See Final Act. 4; see also Ans. 8.
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For all these reasons, I am not persuaded to reverse the Examiner's
rejection of claims 1-20 on the procedural grounds noted by the majority.
4