Ex Parte Wolf et alDownload PDFPatent Trial and Appeal BoardMar 22, 201713042166 (P.T.A.B. Mar. 22, 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. 13/042,166 03/07/2011 Kay WOLF 82263731 6408 56436 7590 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 EXAMINER FEACHER, LORENA R ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 03/24/2017 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 KAY WOLF and STEFAN SAHLING Appeal 2015-000827 Application 13/042,1661 Technology Center 3600 Before HUBERT C. LORIN, BRUCE T. WIEDER, and TARA L. HUTCHINGS, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35U.S.C. § 134 from the final rejection of claims 1 and 3—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellants’ claimed invention relates to information technology infrastructure risk modeling. (Spec. 1.) Claims 1, 9, and 18 are the independent claims on appeal. Claim 1 is illustrative. It recites (emphasis added): 1 According to Appellants, the real party in interest is Hewlett-Packard Development Company, LP (“HPDC”), a wholly owned affiliate of Hewlett- Packard Company. The general or managing partner of HPDC is HPQ Holdings, LLC. (Appeal Br. 2.) Appeal 2015-000827 Application 13/042,166 1. A non-transitory computer readable medium having stored thereon instructions, which when executed by a processor cause the processor to perform the method of: generating one or more risk matrices, wherein an external process of a customer of an IT supplier is mapped to an IT infrastructure element of the IT supplier and a business process of a client of the customer is mapped to the external process of the customer, comprising generating at least one of: a first matrix, wherein the IT infrastructure element is mapped to an internal IT support element of the customer, a second matrix, wherein the external process of the customer is mapped to the IT infrastructure element and to the internal IT support element of the customer; and a third matrix, wherein the business process of the client is mapped to the external process of the customer; performing a risk analysis using the plurality of matrices to determine a criticality value for the IT infrastructure element in relation to the business process; and causing a presentation of the criticality value. REJECTIONS2 Claims 1 and 3—20 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Claims 1, 5, 6, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Parker (US 2004/0225549 Al, pub. Nov. 11, 2004), Negri (US 2002/0059079 Al, pub. May 16, 2002), and Scates (US 2010/0043074 Al, pub. Feb. 18, 2010).3 2 The rejection of claims 4 and 18—20 under 35 U.S.C. § 112, second paragraph, was withdrawn. (See Answer 28.) 3 The rejection of claim 18 under § 103(a) in view of Parker, Negri, and Scates was withdrawn. (See Answer 28.) 2 Appeal 2015-000827 Application 13/042,166 Claims 3, 4, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Parker, Negri, Scates, and Moon (US 2007/0100930 Al, pub. May 3, 2007). Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Parker, Negri, Scates, and Hurley (US 2008/0195407 Al, pub. Aug. 14, 2008). Claims 9—17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Parker, Negri, Scates, Moon, and Barrenechea (US 2006/0200477 Al, pub. Sept. 7, 2006). Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Parker, Negri, Scates, and Wiemer (US 2007/0067847 Al, pub. Mar. 22, 2007). ANALYSIS The £101 rejection In the Answer, the Examiner raises a new ground of rejection under §101 “because the claimed invention is directed to non-statutory subject matter.” (Answer 29.) The Examiner determines that [t]he claims are directed to the abstract idea of risk analysis particularly one of businesses in the field of IT systems, an idea of itself. The additional elements or combination of elements in the claims other than the abstract idea per se amounts to no more than: (i) mere instructions to implement the idea on a computer and (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. (Id.) 3 Appeal 2015-000827 Application 13/042,166 Appellants argue that “[t]he claims are directed to a physical, processor-driven system in which three matrices are generated that provide a determination of the criticality of a particular infrastructure element in relation to a specific business process.” (Reply Br. 6.) Appellants further argue that the “claims utilize the idea of risk analysis in a specific methodology that determines the criticality for a specific infrastructure element, so that action regarding that element can be taken accordingly. Appellant is not claimed [sic] a mere abstract idea.” (Id.) After the Appeal Brief was filed in this case, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS BankInt’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (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. Under the two-part framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. If the claims are determined to be directed to a patent-ineligible concept, then the second part of the framework is applied. “We have described step two of this analysis as a search for an ‘inventive concept’ — i.e., 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 [ineligible concept] itself.’” Id. at 2355 (brackets in original). With regard to the first part of the framework, we agree with the Examiner that the claims are directed to risk analysis and, in particular, to computing “a criticality value” for an IT infrastructure element. (See 4 Appeal 2015-000827 Application 13/042,166 Claim 1.) In other words, the claims are directed to intangible information. We treat “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also Digitech Image Techs, v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). We now apply the second part of the framework to determine if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice Corp., 134 S. Ct. at 2357 (citing Mayo, 132 S. Ct. at 1294, 1298). However, the claims here do not provide anything significant to differentiate the claimed process from ordinary mental steps. See Electric Power Grp., 830 F.3d at 1355. Moreover, the introduction of a computer into the claims does not alter the analysis at step two. [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. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our §101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any 5 Appeal 2015-000827 Application 13/042,166 “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice Corp., 134 S. Ct. at 2358 (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea ... on a generic computer.” Id. at 2359. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional and adds no inventive concept. Nor do the claims offer detail about the computer system. In short, the claim steps/limitations do no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer processing components of Appellants’ method add nothing that is not already present when the steps are considered separately. Viewed as a whole, Appellants’ claims simply recite the concept of analyzing information to compute a value related to a risk analysis, as performed by a generic computer. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of computing a value related to a risk analysis using an unspecified, generic computer processor. That is not enough to transform an abstract idea into a patent- eligible invention. See id. at 2360; see also Electric Power Grp., 830 F.3d at 1353—56. Therefore, we are not persuaded that the Examiner erred in rejecting claims 1 and 3—20 under § 101. 6 Appeal 2015-000827 Application 13/042,166 The f103 rejections With regard to the first matrix of claim 1, the Examiner finds that Parker discloses a process-span matrix which associates each process of a value chain of [sic] with elements of the span (e.g. hardware or software elements) (see Figure IE and 10082— 10092). The value chain of processes relates to a collection of processes (e.g. sequence of tasks/activities) performed by an organization and the span represents a collection of elements (e.g. hardware or software elements) associated to the processes. . . . Here, by linking the processes to the span (e.g. hardware) a matrix is created that maps an IT infrastructure to an organization’s (or customer’s) processes whether internal or external (see 10082—10092 [)]. (Answer 31.) Appellants argue that Parker fails to teach or suggest specifically that “a first matrix” is generated “wherein the IT infrastructure element is mapped to an internal IT support element of the customer.” (Claim 1) (emphasis added). This is because, Parker only goes as far as to describe a process-span matrix that dictates who is responsible for any given process. Claim 1 however, recites that specific infrastructure element of an IT supplier is mapped to an external process of a customer of that IT supplier. (Appeal Br. 14.) Appellants further argue that Parker states merely that “[b]y linking a customer’s span to the appropriate organizational value chain in a matrix-like fashion, it is possible to describe an operation with as much precision as required for a sourcing activity.” (Parker, para. 86 [sic, 85]). In this case, no mapping occurs because no IT supplier is present to supply an infrastructure element: the “span” is the customer’s “collection of elements.” (Parker, paras. 84—85). (Reply Br. 8.) 7 Appeal 2015-000827 Application 13/042,166 We agree with Appellants. Claim 1 requires mapping an external process of a customer of an IT supplier to an IT infrastructure element of the IT supplier. The portions of Parker relied on by the Examiner disclose mapping the process to infrastructure elements of the customer. Therefore, we are persuaded that the Examiner erred in rejecting claim 1 under § 103. Independent claims 9 and 18 contain similar language. Therefore, for similar reasons, we are persuaded that the Examiner erred in rejecting claims 9 and 18, and dependent claims 3—8, 10—17, 19, and 20, under § 103. DECISION The Examiner’s rejection of claims 1 and 3—20 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejections of claims 1 and 3—20 under 35 U.S.C. § 103(a) are 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. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation