Ex Parte Wolf et al

Patent Trial and Appeal Board

Mar 22, 2017

13042166 (P.T.A.B. Mar. 22, 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.
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.)
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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.)
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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
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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
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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.
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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.)
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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
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