Gregory James. Lipinski et al.

Patent Trials and Appeals Board

Oct 10, 2019

14982857 - (D) (P.T.A.B. Oct. 10, 2019)

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.
14/982,857 12/29/2015 Gregory James Lipinski 104.US20160190US2 5684
131406 7590 10/10/2019
Gilliam IP PLLC (Broadcom)
7200 N. Mopac
Suite 440
Austin, TX 78731
EXAMINER
CONTINO, PAUL F
ART UNIT PAPER NUMBER
2114
NOTIFICATION DATE DELIVERY MODE
10/10/2019 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 GREGORY JAMES LIPINSKI and RICHARD GEORGE
KENDERS
Appeal 2018-008463
Application 14/982,857
Technology Center 2100
Before ROBERT E. NAPPI, JENNIFER S. BISK, and BETH Z. SHAW,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 appeals from the
Examiner’s decision to reject claims 1–20. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as CA, Inc.
Appeal Br. 3.
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Application 14/982,857
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CLAIMED SUBJECT MATTER
The claims are directed to detecting “flapping” in resource
measurements. Spec. ¶¶ 1, 2. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method comprising:
determining a series of differences between successive
resource measurements over a time window, wherein each of the
resource measurements corresponds to a different time instant;
determining a sum of each series of differences in a same
direction;
determining whether any of the sums have a magnitude
that satisfies a first threshold; and
in response to a determination that one or more of the sums
have a magnitude that satisfies the first threshold, indicating that
flapping of a resource has occurred in the time window, wherein
the resource corresponds to the resource measurements.
Appeal Br. 14 (Claims Appendix).
REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 101. Final Act. 4.
OPINION
Appellant argues the pending claims as a group. See Appeal Br. 6–12.
As permitted by 37 C.F.R. § 41.37, we decide the appeal based on claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv) (2016).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Appeal 2018-008463
Application 14/982,857
3
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “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.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Eligibility Guidance”). Under the guidance, to decide
whether a claim is “directed to” an abstract idea, we evaluate whether the
claim (1) recites an abstract idea grouping listed in the guidance and (2) fails
to integrate the recited abstract idea into a practical application. See 2019
Eligibility Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an
abstract idea, as noted above, we then determine whether the claim recites an
inventive concept. The 2019 Eligibility Guidance explains that when making
this determination, we should consider whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
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Application 14/982,857
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append[] well-understood, routine, conventional activities previously known
to the industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the Examiner’s § 101
rejection.
Abstract idea
Turning to Step 2A, Prong 1, the claimed method includes the
following calculations:
determining a series of differences between successive
resource measurements over a time window, wherein each of the
resource measurements corresponds to a different time instant;
determining a sum of each series of differences in a same
direction; and
determining whether any of the sums have a magnitude
that satisfies a first threshold.
The claim also recites, “in response to a determination that one or more of
the sums have a magnitude that satisfies the first threshold,” “indicating that
flapping of a resource has occurred in the time window, wherein the
resource corresponds to the resource measurements.”
Claim 1 recites an abstract idea grouping listed in the 2019 Eligibility
Guidance: “mental processes.” See 2019 Eligibility Guidance, 84 Fed. Reg.
at 52, 53 (listing “[m]ental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion)” as one of
the “enumerated groupings of abstract ideas” (footnote omitted)). The
guidance explains that “mental processes” include acts that people can
perform in their minds or using pen and paper, even if the claim recites that
a generic computer component performs the acts. See 2019 Eligibility
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
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generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”); see
also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”), quoted in
2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14; Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)
(holding that computer-implemented method for “‘anonymous loan
shopping’” was an abstract idea because it could be “‘performed by humans
without a computer’”); quoted in 2019 Eligibility Guidance, 84 Fed. Reg. at
52 n.14.
The method recited in claim 1 executes steps that people can perform
in their minds or using pen and paper. A person can perform each of the
steps of claim 1 by using his or her mind (or pen and paper) in the claimed
manner. For example, a person can determine “a series of differences
between successive resource measurements over a time window, wherein
each of the resource measurements corresponds to a different time instant,”
using his or her mind or pen and paper. A person can determine “a sum of
each series of differences in the same direction” using his or her mind or pen
and paper. A person can determine “whether any of the sums have a
magnitude that satisfies a first threshold” using his or her mind or pen and
paper. Accordingly, claim 1 recites a mental process, and thus an abstract
idea.
Turning to Step 2A, Prong 2, there are no remaining elements recited
in claim 1 that could integrate the abstract idea into a practical application.
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Moreover, as the Examiner points out, claim 1 does not recite any computer
related technology. See Ans. 8.
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Inventive Concept
Because we determine claim 1 is “directed to” an abstract idea, we
consider whether claim 1 recites an “inventive concept.” Appellant contends
“the claims have the aspect of being directed to determining sums of
monotonic series of differences of resources measurements.” Reply Br. 3;
Appeal Br. 9. But these elements form part of the recited abstract idea, and
thus are not “additional elements” that “‘transform the nature of the claim’
into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78); see also 2019 Eligibility Guidance, 84 Fed. Reg. at 55 n.24
(“USPTO guidance uses the term ‘additional elements’ to refer to claim
features, limitations, and/or steps that are recited in the claim beyond the
identified judicial exception.” (emphasis added)).
Appellant contends the Examiner erred in rejecting the claims under
35 U.S.C. § 101, because the claims do not preempt others from using the
abstract idea. Appeal Br. 11–12. We are not persuaded of Examiner error by
this argument. Preemption is a driving concern when determining patent
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eligibility. See Alice, 573 U.S. at 216–17. Patent law cannot inhibit further
discovery by improperly tying up the future use of the building blocks of
human ingenuity. See id. (citing Mayo, 566 U.S. at 85–86). Although
preemption is characterized as a driving concern for patent eligibility,
preemption itself is not the test for patent eligibility. “Where a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015). “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Appellant argues in the Reply Brief that the Examiner must provide
support for elements that are dismissed as “well-understood, routine, or
conventional.” Reply Br. 3–4. Appellant refers to the Berkheimer
memorandum.2 Id. However, this argument is unavailing because Appellant
does not provide evidence to support this argument and persuade us of error.
Appellant does not point us to any place in the record where the Examiner
determined any elements were well-understood, routine, or conventional.
For at least the above reasons, we agree with the Examiner that claim
1 is directed to an abstract idea and does not recite an inventive concept.
Accordingly, we sustain the Examiner’s rejection of claims 1–20 under 35
U.S.C. § 101.

2 Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (Apr. 19, 2018) available at:
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF.
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Application 14/982,857
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DECISION
The Examiner’s rejection is affirmed.
SUMMARY
Claims
Rejected
Basis Affirmed Reversed
# 1–20 § 101 # 1–20
FINALITY AND RESPONSE
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)(1)(iv).
AFFIRMED