Jerome Rolia et al.

Patent Trials and Appeals Board

Sep 5, 2019

13812949 - (D) (P.T.A.B. Sep. 5, 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.
13/812,949 01/29/2013 Jerome Rolia 83184710 9519
146568 7590 09/05/2019
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
BARBEE, MANUEL L
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
09/05/2019 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEROME ROLIA, CULLEN E. BASH, DANIEL J. GMACH,
YAN CHEN, MASTAZIRUL ISLAM, SM PRAKASH SHIVA, and
ZHIKUI WANG
____________

Appeal 2017-010958
Application 13/812,9491
Technology Center 2800
____________

Before LARRY J. HUME, CATHERINE SHIANG, and
JASON J. CHUNG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–4, 6–14, and 16–21, which are all the claims pending
and rejected in the application.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 According to assignment records, ENTIT SOFTWARE LLC is the real
party in interest.
2 Appellants include claims 5 and 15 in their arguments (App. Br. 8, 14).
However, those claims have been cancelled. See Response after Final
Action dated September 28, 2016 pp. 5, 8 (stating claims 5 and 15 have been
cancelled); see also App. Br. 16, 19.
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Application 13/812,949

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STATEMENT OF THE CASE
Introduction
The claimed invention relates to power consumption of computing
devices. Spec. ¶¶ 1–3. Claim 1 is exemplary:

1. A method for apportioning power consumption, the method
implemented by a physical processor implementing machine readable
instructions, the method comprising:
determining, by the processor, a plurality of transactions that
are used to complete a computing service;
determining, by the processor, a plurality of components that
are used to execute operations included in each of the plurality of
transactions, wherein each of the plurality of components comprises a
plurality of resources that consume power while executing each of the
plurality of transactions;
determining, by the processor, component resource usage for
each of the plurality of components based on resource demand by the
plurality of resources;
determining, by the processor, component power consumption
for each of the plurality of components based on the component
resource usage for each of the plurality of components; and
apportioning, by the processor, the component power
consumption to the computing service based on the determined
component power consumption for each of the plurality of
components.

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Application 13/812,949

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Rejection3
Claims 1–4, 6–14, and 16–21 are rejected under 35 U.S.C. § 101
because they are directed to patent-ineligible subject matter. Final Act. 4–7;
Advisory Action dated October 20, 2016 (“Advisory Act.”) p. 2.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contentions 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. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
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

3 Throughout this opinion, we refer to the (1) Final Office Action dated June
29, 2016 (“Final Act.”); (2) Appeal Brief dated February 28, 2017 (“App.
Br.”); (3) Examiner’s Answer dated June 20, 2017 (“Ans.”); and (4) Reply
Brief dated August 21, 2017 (“Reply Br.”).
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Application 13/812,949

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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. Kappos, 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (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 (1854))); 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 13/812,949

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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 turn 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) (“Guidance”). Under the \
Guidance, 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 activity such as a
fundamental economic practice, or mental processes)
(Step 2A, Prong 1); and
(2) additional elements that integrate the judicial
exception into a practical application (see MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”)
§ 2106.05(a)–(c), (e)–(h)) (9th ed., rev. 08.2017, 2018)
(Step 2A, Prong 2).
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Application 13/812,949

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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:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); 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. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Turning to Step 2B of the Guidance, “[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’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) and
Alice, 573 U.S. at 225). “Whether 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.
In this case, the Examiner finds the additional elements of
independent claims 1, 8, and 14 are “routine” and/or “conventional.” See
Final Act. 5; see also Ans. 9. Appellants argue the Examiner fails to provide
evidence to support the above findings. See App. Br. 12–13; Reply Br. 3, 5.
We agree with Appellants, because the Examiner has not provided
sufficient evidence required by Berkheimer to support the above findings.
See Berkheimer, 881 F.3d at 1369. In particular, the Examiner has not
provided any of the four categories of information required by the USPTO
Memorandum, dated April 19, 2018, of Changes in Examination Procedure
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Application 13/812,949

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Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (“Berkheimer Memorandum”):
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s). . . .
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element(s). . . .

Berkheimer Memorandum at 3–4.
Therefore, the Examiner erred with respect to Step 2B of the
Guidance, and we are constrained by the record to reverse the Examiner’s
rejection of independent claims 1, 8, and 14, and corresponding dependent
claims 2–4, 6, 7, 9–13, and 16–21 on procedural grounds.

DECISION
We reverse the Examiner’s decision rejecting claims 1–4, 6–14,
and 16–21.
REVERSED