VMWARE, INC.

Patent Trials and Appeals Board

May 19, 2020

2019004640 (P.T.A.B. May. 19, 2020)

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.
14/637,426 03/04/2015 MRITYUNJOY SAHA B915 5395
152606 7590 05/19/2020
VMWare - OPW
P.O. Box 4277
Seattle, WA 98194
EXAMINER
DANNEMAN, PAUL
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
05/19/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MRITYUNJOY SAHA and KUMAR GAURAV
____________

Appeal 2019-004640
Application 14/637,426
Technology Center 3600
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed January 17, 2019) and Reply Brief (“Reply Br.,” filed May 23, 2019),
and the Examiner’s Answer (“Ans.,” mailed March 28, 2019), and Final
Office Action (“Final Act.,” mailed May 22, 2018). Appellant identifies
VMWARE, INC. as the real party in interest (Appeal Br. 1).
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CLAIMED INVENTION
Appellant describes that the present disclosure “is directed to methods
and systems that manage computer networks and, in particular, to methods
and systems that manage the cost of virtual networks” (Spec. ¶ 2).
Claims 1, 11, and 21 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method stored in one or more data-storage
devices and executed using one or more processors to allocate
resources to a virtual network used by virtual machines of a data
center tenant, the method comprising:
[(a)] measuring a bandwidth utilization of the virtual
network by each virtual machine based on a rate of received and
transmitted data by each virtual machine over the virtual
network;
[(b)] measuring a service capacity of each network
service provided by the virtual network to each of the virtual
machines;
[(c)] determining an effective virtual network cost of the
virtual network for each virtual machine based on the bandwidth
utilization and the service capacity;
[(d)] determining a total allocated cost of the virtual
network based on the effective virtual network costs of the virtual
machines;
[(e)] determining a total unallocated cost of the virtual
network based on the total allocation cost and a total network
service costs; and
[(f)] adjusting allocation of resources to run the virtual
network when a ratio of the total unallocated cost to the total
allocated cost is greater than a maximum threshold or less than a
minimum threshold.
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REJECTION
Claims 1–30 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 5–20).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework,
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
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566 U.S. at 79, 78). This is “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 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to resource and cost allocation, i.e.,
to a method of organizing human activities and, therefore, to an abstract idea
similar to other concepts that courts have held abstract (Final Act. 8–11).
The Examiner also determined that the claims do not include additional
elements sufficient to amount to significantly more than the abstract idea
itself (id. at 11–12).
After the Final Office Action was mailed, the U.S. Patent and
Trademark Office (the “USPTO”) published revised guidance on January 7,
2019 for use by USPTO personnel in evaluating subject matter eligibility
under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
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applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id. 2,3
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
the Examiner’s alleged failure to comply with now superseded USPTO
guidance.
3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded here that the Examiner erred in determining that
claim 1 is directed to an abstract idea (Appeal Br. 6–17; Reply Br. 2–10).
The Federal Circuit has explained that “the ‘directed to’ inquiry applies a
stage-one filter to claims, considered in light of the specification, based on
whether ‘their character as a whole is directed to excluded subject matter.’”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
“abstract idea” for which computers are invoked merely as a tool. See id.
at 1335–36. Here, it is clear from the Specification (including the claim
language) that claim 1 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “METHOD AND SYSTEM THAT
ALLOCATES VIRTUAL NETWORK COST IN A SOFTWARE-
DEFINED DATA CENTER,” and, in the Background section, describes the
various benefits that can be achieved through the use of virtual networks, as
compared to large physical networks that generally require substantial
maintenance, configuration, and support (Spec. ¶¶ 3, 4 (explaining, for
example, that, through the use of virtual networks, “the underlying physical
network structure can be relatively simple and flat and more complex logical
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network structures can be created and managed using virtual appliances”)).
At the same time, the Specification acknowledges that “allocating the costs
of operating a virtual network to virtual data center tenants may be
challenging” (id. ¶ 4).
The present invention is ostensibly intended to address this challenge
by providing a method and system for measuring and allocating virtual
network costs to physical data center tenants (Spec. ¶ 69). Accordingly, in
one embodiment, costs are allocated to tenant virtual machines (“VMs”) by
determining an effective bandwidth for the virtual network, the common cost
associated with operating the virtual network, the service capacity for each
network service provided by the virtual network, and the service cost for
each network service (id. ¶¶ 69–71, 73). Each VM is then allocated a
portion of the common cost and a portion of the service cost in proportion to
its bandwidth utilization and its utilization of the particular network service
(id. ¶¶ 69, 70, 73). The Specification, thus, describes that the effective
virtual network cost for each virtual machine, VMk, is computed according
to:

i.e., the sum of the common cost for VMk and the total cost of M network
services used by VMk. (id. ¶ 73). The total allocated cost for the virtual
network is given by

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i.e., the sum of the effective costs of the virtual machines; and the total
unallocated cost of the virtual network is computed according to

i.e., the difference between the total network costs (including the total
common cost and the total network services cost) and the total allocated cost
(id.).
The Specification describes that the allocation of resources to run the
virtual network is adjusted based on whether the ratio of the total
unallocated cost to the total allocation cost is greater than or less than certain
predetermined threshold values (id. ¶ 73, 74). Thus, for example, when the
ratio is greater than a maximum threshold, the resources allocated to the
virtual network are increased, e.g., by adding physical or virtual appliances
to the network or by deploying additional servers; on the other hand, when
the ratio is less than a minimum threshold, the allocated resources are
decreased, e.g., by reducing the number of servers or decommissioning
certain network appliances (id. ¶ 74).
Consistent with this disclosure, claim 1 recites a method for allocating
resources to a virtual network used by virtual machines of a data center
tenant comprising: (1) determining an effective network cost for each virtual
machine based on its bandwidth utilization and service capacity, and a total
allocated cost of the virtual network based on the total effective virtual
network costs of the virtual machines, i.e.,
measuring a bandwidth utilization of the virtual network
by each virtual machine based on a rate of received and
transmitted data by each virtual machine over the virtual
network;
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measuring a service capacity of each network service
provided by the virtual network to each of the virtual machines;
determining an effective virtual network cost of the virtual
network for each virtual machine based on the bandwidth
utilization and the service capacity; [and]
determining a total allocated cost of the virtual network
based on the effective virtual network costs of the virtual
machines
(steps (a) through (d)); and (2) determining a total unallocated cost based on
the difference between the total allocated cost and a total network service
cost, and adjusting the allocation of resources to the virtual network when
the ratio of the total unallocated cost to the total allocated cost is greater than
a maximum threshold or less than a minimum threshold, i.e.,
determining a total unallocated cost of the virtual network
based on the total allocation cost and a total network service
costs; and
adjusting allocation of resources to run the virtual network
when a ratio of the total unallocated cost to the total allocated
cost is greater than a maximum threshold or less than a minimum
threshold
(steps (e) and (f)). These limitations, when given their broadest reasonable
interpretation, recite (1) collecting information (e.g., measuring bandwidth
and service capacity); (2) analyzing the information via mathematical
calculations (e.g., determining effective virtual network costs, total allocated
costs, total unallocated costs, and the ratio of the total unallocated cost to the
total allocated cost); and (3) adjusting the amount of resources allocated to
the virtual network based on the analysis. Simply put, claim 1 recites
mathematical calculations and mathematical relationships, which are
mathematical concepts and, therefore, an abstract idea. See 2019 Revised
Guidance, 84 Fed. Reg. at 52. See also SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to “a series of
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mathematical calculations based on selected information” are directed to an
abstract idea).
The Federal Circuit has held similar concepts to be abstract. Thus, for
example, the Federal Circuit has held that abstract ideas include merely
collecting data, analyzing the data, and displaying the results of the
collection and analysis, including when limited to particular content. See,
e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying,
and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
ideas); see also SAP Am., 898 F.3d at 1168 (“As many cases make clear,
even if a process of collecting and analyzing information is ‘limited to
particular content’ or a particular ‘source,’ that limitation does not make the
collection and analysis other than abstract.”) (quoting Elec. Power Grp.,
830 F.3d at 1353, 1355 (citing cases)). Adjusting resource allocation based
on whether the ratio of the total unallocated cost to the total allocation cost is
greater than or less than certain predetermined threshold values, i.e., a
comparison process, also is substantially similar to other concepts that courts
have held abstract. See, e.g., Berkheimer v. HP Inc., 881 F.3d 1360, 1366
(Fed. Cir. 2018) (concluding that parsing, comparing, storing, and editing
data are abstract ideas); SmartGene, Inc. v. Advanced Biological Labs., SA,
555 F. App’x 950 (Fed. Cir. 2014) (comparing new and stored information
and using rules to identify options is an abstract idea).
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Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The only additional elements recited in claim 1, beyond the abstract
idea, are the “one or more processors” — elements that the Examiner
concluded are described as generic computer components (Final Act. 11
(noting that the processors are “generically recited, and described only in
terms of their desired functionality”)). We find no indication in the
Specification that the operations recited in claim 1 require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, invoke any allegedly inventive programming, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.4

4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
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Appellant maintains here that claim 1 is not directed to an abstract
idea and is patent eligible, because the claim describes a technological
improvement, i.e., an improvement in the way resources are allocated in a
virtual network (Appeal Br. 6–10). But, we are not persuaded that the
claimed invention, thus, provides a technological improvement.
The claimed invention, as described and claimed, adjusts the
allocation of resources in the virtual network based on the total cost of
operating the virtual network relative the total costs allocated to tenants that
use the virtual network, i.e., resource allocation is adjusted based on the
extent to which the operational costs of running the virtual network are
allocated to its users. The Specification explains that “unused physical
network bandwidth and unused or underused network services contribute to
wastage and unallocated virtual network cost” (Spec. ¶ 79) — wastage and
unallocated cost that, in accordance with the claimed invention, are
controlled by appropriately adjusting the amount of resources allocated to
operating the virtual network based on the ratio of the total unallocated cost
to the total allocated cost, i.e., increasing resources when this ratio is greater
than a predetermined maximum threshold and decreasing resources when the
ratio is less than a predetermined minimum threshold (id. ¶ 74).
Considered in light of the Specification, the claimed invention clearly
appears focused on achieving a commercial objective, e.g., managing the
operational cost of operating a virtual network by adjusting the amount of

combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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resources allocated to the network (and, thereby, its operational cost) based
on the extent to which network bandwidth and network services are being
utilized (see, e.g., id. ¶ 2 (“The present disclosure is directed . . . in
particular, to methods and systems that manage the costs of virtual
networks”), id. ¶ 83 (describing that “[t]he amount of resources allocated to
the virtual network may be adjusted to a range that allows for increased
virtual network utilization without an excessive amount of unallocated
costs”)), and not on any claimed means for achieving that goal that improves
technology.
Attempting, in the Reply Brief, to draw an analogy between claim 1
and the claim at issue in McRO, Inc. v. Bandai Namco Games America, Inc.,
837 F.3d 1299 (Fed. Cir. 2016) (Reply Br. 7–10), Appellant argues that
claim 1 is not directed to an abstract idea because, similar to the claim in
McRO, claim 1 is directed to “adjusting allocation of resources to run the
virtual network, which is a technological improvement and practical
application of the total allocated and unallocated costs” (id. at 10). But, we
are not persuaded that there is any parallel between claim 1 and the patent
eligible claim in McRO.
Claim 1 of the ’576 patent,5 at issue in McRO, is directed to a method
for automatically animating the lip synchronization and facial expressions of
three-dimensional animated characters, and recites that the method
comprises, inter alia, “obtaining a first set of rules that define output morph
weight set stream as a function of phoneme sequence and time of said
phoneme sequence.” McRO, 837 F.3d at 1307–08. The Federal Circuit

5 U.S. Patent No. 6,307,576, issued October 23, 2001.
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determined that the claim, when considered as a whole, is directed to a
technological improvement over existing, manual 3–D animation techniques,
and uses limited rules in a process specifically designed to achieve an
improved technological result relative to conventional industry practice. Id.
at 1316. As such, the court determined that the claim is not directed to an
abstract idea, and is patent eligible under 35 U.S.C. § 101. Id.
We are not persuaded that a comparable situation is presented here.
Adjusting the allocation of resources in a virtual network based on the total
allocated and unallocated costs may well improve a business process. But,
we are not persuaded that it achieves an improved technological result.
We conclude, for the reasons outlined above, that claim 1 recites
mathematical concepts, i.e., an abstract idea, and that the additional elements
recited in the claim are no more than generic components used as tools to
perform the recited abstract idea. As such, they do not integrate the abstract
idea into a practical application. See Alice Corp., 573 U.S. at 223–24
(“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
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amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant asserts that, even if claim 1 recites an abstract idea, claim 1
is nonetheless patent eligible because the claim describes an inventive
concept (Appeal Br. 17–19). In this regard, Appellant notes that the steps of
claim 1 involve first measuring a bandwidth utilization of the virtual
network and measuring a service capacity of each network service provided
by the virtual network, and that the measured bandwidth utilization and
measured service capacity of each network service are subsequently used to
compute total allocated and unallocated costs of the virtual network (id.
at 19).
Appellant argues that
[c]laim 1 describes the inventive concept of using the total
allocated and unallocated costs to perform a practical application
in which allocation of the resources used to run the virtual
network [is] adjusted when a ratio of the total unallocated cost to
the total allocated cost is greater than a maximum threshold or
less than a minimum threshold
(Appeal Br. 19). But, that argument is not persuasive at least because the
limitation that Appellant identifies, i.e., step (f) recited in claim 1, as the
inventive concept is part of the abstract idea; it is not an additional element
to be considered when determining whether claim 1 includes additional
elements or a combination of elements sufficient to amount to significantly
more than the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
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“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (internal quotations and citation omitted); see Mayo,
566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added) (internal citation omitted)). In other
words, the inventive concept under step two of the Mayo/Alice test cannot be
the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”) (internal citation omitted).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the “one or more processors,” i.e.,
generic computer components used to perform generic computer functions
(Final Act. 11). Appellant cannot reasonably contend, nor does Appellant,
that there is insufficient factual support for the Examiner’s determination
that the operation of these components is well-understood, routine, or
conventional, where, as here, there is nothing in the Specification to indicate
that the operations recited in claim 1 require any specialized hardware or
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inventive computer components or that the claimed invention is
implemented using other than a generic computer component to perform
generic computer functions, e.g., receiving, storing, transmitting, and
processing information. Indeed, the Federal Circuit, in accordance with
Alice, has “repeatedly recognized the absence of a genuine dispute as to
eligibility” where claims have been defended as involving an inventive
concept based “merely on the idea of using existing computers or the
Internet to carry out conventional processes, with no alteration of computer
functionality.” Berkheimer, 890 F.3d at 1373 (Moore, J., concurring)
(internal citations omitted); see also BSG Tech, 899 F.3d at 1291
(“BSG Tech does not argue that other, non-abstract features of the claimed
inventions, alone or in combination, are not well-understood, routine and
conventional database structures and activities. Accordingly, the district
court did not err in determining that the asserted claims lack an inventive
concept.”).
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 is patent eligible because the claim does
not attempt to “preempt previously developed techniques for adjusting
allocation of resources in virtual networks” and does not “prevent others
from developing different techniques for adjusting allocation of resource[s]
in virtual networks” (Appeal Br. 19). Although the Supreme Court has
described “the concern that drives [the exclusion of abstract ideas from
patent-eligible subject matter] as one of pre-emption,” Alice Corp., 573 U.S.
at 216, characterizing preemption as a driving concern for patent eligibility
is not the same as characterizing preemption as the sole test for patent
eligibility. “The Supreme Court has made clear that the principle of
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preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–30, which fall with
claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–30 101 Eligibility 1–30
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