Ex Parte Dang et al

Patent Trial and Appeal Board

Dec 18, 2018

14823384 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/823,384 08/11/2015
11445 7590 12/20/2018
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
FIRST NAMED INVENTOR
Tu T. Dang
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920l00l30US3 6500
EXAMINER
CHU, GABRIELL
ART UNIT PAPER NUMBER
2114
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TUT. DANG, MICHAEL C. ELLES,
JUAN Q. HERNANDEZ, DWAYNE A. LOWE, and
CHALLIS L. PURRINGTON SR. 1
Appeal2018-005007
Application 14/823,384
Technology Center 2100
Before CARLA M. KRIVAK, BRADLEY WILLIAN BAUMEISTER, and
MICHAEL M. BARRY, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 20-37. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellants identify the real party in interest as International Business
Machines Corporation. App. Br. 3.
Appeal2018-005007
Application 14/823,384
STATEMENT OF THE CASE
Appellants' invention is directed to
a method for scalable predictive failure analysis. Embodiments
of the method may include gathering memory information for
memory on a user computer system having at least one
processor. Further, the method includes selecting one or more
memory-related parameters. Further still, the method includes
calculating based on the gathering and the selecting, a single bit
error value for the scalable predictive failure analysis through
calculations for each of the one or more memory-related
parameters that utilize the memory information. Yet further, the
method includes setting, based on the calculating, the single bit
error value for the user computer system.
Abstract.
Independent claim 20, reproduced below, exemplifies the subject
matter on appeal.
20. A method comprising:
receiving a rank value corresponding to the quantity of
ranks in an synchronous dynamic random access memory
(SD RAM) having a plurality of ranks;
calculating, by machine logic, a memory rank scale
factor based upon the quantity of ranks;
receiving a baseline predictive failure analysis (PF A)
count value y, with the PF A count value being based upon a
predetermined time window value;
dividing, by machine logic, the memory rank scale factor
by y to obtain single bit error (SBE) threshold value for the
SDRAM;
counting single bit errors in the SDRAM to obtain an
SBE count value;
determining that the SBE count value meets or exceeds
the SBE threshold value; and
responsive to the determination that the SBE count value
meets or exceeds the SBE threshold value, performing a
corrective action.
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Application 14/823,384
REJECTION
The Examiner rejected claims 20-37 under 35 U.S.C. § 101,
determining that the claimed invention is directed to patent-ineligible subject
matter.
PRINCIPLES OF LAW
The Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2354 (2014). The "abstract ideas" category embodies
the longstanding rule that an idea, by itself, is not patentable. Alice, 134 S.
Ct. at 2355 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court reiterates an analytical two-step
framework previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66, 79 (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,
134 S. Ct. at 2355 (citation omitted). The first step in the analysis is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts," such as an abstract idea. Id. (citation omitted). If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); see also
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the
claims are directed to a patent-ineligible concept, the second step in the
analysis is to consider the elements of the claims "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."
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Application 14/823,384
Alice, at 2355 (citing Mayo, 566 U.S. at 79, 78). In other words, the second
step is to "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.
(citing Mayo, 566 U.S. at 72-73).
CONTENTIONS AND ANALYSIS
In rejecting claims 20-37 under 35 U.S.C. § 101, the Examiner states
the claims are "directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more." Final Act. 3;
Ans. 3. Specifically, the Examiner finds claims 20-37 "are directed to the
abstract concept of determining and comparing [data] to a threshold, similar
to concepts disclosed in Parker v. Flook, Classen lmmunotherapies v.
Biogen /DEC, Fair[W] arning IP, LLC v. latric Systems, Intellectual
Ventures, LLC v. Capital One Bank (USA), and Electric Power Group, LLC
v. Alstom, where data is collected, analyzed." Id.
Appellants contend "the operations being performed [ in the claims]
are specifically tied to a SD RAM because the determination of a single bit
error threshold value cannot occur outside the context of memory hardware."
App. Br. 12. Thus, Appellants assert, their claims are directed to "a
technological improvement: an enhanced computer memory system," as
were the claims in Visual Memory LLC v. NVIDIA Corporation, 867 F.3d
1253 (Fed. Cir. 2017), and are thus, patent eligible. Id. (emphasis omitted).
We do not agree.
The Examiner is correct that "while the subject of the claimed
determination is indeed for an SDRAM, the concepts described in the claims
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Application 14/823,384
merely reference the SDRAM as a subject of determination. As further
explained below, Visual Memory, aside from the common use of
'memory[,]' is not shown to have any meaningful similarity to the instant
application." Ans. 4. The claims in Visual Memory are "directed to a
technological improvement in computer capabilities based on configurable
operational characteristics." Id. There, however, "is no such operational
change in the instant application." Id. Rather, Appellants' claims make a
determination, and a result of the determination is displayed"-merely
collecting data and analyzing that data. Ans. 4--5.
Collecting, analyzing, and displaying data, is an abstract idea. See,
e.g., FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1097-98
(Fed. Cir. 2016) ("[T]he practices of collecting, analyzing, and displaying
data, with nothing more, are practices 'whose implicit exclusion from
[section] 101 undergirds the information-based category of abstract
ideas."'); see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1146 (Fed. Cir. 2016) ("[W]e continue to 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.") (quotation omitted); and Electric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) ("Merely requiring the selection
and manipulation of information-provide a 'humanly comprehensible'
amount of information useful for users ... -by itself does not transform the
otherwise-abstract processes of information collection and analysis.")
( citation omitted).
Appellants have not demonstrated their claims recite a specific
improvement to the way computers operate, and they do not present
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Application 14/823,384
evidence to establish the claims recite a specific improvement to the claimed
processor or user device. Ans. 4--5; see also Enfish 822 F.3d at 1336, 1339.
None of the steps and elements recited in Appellants' claims provide, and
nowhere in Appellants' Specification can we find, any description or
explanation as to how the claimed mathematical manipulation steps are
intended to provide: (1) a "solution ... necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks," as explained by the Federal Circuit in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014);
(2) "a specific improvement to the way computers operate," as explained in
Enfzsh, 822 F.3d at 1336; or (3) an "unconventional technological solution
... to a technological problem" that "improve[ s] the performance of the
system itself," as explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1300, 1302 (Fed. Cir. 2016). Appellants also have not
demonstrated their claims "improve the way a computer stores and retrieves
data in memory," as did the claims in Enfish via a "self-referential table for a
computer database." See Enfzsh, 822 F.3d at 1336, 1339. Thus, we agree
with the Examiner the claims are directed to performing mathematical
calculations and monitoring the use for a predictive failure analysis using a
computer, not improving the performance of the computer itself.
Furthermore, determining a count value that meets or exceeds a
threshold value as claimed, is merely a step of analyzing information, and as
such is intangible. See, e.g., Microsoft Corp. v. AT & T Corp., 550 U.S. 437,
451 n.12 (2007); Alice, 134 S. Ct. at 2355; Gottschalkv. Benson, 409 U.S.
63, 67 (1972) and Parker v. Flook, 437 U.S. 584, 589 (1978) ("Reasoning
that an algorithm, or mathematical formula, is like a law of nature, Benson
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Application 14/823,384
applied the established rule that a law of nature cannot be the subject of a
patent."). Additionally, "collecting information, including when limited to
particular content (which does not change its character as information)," and
"analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more," are "within the realm of abstract
ideas." Elec. Power Grp., 830 F.3d at 1353-54; see also Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); and
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344,
1350 (Fed. Cir. 2014) ("Data in its ethereal, non-physical form is simply
information that does not fall under any of the categories of eligible subject
matter under section 101. "). Thus, we determine the Examiner is correct that
Appellants' claims are directed to an abstract idea.
Appellants appear to be arguing the claimed SD RAM is memory
hardware and not a "generic computer;" rather, it is "an integral component"
for performing the claimed operations. App. Br. 12-13. Thus, Appellants
contend, "the claims are directed to the operation of memory hardware,"
which is patentably eligible under Visual Memory. App. Br. 14.
We agree with the Examiner, the "corrective action" recited in the
claims merely entails displaying the results of the determination/ comparison.
Ans. 7; see also id. at 6 (citing claim 25). That is, the claims do not recite
any steps that actually improve the underlying technology. The claims,
instead, recite an improved method of analyzing existing technology.
We therefore concur with the Examiner that Appellants' claims are
similar to those in Electric Power Group. Ans. 5---6. In Electric Power
Group the claims were determined to merely entail using "off-the-shelf,
conventional computer, network, and display technology for gathering,
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sending, and presenting the desired information" Electric Power Group, 830
F.3d at 1355). On this basis, the court held the claims to be directed to an
abstract idea without adding significantly more. Id.
Therefore, considering the elements of the claims "individually and
'as an ordered combination"' we determine there are no additional elements
that transform the nature of the claim into a patent-eligible application.
DECISION
The Examiner's decision rejecting claims 20-37 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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