Ex Parte Dawson et al

Patent Trial and Appeal Board

Oct 9, 2018

12342344 (P.T.A.B. Oct. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/342,344 12/23/2008
79980 7590 10/11/2018
Keohane & D'Alessandro
1881 Western Avenue Suite 180
Albany, NY 12203
FIRST NAMED INVENTOR
Christopher J. Dawson
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.
END920080 l 60US 1 2502
EXAMINER
SWARTZ, STEPHENS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/11/2018 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):
drubbone@kdiplaw.com
Docket@Kdiplaw.com
lcronk@kdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CHRISTOPHERJ. DAWSON,
VINCENZO V. DILUOFFO,
RICK A. HAMIL TON II, and
MICHAEL D. KENDZIERSKI
Appeal2017-000489
Application 12/342,3441
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christopher J. Dawson, et al. (Appellants) seek our review under 35
U.S.C. § 134(a) of the Final Rejection of claims 1-24. We have jurisdiction
under 35 U.S.C. § 6(b).
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 1.
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Application 12/342,344
We AFFIRM.
SUMMARY OF DECISION
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for allocating workloads to manage energy in a data
center comprising the computer-implemented steps of:
analyzing an operating state of each of a plurality of computer
systems within a data center cluster environment in which a set of
logical resources that share underlying physical computer system
resources to determine an operating state of each of a set of computer
systems from the plurality of computer systems within the data center,
the operating state of each computer system being based on whether
the computer system is currently operating and a current workload
usage of the computer system, each computer system of the plurality
of computer systems including a computer device;
assigning a priority to each of the plurality of computer systems
based on the analyzing, the priority being a numerical rating that
identifies the operating state of a particular computer system, wherein
the assigning further comprises:
assigning a relatively low priority to a computer system
having an operating state that is either off or has an error
processing workload;
assigning a relatively low priority to a computer system
that has an operating state that indicates that the current
workload usage of the computer system indicates an energy
usage that exceeds a predefined threshold; and
assigning a highest priority to a computer system has an
operating state that is operating and has a current workload
usage that indicates an energy usage that does not exceed the
predefined threshold; and
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Application 12/342,344
prioritizing a routing of a workload to the set of computer
systems from the plurality of computer systems within the data center
based on the priority of each of the plurality of computer systems,
wherein the workload comprises an application, and wherein the
prioritizing is further based on a priority of the application.
App. Br. 18 (Claims Appendix).
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Fujino
Malik
Kennedy
US 2004/0194061 A 1
US 2010/0235654 Al
US 2011/0063126 Al
Sept. 30, 2004
Sept. 16, 2010
Mar. 17, 2011
"[T]he examiner takes Official Notice that it was well-known in the
art at the time the invention was made to charge a fee for services
performed." Final Rej. 16. (Official Notice)
The following rejections are before us for review:
Claims 1-24 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
Claims 1, 2, 7, 8, 13, 14, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fujino and Kennedy.
Claims 3-5, 9-11, 15-17 and 21-23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fujino, Kennedy, and Malik.
Claims 6, 12, 18, and 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fujino, Kennedy, and Official Notice.
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ISSUES
Did the Examiner err in rejecting claims 1-24 under 35 U.S.C. §101
as being directed to judicially-excepted subject matter?
Did the Examiner err in rejecting claims 1, 2, 7, 8, 13, 14, 19, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Fujino and Kennedy?
Did the Examiner err in rejecting claims 3-5, 9-11, 15-17 and 21-23
under 35 U.S.C. § 103(a) as being unpatentable over Fujino, Kennedy, and
Malik?
Did the Examiner err in rejecting claims 6, 12, 18, and 24 under 35
U.S.C. § 103(a) as being unpatentable over Fujino, Kennedy, and Official
Notice?
ANALYSIS
The rejection of claims 1-24 under 35 U.S.C. §1 OJ as being directed to
judicially-excepted subject matter.
The Appellants argued these claims as a group. See App. Br. 7-12.
We select claim 1 as the representative claim for this group, and the
remaining claims 2-24 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under 35
U.S.C. § 101.
According to Alice step one, "[ w Je must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
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In that regard, the Examiner determined that the claims are
directed to the abstract idea of allocating workloads to manage energy
which is viewed as the comparing of new and stored information and
using rules to identify options (Federal Register vol. 79, No. 241
(SmartGene: 17 see Section IV.B.4.)) which is the mental steps done
on a computer, this is the case because it appears the claims consist
solely of gathered data which next involves the mental steps that can
be carried out by a human using pen and paper including a file
containing state data. This managing of workloads can be broken
down into the steps of understanding a system, prioritizing the tasks of
what needs to be done and then assigning the workload which is
viewed as the scheduling of resources which is seen as a form the
organizing of human activities and thus an abstract idea;.
Final Rej. 5.
Step two 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."' Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 US 66, 73 (2012)).
In that regard, the Examiner determined:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because analyzing, assigning, and prioritizing are
viewed as a computer program that is merely instruction to
determine the organizing of human activities on a generic
computer and therefore an abstract idea. The claim( s) does/ do
not include additional elements that are sufficient to amount to
significantly more than the judicial exception because it is not
clear that there is any meaningful improvement in the
technology or to the technological environment. Specifically,
the claims reciting a handful of generic computer components
configured to implement the abstract idea merely perform the
abstract idea and therefore the claims do not amount to
significantly more than the underlying abstract idea. This is
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further supported in pars. [0014]-[0015] of the specification
which discloses generic computers which makes it unclear that
there is any meaningful improvement in the technology or to
the technological environment.
Final Rej. 4-5.
Given the determinations reached via steps one and two of the Alice
analytical framework, the Examiner concluded that the claimed subject
matter was directed to an abstract idea and thereby judicially-excepted from
patent-eligibility. Final Rej. 7.
The Appellants challenge the Examiner's conclusion on the ground
that "embodiments of the invention herein are, in fact, rooted in computer
technology. The limitations of the claims are indivisible from computer
technology." App. Br. 10 (emphasis original).
"In determining the eligibility of respondents' claimed process for
patent protection under § 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
Claim 1 calls for a method comprising computer-implemented steps
of analyzing an operating state, assigning a priority, and prioritizing a
routing of a workload. Cf Spec., para. 3. The Specification indicates that
generic computers may be employed to perform said steps. See Spec., paras.
12-17. The claim steps are further limited as follows:
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The "analyzing an operating state" is "of each of a plurality of
computer systems within a data center cluster environment in which a set of
logical resources that share underlying physical computer system resources"
and is "to determine an operating state of each of a set of computer systems
from the plurality of computer systems within the data center." "[T]he
operating state of each computer system [is] based on whether the computer
system is currently operating and a current workload usage of the computer
system, each computer system of the plurality of computer systems
including a computer device." Claim 1. The "plurality of computer systems
within a data center cluster environment in which a set of logical resources
that share underlying physical computer system resources" whose operating
state a generic computer is to analyze (via the claim 1 method) is itself well
known. See Spec., Fig. 2, element 106. Accordingly, the claim step covers
a generic computer "analyzing an operating state" of a known computer
system based on the condition of said computer system ( e.g., if it is
operating) in order to determine its operating state.
The "assigning a priority" is "based on the analyzing" and is a
"numerical rating that identifies the operating state of a particular computer
system." The assigning comprises "assigning a relatively low priority to a
computer system" having certain operating states (e.g., not operating) and
"assigning a highest priority to a computer system" having another. Claim
1. Accordingly, the claim step covers a generic computer "assigning a
priority" by giving a number to a known computer system depending on its
determined operating state.
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The "prioritizing a routing of a workload" calls for prioritizing a
routing of an application based on the priority of a computer system and the
application.
Put together, claim 1 is directed to a method comprising computer-
implemented steps of analyzing an operating state, assigning a priority, and
prioritizing a routing of a workload whereby a generic computer "analyz[ es]
an operating state" of a known computer system based on the condition of
said computer system ( e.g., if it is operating) in order to determine its
operating state; the generic computer "assigning a priority" by giving a
number to said known computer system depending on its determined
operating state; and, prioritizing a routing of an application based on the
priority of a computer system and the application. Put more simply, claim 1
is directed to using a generic computer to analyze a known computer system,
assign it a number, and prioritize it when routing an application. The claim
as a whole does not focus on a specific means or a method that improves
relevant technology. Rather, the claim is directed to a result (analysis,
assigning a number, prioritizing) that itself is the abstract idea and merely
invoke generic processes and machinery. Cf Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1343 (Fed. Cir. 2016) ("When "the focus of the
asserted claims" is "on collecting information, analyzing it, and displaying
certain results of the collection and analysis," the claims are directed to an
abstract idea.")
The Appellants argue that
[ t ]he limitations of the claims are indivisible from computer
technology. Embodiments include a set of physical computer system
about which a continuous stream of operating state data is gathered
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(e.g., over a computer network) by the computer system of the
claimed invention. This operating state data is used to assign
priorities to the computer systems for assigning new workloads to the
computer systems in such a way that energy is in the data center is
managed. These processes are achieved by following a series of
computer-automated steps, which facilitates the assignment of relative
priorities and allocation of workloads to the physical computer
system. All communication occurs electronically over a network; no
human intervention is required; and the large amount and continuous
nature of the incoming data and the operations performed thereon
precludes the feasibility of a human performing these processes.
Accordingly, none of these components, or the process in its complete
form, can be implemented without a computer.
App. Br. 10-11.
This argument cannot be persuasive as to error in the Examiner's
conclusion because it is not commensurate in scope with what is claimed.
There is no mention in the claim of "a continuous stream of operating states
data [that] is gathered (e.g., over a computer network) by the computer
system of the claimed invention." There is no mention of a "communication
occur[ing] electronically over a network." There is no mention of
"facilitat[ ing] the assignment of relative priorities and allocation of
workloads to the physical computer system." (There is also no mention of
"a constant automatic analysis," Reply Br. 4). Claim 1 simply assigns a
priority (i.e., a number) and prioritizes based on the assignment. Which
assignment determines the prioritization the claim does not say.
The Appellants argue that a "problem solved by the invention is the
efficient allocation of workloads among a number of computer systems in a
data center." App. Br. 11. This argument is unpersuasive as to error in the
Examiner's conclusion. Notwithstanding the preamble (more broadly)
recites "[a] method for allocating workloads to manage energy in a data
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center," the body of the claim covers using a generic computer to analyze a
known computer system, assign it a number, and prioritize it when routing
an application. The method as claimed does not necessarily result in an
"efficient allocation of workloads among a number of computer systems in a
data center."
Finally, the Appellants argue that
the claims are composed of a large number of elements for execution,
each of which is performed using a continuous stream of data. In
combination, it would not be reasonable to imagine that a human
being could execute all of those elements continuously in his/her head
as an abstract idea. The elements are complex and the process is
intricate. In order for each and every one of the elements to be
executed accurately, precisely, and within a reasonable amount of
time, a computer would be necessary. The combination of elements,
both in their number AND nature, make the implementation by a
computer necessary and inherent. The computerization is explicitly
recited in the claims as computer implemented ( claim 1 ), a computer
system ( claim 7), or a computer-readable storage device storing
computer instructions, which, when executed, enables a computer
system to ... ( claim 13). Accordingly, the invention is rooted in
computer technology.
App. Br. 11-12. (As before, an argument about, for example, "a continuous
stream of data" is not commensurate in scope with what is claimed.)
The fact that the claimed analyzing, assigning, and prioritizing is
applied to a computer system - and a well known one at that- does not
necessarily mean the claim as a whole is "rooted in computer technology."
Here, as claimed, the computer system is the intended object of the
analyzing, assigning, and prioritizing steps. The subject of the invention - as
it is now claimed - are the analyzing, assigning, and prioritizing steps. They
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themselves are not rooted in computer technology, especially given that all
that is needed to perform them is a generic computer.
The difficulty here is that the claim has been drafted so that as a whole
it provides a result-oriented solution but without the computer-centric details
for accomplishing it. The Appellant discusses many such details via
arguments in support of the invention being "rooted in computer
technology." But the claim does not now reflect those details. Cf
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342
(Fed. Cir. 2017) (explaining that "[o]ur law demands more" than claim
language that "provides only a result-oriented solution, with insufficient
detail for how a computer accomplishes it") and Elec. Power Grp., 830 F.3d
at 1354 (explaining that claims are directed to an abstract idea where they do
not recite "any particular assertedly inventive technology for performing
[ conventional] functions").
We have considered all of the Appellants' remaining arguments
(including those made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the determinations
that representative claim 1, and claims 2-24 which stand or fall with claim 1,
are directed to an abstract idea and do not present an "inventive concept,"
we sustain the Examiner's rejection that they are directed to patent-ineligible
subject matter for being judicially-excepted from 35 U.S.C. § 101. Cf
LendingTree, LLC v. Zillow, Inc., 656 Fed. Appx. 991, 997 (Fed. Cir.
2016)("We have considered all of LendingTree's remaining arguments and
have found them unpersuasive. Accordingly, because the asserted claims of
the patents in suit are directed to an abstract idea and do not present an
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"inventive concept," we hold that they are directed to ineligible subject
matter under 35 U.S.C. § 101."); see also, e.g., OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015) and FairWarning
IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016).
The rejection of claims 1, 2, 7, 8, 13, 14, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Fujino and Kennedy.
The Appellants argue that cited references do not show the claimed
numerical assigning of priorities. App. Br. 13. We agree. All the claims
require this. See independent claims 1, 7, 13, and 19.
The Examiner conceded that Fujino does not disclose said assigning,
relying instead on paragraph 93 of Kennedy. Final Rej. 7. Said disclosure is
reproduced below:
[0093] As discussed previously, hub 102 can manage consumption
endpoints 114 according to one or more policies 502. In accordance
therewith, such policies can be input via user interface 510, and
particularly via a policy interface 702 included in or provided by user
interface 510. Specifically, policy interface 702 can be configured to
receive input 704 that defines policies 502 associated with the set of
consumption endpoints 114. In one or more aspect, such policies 502
can determine at least one of (i) actions of at least one consumption
endpoint 114 in response to a price associated with resource 108; (ii)
actions of at least one consumption endpoint 114 in response to an
alert or load control message received from utility resource provider
212 or resource metering device 106; (iii) a resource priority
associated with the set of consumption endpoints 114 in connection
with a limitation on or a shortage of resource 108; (iv) whether to opt-
in or opt-out of a program or service associated with utility resource
provider 212; or (v) whether a notification is issued to a user such as a
request for a response, verification, or other feedback. For example
graphical depictions of the abovementioned features, see e.g., FIGS.
18A and 19B, infra.
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We do not see there the numerical assigning as claimed.
Accordingly, a prima facie case of obviousness for the claimed
subject matter has not been made out in the first instance.
The rejection of claims 3-5, 9-11, 15-17 and 21-23 under 35 U.S.C.
§ 103 (a) as being unpatentable over Fujino, Kennedy, and Malik.
The rejection of claims 6, 12, 18, and 24 are rejected under 35 U.S. C.
§ 103(a) as being unpatentable over Fujino, Kennedy, and Official Notice.
These claims which depend from the independent claims whose
rejection we do not sustain for the reasons above, and whose rejections rely
on the position taken with respect to the independent claims (Final Rej. 11
and 15) are not sustained for the same reasons.
CONCLUSIONS
The rejection of claims 1-24 under 35 U.S.C. §101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 1, 2, 7, 8, 13, 14, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Fujino and Kennedy is reversed.
The rejection of claims 3-5, 9-11, 15-17 and 21-23 under 35 U.S.C.
§ 103(a) as being unpatentable over Fujino, Kennedy, and Malik is reversed.
The rejection of claims 6, 12, 18, and 24 under 35 U.S.C. § 103(a) as
being unpatentable over Fujino, Kennedy, and Official Notice is reversed.
DECISION
The decision of the Examiner to reject claims 1-24 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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