Ex Parte Dong et alDownload PDFPatent Trial and Appeal BoardSep 18, 201812984019 (P.T.A.B. Sep. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/984,019 01/04/2011 79980 7590 09/20/2018 Keohane & D'Alessandro 1881 Western Avenue Suite 180 Albany, NY 12203 FIRST NAMED INVENTOR Wei Shan Dong 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. END920l00l58US1 1529 EXAMINER PEACHER, LORENA R ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 09/20/2018 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): 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 Ex parte WEI SHAN DONG, ROGERIO S. FERIS, ARUN HAMP APUR, ZHONG BO JIANG, SHILPA N. MAHATMA, WEI SUN, and LEXING XIE Appeal2017-002009 Application 12/984,019 1 Technology Center 3600 Before BARBARA A. BENOIT, DAVID J. CUTITTA II, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 2, 4--7, 9-12, and 14--20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants' Brief ("App. Br.") identifies International Business Machines Corporation as the real party in interest. App. Br. 1. Appeal2017-002009 Application 12/984,019 CLAIMED SUBJECT MATTER The claims are directed to a system and method for detecting failure patterns for geographically dispersed physical assets. Spec. ,r 5. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for mining failure association rules of geographically dispersed physical assets, the method compnsmg: a computer system receiving a continuous stream of internal attributes, external attributes, and a failure history of each of the physical assets, the external attributes comprising demographic information; the computer system linking spatial and temporal correlation of the internal attributes, external attributes, and the failure history of each of the physical assets in the continuous stream to form an asset failure pattern; the computer system extracting, automatically, spatio- temporal information from the internal attributes, external attributes, and the failure history of each of the physical assets; the computer system continuously quantilizing, automatically, the spatio-temporal information; the computer system receiving each of the following: joined data including internal attributes, external attributes, and a failure history of each of the physical assets, and the quantilized spatio-temporal information; and the computer system outputting a set of failure association rules for each of the physical assets based on an application of an association rule mining algorithm to the combined input of the quantilized spatio-temporal information-and the joined data that finds associations between the internal and external attributes and failures in the failure history. App. Br. 17 (Claims Appendix). 2 Appeal2017-002009 Application 12/984,019 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Busche US 6,496,814 B 1 Dec. 17, 2002 Hala US 6,026,348 Feb. 15, 2000 Horvitz US 2009/0002148 Al Jan. 1, 2009 Mennis and Liu, "Mining Association Rules in Spatio-Temporal Data: An Analysis of Urban Socioeconomic and Land Cover Change," TRANSACTIONS IN GIS, 9(1):5-17, 2005 ("Mennis") Kim, Younghee et al., "Mining Association Rules for RFID Data with Concept Hierarchy," ICACT, Feb. 15-18, 2009 ("Kim"). REJECTIONS Claims 1, 2, 4--7, 9-12 and 14--20 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 4--5. Claims 1, 2, 4--7, 9, 11, 12, 14, and 16-19 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Busche in view of Mennis. Final Act. 6-17. Claims 10 and 15 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Busche, Mennis, and Hala. Final Act. 17-18. Claim 20 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over Busche, Horvitz, Mennis, and Kim. Final Act. 19. DISCUSSION 35 U.S.C. § 101 REJECTION Legal Standard for Patent Eligibility In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014). The Supreme Court 3 Appeal2017-002009 Application 12/984,019 instructs us to "first determine whether the claims at issue are directed to a patent-ineligible concept," id. at 2355, and, in this case, the inquiry centers on whether the claims are directed to an abstract idea. If the initial threshold is met, we then move to the second step, in which we "consider 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." Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court describes the second step as 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. ( quoting Mayo, 566 U.S. at 72-73). Examiner's Findings The Examiner rejects the claims under the two-step Alice framework. Under the first step, the Examiner determines the claims are directed to an abstract idea: Claims 1, 2, 4--7, 9-12 and 14--20 are directed to the abstract idea of data mining failure association rules, which is considered an idea of itself. The process of receiving a continuous stream of internal, external attributes and failure history of physical assets, linking spatial and temporal correlation of internal, external attributes and failure history, quantilizing spatio-temporal information, combining the attributes and failure history of physical assets and outputting failure association rules all describe the abstract idea. Final Act. 4--5. 4 Appeal2017-002009 Application 12/984,019 Having found the claims to be directed to an abstract idea, the Examiner proceeds to the second step of the Alice inquiry, finding the claims do not possess a sufficient inventive concept under Alice step 2: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because linking spatial temporal correlation of internal attributes, external attributes and failure history to form an asset failure pattern is comparing and analyzing data to determine patterns (e.g. pre-solution activity); quantilizing spatio-temporal information is associating a metric to the data; and outputting a set of failure association rules for each physical asset based on an application of an association rule mining algorithm is organizing information through mathematical correlations. The elements of a computer system and a non-transitory computer readable medium do not provide significantly more than further narrowing the abstract idea to a technological environment. None of the imitations considered as an ordered combination, provide eligibility, because taken as a whole the claims instruct the user to implement the abstract idea with routine and conventional activity. Final Act. 5. Appellants' Contentions Appellants present several arguments in favor of eligibility. With respect to Alice step 1, Appellants argue the Examiner's characterization of the claims is inaccurate, and "the field to which the claimed invention is directed can, broadly, be classified as streaming data-based predictive analysis" which includes "improvements ... [that] can include system diagnostic solutions; process completion identification solutions; solutions for identifying, and/ or correcting errors in a process or system and/ or the like. App. Br. 10. Appellants contend finding "patent applications ... in this subject area as being patent ineligible would [improperly] preclude 5 Appeal2017-002009 Application 12/984,019 improvements to all data collection-based diagnostic software, process flow analysis/correction software, and/or other such solutions that collect data and perform in-line diagnostics in a computer environment from also being patent ineligible." App. Br. 10-11. Appellants liken their claims to those found eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) and in Cal. Inst. of Tech. v. Hughes Communs., Inc., 59 F. Supp. 3d 974 (C.D. Cal 2014), arguing that they are eligible because they "overcome a problem specifically arising in the realm of computing," namely the problem of "maintaining of a computer infrastructure in light of the varying rates of failure of different hardware components." App. Br. 11. Appellants' also argue that the claims are not directed to an abstract idea because they pose no risk of preemption. App. Br. 12. Appellants contend "the specific limitations included in the claimed invention limit the subject matter to [a] particular environment" and that "the invention as claimed is drawn to only a small subset of the overall subject area of streaming data-based predictive analysis in a computer environment." App. Br. 12. With respect to the second step of the Alice inquiry, Appellants argue the claims amount to significantly more than the abstract idea because "embodiments of the invention herein are, in fact, rooted in computer technology" and that "[ t ]he limitations of the claims are indivisible from computer technology." App. Br. 9. Appellants emphasize that the claims involve "continuously" performing various operations on data using "a series of computer-automated steps" and that the amount of data and continuous nature of processing "precludes the feasibility of a human performing these processes." App. Br. 10. Appellants further argue for 6 Appeal2017-002009 Application 12/984,019 eligibility because "it would not be reasonable to imagine that a human being could execute all of [the claim] elements continuously in his/her head as an abstract idea. The elements are complex and the process is intricate." App. Br. 11. According to Appellants, "[t ]he combination of elements, both in their number AND nature, make the implementation by a computer necessary and inherent." App. Br. 11. Analysis We do not find Appellants' arguments persuasive, and we address each argument in tum. In considering Appellants' first argument, we are mindful that our reviewing court instructs us that the "decisional mechanism" for determining whether a claim is directed to an abstract idea compares the claim to those claims previously found to have been directed to abstract ideas in other cases. Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) ("[T]he decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided."). Appellants argue the Examiner's characterization of the claims as being directed to "data mining failure association rules" is overly broad because they are better described as being directed to "streaming data-based predictive analysis," and that the claims are similar to those found eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) and in Cal. Inst. of Tech. v. Hughes Communs., Inc., 59 F. Supp. 3d 974 (C.D. Cal 2014) ("CalTech"). The problem with Appellants' argument is that even if their characterization of the claims is correct, the claims are still directed to an abstract idea because, applying the decisional mechanism as instructed 7 Appeal2017-002009 Application 12/984,019 by our reviewing court, we find the claims more similar to those found ineligible in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) than to those found eligible in the DDR Holdings and CalTech cases relied upon by Appellants. In Electric Power Group, the Federal Circuit addressed a claim drawn to a "method of detecting events on an inter-connected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected power grid." Id. at 13 51. The Federal Circuit found the claim directed to an abstract idea because "the claims fall into a familiar class of claims 'directed to' a patent-ineligible concept. The focus of the asserted claims [] is on collecting information, analyzing it, and displaying certain results of the collection and analysis." Id. at 1353. Focusing on the nature of the invention, the court determined because "[t]he advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particularly inventive technology for performing those functions," the claims were "directed to an abstract idea." Id at 1354. Appellants' claims bear substantial similarity to those found to be abstract in Electric Power Group. For example, the invention in Electric Power Group was directed to "performing real-time performance monitoring of an electric power grid by collecting data from multiple data sources, analyzing the data, and displaying the results." Id. at 1351. More specifically, the claims in Electric Power Group recited a real-time monitoring process in which multiple-source data was gathered for "detecting and analyzing events from the plurality of data streams ... in which the metrics are indicative of events, grid stress, and/or grid instability" 8 Appeal2017-002009 Application 12/984,019 in order to "deriv[ e] a composite indicator of reliability that is an indicator of power grid vulnerability." Id. at 1351-52 (quoting representative claim of the subject patent). Similarly here, Appellants invention relates to continuously receiving information from physical assets to determine failure association rules by analyzing the received data. Thus, like the invention in Electric Power Group, the claims here focus on the collection of detailed information regarding operation of a large geographically dispersed system for the purpose of identifying possible future problems and vulnerabilities. In contrast, the cases relied upon by Appellants are directed to inventions having clear differences from the invention claimed here. For example, the invention in DDR Holdings related to preventing website visitors from being directed away to third party websites. DDR Holdings, 773 F.3d at 1257 ("claims address the problem of retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host's website after 'clicking' on an advertisement and activating a hyperlink"). The claims in CalTech were "directed to a form of error correction code called an irregular repeat and accumulate ('IRA') code." CalTech, 59 F.Supp.3d at 978. In short, neither of the cases relied upon by Appellants provide subject matter for which "similar or parallel descriptive nature can be seen," (Amdocs, 841 F.3d at 1294) to the extent the claims here parallel those in Electric Power Group. We likewise do not find persuasive Appellants' argument that the claims are eligible because they pose no risk of preemption, because our reviewing court has held that lack of preemption is not dispositive of the abstract idea inquiry. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 9 Appeal2017-002009 Application 12/984,019 1371, 1379 (Fed. Cir. 2015) ("While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility") (internal quotation marks and citation omitted). Appellants' Alice step 2 arguments are similarly unpersuasive. As noted above, Appellants argue the claims amount to significantly more than the abstract idea because they are rooted in technology and involve "continuously" performing various operations on an amount of data that "precludes the feasibility of a human performing these processes." App. Br. 10. We do not find this argument persuasive because the Federal Circuit rejected similar argument in Electric Power Group, finding that "[m]erely requiring the selection and manipulation of information-to provide a 'humanly comprehensible' amount of information useful for users by itself does not transform the otherwise-abstract processes of information collection and analysis." Electric Power Group, 830 F.3d at 1355. Moreover, "the inability for the human mind to perform each claim step does not alone confer patentability." FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). In sum, we are not persuaded the Examiner erred in concluding the claims are directed to ineligible subject matter. Accordingly, we sustain the rejection under 35 U.S.C. § 101. 10 Appeal2017-002009 Application 12/984,019 35 U.S.C. § 103 REJECTION Issue Whether the Examiner erred in finding Busche teaches or suggests "receiving a continuous stream of ... external attributes comprising demographic information," as recited in claim 1. Analysis In rejecting claim 1, the Examiner finds Busche and Mennis teach "receiving a continuous stream of ... external attributes comprising demographic information." Final Act. 9, 3--4 (providing additional explanation); see also Ans. 5-6 and 21-23. Appellants argue the Examiner has erred because "Busche teaches manual entry and transmission of data and not a continuous stream of data." App. Br. 14 (citing Busche col. 10, 11. 61---64). Appellants further contend Busche "fails to teach continuous reading of the external attributes that comprise demographic data." Id. Appellants also argue the SKADA monitoring system described in Busche does not clearly have the capability to provide data in a continuous stream and that the correlations taught in Busche do not result in an asset failure pattern. Reply Br. 4--5. Finally, Appellants argue that the Examiner's reliance on Mennis is improper because "it is in the area of the social sciences." Reply Br. 5. We are not persuaded by Appellants' arguments. Appellants argue Busche does not teach a continuous stream of data because it teaches manual entry by technicians. App. Br. 14 (citing Busche col. 10, 11. 61-64). However, Busche also teaches "[i]n other cases, such as a utility system with a SKADA monitoring system connected to the data warehouse, this information would be entered automatically into the data warehouse." 11 Appeal2017-002009 Application 12/984,019 Busche col. 10, 11. 64---67. Busche also teaches that "[t]his invention concerns the use of all data entered into the data warehouse without regard to the source, whether it be automatically detected as with a SKADA or by manual entry as might be required by a repair technician." Busche col. 11, 11. 3-7. Thus, Busche is not limited to manual entry as Appellants allege. Appellants also argue Busche does not teach the use of demographic data. However, we agree with the Examiner that Busche teaches the recited "demographic information." For example, Busche describes the use of "demographic clustering" as part of a "complete solution that relates failures and the potential for failure, all aspects associated with that infrastructure piece collected data includes demographic information." Busche col. 14, 11. 5 8---60. Appellants also argue that the SKADA monitoring does not result in a "continuous stream" of data. We disagree. The SKADA system is described as a monitoring system, which indicates that its receipt of data is ongoing, i.e. continuous. We also are not persuaded that an asset failure pattern is absent from Busche, as it teaches that the data collected by SKADA provides "a complete solution that relates failures and the potential for failure." Busche col. 10, 11. 58---60. Finally, we do not find persuasive Appellants' contention regarding the inapplicability of Mennis. Appellants contend that even though Mennis teaches spatio-temporal analysis, it is in the area of social sciences and not failure associations of physical assets. Reply Br. 5. However, Appellants' argument is not based on the correct standard for what constitutes analogous art. Prior art is analogous where either ( 1) the art is from the same field of endeavor, regardless of the problem addressed, or (2) even if the reference is 12 Appeal2017-002009 Application 12/984,019 not within the same field of endeavor, the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Ethicon, Inc., 844 F.3d 1344, 1349 (Fed. Cir. 2017) (internal citations and quotations omitted). Appellants do not explain why Mennis, which relates to "spatio-temporal data mining" is not at least "reasonably pertinent" to the problems faced by the inventors in this case. Without any explanation for why Mennis does not meet the standard for analogous art, we are not persuaded the Examiner improperly combined the teachings of Mennis with Busche in the manner claimed. SUMMARY Appellants' claims are similar to those found ineligible in Electric Power Group. Consequently, we are not persuaded the Examiner erred in rejecting the claims as being directed to patent ineligible subject matter under 35 U.S.C. § 101. Appellants have not persuaded us the Examiner erred in finding Busche and Mennis teach or suggest all limitations recited in claim 1. Accordingly, we also sustain the rejection of claim 1 under 35 U.S.C § 103. Appellants do not present separate arguments for patentability of any other claims. Accordingly, we treat claim 1 as representative, and we sustain the rejections of the remaining claims for the same reasons. DECISION We affirm the Examiner's rejections of claims 1, 2, 4--7, 9-12 and 14-- 20. 13 Appeal2017-002009 Application 12/984,019 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)(l )(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation