Ex Parte Fanaru et al

Patent Trial and Appeal Board

Jan 17, 2019

13287831 (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/287,831 11/02/2011
27488 7590 01/22/2019
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
FIRST NAMED INVENTOR
Adrian Fanaru
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.
14917.1949US01/334090.0l 9465
EXAMINER
JEANTY, ROMAIN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
01/22/2019 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):
USPT027 488@merchantgould.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIAN F ANARU, DARRIN HA TAKEDA,
GUNNAR LJOSDAHL RASMUSSEN, KRISTER MIKALSEN,
DAG STEINNES EIDESEN, RUNE DEVIK, and JOHN D. FAN
Appeal2017-002898
Application 13/287 ,831 1
Technology Center 3600
Before JUSTIN BUSCH, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-10, 12, 13, and 15-20, which constitute all of the claims pending
in this application. Claims 11 and 14 have been cancelled. App. Br. 5. We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Microsoft Technology Licensing, LLC as the real party
in interest. App. Br. 3.
Appeal2017-002898
Application 13/287,831
THE INVENTION
The disclosed and claimed invention is directed to "[ d]ifferent
analytics data systems [ used to] analyze data and produce reports for a user
to view." Spec. ,r 1. The data analysis is performed on "data that has
previously been generated and stored," such as "business data, web traffic
data, sales data, and the like." Id.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for providing services corresponding to
productivity applications comprising:
collecting usage information from devices connected to a
computing system in response to inputs to the devices, the
usage information including occurrences of usage events
generated by the devices, the usage events being associated
with activities related to content encoded on a data store;
providing an interface for configuring the usage events
and to provide the usage information;
receiving by an analytics engine the usage information
and aggregating the usage information for a specified period of
time; and
automatically altering operations of the computing
system based on the aggregated usage information, the
operations including at least one of a retention time of the
content, a crawl policy of the content, a backup policy of the
content, a restore schedule of the content, and one or
more storage tier levels of the content.
REJECTION
Claims 1-10, 12, 13, and 15-20 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. Final Act. 8-10.
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Application 13/287,831
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are persuaded by Appellants' arguments regarding the pending claims.
Patent-eligible subject matter is defined in§ 101 of the Patent Act,
which recites "[ 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."
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208, 215-17 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea, itself, is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
573 U.S. at 217. Thus, we must 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. ( citing Mayo, 566 U.S. at 79, 78). The claim must contain
elements or a combination of elements that are "sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[abstract idea] itself." Id. (citing Mayo, 566 U.S. at 72-73).
The Supreme Court set forth a two-part "framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
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from those that claim patent-eligible applications of those concepts." Id.
at 217.
Id.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo, 566 U.S. at 75-
77]. If so, we then ask, "[ w ]hat else is there in the claims before
us?" Id . ... To answer that question, 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. [at 79,
77-78]. We have described step two of this analysis 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. [at 72-73].
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). There is no definitive rule to determine what constitutes an
"abstract idea." Rather, the Federal Circuit has explained that "both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases." Enfzsh, 822 F.3d at 1334; see also Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent-ineligible under§ 101, "the
decisional mechanism courts now apply is to examine earlier cases in which
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a similar or parallel descriptive nature can be seen-what prior cases were
about, and which way they were decided").
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 v. Kappas, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594--95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (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 184 n. 7 ( quoting Corning v.
Burden, 56 U.S. 252, 267---68 (1853))); 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 176; 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
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
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to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum 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 ( quotation marks 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 January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that 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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
See Memorandum at 52, 55-56. 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:
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(3) adds a specific limitation beyond the judicial exception that
are 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.
See id. at 56.
Furthermore, the Memorandum "extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that the abstract
idea exception includes the following groupings of subject matter, when
recited as such in a claim limitation(s) (that is, when recited on their own or
per se )":
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Id. at 52 (footnotes omitted).
The Examiner concludes that claims are similar to those found to be
patent-ineligible in PerkinElmer, Inc. v. Intema Ltd., 496 F. App'x 65 (Fed.
Cir. 2012), Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057
(Fed. Cir. 2011), Cyberfone Systems v. CNN Interactive Group, 558 F.
App'x 988 (Fed. Cir. 2014), and CyberSource Corp. v. Retail Decisions,
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Inc., 654 F.3d 1366 (Fed. Cir. 2011). Final Act. 9. More specifically, the
Examiner identifies the abstract idea as "a method for collecting usage
information." Ans. 4.
Appellants argue that the claims are not directed to an abstract idea;
instead, Appellants argue the claims are directed to a technological solution
to a technical problem. See App. Br. 13-14; Reply Br. 3--4.
On the current record, we are persuaded that the Examiner has failed
to identify an ineligible abstract idea. In light of our guidance, because
collecting usage information is not a mathematical concept, an identified
method of organizing human activity, or a mental process, we conclude
"collecting usage information" it is not an abstract idea. See Memorandum
at 52; see also id. at 53 ("Claims that do not recite matter that falls within
these enumerated groupings of abstract ideas should not be treated as
reciting abstract ideas, except" in rare circumstances.). Accordingly, we do
not sustain the Examiner's rejection.
DECISION
For the above reasons, we reverse the Examiner's decisions rejecting
claims 1-10, 12, 13, and 15-20.
REVERSED
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