Ex Parte Magri et al

Patent Trial and Appeal Board

Mar 16, 2018

14406907 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/406,907 01/16/2015
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 700
DALLAS, TX 75201-2980
03/20/2018
FIRST NAMED INVENTOR
Roberto Magri
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.
017997.0459 1009
EXAMINER
MEHEDI, MORSHED
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERTO MAGRI and GIULIO BOTTARI 1
Appeal2017-007584
Application 14/406,907
Technology Center 2400
Before CARL W. WHITEHEAD JR, JEFFREY S. SMITH and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1---6 and 16
under 35 U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under 35
U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to "method for computing a path that
achieves a requested security level against unauthorized physical access to
the path." Appeal Brief 4.
1 Appellants identify the real party in interest as Telefonaktiebolaget L M
Ericsson. Appeal Brief 2.
Appeal2017-007584
Application 14/406,907
Illustrative Claim
1. A path computation method comprising:
receiving, at a processor configured as a path computation
entity (PCE), a request for a path from an ingress node to an
egress node, wherein the request indicates a security level;
accessing, by the processor, a database that comprises
security level information associated with a plurality of nodes,
wherein the security level information indicates levels of security
against unauthorized physical access for the plurality of nodes;
and
selecting, by the processor, the path along one or more of
the plurality of nodes that achieves the security level based on
the security level information.
Rejections on Appeal
Claims 1-6 and 16 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter of an abstract
idea. Final Action 4---6.
Claim 16 stands rejected under 35 U.S.C. §101 because the claimed
invention is directed to non-statutory subject matter of software per se. Final
Action 5---6.
Claims 1-6 and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Goringe (US Patent 7 ,984,294 B 1; issued July
19, 2011) and Sadananda (US Patent Application Publication 2004/0258409
Al; published December 23, 2004). Final Action 6-10.
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Application 14/406,907
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed December 21, 2016), the Reply Brief
(filed April 20, 2017), the Answer (mailed February 23, 2017) and the Final
Action (mailed May 20, 2016) for the respective details.
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. 2 In the first step, we determine whether the claims are directed to one
or more judicial exceptions (i.e., law of nature, natural phenomenon, and
abstract ideas) to the four statutory categories of invention (i.e., process,
machine, manufacture, and composition of matter). Id. (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)) ("Mayo"). In the second step, 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 2355 (citing Mayo, 132 S. Ct. at 1297-
98). 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, 132 S. Ct. at 1294).
35 U.S.C. § 101 rejection of claims 1---6 and 16
Appellants contend, "The Application explains, '[a]s the demand for
network capacity grows, the issue of securing the physical layer of optical
network cannot be overlooked' and "optical networks can be almost as easy
2 Alice Corp. Pty. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
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Application 14/406,907
to tap or interfere as copper wire based networks."' Appeal Brief 9 (citing
Specification 1 ). Appellants argue, "Claim 1 also recites specific features of
rules as claim limitations, Claim 1 is directed toward a specific process that
achieves a desired technological improvement, and therefore, recites patent
eligible subject matter. In addition, amended Claim 1 does not preempt
approaches that use a different set of rules." Appeal Brief 8.
The Examiner finds:
As per independent claim, the limitations are merely
instructions to implement the abstract idea on a computer
and require no more than a generic computer to perform
generic computer functions that are well-understood, routine
and conventional activities previously known to the industry
(e.g. receiving request, accessing database and select a path).
The request, access and select is a generic computing operation
that does not enhance the functionality of the computer. Further,
the claim does not recite an improvement to another technology
or technical field, an improvement to the functioning of the
computer itself, or meaningful limitations beyond generally
linking the use of an abstract idea to a particular technological
environment.
Final Rejection 5.
In the instant application, "the plain focus of the claims is on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)3. The claims address
3 We do not read Alice to broadly holding that all improvements in
computer-related technology are inherently abstract and, therefore, must be
considered at step two. Indeed, some improvements in computer-related
technology when appropriately claimed are undoubtedly not abstract, such
as a chip architecture, an LED display, and the like. Nor do we think that
claims directed to software, as opposed to hardware, are inherently abstract
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Application 14/406,907
navigating and calculating a path through nodes of a communication
network while validating the path's security protocols, therefore, improving
the computer function. Consequently, we find Appellants' arguments
persuasive and reverse the Examiner's non-statutory subject matter rejection
of claims 1-6 and 16.
35 U.S.C. § 101rejectionofclaim16
The Examiner further finds:
Claim 16 is rejected under 35 U.S.C. [§] 101 because the
claimed invention is directed to non-statutory subject matter
because the apparatus claim does not constitute any physical
and therefore only properly analyzed at the second step of the Alice analysis.
Software can make non-abstract improvements to computer technology just
as hardware improvements can, and sometimes the improvements can be
accomplished through either route. We thus see no reason to conclude that
all claims directed to improvements in computer-related technology,
including those directed to software, are abstract and necessarily analyzed at
the second step of Alice, nor do we believe that Alice so directs. Therefore,
we find it relevant to ask whether the claims are directed to an improvement
to computer functionality versus being directed to an abstract idea, even at
the first step of the Alice analysis.
For that reason, the first step in the Alice inquiry in this case asks whether
the focus of the claims is on the specific asserted improvement in computer
capabilities (i.e., the self-referential table for a computer database) or,
instead, on a process that qualifies as an "abstract idea" for which computers
are invoked merely as a tool. As noted infra, in Bilski and Alice and
virtually all of the computer-related § 101 cases we have issued in light of
those Supreme Court decisions, it was clear that the claims were of the latter
type-requiring that the analysis proceed to the second step of the Alice
inquiry, which asks if nevertheless there is some inventive concept in the
application of the abstract idea. See Alice, 134 S. Ct. at 2355, 2357-59. In
this case, however, the plain focus of the claims is on an improvement to
computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity.
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Appeal2017-007584
Application 14/406,907
device and or machine and merely recite software per se.
Appellants did not make any arguments regarding
rejection to claim 16 under 35 U.S.C. [§] 101 [in the Appeal
Brief]. Therefore, the rejection is maintained.
Answer 8.
We agree with the Examiner's findings. Appellants' arguments in
regard to claim 16 are not persuasive because they are not considered timely,
and Appellants have not shown good cause for being untimely. Reply Brief
2-3. "Any argument raised in the reply brief which was not raised in the
appeal brief, or is not responsive to an argument raised in the examiner's
answer ... will not be considered by the Board for purposes of the present
appeal, unless good cause is shown." 37 C.F.R. § 41.41(b)(2). See Optivus
Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006). We sustain the Examiner's non-statutory subject matter rejection of
claim 16 as directed to software per se.
35 U.S.C. § 103 rejection of claims 1-6 and 16
Appellants contend:
Goringe 's process first makes a path selection and then
determines the trustworthiness of the selected path based on
received information, which is the reverse order of [the claimed]
first "accessing . . . a database that comprises security level
information " and then "selecting ... the path along one or more
nodes of the plurality of nodes that achieves the requested
security level for the path based on the securitv level
information. "
Furthermore, Goringe 's process is initiated by the sending end
point transmitting a PATH message to the selected path.
Goringe arbitrarily selects a path to transmit the PATH message
without knowledge of the trustworthiness of the selected path.
Therefore, Goringe 's process does not begin in response to
"receiving . . . a request for a path from an ingress node to an
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Application 14/406,907
egress node, wherein the request indicates a security level. "
Appeal Brief 13.
Goringe discloses:
A method and apparatus determine a trust level of a path
through a plurality of routers by an endpoint by transmitting a
path setup message requesting a path reservation for a first path
through a subset of the routers, by receiving in response to
transmission of the path setup message a trust level message
containing trust level information inserted by each router in the
first path through the subset, and by evaluating the inserted trust
level information to determine if the first path has a sufficient
trust level.
Goringe, column 1, lines 54---61; see Final Rejection 7.
We agree with Appellants that Goringe first sends out a path setup
message requesting a path reservation for a first path and then evaluates the
security level based upon the received information, as opposed to the
claimed invention which sends a request for a path reservation specifying a
security level and then the processor selects the path accordingly.
Sadananda however discloses that the receiver selects the path:
The working path and the protection path are typically
established at the same time. In the case of a 1+1 protected path,
the same traffic is carried on both paths, and the receiving node
selects the best of the paths (i.e., if the one currently selected by
the receiving node degrades or fails, that node will switch to the
other).
Sadananda, paragraph 15; Final Action 8-9. Appellants do not argue the
combination of Goringe/Sadananda. See Answer 12-14. "Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
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Application 14/406,907
F.2d 413, 425 (CCPA 1981)). Accordingly, we sustain the Examiner's
obviousness rejection of claims 1---6 and 16.
DECISION
The Examiner's non-statutory subject matter rejection of claims 1---6
and 16 as being directed to an abstract idea is reversed.
The Examiner's non-statutory subject matter rejection of claim 16 as
being directed to software per se is affirmed.
The Examiner's obviousness rejection of claims 1---6 and 16 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).
AFFIRMED
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