Ex Parte Nikolayevich et al

Patent Trial and Appeal Board

Jun 19, 2018

14484861 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/484,861 09/12/2014 Alexeev Alexander Nikolayevich
75165 7590 06/21/2018
HOLLAND & KNIGHT LLP
10 ST. JAMES A VENUE
BOSTON, MA 02116
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.
00163/EMC-13-0534(RUl)US 7442
EXAMINER
ROSSITER, SEAN D
ART UNIT PAPER NUMBER
2133
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
patentdocketing@hklaw.com
toni. sousa@hklaw.com
katie.langlais@hklaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXEEV ALEXANDER NIKOLA YEVICH,
ANTON GENADYEVICH PEGUSHIN, and
RAFIKOV RUSTEM VALERYEVICH
Appeal 2017-010115
Application 14/484,861
Technology Center 2100
Before JOSEPH L. DIXON, SCOTT B. HOW ARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge AMUNDSON
Opinion Concurring filed by Administrative Patent Judge HOW ARD
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-24, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as EMC IP Holding
Company LLC. Br. 4.
Appeal 2017-010115
Application 14/484,861
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention "relates to system design
and, more particularly, to systems and methods that aid in system design"
for transactional memory systems, e.g., "in IO intensive environments."
Spec. ,r,r 2--4. 2 The Specification explains that: (1) "[ a ]n abort probability
(p) is associated with [an] optimal execution time ( t) based, at least in part,
upon a probability curve"; (2) "[t]he probability curve is empirically derived
and based upon the performance of the transactional memory system"; and
(3) "[a] probable execution time (Ttm) is determined for the concurrent
memory operation based, at least in part, upon the abort probability (p)."
Abstract.
Exemplary Claim
Independent claim 1 exemplifies the claims at issues and reads as
follows:
1. A computer-implemented method comprising:
defining, using one or more processors, an optimal
execution time (t) for a concurrent memory operation to be
performed on a transactional memory system;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed September 12, 2014; "Final Act." for the Final Office
Action, mailed September 29, 2016; "Br." for the Appeal Brief, filed
March 24, 2017; and "Ans." for the Examiner's Answer, mailed May 4,
2017.
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Appeal 2017-010115
Application 14/484,861
associating, using the one or more processors, an abort
probability (p) with the optimal execution time ( t) based, at
least in part, upon a probability curve, wherein the probability
curve is empirically derived and based upon the performance of
the transactional memory system;
determining, using the one or more processors, a
probable execution time (Ttm) for the concurrent memory
operation based, at least in part, upon the abort probability (p );
determining a performance boost indicator (B) for the
concurrent memory operation based, at least in part, upon the
probable execution time (Ttm); and
implementing the transactional memory system on a
computing device based, at least in part, upon the performance
boost indicator (B) for the concurrent memory operation.
Br. 23 (Claims App.).
The Rejection on Appeal
Claims 1-24 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2.
ANALYSIS
We have reviewed the rejection of claims 1-24 in light of Appellants'
arguments that the Examiner erred. Based on the record before us and for
the reasons explained below, we concur with Appellants' contention that the
Examiner erred in rejecting the claims under § 101.
The§ 101 Rejection of Claims 1-24
The Patent Act defines patent-eligible subject matter broadly:
"Whoever 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." 35 U.S.C. § 101. In Mayo Collaborative
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Application 14/484,861
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 "contains an important implicit exception" for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981 ). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
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. If so,
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements" add enough to
transform the "nature of the claim" into "significantly more" than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
Step one in the Mayol Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves
the search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec. Power
Grp., 830 F.3d at 1353. An "inventive concept" requires more than "well-
understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F .3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80).
For Mayo/Alice step two, Appellants argue that "claims 1-24 recite
specific limitations that are other than what is well-understood, routine, or
conventional in the field of computer system design." App. Br. 18. In
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Appeal 2017-010115
Application 14/484,861
particular, Appellants contend that: (1) "[c]laims 1-24 include using a
probability curve empirically derived from and based upon performance of
the transactional memory system to associate an abort probability (p) with an
optimal execution time (t)"; and (2) "[e]mpirically deriving a probability
curve based upon the performance of the transactional memory system (e.g.,
in response to processing concurrent memory operations including
concurrent memory operations on the transactional memory system) is not
understood to be well-understood, routine, or conventional in the relevant
field." Id. According to Appellants, the Examiner "has not asserted this
feature to be well-known, routine, or conventional in this field." Id.
In the Final Office Action, the Examiner did not analyze the
additional elements in the claims under Mayo/Alice step two. Final Act. 2.
In the Answer, the Examiner analyzes the additional elements. Ans. 3---6.
But the Examiner does not take the position----or cite any evidence-that
associating an abort probability (p) obtained from an empirically derived
probability curve with an optimal execution time (t) was a well-understood,
routine, conventional activity already engaged by the relevant community.
Id.
"Whether something is well-understood, routine, and conventional to
a skilled artisan at the time of the patent is a factual determination."
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). Based on the
record before us, we agree with Appellants that the Examiner has not
adequately demonstrated that associating an abort probability (p) obtained
from an empirically derived probability curve with an optimal execution
time (t) was a well-understood, routine, conventional activity already
engaged by the relevant community. See Final Act. 2; Ans. 3---6. Because
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Application 14/484,861
the Examiner has not adequately demonstrated that fact, the Examiner has
not established patent ineligibility. Hence, we do not sustain the § 101
rejection of claims 1-24.
Because this determination resolves the appeal with respect to
claims 1-24, we need not address Appellants' other arguments regarding
Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on "a single dispositive issue").
DECISION
We reverse the Examiner's decision to reject claims 1-24 under
35 U.S.C. § 101.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXEEV ALEXANDER NIKOLA YEVICH,
ANTON GENADYEVICH PEGUSHIN, and
RAFIKOV RUSTEM VALERYEVICH
Appeal 2017-010115
Application 14/484,861
Technology Center 2100
Before JOSEPH L. DIXON, SCOTT B. HOW ARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge, concurring.
I agree with the Majority that the Examiner erred in rejecting the
pending claims as directed to patent-ineligible subject matter. However, I
would reverse the rejection on the first step of the Alice/Mayo framework.
Appellants argue that "the claims are directed to an improvement in
computer-related technology because 1) the specification teaches how the
claimed invention improves a computer and 2) the claims recite a particular
solution to achieve a desired outcome of predicting the impact of and
implementing a transactional memory system." App. Br. 13. Specifically,
Appellants contend the pending claims recite "an improvement in computer-
related technology" that is "directed to the testing and prediction of
concurrent memory operations in a transactional memory system for
Appeal 2017-010115
Application 14/484,861
implementing a transactional memory system on a computing device." Id. at
13-15. According to Appellants, "by predicting the effect of a transactional
memory system ( e.g., determining a performance boost indicator), the
transactional memory system may be implemented where beneficial ( e.g.,
implementing the transactional memory system on a computing device)."
Id. at 15-16.
In applying the first step of the Alice/ Mayo framework, our reviewing
court has held examined "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." Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Like in
Enfzsh, I agree with Appellants that the claimed invention is not directed to
some pre-existing business method and applying it to a computer-which
would be abstract-but, instead, is directed to a specific improvement in the
operation of the computer itself. Such an improvement is not an abstract
idea. See Enfzsh, 822 F.3d 1327.
Accordingly, because the claims are directed to a specific
improvement in the operation of the computer itself, the claims are not
directed to an abstract idea and are patent-eligible.
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