Ex Parte Rajamani et al

Patent Trial and Appeal Board

Nov 23, 2016

12824701 (P.T.A.B. Nov. 23, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/824,701 06/28/2010 Nithya Rajamani IN920100053US1 (790.068) 1359
89885 7590 11/23/2016
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
11/23/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NITHYA RAJAMANI and ANUPAM SARONWALA
Appeal 2014-006542
Application 12/824,7011
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK and
MATTHEW S. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Nithya Rajamani, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1—25. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 3.
Appeal 2014-006542
Application 12/824,701
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
1. A method comprising
representing supplier nodes in a machine-generated network
representation;
representing client nodes in a machine-generated network
representation, the client nodes corresponding to at least one customer
of at least one supplier node;
establishing a supplier-client relationship in the network
representation;
recording a score from at least one supplier node participating
in the supplier-client relationship, the score corresponding to
relationship strength of the supplier-client relationship;
calculating a global net orientation score of a client node,
corresponding to a general relationship strength of the client node
with respect to the supplier nodes in aggregate; and
amending the supplier-client relationship score after a
predetermined time period.
The Examiner relies upon the following as evidence of
unpatentability:
appeal.
THE REJECTIONS
Hoffman et al.
(hereinafter “Hoffman”)
US 2003/0088474 Al May 8, 2003
Brydon et al.
(hereinafter “Brydon”)
US 2006/0136419 Al June 22, 2006
Shastry et al.
(hereinafter “Shastry”)
US 2008/0147540 Al June 19, 2008
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Application 12/824,701
Mauseth et al.
(hereinafter “Mauseth”)
US 2008/0270209 Al Oct. 30, 2008
Heit US 7,606,762 B1 Oct. 20, 2009
Ghosh et al. US 2010/0145777 Al June 10, 2010
(hereinafter “Ghosh”)
Landesmann US 2010/0211450 Al Aug. 19,2010
Willis, Henry H., et al., RAND Infrastructure, Safety, and
Environment, Technical Report “Evaluating the security of the global
containerized supply chain,” RAND Corporation, Santa Monica, CA.
2004, www.rand.org, (hereinafter “RAND”).
The following rejections are before us for review:
1. Claims 14—25 are rejected under 35U.S.C. §101 as being directed to
non-statutory subject matter.
2. Claims 1, 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brydon and Ghosh.
3. Claims 2, 3, 15 and 16 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Brydon, Ghosh and Heit.
4. Claims 7, 8, 20 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brydon, Ghosh and Mauseth.
5. Claims 9 and 22 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Brydon, Ghosh and Shastry.
6. Claims 11, 12, 24 and 25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brydon, Ghosh and RAND.
7. Claims 4—6 and 17—19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brydon, Ghosh and and Hoffman.
8. Claims 10 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brydon, Ghosh and Landesmann.
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Application 12/824,701
ISSUES
Did the Examiner err in rejecting claims 14—25 under 35 U.S.C. §101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1,13 and 14 under 35 U.S.C.
§103(a) as being unpatentable over Brydon and Ghosh; claims 2, 3, 15 and
16 under 35 U.S.C. § 103(a) as being unpatentable over Brydon, Ghosh and
Heit; claims 7, 8, 20 and 21 under 35 U.S.C. § 103(a) as being unpatentable
over Brydon, Ghosh and Mauseth; claims 9 and 22 under 35 U.S.C. §103(a)
as being unpatentable over Brydon, Ghosh and Shastry; claims 11, 12, 24
and 25 under 35 U.S.C. § 103(a) as being unpatentable over Brydon, Ghosh
and RAND; claims 4—6 and 17—19 under 35 U.S.C. §103(a) as being
unpatentable over Brydon, Ghosh and Hoffman; and, claims 10 and 23 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Brydon, Ghosh
and Landesmann?
ANALYSIS
The rejection of claims 14—25 under 35 U.S.C. §101 as being directed to
non-statutory subject matter.
The Appellants did not respond to this rejection. Accordingly, it is
summarily sustained.
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Application 12/824,701
The rejections of claims 1, 13 and 14 under 35 U.S.C. §103 (a) as being
unpatentable over Brydon and Ghosh; claims 2, 3, 15 and 16 under
35 U.S.C. §103(a) as being unpatentable over Brydon, Ghosh andHeit;
claims 7, 8, 20 and 21 under 35 U.S.C. §103(a) as being unpatentable over
Brydon, Ghosh andMauseth; claims 9 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Brydon, Ghosh and Shastry; claims 11, 12, 24 and
25 under 35 U.S.C. §103(a) as being unpatentable over Brydon, Ghosh and
RAND; claims 4—6 and 17—19 under 35 U.S.C. §103(a) as being
unpatentable over Brydon, Ghosh and Hoffman; and, claims 10 and 23 are
rejected under 35 U.S.C. §103(a) as being unpatentable over Brydon, Ghosh
and Landesmann.
All the claims require calculating a global net orientation score of a
client node, which client node corresponds to a general relationship strength
of the client node with respect to supplier nodes in a machine-generated
network representation in aggregate. See independent claims 1, 13 and 14.
The Appellants argue that the cited prior art combination of Brydon
and Ghosh would not lead one of ordinary skill in the art to calculate said
global net orientation score. We agree.
The Examiner takes the position that Bryson discloses representing
supplier nodes in a machine-generated network representation but not
calculating global net orientation score, for which Ghosh is relied upon.
Final Act. 4—5. According to the Examiner, “Ghosh ‘777 discloses
calculating a global net orientation score of a client node corresponding to
a general relationship strength of the client node with respect to the supplier
nodes in aggregate (see |[0038] and Figs. 1, 4, and 6; influence scores for
authors computed in aggregate based on topology of the social graph).”
Final Act. 5.
Ghosh, paragraph 38 is reproduced below:
[0038] In some embodiments, pricing and advertising determinations
are based at least in part on influence scores computed in aggregate
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Application 12/824,701
rather than on individual users. For example, the aggregate influence
for visitors to an online newspaper can be estimated by identifying the
public citations, recommendations, or other expressions of opinion
made by individuals for that online newspaper, indicating that authors
of such citations are users of that online newspaper; the influence of
such authors can be estimated and the distribution of such influence
and topology of the graph (e.g., social graph) of such authors who are
also users of that online newspaper can be used as a proxy for the
influence of all actual users of that online newspaper, providing for a
better refinement and metric for measuring the influence of that online
newspapers users than, for example, proxy measures of influence
based on readership surveys and demographics.
We do not see in this passage or in Figs 1, 4 and 6 of Ghosh
disclosure of calculating a global net orientation score of a client node,
which client node corresponds to a general relationship strength of the client
node with respect to supplier nodes. The Examiner states that “global net
orientation” is never explicitly defined in the specification, it appears as
though the term describes an aggregate evaluation of relationship strength
between members of a social network.” Ans. 2. But that is not entirely true.
Paragraph 29 of the Specification, which discusses Fig. 2, explains that “a
global net orientation [is] represented inside the boxes with dotted lines.
Each global net orientation has a ‘+’ or (positive or negative) sign
followed by a number.” In light of the Specification, the global net
orientation score of a client node that is calculated as claimed is reasonably
broadly construed to be a value corresponding to a client node which itself
corresponds to a general relationship strength of the client node with respect
to supplier nodes in a machine-generated network representation in
aggregate. To constme said global net orientation score more broadly as “an
aggregate evaluation of relationship strength between members of a social
network” (Ans. 2) is not reasonable in light of the Specification.
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Furthermore, we do not see how Ghosh’s disclosure of “an aggregate
evaluation of relationship strength between members of a social network”
(Ans. 2) would lead one of ordinary skill to make a calculation a global net
orientation score of a client node that corresponds to a general relationship
strength of the client node with respect to supplier nodes in a machine­
generated network representation in aggregate, notwithstanding Bryson may
disclose representing supplier nodes in a machine-generated network
representation.
For the foregoing reasons, we find that a prima facie case of
obviousness for the subject matter of the independent claims has not been
made out in the first instance by a preponderance of the evidence. We reach
the same conclusion as to the rejections of the dependent claims.
NEW GROUND OF REJECTION
Claims 1—25 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Alice Corp. Pty. 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 § 101.
According to Alice step one, “[w]e 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.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to relationship representation. Relationship
representation is a fundamental building block of human ingenuity. As such
it is an abstract idea.
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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.’” Id. (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S.Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of relationship representation into an inventive concept.
The method of claim 1 sets out six steps whereby: (a) supplier nodes
are represented in a network representation; (b) client nodes are represented
in a network representation; (c) a supplier-client relationship is established
in the network representation; (d) a score from a supplier node
corresponding to the relationship strength of the supplier-client relationship
is recorded; (e) a score (“global net orientation score”) corresponding to a
relationship strength of the client node with respect to the supplier is
calculated; and, (f) “the supplier-client relationship score after a
predetermined time period” Is amended. All these steps are known
operations for creating a relationship representation, albeit performed in the
context of a supplier-client environment. The use of known operations
distinguished only by context adds little to patentably transform the
relationship representation abstract idea. Cf. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The Court [Parker
v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation of a
practical application for the calculation could alone make the invention
patentable.”). Also, many of the recited steps are not linked to any device
and thus could be practiced mentally. Adding mental steps cannot
patentably transform an otherwise abstract idea into an inventive concept. In
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re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“[MJental processes—or
processes of human thinking—standing alone are not patentable even if they
have practical application.”).
Finally, we note that claim 1 calls for “machine-generated network
representation^].” But any general-purpose computer available at the time
the application was filed would have satisfied these limitations. The
Specification supports that view. See Spec., e.g., para. 56 (“a process such
as that broadly illustrated in FIG. 6 can be carried out on essentially any
suitable computer system or set of computer systems.”) “[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention. Stating an abstract idea ‘while adding
the words “apply if” is not enough for patent eligibility.” Alice, 134 S.Ct. at
2358.
For the foregoing reasons, we find that claim 1 covers claimed subject
matter that is judicially-excepted from patent eligibility under § 101. The
other independent claims — apparatus claims 13 and 14 parallel claim 1 —
similarly cover claimed subject matter that is judicially-excepted from patent
eligibility under § 101. The dependent claims describe various relationship
representing schemes which do little to patentably transform the abstract
idea.
Therefore, we enter a new ground of rejection of claims 1—25 under
35U.S.C. § 101.
For the foregoing reasons, the rejections are affirmed-in-part but the
claims are newly rejected under § 101.
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CONCLUSIONS
The rejection of claims 14—25 under 35 U.S.C. §101 as being directed
to non-statutory subject matter is affirmed The rejections of claims 1,13
and 14 under 35 U.S.C. § 103(a) as being unpatentable over Brydon and
Ghosh; claims 2, 3, 15 and 16 under 35 U.S.C. §103(a) as being
unpatentable over Brydon, Ghosh and Heit; claims 7, 8, 20 and 21 under
35 U.S.C. § 103(a) as being unpatentable over Brydon, Ghosh and Mauseth;
claims 9 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Brydon,
Ghosh and Shastry; claims 11, 12, 24 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Brydon, Ghosh and RAND; claims 4-6 and 17-19
under 35 U.S.C. § 103(a) as being unpatentable over Brydon, Ghosh and and
Hoffman; and, claims 10 and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brydon, Ghosh and Landesmann are reversed.
Claims 1—25 are newly rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
DECISION
The decision of the Examiner to reject claims 1—25 is affirmed-in-
part.
Claims 1—25 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
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TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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-IN-PART; 37 C.F.R, $ 41.50(b)
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