Ex Parte Raley et al

Patent Trial and Appeal Board

Sep 25, 2018

11685403 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/685,403 03/13/2007
33438 7590 09/27/2018
TERRILE, CANNATTI & CHAMBERS, LLP
P.O. BOX 203518
AUSTIN, TX 78720
FIRST NAMED INVENTOR
Jefferson Raley
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.
DC-12042 4539
EXAMINER
BROCKINGTON III, WILLIAMS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
tmunoz@tcchlaw.com
heather@tcchlaw.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFERSON RALEY, GREGORY BOMSTA, KEVIN HANES,
STEPHEN OATES, and KURT STONECIPHER
Appeal2017-004950
Application 11/685,403 1
Technology Center 3600
Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and
MICHAEL M. BARRY, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Dell Products L.P. as the real party in interest. Appeal
Br. 1.
Appeal2017-004950
Application 11/685,403
Invention
Appellants disclose an asset discovery tool that collects information
from a customer's hardware and software environment "to build reports that
help customers make decisions regarding their application portfolio that will
optimize their information hand[l]ing system deployment costs." Abstract.
Representative Claim
1. A method for optimizing a deployment of information
handling systems to a customer comprising
analyzing, via a computer system, a customer information
handling system environment to identify applications
stored on each information handling system within the
information handling system environment;
identifying, via the computer system, which applications to
include within a customer core image, the customer core
image comprising an exact copy of applications stored on
a non-volatile memory of a customer information
handling system within the customer information
handling system environment, and which applications to
include in subset loads based upon the analyzing;
generating, via the computer system, an optimized deployment
recommendation based upon the results of the analyzing
and the identifying, the optimized deployment
recommendation comprising identifying applications to
be included in the customer core image, applications to
be included as part of the subset loads and applications to
install separately from the customer core image, the
applications to install separately from the customer core
image being packaged for electronic distribution; and,
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Application 11/685,403
deploying the customer core image to the customer information
handling system environment based upon the optimized
deployment recommendation, the deploying the customer
core image comprising storing the customer core image
to the customer information handling system via a zero
touch install operation, the zero touch install operation
preloading the customer core image onto the customer
information handling system.
Re} ections and References
The Examiner rejects claims 1-15 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 5-7.
The Examiner rejects claims 1--4, 6-9, and 11-14 under 35 U.S.C.
§ I03(a) as being unpatentable over Myrick et al. (US 2004/0143470 Al;
published July 22, 2004) ("Myrick"), Le et al. (US 7,356,679 Bl; issued
Apr. 8, 2008) ("Le"), and Eldar et al. (US 2007 /0297396 Al; published Dec.
27, 2007) ("Eldar"). Final Act. 7-24.
The Examiner rejects claims 5, 10, and 15 under 35 U.S.C. § I03(a) as
being unpatentable over Myrick, Le, Eldar, and Samo (US 2002/0042751
Al; published Apr. 11, 2002). Final Act. 24--26.
ADOPTION OF EXAMINER'S FINDINGS AND CONCLUSIONS
We agree with and adopt as our own the Examiner's findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellants' arguments, but do not
find them persuasive of error. We provide the following explanation for
emphasis.
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Application 11/685,403
35 U.S.C. § 101
Findings and Contentions
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner concludes "that claim 1 is directed to performing
computer system image analysis and management by using categories to
organize, store, and transmit information, which is an abstract idea." Final
Act. 6; see also Ans. 2--4. The Examiner alternatively concludes the claim 1
limitations are directed to abstract "analyzing, identifying, and generating"
steps analogous to the information collection, analysis, and display functions
found in other abstract inventions. See Ans. 5 ( citing Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The Examiner further
concludes the additional limitations of claim 1 "are not enough to qualify as
'significantly more' being recited in the claims along with the abstract idea
because they amount to generic computing elements performing generic
computing functions." Final Act. 6; see also Ans. 5-7.
Appellants contend the Examiner erred because claim 1 is "directed to
novel and non-obvious technology [that goes] far beyond the concept of
'optimizing a deployment of information handling systems to a customer'
and simply implementing the abstract idea on [a] general purpose
computer." Appeal Br. 4. Specifically, Appellants argue the inventive
concept of claim 1 "relates to optimizing a deployment of information
handling systems to a customer and includes ... significant limitations." Id.
at 6; see also Reply Br. 3 ("claim 1 is a technological improvement over
existing technology achieved through the particular ordered combination of
elements").
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Application 11/685,403
Analysis
To be statutorily patentable, the subject matter of an invention must be
a "new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in§ 101, including: (1) laws of nature; (2) natural phenomena; and (3)
abstract ideas. Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions "from those that claim patent-
eligible applications of those concepts." Id. ( citing Mayo Collaborative
Servs. v. Prometheus Labs, Inc., 566 U.S. 66 (2012)). The evaluation
follows a two-part analysis: (1) determine whether the claim is directed to a
patent-ineligible concept, e.g., an abstract idea; and (2) if so, determine
whether any element, or combination of elements, in the claim is sufficient
to ensure that the claim amounts to significantly more than the patent-
ineligible concept itself. See Alice, 134 S. Ct. at 2355.
Step 1:
Appellants argue that claim 1 "relates to optimizing a deployment of
information handling systems to a customer." Appeal Br. 6. However, we
agree with the Examiner that such optimization is comparable to the abstract
idea of "collecting information, analyzing it, and displaying certain results of
the collection and analysis." Ans. 5 (quoting Elec. Power Grp, 830 F.3d at
1353).
Appellants contend claim 1 is directed to "a technological
improvement over existing technology" (Reply Br. 3), but fail to identify
what claimed features make the claimed process-which includes
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identifying applications ( collection), identifying customer core image and
subset load applications (analysis), and generating a recommended
deployment ( display }-a "technological improvement." The application of
these steps to a customer information handling environment is no more
technological than the application of similarly abstract collection, analysis,
and display steps to the environment of an interconnected electric power
grid. See Elec. Power Grp., 830 F.3d at 1354--55.
Furthermore, the final step of deploying the customer core image-
i.e., acting on the generated recommendation-fails to make the focus of
claim 1 non-abstract. The recited deployment merely stores the customer
core image onto the customer information handling system, a well-known
concept that humans have long performed in configuring information
handling systems. Cf Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (storing
recognized data in a memory is an "undisputedly well-known" concept that
"humans have always performed"). Moreover, such storage does not
transform or reduce an article to a different state or thing, and thus does not
represent a step in the type of processes that "have historically been eligible
to receive the protection of our patent laws." Diamond v. Diehr, 450 U.S.
175, 184 (1981); see also Bilski v. Kappas, 561 U.S. 593, 604 (2010)
(although not the exclusive test for patent-eligibility of processes, the
"machine-or-transformation test is a useful and important clue").
For these reasons, we agree with the Examiner that claim 1 is directed
to a patent-ineligible concept. See Final Act. 6; Ans. 5.
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Step 2:
Appellants do not show that claim 1 has additional recitations that
make claim 1 amount to significantly more than the underlying abstract idea.
Rather, Appellants merely submit that analysis of additional recitations "is
only relevant if the invention is [ directed] to an abstract idea that is merely
applied with a generic computer" (Appeal Br. 4), and that the recitations of
claim 1 represent "significant limitations" (id. at 6). That is, Appellants
limit their substantive arguments to step 1. However, as discussed above,
we agree with the Examiner that claim 1 is directed to a patent-ineligible
concept.
Furthermore, we agree with the Examiner that claim 1 merely recites
using "generic computing elements performing generic computing
functions" (Final Act. 6) to perform the claimed method. Therefore, claim 1
lacks additional recitations sufficient to make claim 1 significantly more
than the underlying abstract idea.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claim 1, and claims 2-15, which Appellants do not argue separately with
respect to this rejection.
35 U.S.C. § 103(a)
Findings and Contentions
In rejecting claim 1 as obvious, the Examiner relies on Le's use of a
template image with a core set of software applications and delta technology
for image customization to teach or suggest several recitations related to the
claimed identifying, generating, and deploying steps. Final Act. 9-10
(citing, e.g., Le col. 51, 11. 47-54, col. 57, 11. 31--46); Ans. 11.
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Appellants contend the Examiner erred because "the customer core
image as disclosed and claimed is patentably distinct from the delta
technology disclosed by Le. This is further distinguished by the discussion
in Le of the three separate delta files which each correspond to three
applications." Appeal Br. 8. Appellant further contends
Id.
that nowhere within the cited portions of Le (nor anywhere else
in Le) is there any disclosure or suggestion of identifying which
applications to include within a customer core image and which
applications to include in subset loads based upon the analyzing,
much less where the customer core image comprises an exact
copy of applications stored on a non-volatile memory of a
customer information handling system within the customer
information handling system environment, much less of
generating an optimized deployment recommendation based
upon the results of the analyzing and the identifying, much less
where the optimized deployment recommendation comprises
identifying applications to be included in the customer core
image, applications to be included as part of the subset loads and
applications to install separately from the customer core image,
much less where the applications to install separately from the
customer core image are packaged for electronic distribution,
much less deploying the customer core image to the customer
information handling system environment based upon the
optimized deployment recommendation, all as required by
claim 1.
Analysis
Appellants argue "the customer core image as disclosed and claimed
is patentably distinct from the delta technology disclosed by Le." Id.
However, Appellants fail to distinguish the claimed identification of
applications to include within a customer core image from Le's teaching
that it "is common to configure a template image with a core set of software
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applications that most clones are expected to need." Le col. 51, 11. 48-50;
see also Final Act. 9; Ans. 11. Appellants' argument with respect to Le's
applicability to the identifying step is conclusory and unpersuasive. See
Appeal Br. 8. Appellants' other contentions with respect to the Examiner's
35 U.S.C. § 103(a) rejection of claim 1 are similarly conclusory. See id. at
9; Reply Br. 3. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 1, and of claims 35 U.S.C. § 103(a) rejections of claims 2-
15, which Appellant does not argue separately with respect to these
rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-15.
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.
§ 4I.50(f).
AFFIRMED
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