Ex Parte Ramanathan et al

Patent Trial and Appeal Board

Mar 26, 2018

12183286 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/183,286 07/3112008
26681 7590 03/28/2018
Driggs, Hogg, Daugherty & Del Zoppo Co., LP.A.
38500 CHARDON ROAD
DEPT. IEN
WILLOUGHBY HILLS, OH 44094
Sri Ramanathan
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.
END920080108US1-IEN106532 5350
EXAMINER
VIZV ARY, GERALD C
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
usptocommunications@driggslaw.com
mwheeler@driggslaw.com
cgiacomazzo@driggslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRI RAMANATHAN, PADMASHRI SURESH,
MATTHEW B. TREVATHAN, and BALAJI VENKATRAMAN
Appeal2017-000185
Application 12/183 ,286 1
Technology Center 3600
Before ANTON W. PETTING, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1 and 25-35 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify the real party in interest as International Business
Machines Corporation. Appeal Brief2 ("Appeal Br.," filed Jan. 11, 2006).
Appeal2017-000185
Application 12/183,286
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants' "invention generally describes an intelligent system and
fuzzy logic-based method to determine an overall adjusted project length
based on risk." Specification, i-f 1, ("Spec.", filed Jul. 31, 2008). Claims 1,
27, 30, and 33 are the independent claims on appeal and recite substantially
similar subject matter. See Appeal Br. 13-16; 18-21, Claims App'x. Claim
1, reproduced below, is illustrative of the subject matter on appeal:
1. A computer-implemented method for determining a project time
length, the method comprising executing on a central processing
unit the steps of:
assigning to a first task of a set of tasks of a project a dependency
factor integer that has a value that reflects an amount that performance of
the first task depends upon completion of performance of another of the
tasks, wherein the dependency factor integer is selected from a scale of
integers, and wherein the first task has an original projected time length
period for completion of performance of the first task;
assigning to the first task another dependency factor integer that
has a value that is selected from the scale of integers and reflects an
amount that performance of another of the tasks depends upon
completion of performance of the first task;
assigning to the first task a confidence factor integer that has a
value that is selected from the scale of integers to indicate a level of
difficulty of performance of the first task;
2
Appeal2017-000185
Application 12/183,286
assigning one of high, medium and low hedge values to each of
the dependency factor integers, the another dependency factor integers
and the confidence factor integers for each of the tasks as a function of
different numeric subset ranges of the scale of integers that are each
associated with one each of the high, medium and low hedge values of
the integers, the low hedge value associated with a lowest numeric subset
range of the scale of integers, the high hedge value associated with a
highest numeric subset range of the scale of integers, and the medium
hedge value associated with a numeric subset range of the scale of
integers that is greater than the low hedge value subset range and less
than the high hedge value subset range, the respective hedge values being
assigned to each of the respective factor integers falling within their
respective associated numeric subset ranges;
selecting one or more rules from a set of pre-determined rules to
apply to the first task as a function of the selected one or more rules
compnsmg:
a dependency factor hedge value matching the high, medium
or low hedge value assigned to the dependency factor integer of
the first task;
an another dependency hedge value matching the high,
medium or low hedge value assigned to the another dependency
factor integer of the first task; and
a confidence factor hedge value matching the high, medium
or low hedge value assigned to the confidence factor integer of the
first task; and
3
Appeal2017-000185
Application 12/183,286
wherein each of the pre-determined rules comprise different
adjustment factors for use in extending or shortening the original
projected time length period for completion of performance of the first
task;
creating an adjusted projected time length period for completion of
performance of the first task by multiplying the original projected time
length period with the adjustment factors of the selected one or more
rules; and
creating an adjusted project time length for the project based upon
the created adjusted projected time length period for completion of
performance of the first task; and
wherein each of the selected one or more rules comprise different
combinations of the high, medium and low hedge values for the
dependency hedge value, the another dependency hedge value and the
confidence factor hedge value.
ANALYSIS
Non-Statutory Subject Matter
At the outset, we note that Appellants argued the Examiner's§ 101
rejection of independent claims 1, 27, 30, and 33 as a group. Appeal Br. 10-
11. We select claim 1 as the representative claim for the group, and, thus,
claims 27, 30, and 33 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
In determining whether claim 1 is drawn to patent-ineligible subject
matter, the Examiner applied the now common two-step test introduced in
4
Appeal2017-000185
Application 12/183,286
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012) and further explained by the Supreme Court in Alice Corp. Pty.
Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). The first step in that
analysis is to determine whether the claim at issue is directed to a patent-
ineligible concept such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
the inquiry proceeds to step two to look at the claim for "something more"
by "examin[ing] 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." Id. at 2354, 2357 (quoting Mayo, 132 S. Ct. at
1294, 1298). This inventive concept must do more than simply recite "well-
understood, routine, conventional activity." Mayo, 132 S. Ct. at 1298.
Under step one of the Alice inquiry, the Examiner determined that
independent claim 1 is "directed to an abstract idea, specifically [a] method
for determining a project time length." Final Office Action 7 ("Final
Act.," mailed Aug. 14, 2015). According to the Examiner, this concept "is
an example of comparing new and stored information and using rules to
identify options. Id. at 8.
Appellants did not dispute that claim 1 is directed to an abstract idea
and instead argued step two of the Alice inquiry. See Appeal Br. 9
(commencing arguments at Step 2B). Thus, we begin our analysis at step
two.
Under step two of the Alice inquiry, the Examiner found:
Having considered the claims as a whole, no element or
combination of elements in the claims are sufficient to ensure
that the claims amount to significantly more than the abstract
idea itself. Indeed, the claims fail to recite any improvements to
another technology or technical field, improvements to the
5
Appeal2017-000185
Application 12/183,286
functioning of the computer itself, and/or meaningful limitations
beyond generally linking the use of an abstract idea to a
particular environment. (Although the claims do recite the use of
a computer, i.e. a processing unit, that is nothing more than a
generic computer, performing generic, well-understood and
routine computer functions and nothing more would be required
to implement the aforementioned abstract idea).
Final Act. 8-9.
Appellants contend that the claimed limitations amount to
significantly more than "'what is well-understood, routine and conventional
in the field,' or 'add unconventional steps that confine the claim to a
particular useful application' within the field of project management ...
[because] the claimed subject matter is allowable under 35 USC 103 over
the prior art of record." Appeal Br. 10-11; Reply Brief 2 ("Reply Br.," filed
Sept. 29, 2016).
To the extent that Appellants maintain that the elements of the claims
necessarily amount to "significantly more" than the abstract idea because the
claimed process is allegedly patentable over the prior art, Appellants
misapprehend the controlling precedent. See Examiner's Answer, 3 ("Ans.",
mailed Aug. 1, 2016). Although the second step in the Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "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."' Alice, 134 S. Ct. at 2355. In other words, a novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304 (rejecting the suggestion that
6
Appeal2017-000185
Application 12/183,286
Sections 102, 103, and 112 might perform the appropriate screening function
and noting that in Mayo such an approach "would make the 'law of nature'
exception ... a dead letter."); see also Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1376 (Fed. Cir. 2016) ("[U]nder the Mayo/Alice framework,
a claim directed to a newly discovered law of nature (or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility."). Thus, an abstract idea
is not transformed into an inventive concept just because the Examiner has
not found prior art that discloses or suggests it. The fact that a claimed
concept is "[g]roundbreaking, innovative, or even brilliant" does not "itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). Indeed, "[t]he 'novelty' of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr, 450
U.S. 175, 188-189 (1981).
We are unpersuaded by Appellants' argument that the claimed subject
matter provides
an improvement to the technical field of project management,
namely by enabling the determination of overall project lengths
based on risk using a fuzzy logic. Fuzzy logic provides
advantages in finding optimal solutions for systems with many
controllable variables. Via solving problems through
approximation rather than through precise, predicate logic, fuzzy
logic allows partial memberships in sets and describes these
memberships in imprecise linguistic terms like, such as the "low,
medium, and high" hedge values claimed.
7
Appeal2017-000185
Application 12/183,286
Appeal Br. 11; Reply Br. 3. Appellants' acknowledged improvement to the
"field of project management" is an improvement to the abstract idea, a
business practice long prevalent in our system of commerce, rather than an
improvement in the functioning of the claimed central processing unit. And
using fuzzy logic merely employs mathematical means to manipulate data.
Spec. i-f 18 ("Fuzzy logic is a mathematical means for handling imprecise
concepts and can provide optimal solutions for systems that have a lot of
controllable variables"). At its most basic, a "computer" is "an automatic
electronic device for performing mathematical or logical operations."
Oxford English Dictionary 640 (2d ed. 1989). The use of a computer in an
otherwise patent-ineligible process for no more than its most basic
function-making calculations or computations-fails to circumvent the
prohibition against patenting abstract ideas and mental processes.
Contrary to Appellants' contentions (Appeal Br. 11; Reply Br. 4),
neither the problem nor the solution here are rooted in computer technology.
Unlike the claims at issue in cases such as DDR Holdings LLC v Hotels.com
LP., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (claims at issue are "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks") and Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016) (claims at issue are "directed to
a specific implementation of a solution to a problem in the software arts"),
Appellants merely address a business issue through the use of generic,
computer-implemented recitation that does not add meaningful limitations to
steps otherwise directed to an abstract idea. Indeed, the only mention of a
technological component is a generic "central processing unit," which lies in
8
Appeal2017-000185
Application 12/183,286
claim 1 's preamble; none of the steps recited in claim 1 are expressly tied to
any computer technology. See Bicon, Inc. v. Straumann Co., 441F.3d945,
952 (Fed. Cir. 2006) (a preamble does not limit claim scope if it "merely
states the purpose or intended use of an invention."). In fact, paragraph 20
of Appellants' Specification discloses that "a subject matter expert creates a
project plan in which the expert assigns a 'risk value' for a number of risk
factors, for example: for a task's dependency on other tasks, for other task
dependency on a given task, and for a confidence level (e.g. level of
difficulty)." See Spec. i-f 21 ("A subject matter expert (SME) who assigns
the risk values at 101 may be a person who is an expert in a particular
area."). The result is no different with respect to the other independent
claims on appeal. After Alice the law is clear and this is precisely what the
Court warned about-that simply programming a computer to perform what
would otherwise be an abstract idea by the "mere recitation of a generic
computer," as in claims 27, 30, and 33, is not sufficient to impart patent
eligibility. Alice, 134 S. Ct. at 2358.
Appellants' argument regarding preemption is, likewise,
unpersuasive. See Reply Br. 5. The Supreme Court has explained that "the
prohibition against patenting abstract ideas cannot be circumvented by
attempting to limit the use of [the abstract idea] to a particular technological
environment." Alice, 134 S. Ct. at 2358. "The Supreme Court has made
clear that the principle of preemption is the basis for the judicial exceptions
to patentability" and "[ fJor this reason, questions on preemption are inherent
in and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788F.3d1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S.
9
Appeal2017-000185
Application 12/183,286
Ct. at 2354). Where claims are deemed to recite only patent ineligible
subject matter under the two-step Alice analysis, as they are here,
"preemption concerns are fully addressed and made moot" Id.; see also
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir.
2015), cert. denied, 136 S. Ct. 701 (2015) ("[T]hat the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract").
For the foregoing reasons, we sustain the rejection of independent
claim 1, and independent claims 27, 30, and 33, which fall with claim 1. We
also sustain the rejection of the dependent claims, which are not argued
separately. See Appeal Br. 12.
DECISION
The decision of the Examiner to reject claims 1 and 25-35 under 35
U.S.C. § 101 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
10