Ex Parte SUM et al

Patent Trials and Appeals Board

Apr 11, 2019

14644003 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/644,003 03/10/2015
103346 7590 04/15/2019
Artegis Law Group, LLP/Silver Spring
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
FIRST NAMED INVENTOR
Charles P. SUM
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.
SILS/0052US4
SSN-227-US4
CONFIRMATION NO.
7726
EXAMINER
HIDALGO, FERNANDO N
ART UNIT PAPER NUMBER
2827
NOTIFICATION DATE DELIVERY MODE
04/15/2019 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):
algdocketing@artegislaw.com
kcruz@artegislaw.com
j matthews @artegislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES P. SUM and GEORGE H. FLAMMER III
Appeal2018-005534
Application 14/644,003
Technology Center 2800
Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant is the Applicant, Silver Springs Networks, Inc. According to the
Appeal Brief, "[t]he present real party in interest is Itron Networked
Solutions, Inc., formed by merging a wholly-owned subsidiary of Itron, Inc.
into Silver Spring Networks, Inc. Silver Spring Networks, Inc. is the
surviving entity in the merger and is renamed to Itron Networked Solutions,
Inc .... " Appeal Br. 3.
Appeal2018-005534
Application 14/644,003
STATEMENT OF THE CASE2
Appellant describes the invention as relating to "distributed smart grid
processing." Spec. ,r 2. In particular, the Specification explains that in a
conventional electricity distribution smart grid system, the back office
receives "a multitude of real-time data from the various smart meters and
processes" and that the network can "become quickly over-burdened with
traffic and, therefore, suffer from throughput and latency issues." Id. ,r,r 4--5.
The Specification sets forth use of a system making use of cloud computing
environments with the advantage of being able to "identify a greater range of
events occurring within the utility network compared to traditional
approaches." Id. ,r,r 7-8.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method for generating
network-based data services, the method comprising:
configuring a first cloud computing environment to
acquire a sequence of data values and convert the sequence of
data values into a first data stream;
configuring a second cloud computing environment to
accumulate the first data stream into a data archive and to
perform a historical analysis on the first data stream to identify
a first trend associated with the first data stream;
configuring a third cloud computing environment to
perform one or more real-time processing operations on the first
data stream to determine that a first condition associated with
the first data stream has been met; and
2 In this Decision, we refer to the Final Office Action dated August 31, 2017
("Final Act."), the Appeal Brief filed January 26, 2018 ("Appeal Br."), the
Examiner's Answer dated March 8, 2018 ("Ans."), and the Reply Brief filed
May 7, 2018 ("Reply Br.").
2
Appeal2018-005534
Application 14/644,003
providing a subscriber to the network-based data services
with access to the first data stream, the first trend, and an
indication that the first condition has been met.
Appeal Br. 19 (Claims App.).
Independent claim 11 recites a method comprising configuring a first
cloud environment and a second cloud environment to each perform certain
tasks and generating a specific notification. Id. at 21. Claim 1 7 recites a
system having a first cloud computing environment, a second cloud
computing environment, and a computing device, with each of these three
devices each having a recited configuration. Id. at 22.
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 1-20 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 8.
Rejection 2. Claim 2 under 35 U.S.C. § 112(b) as "being incomplete
for omitting essential steps, such omission amounting to a gap between the
steps." Id. at 11-12.
Rejection 3. Claim 3 under 35 U.S.C. § 112(b) as indefinite. Id.
at 12.
Rejection 4. Claims 1-20 under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Id. at 12-15.
ANALYSIS
Rejection 1. The Examiner rejects under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final Act. 8. In
particular, the Examiner maintains that, for example, claim 1 "is a genus
3
Appeal2018-005534
Application 14/644,003
claim relating to a specification which only teaches a limited species
embodiment such as the one in [Figure] 1. The disclosed species does not
teach, disclose or anticipate the breadth of the genus of inventions spanned
by the claim(s)." Final Act. 9; see also Ans. 2--4.
Pursuant to the written description requirement of 35 U.S.C. § 112,
the disclosure of the application relied upon must "reasonably convey[] to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). The written description
inquiry is a question of fact. Id.
Appellant argues that, for example, claim 1 is adequately described by
the Specification including at Figures 6 and 13. Appeal Br. 7-8. The
preponderance of the evidence supports the Appellant's position. Figure 6
depicts an embodiment of the first, second, and third cloud computing
environments recited by claim 1, and Figure 13 depicts the "providing a
subscriber" recitation. The genus of the claims is further set forth in the
Specification's text. Spec. ,r,r 71-73. Appellant further explains that
particular embodiments are described at, for example, Figures 2A-2B and
Figure 5. Appeal Br. 10-11.
The present fact pattern differs from, for example, a scenario where an
applicant claims a genus of chemicals but the Specification only describes a
limited number of species within the genus. See, e.g., Abb Vie Deutschland
GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300 (Fed. Cir.
2014) (holding that claims directed to a functionally defined genus of
antibodies were not supported by disclosure that "only describe[d] one type
of structurally similar anti-bodies" that "are not representative of the full
4
Appeal2018-005534
Application 14/644,003
variety or scope of the genus."). This is because describing a limited
number of chemical species, especially when there may be unpredictability
in results, does not necessarily convey possession of an entire genus. In re
Alonso, 545 F.3d 1015, 1020 (Fed. Cir. 2008) (quoting Noelle v. Lederman,
355 F.3d 1343, 1350 (Fed.Cir.2004)).
The key question is what the Specification conveys was possessed by
Appellant. A specification that conveys possession of only a species will not
provide written descriptive support for a genus. See LizardTech, Inc. v.
Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005)
(holding that specification explaining only one way of creating a seamless
array of DWT coefficients did not provide adequate written description for
claim directed to any way of creating seamless DWT). But Appellant's
Specification does not just convey possession of a species. Instead, as
explained above, the Specification here describes the broader genus broadly
in language conveying that there are a number of ways to implement the
method. See, e.g., Spec. ,r 63. This contrasts with, for example, LizardTech,
Inc. where there was "no evidence that the specification contemplate[ d] a
more generic way of creating a seamless array of DWT coefficients."
LizardTech, Inc., 424 F.3d at 1344.
Moreover, the nature of the technology in the Specification is such
that, even if only one concrete embodiment were provided (in addition to the
Specification's description of the genus), that would be sufficient to support
the recited genus. A person of skill in the art reading the Specification
would understand that the computing environments could be implemented in
a variety of different routine ways within the skill in the art to achieve the
recited invention so long as the recited architecture is reached. See, e.g., In
5
Appeal2018-005534
Application 14/644,003
re Rasmussen, 650 F.2d 1212, 1214--15 (CCPA 1981) (disclosure of a single
method of adheringly applying one layer to another was sufficient to support
a generic claim to "adheringly applying" because one skilled in the art
reading the specification would understand that it is unimportant how the
layers are adhered, so long as they are adhered).
We, therefore, do not sustain the Examiner's rejection of claim 1. The
Examiner's reasoning for rejecting claims 2-20 is the same (Final Act. 8-
11 ); thus, we also do not sustain the Examiner's rejection of those claims.
Rejections 2 and 3. Appellant does not dispute these rejections. We,
therefore, summarily sustain the rejections.
Rejection 4. The Examiner rejects claims 1-20 under 35 U.S.C. § 101
as directed to non-statutory subject matter. Final Act. 12-15. In particular,
the Examiner explains that the claims are directed to an abstract idea. Id. at
14.
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized exceptions to this section: "'Laws of
nature, natural phenomena, and abstract ideas are not patentable."' Alice
Corp. v. CLSBankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is "directed to one of those patent-ineligible
concepts." Id. at 21 7. If so, we then examine "the elements of [the] claim
both individually and 'as an ordered combination' to determine whether the
6
Appeal2018-005534
Application 14/644,003
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78, 79 (2012)).
The Patent Office recently issued guidance about this framework. See
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("2019 Eligibility Guidance"). Under the guidance, a
claim is directed to an abstract idea only if the claim (1) recites one of the
abstract ideas listed in the guidance and (2) fails to integrate the abstract idea
into a practical application. See id. at 51, 53. The guidance explains that a
claim may integrate an abstract idea into a practical application when an
additional claim element "reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field" or uses
the abstract idea "in some other meaningful way beyond generally linking
the use of the judicial exception to a particular technological environment."
Id. at 55. If the claim integrates the abstract idea into a practical application,
the claim is patent eligible. See id. at 54.
With these principles in mind, we tum to Appellant's arguments. In
particular, Appellant contends that, as in, for example, Finjan, Inc. v. Blue
Coat Sys., Inc., 879 F.3d 1299, 1304---06 (Fed. Cir. 2018) andMcRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016), the
claims here recite a specific technological improvement. Appeal Br. 12-14.
Appellant's argument is persuasive. We first focus on claim 1.
The Examiner explains why the claims are directed to an abstract idea
including "data calculation" (i.e., math) and "pure mental processes" as
follows:
7
Appeal2018-005534
Application 14/644,003
Claim(s) 1, 11-15 and 17-20 is/are directed to an abstract
idea that includes: collecting information, analyzing it, and
displaying (making such available) certain results of the
collection and analysis (Case Name: Electric Power Group);
additionally and/or alternatively and/or complementarily, the
claim is directed to an abstract idea that includes: collecting and
comparing known information (Case Name: Classen) and the
claim is directed to an abstract idea that includes: converting
binary coded decimal to pure binary (Case Name: Benson) ....
The abstract idea includes algorithms for data
calculation that can be carried out as purely mental
processes, at least in principle, and thus is an idea of itself.
Id. at 14 ( emphasis added).
Even if we were to agree with the Examiner that some recitations of
claim 1 3 are a mathematical concept or mental process, claim 1 is not
directed to an abstract idea because the claim, as a whole, is directed to a
practical application. In particular, claim 1 recites "configuring" three
distinct cloud computing environments in a certain manner. Appeal Br. 19
(Claims App.). The recited configuration seeks to address technological
problems such as an over-burdened network with throughput and latency
issues or back office hardware that has become too slow and, therefore,
obsolete. Spec. ,r,r 5, 8. These limitations, therefore, indicate that the claim
is directed to a practical application because the claim's recitations reflect a
technological improvement and use the abstract idea in a meaningful way
beyond linking the idea to a particular environment. See, e.g., Alice, 573
U.S. at 223 ("In other words, the claims in Diehr were patent eligible
because they improved an existing technological process."); 2019 Eligibility
Guidance, 84 Fed. Reg. at 55 (explaining that additional elements may
3 We do not reach this issue because doing so is unnecessary to our decision.
8
Appeal2018-005534
Application 14/644,003
integrate an abstract idea into a practical application when they "reflect[]
an ... improvement to other technology or technical field" or use the
abstract idea "in some other meaningful way beyond generally linking the
use of the judicial exception to a particular technological environment"). As
a result, claim 1 is not directed to an abstract idea under the first step of the
Supreme Court's two-part framework.
Therefore, on this record, we do not sustain the Examiner's rejection
of claim 1 under 35 U.S.C. § 101. Because the Examiner's rejection of
claims 2-20 under 35 U.S.C. § 101 suffers from similar deficiencies, we also
do not sustain the Examiner's rejection of those claims.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1-20 under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement (Rejection 1, stated above) and the rejection of
claims 1-20 under 35 U.S.C. § 101 as directed to non-statutory subject
matter (Rejection 4, stated above). We affirm the Examiner's rejection of
claim 2 under 35 U.S.C. § 112(b) as "being incomplete for omitting essential
steps, such omission amounting to a gap between the steps" (Rejection 2,
stated above) and the rejection of claim 3 under 35 U.S.C. § 112(b) as
indefinite (Rejection 3, stated above).
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
9