Ex Parte SUM et alDownload PDFPatent Trials and Appeals BoardApr 11, 201914644003 - (D) (P.T.A.B. Apr. 11, 2019) Copy Citation 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 Copy with citationCopy as parenthetical citation