Ex Parte Trevathan et al

Patent Trial and Appeal Board

Apr 12, 2018

12898129 (P.T.A.B. Apr. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/898, 129 10/05/2010 Matthew B. TREVATHAN
46583 7590 04/16/2018
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
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.
END920040172US2 3264
EXAMINER
KING JR., JOSEPH W
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
04/16/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW B. TREV ATHAN, SETH CHISAMORE,
CHRISTOPHER E. HOLLADAY, and MICHAEL P. OUTLAW
Appeal2017-000956
Application 12/898, 129
Technology Center 3600
Before JEAN R. HOMERE, NABEEL U. KHAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1--4 and 16, which constitute all claims pending in this application. 1
App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as International Business
Machines Corp. App. Br. 2.
Appeal2017-000956
Application 12/898, 129
Introduction
According to Appellants, the claimed subject matter relates to a fault
tolerant method for managing applications in a grid network computing
system including a server profile (120) containing a list of available servers
and resource configurations associated therewith. Spec. i-fi-12, 22, 23, Fig. 1.
In particular, upon receiving from a grid scheduler (302) a request for a
resource, a license server (100) dispatches to a license profile (105) to fetch
the requested resource in a license cache (115) within the grid network. Id.
i135, Fig. 3A. If the resource is available in the license cache (115), the
license server (100) retrieves the resource, and forwards the retrieved
resource to the grid scheduler (302). Id. i136. Otherwise, the license server
(100) locates the resource from a non-cached location within the grid
network in the server profile (120), authorizes the resource for use according
to the license associated therewith, and subsequently returns the resource to
the grid scheduler (302). Id. i137.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A method for managing applications in a grid network
computing system, comprising the steps of:
receiving, at a license server, a license request for a
resource from a grid scheduler, the license server having a
domain corresponding to an address within the grid network
computing system and including a server profile that contains a
list of available servers and resource configurations of the
available servers;
checking a cache of the license server to determine
whether the resource with a license is available in the cache;
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if the resource with the license is available in the cache,
returning a response to the grid scheduler indicating that the
cached resource is available with the license; and
if the resource with the license is not available in the
cache, locating the resource from a non-cached location of the
domain within the grid network computing system in the server
profile and authorizing the resource for use according to the
license appropriate for the resource and returning a response to
the grid scheduler identifying the resource's availability,
wherein the license server is a node in the grid network
computing system which manages resources in the grid network
computing system and the license server includes a license
profile that contains one or more of a number of licenses that
are available, a total number of licenses owned, and types of
licenses within the grid network computing system.
Rejections on Appeal
Claims 2--4 stand rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as failing to particularly and distinctly claim the subject matter,
which Appellants regard as the invention. Final Act. 2--4. 2
Claims 1--4 and 16 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 4--8.
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 3-15, and the Reply Brief, pages 2-13. 3
2 The Examiner withdrew the indefiniteness rejection against claims 1 and
16. Ans. 3.
3 Rather than reiterate the arguments of Appellants and the Examiner's
findings/conclusions, we refer to the Appeal Brief (filed March 28, 2016)
("App. Br."), the Reply Brief (filed October 17, 2016) ("Reply Br."), and the
Answer (mailed August 18, 2016) ("Ans.") for the respective details. We
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Application 12/898, 129
Patent Ineligibility Rejection
Appellants argue the Examiner erred in concluding that claims 1--4,
and 16 are directed to the abstract idea of "managing resources in a network
to determine availability of the resources" because the claimed subject
matter is not in one of the enumerated categories of abstract ideas (e.g.,
patent ineligible concept such as a fundamental economic practice, method
of organizing human activity, an idea itself, or a mathematical formula).
App. Br. 4--5. Instead, Appellants argue that the claim includes many
technological features that provide several advantages over traditional
economic practices. Id. at 5-6 (citing Spec. i-f 20). In particular, Appellants
allege that the claimed recitation of flexibly managing the addition/removal
of resources (licensed/unlicensed) while complying with licensing usage
terms of the resources due to grid faults or demand changes for one or more
applications is a technical improvement for solving a technical problem. Id.
Further, Appellants allege that, because the claims require "a grid network
computing system" including "a node" (e.g., a licensed server) for
dynamically adding/removing resources in the grid network computing
system, the claimed subject matter has no correspondence in the pre-
computer world. Id. at 7(citing DDR Holdings). 4 Therefore, Appellants
allege that the claimed subject matter is directed to a technological solution
only made possible when implemented in computer networks to overcome a
have considered in this Decision only those arguments Appellants actually
raised in the Briefs. Any other arguments Appellants could have made but
chose not to make in the Briefs are deemed to be waived. See 3 7 C.F .R.
§ 41.37(c)(l)(iv).
4 DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014).
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problem arising in the realm of computer networks. Id. at 7-8.
Additionally, Appellants argue that the recited steps of locating a resource or
a license from a non-cached location if the requested resource/license is not
available in a cached location within the grid network, and authorizing the
resource for use according to its license are not ordinary or well-known
limitations. Id. at 8-9. Consequently, Appellants submit that the claimed
subject matter requires certain technology including a cache, a non-cached
location, a license server, and a grid scheduler that amount to significantly
more than the abstract idea. Id. at 9.
These arguments are not persuasive. The U.S. Supreme Court
provides a two-step test for determining whether a claim is directed to
patent-eligible subject matter under 35 U.S.C. § 101.5 In the first step, we
determine whether the claims are directed to one or more judicial exceptions
(i.e., law of nature, natural phenomenon, and abstract ideas) to the four
statutory categories of invention (i.e., process, machine, manufacture, and
composition of matter). Id. (citations omitted) (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012))
("Mayo"). In the second step, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (citing Mayo, 132 S. Ct. at 1297-98). In other words, the
second step is to "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. (citing Mayo, 132 S. Ct. at 1294).
5 Alice Corp. Pty. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
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Application 12/898, 129
At the outset, we note that claim 1 is directed to a method for
managing applications in a grid network computing system including a
license server that performs certain conditional steps of locating a resource
in a non-cached location, if the resource is not available in a cached
location. 6 We further note Appellants' dispute of the Examiner's finding
that, similarly to Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat. Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014), the process recited in
claim 1 simply analyzes collected data to determine an availability of a
requested license and resource in a computer network. Reply Br. 2-3,
Ans. 4.
Although the claimed subject matter does recite a license server for
retrieving from a non-cached location resources unavailable in a cached
location at the behest of a grid scheduler, we agree with the Examiner that
the claim simply pertains to the method of performing resource inventory
management in a computer network including a cached location and an un-
cached location. Ans. 4--5. That is, albeit the claims require the license
server to perform the functions of analyzing collected data to determine
availability of requested resources, such functions are not proprietary to the
license server itself. In other words, the analysis of an existing inventory to
determine the availability of requested data and to acquire the requested data
from a non-cached location (when it is not available at the cached location),
6 We note in passing that, under the broadest reasonable interpretation, the
cited conditional limitation need not be practiced if the condition for
practicing the cited step is not met. That is, if the requested data is found in
the cached location, the claim does not require finding the resource in a non-
cached location. See Ex parte Schulhauser, No. 2013-007847, slip op. at 9-
10 (PTAB April 28, 2016) (precedential).
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and forwarding the retrieved data to the requesting party involve typical and
conventional functions that take place during the inventory management of
resources in a distributed computing system, which includes a cached
location and an un-cached location. Accordingly, notwithstanding that there
may or may not be a direct corresponding offline equivalence for the
claimed subject matter, we agree with the Examiner that the claims are
directed to the abstract idea of managing resource inventory in a computer
network, and not to any improvements to the operation of the computer
network itself. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed.
Cir. 2016) (concluding that claims directed to a self-referential table for a
computer database were patent eligible because the claims were directed to
an improvement in the functioning of a computer). Further, as correctly
noted by the Examiner, although the claims recite a solution for a computing
system, they are unlike the claims found patent eligible in DDR Holdings
because they are directed to nothing more than the performance of resource
inventory management functions (collecting/analyzing inventory to
determine availability of requested resource/license) in a conventional
computer network, and not to any technological improvement in the
computer network itself. See id. at 6.
We likewise agree with the Examiner that the cited claim steps
performed between a cache, a non-cached location, a license server, and a
grid scheduler, as a whole, do not amount to significantly more than the
abstract idea of managing inventory of resources on a computer network
because the recited functions of those elements are conventional, well-
understood, and do not go beyond those of a general purpose computer for
merely managing the availability of data in a distributed computing
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environment. Ans. 7-8. Therefore, they do not add any meaningful
limitations beyond generally linking the abstract idea to the particular
technological environment. Id. 7 Accordingly, we are not persuaded of error
in the Examiner's conclusion that claims 1--4 and 16 are directed to patent
ineligible subject matter.
Indefiniteness Rejections
Appellants argue the Examiner erred in concluding that the recitation
of the phrase "downloading an image or resource to a target application
server ... "renders claim 2 indefinite. App. Br. 12. According to
Appellants, one of ordinary skilled artisan, having read the Specification,
would have been able to ascertain the scope of cited limitations. Id. at 6-7,
Reply Br. 9-10 (citing Spec. i-fi-127, 38, 39). This argument is persuasive.
We do not agree with the Examiner that it is unclear what relationship
an "image" has with a requested resource, or resource with a license; or is an
"image" also being requested, and that the claim is thereby indefinite. Final
Act. 3--4.
7 Considerations for determining whether a claim with additional elements
amounts to "significantly more" than the judicial exception itself include
improvements to another technology or technical field (Alice Corp., 134 S.
Ct. at 2359 (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)));
adding a specific limitation other than what is well-understood, routine and
conventional in the field, or adding unconventional steps that confine the
claim to a particular useful application (Mayo, 132 S. Ct. at 1299, 1302); or
other meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment (Alice Corp., 134 S. Ct.
at 2360). See, e.g., Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) ("[M]erely adding computer
functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea.").
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"[It] is well-established that the determination whether a claim is
invalid as indefinite 'depends on whether those skilled in the art would
understand the scope of the claim when the claim is read in light of the
specification."' Atmel Corp. v. Information Storage Devices Inc., 198 F .3d
1374, 1378 (Fed. Cir. 1999) (quoting North Am. Vaccine, Inc. v. Am.
Cyanamid Co., 7 F.3d 1571, 1579 (Fed. Cir. 1993)). The Examiner admits
the following:
As best understood from a reading of the specification in
view of claims 1 and 2, the "image" is an "image of an
application on a server" which may be downloaded to a target
application server. (e.g., Spec. i-fi-1013, 026) If the claims were
amended to describe the image as being an "image of an
application on a server", then the ambiguity would vanish ....
However, paragraphs 013 and 026 of the specification provide
the missing definition (perhaps) of what the image may be.
Additionally, as best understood, the term "resource"
recited in this portion of claim 2 refers to a resource for which a
license was requested in line 3 of claim 1, from which claim 2
depends. Therefore, as best understood, the "resource" of this
portion of claim 2 is "the requested resource" of line 3 of claim
1.
Ans. 9.
As persuasively argued by Appellants, the Examiner's rejection of
claim 2 appears to be directed, not to the clarity of the claim language, but to
the breadth thereof. App. Br. 12. We agree with Appellants that one of
ordinary skill, having read the Specification, would have readily understood
that the image recited in the claim pertains to an image [of the application
server] obtained from an external resource store for subsequent downloading
to a target application. Spec. i-fi-f 13, 27, 38, 39. Likewise, we agree with
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Appellants that the term "resource" in recited in claim 2 pertains to the
requested resource previously recited in claim 1. Reply Br. 10.
Accordingly, it is supported by sufficient antecedent basis in the claim.
Regarding the rejection of claim 4, we agree with Appellants that the
recitation "a configuration update" would be understood by the ordinarily
skilled artisan as the license server sending the configuration update to the
target application server so as to update the configuration of the application
server. Reply Br. 11 (citing Spec. i-f 40). While we agree with the Examiner
that the disputed claim recitation is broad, and it is not particularly defined
in the cited portion of the Specification, its perceived breadth does not per se
render the claim indefinite. See In re Gardner, 427 F.2d 786, 788 (CCPA
1970) ("Breadth is not indefiniteness."). Accordingly, we do not sustain the
indefiniteness rejection.
DECISION
For the above reasons, we affirm the Examiner's patent ineligibility
rejection of claims 1--4 and 16. However, we reverse the Examiner's
indefiniteness rejection of claims 2--4.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a) (1) (iv).
AFFIRMED
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