Ex Parte van den Bosch et al

Patent Trials and Appeals Board

Mar 4, 2019

14483922 - (D) (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/483,922 09/11/2014
59978 7590 03/06/2019
Chiesa Shahinian & Giantomasi PC (NOKIA)
Attn: Jeffrey M. Weinick
One Boland Drive
West Orange, NJ 07052
FIRST NAMED INVENTOR
Sven Jozef Jeanne van den Bosch
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.
120619-US-CNT 3617
EXAMINER
MILLS, DONALD L
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
03/06/2019 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):
patent@csglaw.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SVEN JOZEF JEANNE van den BOSCH, GERT van HOEY,
PALOMA de la VALLEE-POUSSIN, and NATALIE MARIA CORNELIA
DeGRANDE 1
Appeal2018-005761
Application 14/483,922
Technology Center 2400
Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 11-30. Claims 1-10 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Nokia Corporation as the real party in interest, as a
result of (i) an assignment from the inventors to Alcatel Lucent; and (ii) a
merger of Nokia and Alcatel Lucent (App. Br. 1 ).
Appeal 2018-005761
Application 14/483,922
STATEMENT OF THE CASE
Appellants' invention relates to a "NETWORK MANAGEMENT
SYSTEM, NETWORK, METHOD AND COMPUTER PROGRAM
PRODUCT" (Title). More particularly, Appellants' disclosed and claimed
invention pertains to a network management system for managing traffic
signals in a network made up of nodes/links with the help of a calculator
(Fig. 1, 110), comparator (Fig. 1, 114), and selector (Fig. 1, 113) to select a
solution for transporting traffic signals from a source node ( e.g., node A) to
a destination node (e.g., node G) (Abstract; Spec. 1:4--13; Figs. 1, 2; claims
11, 21, 26, 29).
Claims 11, 21, 26, and 29 are the independent claims on appeal.
Claim 11, reproduced below, is illustrative of the subject matter on appeal
( emphases added):
11. A network management system for managing traffic
signals in a network comprising nodes/links, comprising:
a calculator for calculating solutions for each of a
plurality of situations, each of the solutions defining a path in a
network for transporting traffic signals from a source node to a
destination node via intermediate nodes/links;
a comparator for:
comparing solutions of a same situation with each
other based on a number of amendments of the path of one
solution of the same situation required to transition the one
solution of the same situation to another solution of the same
situation, and
comparing solutions of different situations with
each other based on a number of amendments of the path of one
solution of the different situations required to transition the one
solution of the different situations to another solution of the
different situations; and
a selector for selecting one of the solutions for
transporting the traffic signals from the source node to the
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destination node for each of the plurality of situations based on
the comparing solutions of the same situation and the comparing
solutions of different situations, wherein the traffic signals are
transported based on the selected solutions.
REJECTION2
Claims 11-30 are rejected under 35 U.S.C. § 101 as directed to patent
ineligible subject matter. Final Act. 2-3; Ans. 3-5.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 573 U.S. 208,216 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
2 In light of the terminal disclaimer approved on September 5, 2017, we
consider the non-statutory obviousness-type double-patenting rejection of
claims 11, 12, 16, 19-21, and 26-29 over claims 1 and 4 of U.S. Patent No.
8,868,714 to have been withdrawn (see Ans. 2-3; see also App. Br. 12).
Therefore, we do not reach the merits or otherwise review this rejection in
our decision.
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 75-77). In
accordance with that framework, we first determine what concept the claim
is "directed to." See id. at 219 ("On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk .... ").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
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said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment."
Id. ( citation omitted) ( citing Benson and Flook); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine 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." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (hereinafter,
"Memorandum"). Under that guidance, we first determine whether the
claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, mental processes, or certain methods of
organizing human activity such as a fundamental economic practice or
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managing personal behavior or relationships or interactions between people)
(hereinafter, "Step 1 of the Memorandum"); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure ("MPEP")
§§ 2106.05(a}-(c), (e}-(h)) (hereinafter, "Step 2 of the Memorandum"). 3
Memorandum, 84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.
Memorandum, at 54. When the judicial exception is so integrated, then the
claim is not directed to a judicial exception and is patent eligible under
§ 101. Id.
Only if a claim: (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. Memorandum, at 56;
Alice, 573 U.S. at 217-18. For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)) (hereinafter, "Step 3 of the Memorandum"); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception (hereinafter, "Step 4 of the
Memorandum"). Memorandum, at 56.
3 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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Step 1 of the Memorandum -Judicial Exception/Abstract Idea
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
2. Mental processes- concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
3. Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions
between people (including social activities, teaching, and
following rules or instructions).
According to the Memorandum, "claims that do not recite [subject]
matter that falls within these enumerated groupings of abstract ideas should
not be treated as reciting abstract ideas," except in rare circumstances. Even
if the claims recite any one of these three groupings of abstract ideas, these
claims are still not "directed to" a judicial exception (abstract idea), and thus
are patent eligible, if "the claim as a whole integrates the recited judicial
exception into a practical application of that Uudicial] exception." See
Memorandum, at 53.
Under the Memorandum, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
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enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 1 of the Memorandum. This determination concludes the
eligibility analysis, except in situations identified in the Memorandum. 4
Step 2 of the Memorandum - Practical Application
If a claim recites a judicial exception in Step 1 of the Memorandum,
we determine whether the recited judicial exception is integrated into a
practical application of that exception in Step 2 of the Memorandum by: (a)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception( s ); and (b) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.
"[I]ntegration into a practical application" requires an additional
element or a combination of additional elements in the claim to apply, rely
on, or use the judicial exception in a manner that imposes a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the exception. See Memorandum, at 54.
The seven identified "practical application" sections of the MPEP, 5
cited in the Memorandum under Step 2 of the Memorandum, are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
4 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
the Guidance for analyzing the claim should be followed. See
Memorandum, Section III.C.
5 See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer to
revision [R-08.2017].
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(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05([) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Steps 3 and 4 of the
Memorandum.
ANALYSIS
Step 1 o(the Memorandum-Judicial Exception/Abstract Idea
In the instant case before us, the Examiner finds the claims (i) recite
limitations drawn to "mathematical operations" such as calculating,
comparing, and selecting solutions (Final Act. 3; Ans. 4); and (ii) are
directed to the abstract idea of "mathematical relationships/formulas" (Final
Act. 2; Ans. 4) and "mathematical calculation" (Ans. 4), and not to an
improvement to computer systems.
Step 2 of the Memorandum - Practical Application
For the reasons given below, we are persuaded that, even if claims
11-30 recite an abstract idea (mathematical concepts/formulae/calculations),
the claims recite additional elements that integrate the judicial exception into
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a practical application, and are, therefore, directed to patent-eligible subject
matter.
In the instant case on appeal, claim 11 recites a network management
system for managing traffic in a network of nodes/links by (i) calculating
and comparing solutions for routing traffic signals in the network of
nodes/links; (ii) selecting one of the solutions for transporting the traffic
signals from a source node to a destination node in the network based on the
compared solutions; and then (iii) transporting the traffic signals based on
the selected solution.
Claim 11 recites the additional elements of "a network" having
"nodes/links," "a calculator," "a comparator," and "a selector." Considering
the claim as a whole, the "selector" applies or uses the abstract idea in a
meaningful way such that the claim as a whole is more than a drafting effort
designed to monopolize the exception. The selector, taken in combination
with the calculator and comparator, operates to transport traffic signals from
the source node to the destination node more efficiently based on the
comparisons and calculations made by the comparator and calculator. The
last clause in particular, "wherein the traffic signals are transported based on
the selected solutions" ( claim 11 ), provides a technological improvement
and integrates the abstract idea into a practical application. The claims here
specify how interactions within a specifically claimed network are
manipulated through the selection of solutions to cause signals to be rerouted
through an existing connection of nodes in a different manner, similar to the
claims found eligible in DDR Holdings v. Hotels.com. DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014) (finding patent
eligible claims that "specify how interactions with the Internet are
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manipulated to yield a desired result - a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink").
Claims 21, 26, and 29 recite similar calculating, comparing, and
selecting limitations, including the same "wherein" clause as recited in claim
11 ("wherein the traffic signals are transported based on the selected
solutions").
We conclude that even if the claims are directed to mathematical
relationships/formulas/calculations, and therefore directed to an abstract
idea, claims 11, 21, 26, and 29 integrate such an idea into a practical
application. In particular, claims 11, 21, 26, and 29 recite elements/steps
that allow for the selection of traffic signal solutions that solve traffic
engineering problems by taking into account dependencies between traffic
engineering problems. Our reviewing court has held that claims which
recite rules that allow automation of animation tasks that could only be
performed manually were not directed to an abstract idea. See McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313-14 (Fed. Cir. 2016);
see also MPEP 2106.015(a). Like McRO, the claims here improve an
existing technology ( e.g., network management systems, methods, and
computer program products) and are, therefore, not directed to an abstract
idea.
In this light, we agree with Appellants' contentions that claims 11-30
provide an improvement in computer related technology (App. Br. 9) by
providing "an improved network management system for determining a path
for transporting traffic signals through the network in an unconventional
manner by taking into account the dependencies between traffic engineering
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problems when determining a path in a network, unlike conventional
systems" (App. Br. 9). Similarly, we agree with Appellants' contentions that
(i) the claims "are directed towards an improved network management
system for transporting traffic signals through a network" (Reply Br. 2); and
(ii):
Advantageously, claims 11-30 provide for an improved network
management system that can handle a group of interacting
traffic engineering problems, thereby accounting for the
dependencies between traffic engineering problems.
Specification; page 2, lines 20-22; page 3, lines 20-24. The
improved network management system thus selects an optimized
solution which defines a path in the network for transporting
traffic signals by taking into account dependencies between
traffic engineering problems.
Reply Br. 3.
As a result, under Step 2 of the Memorandum, claims 11-30 provide
improvements to the functioning of computer networks, and more
particularly the technology or technical field of network management. See
MPEP § 2106.0S(a). Because the selector/selection limitation, e.g., in
claims 11, 21, 26, and 29, integrates the judicial exception into a practical
application, we find persuasive Appellants' assertion that the claims are
patent eligible.
This determination (Step 2 of the Memorandum - Practical
Application) concludes the eligibility analysis. Because we conclude that
Appellants' claims include additional elements that integrate the judicial
exception (mathematical concepts) into a practical application (see MPEP
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§ 2106.05(a) discussed above), we do not reach and address Appellants'
arguments pertaining to Steps 3 and 4 of the Memorandum (see App. Br. 9--
12; Reply Br. 3--4).
In view of the foregoing, under the Memorandum, and informed by
our governing case law concerning 35 U.S.C. § 101, the Examiner erred in
concluding claims 11-30 are directed to a judicial exception, i.e., an abstract
idea, without significantly more, and thus are patent-ineligible under§ 101.
Under Step 2 of the Memorandum, we conclude the claims recite additional
elements (namely, the selection of a traffic signal solution wherein traffic
signals are transported through the claimed network based on the selected
solution) that integrate the judicial exception (the abstract idea of
mathematical concepts/formulae/ calculations) into a practical application,
and thus claims 11-30 are patent-eligible.
Accordingly, we cannot sustain the Examiner's§ 101 rejection of
independent claims 11, 21, 26, and 29, as well as the Examiner's rejection of
dependent claims 12-20, 22-25, 27, 28, and 30, which stand or fall with the
independent claims from which they depend.
DECISI0N6
We reverse the Examiner's decision rejecting claims 11-30 under
35 U.S.C. § 101.
6 We have decided the appeal before us. However, should there be further
prosecution of the claims, the Examiner's attention is directed to 35 U.S.C.
§§ 112(a), (b), and (f), for consideration of whether the claims comport with
the requirements therein.
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REVERSED
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