Ex Parte Vondrak et al

Patent Trial and Appeal Board

Sep 24, 2018

13456800 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/456,800
146568 7590
Entit Software LLC
500 Westover Drive
#12603
Sanford, NC 27330
FILING DATE FIRST NAMED INVENTOR
04/26/2012 Jakub Vondrak
09/26/2018
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.
82963084 4232
EXAMINER
SIL VER, DAVID
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAKUB VONDRAK, JIRI SOFKA, and JIRI TEJKL
Appeal 2017-011398
Application 13/456,800
Technology Center 2100
Before: JOHN A. EV ANS, JOYCE CRAIG, and SCOTT E. BAIN,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-18 and 20, all pending claims. 1
App. Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM. 2
1 Appellants states that Hewlett Packard Enterprise Development, LP is the
real party in interest. App. Br. 3.
2 Rather than reiterate the arguments of the Appellants and the Examiner,
we refer to the Appeal Brief (filed March 23, 2017, "App. Br."), the Reply
Brief (filed September 8, 2017, "Reply Br."), the Examiner's Answer
(mailed July 12, 2017, "Ans."), the Final Action (mailed September 23,
Appeal 2017-011398
Application 13/456,800
STATEMENT OF THE CASE
The claims relate to a method and system to generate a stateful
simulation program. See Abstract.
INVENTION
Claims 1, 7, and 12 are independent. Illustrative claim 1 is
reproduced below:
1. A method for generating a stateful simulation program,
compnsmg:
utilizing a processor to execute instructions on a non-
transitory computer readable medium for:
arranging a number of recorded request-response
pairs in a sequence order to generate a number of tracks;
assigning a state to each of the number of request-
response pairs;
calculating a cost for each state based on a number
of client requests, wherein the cost indicates how each
state corresponds with the number of client requests, and
wherein calculating the cost for each state includes
determining that a transition between a first request-
response pair of the sequence order and a second request-
response pair of the sequence order occurred; and
generating the stateful simulation program based
on a selected state with a desired cost, wherein the
stateful simulation program simulates stateful behavior of
an individual program of a composite application,
performance testing of the composite application
occurring using the stateful simulation program within
2016, "Final Act."), and the Specification (filed April 26, 2012, "Spec.") for
their respective details.
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Appeal 2017-011398
Application 13/456,800
the composite application instead of the individual
program.
Rejections3
Claims 1-18 and 20 stand rejected under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 3--4.
ANALYSIS
We have reviewed the rejections of claims 1-18 and 20 in light of
Appellants' arguments that the Examiner erred. We have considered in this
Decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv). We
are not persuaded that Appellants identify reversible error.
Upon consideration of the arguments presented in the Appeal Brief
and the Reply Brief, we agree with the Examiner that all the pending claims
are unpatentable under 35 U.S.C. § 101. We adopt as our own the findings
and reasons set forth in the rejections from which this appeal is taken and in
the Examiner's Answer, to the extent consistent with our analysis below.
We provide the following explanation to highlight and address specific
arguments and findings primarily for emphasis. We consider Appellants'
arguments seriatim, as they are presented in the Appeal Brief, pages 11-16.
CLAIMS 1-18 AND 20: ABSTRACT IDEA.
3 The rejection of Claims 1-18 and 20 under 35 U.S.C. § 112 (see Final Act.
4--5) is not cited or addressed in the Examiner's Answer. We therefore, treat
the rejection as having been withdrawn. See Ex Parte Emm, 118 USPQ 180
(Bd. App. 1957).
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Application 13/456,800
35 u.s.c. § 101
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 3 5 U.S. C. § 101. The Supreme Court has
long recognized, however, that 35 U.S.C. § 101 implicitly excludes "laws of
nature, natural phenomena, and abstract ideas" from the realm of patent-
eligible subject matter, as monopolization of these "basic tools of scientific
and technological work" would stifle the very innovation that the patent
system aims to promote. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S.Ct. 2107, 2116 (2013)); see also Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-77 (2012); Diamond v.
Diehr, 450 U.S. 175, 185 (1981).
Alice Step 1
The Supreme Court has instructed us to use a two-step framework to
"distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S.Ct. at 2355. At the first step, we determine whether
the claims at issue are "directed to" a patent-ineligible concept. Id.
The Examiner finds independent claim 1 and its dependent claims are
directed to the abstract idea of request-response simulation; independent
claim 7 and its dependent claims are directed to the abstract idea of
determining the costs of requests; and independent claim 12 and its
dependent claims are directed to a combination of the two prior abstract
ideas. Final Act. 3.
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Appeal 2017-011398
Application 13/456,800
Appellants contend the claimed "cost" refers not to a financial cost, an
abstract idea, but rather, to a technical feature, e.g., "a cost is calculated for
each state based on a current request and previous state" and "[t]he cost can
indicate how each state corresponds with received request(s)." App. Br. 11
( citing Spec. ,r 20).
Appellants argue the independent claims recite specific ways of
generating a stateful simulation program including specific steps and
features. Id. at 12. Appellants argue that, contrary to Enfzsh, 4 the Examiner
has over-generalized the claims and has characterized them untethered from
the claimed language. Id.
The Examiner finds the claims perform the purely mathematical
function of cost calculation where the cost is non-monetary or resource-
based. Ans. 4. (citing Spec. ,r 20) ("[Cost is calculated for each state based
on a current request and previous state. The cost can indicate how each state
corresponds with received request(s)").
Appellants argue that "cost" is not an abstract concept
because claim 1 specifically recites that the cost is calculated based on "a
number of client requests" and that calculating the cost for each state
includes "determining that a transition between a first request-response pair
of the sequence order and a second request-response pair of the sequence
order occurred." Reply Br. 6.
Appellants' arguments do not persuade us that a cost, calculated in
state transitions, is any less abstract than a cost, calculated in dollars. We,
4 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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Application 13/456,800
therefore, agree with the Examiner the claims are directed to an abstract
idea, and we proceed to step 2 of the Alice analysis.
Alice Step 2
Where, as here, the claims are found to be "directed to" a patent-
ineligible concept, we then "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." Alice, 134 S.Ct. at 2355 (quoting Mayo, 566 U.S. at 80). This
analysis has been characterized as the search for an "inventive concept"-
something sufficient to ensure that the claim amounts to "significantly
more" than the abstract idea itself. Id. ( quoting Mayo, 566 U.S. at 72).
Appellants contend, as in Enfzsh, the claims as a whole recites
improvements in computer functionality. Reply. Br. 7. Appellants argue the
independent claims "recite specific, inventive, unconventional features and
steps that provide an improvement in the system for simulating and testing
the performance of applications." Id. We disagree.
Claim 1 recites, inter alia, "arranging a number of recorded request-
response pairs in a sequence order," "assigning a state to each of the number
of request-response pairs," "calculating a cost for each state," and
"generating the stateful simulation program based on a selected state with a
desired cost." Each claimed step is one that could be performed mentally, or
with the aid of paper and pencil. "Application of [only] human intelligence
to the solution of practical problems is no more than a claim to a
fundamental principle." CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1371 (Fed. Cir. 2011). Accordingly, we are not persuaded the
Examiner erred as to step 2 of Alice.
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Application 13/456,800
DECISION
The rejection of claims 1-18 and 20 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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