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Patent Trials and Appeals Board

Nov 19, 2019

14482029 - (D) (P.T.A.B. Nov. 19, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/482,029 09/10/2014 Fei Huang C212 1021
152691 7590 11/19/2019
Setter Roche LLP
14694 Orchard Parkway
Building A, Suite 200
Westminster, CO 80023
EXAMINER
CHEUNG, EDDY
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
11/19/2019 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):
ipadmin@vmware.com
uspto@setterroche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FEI HUANG
Appeal 2019-001122
Application 14/482,029
Technology Center 2100
Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–10, 12–16, and 21–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the
Assignee of the present application, VMWARE, INC. Appeal Brief filed
July 9, 2018 (“Appeal Br.”) at 2.
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CLAIMED SUBJECT MATTER
The claims generally recite systems and methods for indexing
attachable applications for computing systems. See Spec., Abstract.
Claim 1, reproduced below with modified formatting, is illustrative of the
claimed subject matter:
1. A method of attaching an application to a computing
system, the method comprising:
[i] in a processing system, identifying an application attach
triggering event for the computing system;
[ii] identifying a storage location for the application based on
the application attach triggering event and an application index,
wherein the storage location defines a location of at least one
storage volume for the application and a location of elements
for the application stored on the at least one storage volume,
wherein the elements comprise at least files and directories;
and[2]
[iii] mounting the at least one storage volume to the
computing system; and
[iv] overlaying the elements for the application from the at
least one storage volume in a file system for the computing
system to make the application executable, such that the
elements appear locally installed on the computing system even
though the elements execute from the at least one storage
volume.
REJECTIONS
Claims 1, 2, 4–10, 12–16, and 21–26 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception to patent-eligible subject matter.
Final Action mailed Dec. 20, 2017 (“Final Act.”) at 4.

2 This instance of the word “and” appears to be superfluous.
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Claims 1, 2, 4–10, 12–16, and 21–26 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Conover (US 2012/0174096 A1, published
July 5, 2012) and Tsaur (US 8,510,271 B1, issued Aug. 13, 2013). Id. at 6.
STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

REJECTION UNDER 35 U.S.C. § 101
I. The Examiner’s Determinations
The Examiner determines that claim 1 is directed to the abstract idea
of “remotely accessing and retrieving user-specified information.” Final
Act. 5. The Examiner determines the claimed “identifying an application
attach triggering event,” “identifying a storage location,” and “mounting”
limitations all relate to the identified abstract idea. Id. The Examiner further
determines “the additional elements are simply a generic recitation of a
computer performing [its] generic computer functions.” Id. We address
Appellant’s arguments in the Analysis section, below.

II. Principles of Law
A. SECTION 101:
Inventions for “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject
matter. 35 U.S.C. § 101. However, the Supreme Court has long
interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of
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nature, natural phenomena, and abstract ideas” are not patentable. E.g.,
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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. Kappos, 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, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (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))).
If the claim is “directed to” an abstract idea, we turn 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
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “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.
B. USPTO SECTION 101 GUIDANCE:
The U.S. Patent and Trademark Office (“PTO”) recently published
revised guidance on the application of § 101. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”), updated by USPTO, October 2019 Update: Subject Matter
Eligibility (available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf).
Under the Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)).
Guidance at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional activity” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
Id. at 56.

II. Step 2A, Prong One (Judicial Exception)
Under step 2A, prong 1, of the Guidance, we first look to whether the
claim recites any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activities such as a fundamental economic practice, or mental processes). Id.
at 52–54.
The Specification explains that an “administration system 710 is
included that allows an administrator or other management process to
dictate the applications that are supplied to computing systems.” Spec. ¶ 48
(emphasis added). “For example, administration system 710 may identify
that a particular application is required to be attached to all computing
systems.” Id.; see also id. ¶ 25 (“An application attach triggering event may
include a user selection of an application to attach.” (emphasis added)).
Once an administrator identifies an application to attach, “administration
system 710 checks application index 715 to identify a location for the
application.” Id. ¶ 48.
We determine claim 1 recites a mental process because claim 1
broadly recites a user selecting an application to attach and a user identifying
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where that application is stored. Specifically, claim 1 recites “[a] method of
attaching an application to a computing system” that recites steps including:
(i) “. . . identifying an application attach triggering event for the computing
system” and (ii) “identifying a storage location for the application based on
the application attach triggering event and an application index, wherein the
storage location defines a location of at least one storage volume for the
application and a location of elements for the application stored on the at
least one storage volume, wherein the elements comprise at least files and
directories.”
As drafted, these limitations, under their broadest reasonable
interpretation, recite a mental process that can be performed in the human
mind or using a pen and paper. See, e.g., CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a
claim whose “steps can be performed in the human mind, or by a human
using a pen and paper” is directed to an unpatentable mental process);
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir.
2015) (“Courts have examined claims that required the use of a computer
and still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.”). In this case, these
limitations encompass acts people can perform using their minds because
people can perform the “identifying an application attach triggering event”
step by mentally picking an application to attach and perform the
“identifying a storage location” step by simply looking at the application
index to identify the storage location.
The Guidance expressly recognizes mental processes as constituting a
patent-ineligible abstract idea. Accordingly, claim 1 recites a judicial
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exception to patent-eligible subject matter under step 2A, prong 1, of the
Guidance.

III. Step 2A, Prong 2 (Integration into a Practical Application)
Under the Guidance, we now must determine if additional elements in
the claims integrate the judicial exception into a practical application.
Guidance at 53–55; MPEP §§ 2106.05(a)–(c), (e)–(h). The Guidance
provides exemplary considerations that are indicative of an additional
element or combination of elements integrating the judicial exception into a
practical application, such as an additional element reflecting an
improvement in the functioning of a computer or an improvement to other
technology or technical field. Id. at 55; MPEP § 2106.05(a).
Appellant contends claim 1 is similar to the claims in Enfish and
McRO because it is “targeted at a specific solution to a software problem . . .
that identifies and mounts volumes to a computing system and overlays the
contents to make applications executable.” Appeal Br. 7 (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
Specifically, Appellant contends that similar to those cases,
the claims are directed at a novel method of identifying a
storage location for an application, mounting the volume
associated with the location to a computing system, and
overlaying elements of the application in a file system for the
computing system. This solution provides a technological
improvement making applications executable without a
traditional installation of the application on the computing
system.
Id. We agree with Appellant.
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Claim 1 recites additional limitations pertinent to solving this
problem, including,
mounting the at least one storage volume to the
computing system; and
overlaying the elements for the application from the at
least one storage volume in a file system for the computing
system to make the application executable, such that the
elements appear locally installed on the computing system even
though the elements execute from the at least one storage
volume.
These additional limitations address a technical problem arising in the
context of virtual machines, namely the problem that
new computing devices or recently provisioned virtual
machines may require the installation of a plurality of
applications. These applications may be located on storage
disks, the internet, install media, such as a compact disk, or any
other installable location. Consequently, if a user or
administrator desires to install all of the applications, time and
resources may be taken away from executing the application to
identify the location and complete the installation process.
Spec. ¶ 3. As explained in the Specification, the claimed solution to this
problem is a technical one. The Specification explains,
Upon [an application] being attached, the registry keys and
other file system elements within the virtual machine may be
updated to make the application executable as though it is
locally installed.
. . . .
. . . In some examples, in making the application
available, the files, directories, and other elements necessary for
the application may be overlaid into the file system of the
computing device. Thus, instead of seeing each application
volume that is attached for applications on the computing
system, the applications may appear as though they have been
installed locally in the Program Files or other similar storage
locations.
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Id. ¶¶ 19, 21. Thus, similar to the claims in Enfish, the claims here “are
directed to a specific implementation of a solution to a problem in the
software arts.” 822 F.3d at 1339.
We conclude these limitations integrate the recited judicial exception
of a mental process into a practical application within the meaning of the
Guidance. Accordingly, under the Guidance, we determine the Examiner
erred in finding the claims ineligible because the claims are not, in fact,
directed to the recited judicial exception. See Guidance at 52–55. Thus, we
need not reach step 2B of the Alice inquiry. We reverse the Examiner’s
rejection of claims 1, 2, 4–10, 12–16, and 21–26 under 35 U.S.C. § 101.

REJECTION UNDER 35 U.S.C. § 103
Appellant contends Conover and Tsaur fail to teach or suggest
“wherein the storage location defines a location of at least one storage
volume for the application and a location of elements for the application
stored on the at least one storage volume,” as recited in claim 1. Appeal
Br. 10.
Appellant contends that in contrast to the above limitation, “Tsaur
merely teaches that ‘Object map 166 lists the names of logical objects stored
on volume 120 (C:) at time T1 and their respective logical addresses, such as
file paths or registry information.’” Id. “In other words,” Appellant
contends, “Tsaur merely teaches mapping the location of objects inside a
storage volume, but does not provide a location of the volume itself for
mounting to a computing system.” Id.
The Examiner finds “Tsaur (Col. 1 lines 48–58) teaches ‘Each storage
volume has a plurality of locations, such as fixed-length data blocks.’”
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Ans. 6; Final Act 9 (also citing Tsaur 1:48–58). The Examiner also finds
“Tsaur (Col. 3 lines 7–13) teaches that the system generates and stores an
application map . . . the application map holds an object address that
describes where the object can be found within a collection of storage
volumes.” Ans. 6–7 (quoting Tsaur 3:7–13); Final Act 9 (citing same).
We agree with the Examiner. Tsaur’s application map “describe[s]
locations of logical objects used by one or more applications” and “describes
where the object can be found within a collection of storage volumes.”
Tsaur 3:7–11. The claim broadly requires the storage location to “define[] a
location of at least one storage volume for the application.” (Emphasis
added.) By disclosing a location within a collection of storage volumes for
an object of the application, Tsaur teaches or suggests defining a location of
at least one storage volume for the application.
Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellant’s arguments regarding the rejection of independent claims 9 and
21 rely on the same arguments as for claim 1, and Appellant does not argue
separate patentability for the dependent claims. See Appeal Br. 11. We
therefore also sustain the Examiner’s rejection of claims 2, 4–10, 12–16, and
21–26. See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 4–10,
12–16, 21–26
101 Subject matter
eligibility
1, 2, 4–
10, 12–
16, 21–26
1, 2, 4–10,
12–16, 21–26
103 Conover, Tsaur 1, 2, 4–
10, 12–
16, 21–26

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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
Overall
Outcome
1, 2, 4–
10, 12–
16, 21–26

Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner 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)(1)(iv).
AFFIRMED