Steve Rabin

Patent Trials and Appeals Board

Oct 17, 2019

14288747 - (D) (P.T.A.B. Oct. 17, 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.
14/288,747 05/28/2014 Steve RABIN 723-3985 6544
27562 7590 10/17/2019
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
MASKULINSKI, MICHAEL C
ART UNIT PAPER NUMBER
2113
NOTIFICATION DATE DELIVERY MODE
10/17/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEVE RABIN
____________________

Appeal 2018-008794
Application 14/288,7471
Technology Center 2100
____________________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–14, 16–19, 22, and 26–28, which are all of the
claims pending in this application. Appellant canceled claims 15, 20, 21, and
23–25. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Nintendo Co.,
Ltd. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention is directed generally to
detecting anomalies in an executing software program, such as a video game
or simulation. Spec. ¶ 24.
Claims 1, 5, 11, and 16 are independent claims. Claim 1 is illustrative
of the subject matter on appeal and reads as follows (with format changes
and paragraph lettering added):
1. A system for detecting anomalous execution in a
program, comprising:
[a] a processing system having at least one processor
and at least one memory, the processing system configured to:
[b] obtain program execution data of a running
program, running on an information processing device
operatively coupled to the system, to identify aspects of function
execution, the program execution data stored in a memory of the
information processing device;
[c] identify one or more patterns of execution for one
or more functions executing in the running program;
[d] generate a score associated with the one or more
patterns of execution for the one or more functions;
[e] identify a type of anomaly, from one or more
anomaly classifications stored in the memory of the processing
system, based on, at least in part, the score associated with the
one or more patterns of execution for the one or more functions;
and
[f] generate a display showing function execution over
time including a graphical display of at least the identified type
of anomaly.
Appeal Br. 23 (Claims App.).

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Rejection on Appeal
Claims 1–14, 16–19, 22, and 26–28 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final 2–4.

ANALYSIS
I. Section 101 Rejection
A. Applicable Law
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 an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
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.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] 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, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “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
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concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim (1) recites one of the abstract ideas listed in the Revised Guidance
(“Prong One”) and (2) fails to integrate the recited abstract idea into a
practical application (“Prong Two”). See Revised Guidance, 84 Fed. Reg. at
51, 54. If the claim is directed to an abstract idea, as noted above, we then
determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we first analyze whether claim 1 is
directed to an abstract idea.2
B. Abstract Idea
The Examiner finds that the claims are directed to an abstract idea.
Final 2–3. In particular, the Examiner finds the claims “is/are directed to an
idea itself of collecting data from a running program, analyzing the data to
identify anomalies, and displaying certain results of the collection and

2 Appellant argues all the pending claims (hereinafter “the claims”)
together. See Appeal Br. 11–21.
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analysis.” Id. The Examiner explains that, similarly, “the concept of
collecting information, analyzing the collected information, and displaying
certain results of the collection and analysis . . . were found to be abstract”
by the Federal Circuit. Id. (citing Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353–54 (Fed. Cir. 2016), see also id. at 3 (“The abstract idea of
the instant application is substantially similar to the court identified abstract
idea found in [Elec. Power Grp.]). The Examiner also finds that although the
claims recite a computer, “[t]he computer acts as a tool and there is no
improvement in the operation of the computer.” Ans. 5. The Examiner
further finds that “[a]ny improvement to the software is performed mentally
by a developer and is . . . an abstract idea” (id. at 6) and “that scoring or
weighting is a common way of analyzing data” that “Appellant fails to show
. . . is a ‘technical means for performing the functions’” (id. at 6–7, citing
Appeal Br. 15–16).
Appellant contends that the claims as a whole are not directed to an
abstract idea, but are instead “are specifically directed to an improvement in
‘computer functionality’” by “analyzing program execution data from a
running program to identify a type of anomaly (e.g., from a predefined set of
anomalies stored in a memory of the system) in the running program.” Reply
Br. 2–3; Appeal Br. 12–13. Appellant further contends that “the claims are
directed to improving the functionality of software (for example, a video
game program) executing on hardware of a computer” because they “can
detect different anomalies occurring during execution of a running program
(which executes thousands upon thousands of functions)” and, thus, “aid a
software developer in identifying and fixing problems in the code . . . in
order to . . . optimize program performance or find bugs or other problems in
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the code.” Reply Br. 3 (emphasis omitted).3 Appellant additionally asserts
that because the claimed “features specifically describe how a type of
anomaly is identified from an executing program (e.g., using scores
associated with one or more patterns of execution),” the claims are “similar
to the claims at issue in Finjan” by ‘recit[ing] more than a mere result’ and
includ[ing] the specific steps for accomplishing the desired result.” Appeal
Br. 16 (citing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed.
Cir. 2018)).
1. USPTO Step 2A, Prong One
Beginning with prong one of the first step of Alice, we must determine
“whether the claims at issue are directed to one of those patent-ineligible
concepts,” including the abstract ideas enumerated in the Revised Guidance.
Alice, 573 U.S. at 217. One of the subject matter groupings identified as an
abstract idea in the Revised Guidance is “mental processes—concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).” See Revised Guidance, 84 Fed. Reg. at 52, 53. The
Revised Guidance explains that “mental processes” include acts that people
can perform in their minds or using pen and paper, even if the claim recites
that a generic computer component performs the acts. See Revised
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of

3 See also id. at 5 (stating that the claimed “technology specifically improves
software profiling systems and thus is a direct improvement to a specific
type of technology” and that it “enable[s] a developer to improve the
software by optimizing the code and/or finding bugs and thus also
improve[s] the functioning of a running program executing on hardware.”);
Appeal Br. 13.
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generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”)
Limitations [c]–[e] of claim 1 recite steps that “identify one or more
patterns . . . of execution for one or more functions executing in the running
program . . . ; generate a score associated with the one or more patterns of
execution for the one or more functions . . . ; and identify a type of anomaly,
from one or more [stored] anomaly classifications . . . based on, at least in
part, the score.” These limitations recite the concept of identifying types of
anomalies based on a score generated from an identified data pattern—i.e.,
evaluation that could be performed in the human mind or with pen and
paper. Accordingly, consistent with our Office Guidance and case law, we
determine that limitations [c]–[e] of claim 1 recite a mental process and,
thus, an abstract idea. See Revised Guidance, 84 Fed. Reg. at 52; see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371–72
(Fed. Cir. 2011) (concluding claims directed to “detecting credit card fraud
based on information relating to past transactions” can be performed in the
human mind and were drawn to a patent-ineligible mental process);
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (concluding claims directed to “collecting and analyzing
information to detect misuse and notifying a user when misuse is detected”
to be mental processes within the abstract-idea category).
In view of the foregoing, we determine that claim 1 recites an abstract
idea in the “mental processes” grouping, pursuant to the Revised Guidance.
See Revised Guidance, 84 Fed. Reg. at 52. Thus, we determine that claim 1
recites an abstract idea.
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2. USPTO Step 2A, Prong Two
Because we determine that claim 1 recites an abstract idea, we turn to
prong two of the first step of the Alice analysis and consider whether claim 1
integrates this abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether there are any
additional elements beyond the abstract idea that, individually or in
combination, “integrate the [abstract idea] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.”4 Id. at 54–55. The Revised Guidance identifies several
exemplary considerations for when a claim may recite an additional element
(or combination of elements) such that the judicial exception has been
integrated into a practical application, which we address below. See id. at 55.
One of these considerations is that “[a]n improvement in the functioning of a
computer or other technology or technological field may render a claim
patent eligible at step one of the Alice/Mayo test even if it recites an abstract
idea, law of nature, or natural phenomenon.” Id. at 53; see e.g., McRO, Inc.
v. Bandai Namco Games America Inc., 837 F.3d 1299, 1316 (Fed. Cir.
2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
2016); Core Wireless Licensing, S.A.R.L. v. LG Electronics, Inc., 880 F.3d
1356, 1362 (Fed. Cir. 2018); Finjan, 879 F.3d at 1305.

4 We acknowledge that some of these considerations may be properly
evaluated under step 2 of Alice (step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under step 1 of Alice (step 2A, prong two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55.
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For the reasons that follow, we determine that there are additional
elements5 of claim 1 that integrate the recited abstract idea into a practical
application.
As discussed supra, the Examiner finds that (1) claim 1’s “computer
acts as a tool and there is no improvement in the operation of the computer”
(Ans. 5); (2) “[a]ny improvement to the software is performed mentally by a
developer and is . . . an abstract idea” (id. at 6) that “Appellant fails to show”
that the claimed scoring approach “is a ‘technical means for performing the
functions’” (id. at 6–7, citing Appeal Br. 15–16).
We do not agree. Instead, we are persuaded by Appellant’s arguments
that “the claims are directed to improving the functionality of software (for
example, a video game program) executing on hardware of a computer”

5 Limitations (b) and (f) of claim 1 recite steps that “obtain [stored] program
execution data of a running program . . . to identify aspects of function
execution . . . and generate a display showing function execution over time
including a graphical display of at least the identified type of anomaly.” We
note that these limitations recite the type of extra-solution activity (i.e., in
addition to the judicial exception) the courts have determined insufficient to
transform judicially excepted subject matter into a patent-eligible
application. See MPEP § 2106.05(g); 84 Fed. Reg. at 55 n.31; see Bancorp
Servs, L.L.C. v. Sun Life Assur. Co. of Can., 771 F. Supp. 2d 1054, 1066
(E.D. Mo. 2011) aff’d, 687 F.3d at 1266 (Fed. Cir. 2012) (explaining that
“storing, retrieving, and providing data . . . are inconsequential data
gathering and insignificant post solution activity”); Bilski v. Kappos, 561
U.S. 593, 612 (2010) (holding the use of well-known techniques to establish
inputs to the abstract idea as extra-solution activity that fails to make the
underlying concept patent eligible); Elec. Power Grp., 830 F.3d at 1355
(explaining that “selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes”).

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because they “can detect different anomalies occurring during execution of a
running program” and, thus “aid a software developer in identifying and
fixing problems in the code . . . in order to . . . optimize program
performance or find bugs or other problems in the code.” Reply Br. 3
(emphasis omitted); accord id. at 5; Appeal Br. 13. This improvement is
captured in claim 1’s recitation of a system configured to perform specific
anomaly-identifying steps on “functions executing in a program running on
an information processing device operatively coupled to the system.”
Although the primary goal of the claim here is functional, “[m]uch of the
advancement made in computer technology consists of improvements to
software that, by their very nature, may not be defined by particular physical
features but rather by logical structures and processes.” Trading Techs. Int’l
Inc. v. CQG, Inc., 675 Fed. App’x. 1001, 1005 (Fed. Cir. 2017) (quoting
Enfish, 822 F.3d at 1339). The Specification also lends support with its
disclosure of a new software profiler that improves upon conventional
profilers’ ability to identify and classify anomalous behavior, thereby aiding
software developers in “optimizing the program’s performance or finding
bugs or other problems,” such as “problematic parts of the software that are
disrupting the simulation or video frame rate by . . . momentarily taking too
much time or otherwise disrupt[ing] the execution of other processes.” Spec.
¶¶ 22–23.
We also agree with Appellant that claim 1, like the patent-eligible
claims in Finjan, realizes an improvement in computer functionality by
reciting specific steps that accomplish a result. Appeal Br. 16 (citing Finjan,
879 F.3d at 1305). In Finjan, the claims recited an improved virus scanner
that recited specific steps for generating a security profile that identifies
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suspicious code and linking it to a downloadable. Finjan, 879 F.3d at 1305.
Likewise, Appellant’s claim 1 recites an improved software profiler that
recites specific steps for identifying a type of anomaly using scores
generated from patterns of execution identified in a program. Furthermore,
Appellant’s Specification explains in detail how these specific steps may be
performed. See, e.g., Spec. ¶¶ 25, 35–37, 40, 43, 46, 48, 49, 50, 54, 59, 63,
66; Figs. 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18, 19. For example, one pattern
that may be identified in a program is a rare function execution, which is
exhibited by non-periodic behavior. See Spec. ¶ 40; Fig. 3 (Rare Example
Function 1 shows a function occurring in frames 1 and 5, but not during
frames 2–4). In detecting rare function execution, sampled duration times
may be merged into clusters by combining durations within T time of each
other. Spec. ¶ 43. Next, all clusters below a certain execution time threshold
may be discarded, and if the number of cluster durations is less than a certain
threshold count, the process continues to test the function as a possible rare
function. Id. If the total execution time of the function is below a threshold
value, then the function may be considered rare and scored by summing the
square of each cluster’s actual execution time. Id. Subsequently, all rare
functions may be sorted from high score to low score and displayed to a user
(e.g., a software developer). See id.; Fig. 4.
In view of the foregoing, we determine the recited judicial exception
is integrated into a practical application such that the claim, as a whole, is
not directed to the judicial exception. Because we conclude claim 1 is not
directed to a judicial exception, and thus is patent-eligible, this ends the
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patent-eligibility inquiry under the Revised Guidance, and we need not
proceed to the Step 2B analysis.
3. Conclusion
Thus, we do not sustain the Examiner’s rejection of claim 1, and
dependent claims 2–4, 26, and 28 under 35 U.S.C. § 101. For the same
reasons, we do not sustain the Examiner’s rejection of claims 5, 11, and 16,
and claims 6–10, 12–14, 17–19, 22, and 27 that depend from either claim 5,
11, or 16, under 35 U.S.C. § 101.

CONCLUSION
We reverse the Examiner’s rejection of claims 1–14, 16–19, 22, and
26–28 under 35 U.S.C. § 101.

In summary:
Claims
Rejected
35 U.S.C. §  Basis Affirmed Reversed
1–14, 16–19, 22,
and 26–28
101  Eligibility 1–14,
16–19,
22, and
26–28
Overall
Outcome
1–14,
16–19,
22, and
26–28

REVERSED