Vidarshana Wijethilaka. Bandara

Patent Trials and Appeals Board

Dec 12, 2019

14940875 - (D) (P.T.A.B. Dec. 12, 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.
14/940,875 11/13/2015 Vidarshana Wijethilaka BANDARA 063170.A165 2615
106095 7590 12/12/2019
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
EXAMINER
MANOSKEY, JOSEPH D
ART UNIT PAPER NUMBER
2113
NOTIFICATION DATE DELIVERY MODE
12/12/2019 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):
PTOmail1@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VIDARSHANA WIJETHILAKA BANDARA
____________

Appeal 2018-007963
Application 14/940,875
Technology Center 2100
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU, and
SHARON FENICK, Administrative Patent Judges.

FENICK, Administrative Patent Judge.

DECISION ON APPEAL
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 5–20, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b)(1).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies CA, Inc. as the real party in interest.
Appeal Br. 3.
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Invention
Appellant’s invention relates to “pattern analytics for real-time
detection and prediction of known significant pattern signatures” in
computing systems. Spec. ¶ 1. The invention “provide[s] tools for
accurately predicting catastrophic failures in real-time and alerting a system
administrator with sufficient time to remediate the issue.” Id. ¶ 22.
Exemplary Claim
Claims 1, 10, and 19 are independent. Claim 1, reproduced below, is
exemplary:
1. A method for predicting a significant pattern in real-time, comprising:
identifying a first pattern in a plurality of real-time data;
determining, using a processor, whether the first pattern has
been marked as a known significant pattern by searching for the first
pattern in a library of known significant patterns in a storage;
in response to determining that the first pattern has been
marked as a known significant pattern, determining whether the first
pattern has a causal relationship with a second pattern, the second
pattern also marked as a known significant pattern in the library;
in response to determining that the first pattern has a causal
relationship with the second pattern, determining a strength of the
causal relationship between the first pattern and the second pattern;
based on the strength of the causal relationship, predicting
whether the second pattern will occur; and
in response to predicting that the second pattern will occur:
reading, from the library in the storage, a significance of
the second pattern;
based on the significance of the second pattern,
determining an alert level; and
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alerting a system administrator in real-time that the
second pattern will occur.
Appeal Br. 18 (Claims Appendix).
Rejection on Appeal
The Examiner rejects claims 1–3 and 5–20 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Final Act. 2–3; Ans. 3–6.
ANALYSIS
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. However, the Supreme Court has
long interpreted § 101 to “contain[] an important implicit exception: 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)).
In Alice, the Supreme Court reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012) “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
step in this analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts,” e.g., to an abstract idea. Id.
Concepts determined to be abstract ideas include certain methods of
organizing human activity, such as fundamental economic practices (id. at
219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas
(Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes
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(Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If it is determined that the
claims are directed to a patent-ineligible concept, the second step of the
analysis requires consideration of the elements of the claims “individually
and ‘as an ordered combination’” to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). In
other words, the claims must contain an “inventive concept,” or some
element or combination of elements “sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [abstract idea]
itself.” Id. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under that 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 activity such as fundamental economic practices, or mental
processes) (“Step 2A, Prong 1”); 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)) (“Step 2A, Prong 2”).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then (“Step 2B”) look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 52–56.
The Examiner determines that claims 1–3 and 5–20 recite mental
processes and mathematical concepts, and are thus directed to an abstract
idea. Final Act. 2–4; Ans. 4–6. According to the Examiner, the claimed
steps amount to “collecting information, analyzing it, and displaying certain
results of the collection and analysis” and “can all be performed in the
human mind.” Final Act. 2, 4 (internal quotation marks omitted) (citing
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)); see
also Ans. 4–6. The Examiner further determines that the “processor,”
“library,” “storage,” and “computer program product” recited in the
independent claims are “well-known and conventional/generic computer
equipment for performing well-known and conventional/generic computer
functions,” and that the dependent claims “recite no additional limitation that
would amount to significantly more than the abstract idea.” Final Act. 3; see
also Ans. 5–7.
Appellant argues that the claims are not directed to an abstract idea,
but rather “to the management of a computing system, and improvements in
that technology.” Appeal Br. 13. Specifically, Appellant argues that “‘the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of [computing]’ – here,
the problem of combatting catastrophic failures in the computing system.”
Id. at 11 (brackets in original) (quoting DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Appellant further argues that
“the present claims do more than simply collect, analyze, and display
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information by at least determining a causal relationship and determining the
strength of the causal relationship.” Id. at 13. According to Appellant, the
claims “provide a real benefit, making the system more cost-efficient and
secure” and thus amount to significantly more than an abstract idea. Id. at
15.
Under Step 2A, Prong 1 of the Revised Guidance, we agree with the
Examiner that the claims recite a judicial exception, i.e., an abstract idea.
See Final Act. 2. We agree with the Examiner that the claimed concepts can
be performed in the human mind (see Final Act. 2). Accordingly, we
determine that the claims recite a mental process.
For example, independent claim 1 recites “identifying a first pattern in
a plurality of real-time data” and “determining, using a processor, whether
the first pattern has been marked as a known significant pattern by searching
for the first pattern in a library of known significant patterns in a storage.”
Under their broadest reasonable interpretation, these “identifying” and
“determining” limitations cover performance of the limitations in the mind,
but for the recitation of generic components. For example, with the
exception of the “processor” language, claim 1 encompasses mentally
identifying a first pattern in real-time data and mentally determining whether
the first pattern has been marked as a known significant pattern, e.g.,
observing a first pattern and visually or manually searching for the first
pattern in a list of known significant patterns.
Claim 1 further recites “in response to determining that the first
pattern has been marked as a known significant pattern, determining whether
the first pattern has a causal relationship with a second pattern, the second
pattern also marked as a known significant pattern in the library,” “in
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response to determining that the first pattern has a causal relationship with
the second pattern, determining a strength of the causal relationship between
the first pattern and the second pattern,” and “based on the strength of the
causal relationship, predicting whether the second pattern will occur.”
Under their broadest reasonable interpretation, these “determining” and
“predicting” limitations cover performance of the limitations in the mind.
That is, nothing in the claim limitations precludes these steps from
practically being performed in the mind. For example, claim 1 encompasses
mentally determining whether the first known pattern has a causal
relationship with a second known pattern; if so, mentally determining a
strength of the causal relationship; and then mentally predicting whether the
second pattern will occur based on the strength of the causal relationship.
Claim 1 further recites “in response to predicting that the second
pattern will occur . . . reading, from the library in the storage, a significance
of the second pattern” and “based on the significance of the second pattern,
determining an alert level.” Under their broadest reasonable interpretation,
these “reading” and “determining” limitations cover performance of the
limitations in the mind. That is, nothing in the claim limitations precludes
these steps from practically being performed in the mind. For example,
claim 1 encompasses mentally reading (e.g., visually observing from a list) a
significance level of the second pattern when it has been predicted that the
second pattern will occur, and then mentally determining an alert level.
Accordingly, these limitations recite a mental process as identified in
the Revised Guidance, and, thus, an abstract idea.
Under Step 2A, Prong 2 of the Revised Guidance, we next look to
whether the claims recite additional elements that integrate the abstract idea
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into a practical application. We determine that they do not. For example,
claim 1 additionally recites “alerting a system administrator in real-time that
the second pattern will occur.” This “alerting” step is recited at a high level
of generality (i.e., as a general means of informing personnel that the second
pattern will occur) and amounts to insignificant extra-solution activity. See
Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(g).
Independent claims 1, 10, and 19 recite elements such as “processor,”
“computer,” “non-transitory computer-readable storage medium,”
“computer-readable instructions,” “computer program product,” and
“computer-readable program code” for performing the recited steps. The
claims also recite a “library” in a “storage.” As noted by the Examiner,
these additional elements are recited at a high level of generality, i.e., as
generic components performing generic functions of computer processing
and data storage. See Final Act. 3; Ans. 6–7. Such generic limitations
merely apply the abstract idea using generic components. See Revised
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(f). The claim limitations do
not include any particular machine that is integral to the claim. See Revised
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(b).
Although Appellant argues that the claimed invention “is necessarily
rooted in computer technology” and “directed specifically to the
management of a computing system, and improvements in that technology,”
we disagree that pattern prediction is uniquely limited to computer
technology or that the claims reflect an improvement in a technical field.
See Appeal Br. 11, 13. For example, notwithstanding Appellant’s argument
that the claimed invention “improves the computing system by decreasing
the number of future failures in the system,” the claims “do not require an
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arguably inventive set of components or methods, such as measurement
devices or techniques, that would generate new data. They do not invoke
any assertedly inventive programming.” Id. at 11; Elec. Power Grp., 830
F.3d at 1355. That is, the claims do not recite a technological improvement
in addition to the abstract idea. We agree with the Examiner that the claim
limitations do not reflect an improvement in computer functionality itself, or
to any other technology or technical field. See Ans. 6–7; Revised Guidance,
84 Fed. Reg. at 55; MPEP § 2106.05(a).
Thus, even in combination, the additional limitations do not integrate
the abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea.
Accordingly, we agree with the Examiner that the claims are directed
to an abstract idea.
Under Step 2B of the Revised Guidance, we agree with the Examiner
that the additional elements recited in independent claims 1, 10, and 19 (e.g.,
processor, computer, non-transitory computer-readable storage medium,
computer-readable instructions, computer program product, computer-
readable program code, library, and storage) are mere recitations of generic
computer structures performing generic computer functions that are
well-understood, routine, and conventional and thus do not amount to
significantly more than the abstract idea. See Final Act. 2–3; MPEP
§ 2106.05(d). As discussed above, those additional elements amount to no
more than mere instructions to apply the abstract idea using generic
computer components. Mere instructions to apply an abstract idea on a
generic computer do not provide an inventive concept. Alice, 573 U.S. at
223–24.
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Appellant argues that the Examiner’s rejection is not adequately
supported in accordance with the PTO’s April 19, 2018 memorandum,
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)”
(“Berkheimer Memo”), which clarifies that an examiner’s conclusion that an
element represents well-understood, routine, conventional activity must be
based upon a factual determination supported in writing. Reply Br. 2–4.2
Although Appellant makes this assertion “at least with respect to Claims 2–
3, 5–9, and 11–18” (id. at 2), the Examiner’s determination that these claims
“recite no additional limitation that would amount to significantly more than
the abstract idea” is based on the same finding that the additional elements
of claims 1, 10, and 19 are well-understood, routine, and conventional. See
Final Act. 3; Ans. 5.
The Examiner determines, in addressing independent claims 1, 10,
and 19, that “[t]he additional elements, a processor, library, a storage, and a
computer program product are well-known and conventional/generic
computer equipment for performing well-known and conventional/generic
computer functions.” Final Act. 2–3. The Specification discloses that
“computer program instructions may be provided to a processor of a general
purpose computer, special purpose computer, or other programmable data
processing apparatus” (Spec. ¶ 16) and lists several programming languages
in which the computer program code may be written (id. ¶ 15). The

2 Appellant raises this argument for the first time in the Reply Brief.
Because the Berkheimer Memo was published after the date of the Appeal
Brief (February 20, 2018), we recognize that Appellant could not have raised
this argument in the Appeal Brief. Thus, “good cause” exists and
Appellant’s new argument is considered. See 37 C.F.R. § 41.41(b)(2).
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Specification further discloses that “[a]ny combination of one or more
computer readable media may be utilized” and lists various examples of
storage media for the library. Id. ¶ 13. We determine that the disclosure of
the Specification supports, and we thus find no error in, the Examiner’s
determination that the additional elements recited in claims 1–3 and 5–20 are
well-understood, routine, and conventional. Furthermore, Appellant has not
shown that the claims add any specific limitation beyond the judicial
exception that is not well-understood, routine, and conventional in the field.
Reevaluating under Step 2B the extra-solution activity identified in
the Step 2A analysis of “alerting a system administrator in real-time that the
second pattern will occur” (see Revised Guidance, 84 Fed. Reg. at 56
(stating that a conclusion under revised Step 2A that an additional element is
insignificant extra-solution activity should be reevaluated in Step 2B)), we
find nothing unconventional in this step of notifying personnel that a
predicted pattern will occur.
We are unpersuaded by Appellant’s argument that the steps including
“determining whether the first pattern has a causal relationship with a second
pattern,” “determining a strength of the causal relationship between the first
pattern and the second pattern,” and “predicting whether the second pattern
will occur” amount to significantly more than an abstract idea because they
“provide a real benefit, making the system more cost-efficient and secure.”
Appeal Br. 14–15; see also id. at 12–13. As discussed above, we find that
those limitations recite a mental process, i.e., an abstract idea, without a
technological improvement. Appellant provides no evidence of how the
ordered combination is unconventional or amounts to significantly more
than the abstract idea to which the claims are otherwise directed.
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Accordingly, considering the claim elements individually and as an
ordered combination, we agree with the Examiner that there are no
meaningful claim limitations that represent sufficiently inventive concepts to
transform the nature of the claims into a patent-eligible application of the
abstract idea.
Finally, Appellant contends that, during a telephonic interview
between Appellant and the Examiner, “it became clear that the Examiner did
not believe that any software was patent eligible.” Appeal Br. 10. The
substance of that discussion is not at issue here; we are unpersuaded that
“the Examiner applied the wrong law concerning patent eligibility.” See id.
(citing MPEP § 2106.04(a)). As discussed above, we agree with the
Examiner that the claims are directed to an abstract idea without
significantly more than the abstract idea itself.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–3 and 5–20 under 35 U.S.C. § 101.
CONCLUSION
The Examiner’s rejection of claims 1–3 and 5–20 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)(1)(iv).

Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–20 § 101 Eligibility 1–3, 5–20

AFFIRMED