Ex parte Pogrebinsky

• Decision Date: 30 September 2019
• Docket Number: Appeal 2018-007944,Application 14/455,791
• Parties: Ex parte VLADIMIR POGREBINSKY, SATA BUSAYARAT, and JAMEEL A. GBAJABIAMILA Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte VLADIMIR POGREBINSKY, SATA BUSAYARAT, and JAMEEL A. GBAJABIAMILA Technology Center 3600

Appeal 2018-007944

Application 14/455, 791

United States Patent and Trademark Office, Patent Trial and Appeal Board

September 30, 2019

FILING DATE: 08/08/2014

Before JOHN A. JEFFERY, DENISE M. POTHIER, and .JUSTIN BUSCH Administrative Patent Judges.

DECISION ON APPEAL

POTHIER, ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Appellant[^1] [^2] appeals under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 21 22, 24-29, 31-36, and 38-40. Appeal Br. 1. Claims 1-20, 23, 30, and 37 have been canceled. Final Act. 2; Appeal Br. 26, 28, 30 (Claims App'x).

We AFFIRM.

Invention

Appellant's invention relates to a subscription management service that allows subscribers to create their own organizational plans defining how services are offered to sub-organizations. Id. ¶¶ 6, 34-35. In one embodiment, a provider (e.g., 301), such as a datacenter or cloud service administrator, subscribes to a zero-day plan that provides an initial set of cloud services and resources. Id. ¶¶ 24, 42, Fig. 3. The provider may define reseller plans that resellers (e.g., 302) may subscribe to and use. Id. ¶¶ 24, 26, Fig. 3. The reseller plans provide various service configurations, resources, security, authentication, and fee structures available from the provider. Id. ¶ 24. Each reseller, in turn, may define tenant plans offered to tenants (e.g., 303), which are end users, to access desired services of the provider. Id. ¶¶ 26-27, Fig. 3. Similar to the reseller plans, the tenant plans provide various service configurations, resources, security, authentication, and fee structures. Id. ¶ 26. Resellers may track each tenant's use of the desired services and resources for billing. Id. ¶ 26.

Independent claim 28 exemplifies the claims at issue and reads as follows:

28. A method implemented by a computer with a processor in a datacenter, the method comprising:

registering an organizational subscription with a datacenter provider of the datacenter, the organization subscription allowing an organization to consume a set of cloud services provided by the datacenter;

installing applications in the datacenter permitted by the organizational subscription, execution of the installed applications in the datacenter providing additional cloud services accessible only to tenants of the organization;

in response to input from an administrator of the organization, generating data representing multiple customized organization plans with corresponding organizational quotas, the created organization plans individually comprising a subset of the cloud services provided by the datacenter and the additional cloud services consumable by the tenants of the organization according to the corresponding organizational quotas, wherein one or more of the additional cloud services is included in one or more of the organizational plans;

receiving data representing subscription requests from individual tenants of the organization to subscribe to one of the created organizational plans; and

in response to receiving the subscription requests, registering tenant subscriptions that allow the individual tenants to access the corresponding subsets of the cloud services included in the organizational plans; and

tracking and limiting tenant usage of the subsets of the cloud services corresponding to the tenant subscriptions the individual tenants subscribed to, thereby allowing the individual tenants of the organization to utilize one or more of the cloud services provided by the datacenter or the additional cloud services according to the customized organizational plans.

Appeal Br. 27-28 (Claims App'x).

THE SIGNAL PER SE REJECTION

Claim 21 recites a computing system with a computer-readable storage media having instructions that, when executed by one or more processors, cause the processors) to perform steps similar to those in claim 28. Appeal Br. 25-26 (Claims App'x). Independent claim 21 is rejected under 35 U.S.C. § 101 as covering a signal per se. Final Act. 5 (citing the Manual of Patent Examining Procedure (MPEP) § 2111.01 and In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)). Appellant does not contest this rejection and authorizes the Examiner "to insert'non-transitory' prior to 'computer-readable storage media'" recited in claim 21. See Appeal Br. 24. For these reasons, we summarily sustain this rejection. See MPEP § 1205.02; see also Ex parte Frye, 94 U.S.P.Q.2d 1072, 1075 (BPAI 2010) (precedential) ("If an appellant fails to present arguments on a particular issue-or more broadly, on a particular rejection-the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.").

THE PATENT-ELIGIBILITY REJECTION

Claims 21, 22, 24-29, 31-36, and 38-40 are rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. Final Act. 2-4. The Examiner determined that the claims are directed to an abstract idea, namely managing organizational subscription plans, which is a fundamental economic practice. See id. at 2-3; Ans. 4. The Examiner added that the claims do not include additional elements or limitations individually or in combination that are sufficient to amount to significantly more than the judicial exception. Final Act. 3-4; see Ans. 3-6. Based on these determinations, the Examiner concluded that the claims are ineligible under § 101. Final Act. 2-4.

Appellant argues that the claimed invention should not be viewed merely as a fundamental economic practice because the rejection "unreasonably abstracted features . . . and misidentified similar inventive concepts that the court[s] have deemed to be abstract ideas." Appeal Br. 12; see id. at 11-13; Reply Br. 1-3. According to Appellant, the claims recite elements directed to specific improvements in the capabilities of a datacenter providing cloud computing services. Id. at 14-15 (citing Spec. ¶¶ 6, 29-36).

ISSUE

Under § 101, has the Examiner erred in rejecting the claims by determining that the claims are directed to judicially excepted, patent ineligible subject matter?

PRINCIPLES OF LAW

An invention is patent eligible if it claims a "new and useful process, machine, manufacture, or composition of 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 nature, natural phenomena, and abstract ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185(1981)).

In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo w& Alice. Alice Corp Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217-18 (2014) (citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. 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, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding of rubber products" (Diehr, 450 U.S. at 193); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 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."). That said, 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. (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 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 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. (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.

In January 2019, the...