Ex parte Ragupathi

• Decision Date: 23 June 2020
• Docket Number: 900,Application 14/525,Appeal 2019-006908
• Parties: Ex parte DINESH KUNNATHUR RAGUPATHI and AKKIAH CHOUDARY MADDUKURI Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte DINESH KUNNATHUR RAGUPATHI and AKKIAH CHOUDARY MADDUKURI Technology Center 3600

Appeal 2019-006908

Application 14/525, 900

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

June 23, 2020

FILING DATE: 10/28/2014

Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and JOHNNY A. KUMAR, Administrative Patent Judges.

DECISION ON APPEAL

COURTENAY, ADMINISTRATIVE PATENT JUDGE.

Appellant^[1] appeals under 35 U.S.C. § 134(a) from a Final rejection of c la im s 1-21. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).

We affirm.

STATEMENT OF THE CASE ^[2]

Introduction

Appellant's claimed invention relates generally to identifying "excess equipment inventory within a particular information handling system located within an enterprise environment." (Spec. ¶ 4).

Evidence

The prior art relied upon by the Examiner as evidence is:

Name	Reference	Date
Ferreri et al. ("Ferreri")	US 2006/0259376 A1	11/16/06

Rejections

Rej	Claims Rejected	35 U.S.C. §	Reference(s)/Basis
A	1-21	101	Eligibility
B	1-21	103	Ferreri, Official Notice

Rejection A of Claims 1-21 under § 101

USPTO § 101 Guidance

The U.S. Patent and Trademark Office (USPTO) has published revised guidance on the application of 35 U.S.C. § 101. See U S P T O January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("2019 Memorandum").^[3] Under that guidance, we first look to whether the claim recites:

(1)(see 2019 Memorandum Step 2A - Prong One) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and

(2) (see 2019 Memorandum Step 2A - Prong Two) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).^[4]

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:

(3)adds a specific limitation beyond the judicial exception that is not "well-understood, routine conventional" 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

See 2019 Memorandum Step 2B.

Because there is no single definition of an "abstract idea" under Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014) Step 1, the 2019 Memorandum synthesizes, for purposes of clarity, predictability, and consistency, key concepts identified by the courts as abstract ideas to explain that the "abstract idea" exception includes the following three groupings:

1. Mathematical concepts-mathematical relationships mathematical formulas or equations, mathematical calculations

2. Mental processes-concepts performed in the human mind (including an observation, evaluation, judgment, opinion); and

3. Certain methods of organizing human activity-fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).

See 2019 Memorandum, 84 Fed. Reg. At 52.

According to the 2019 Memorandum, "[c]laims that do not recite [subject] matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas," except in rare circumstances. Even if the claims recite any one of these three groupings of abstract ideas, these claims are still not "directed to" a judicial exception (abstract idea), and thus are patent eligible, if "the claim as a whole integrates the recited judicial exception into a practical application of that exception." See 2019 Memorandum, 84 Fed. Reg. at 53.

For example, limitations that are indicative of integration into a practical application include:

1. Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP § 2106.05(a);

2. Applying the judicial exception with, or by use of, a particular machine - see MPEP § 2106.05(b);

3. Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP § 2106.05(c); and

4. Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP § 2106.05(e).

In contrast, limitations that are not indicative of integration into a practical application include:

1. Adding the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP § 2106.05(f);

2. Adding insignificant extra-solution activity to the judicial exception - see MPEP § 2106.05(g); and

3. Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP § 2106.05(h).

See 2019 Memorandum, 84 Fed. Reg. at 54-55 ("Prong Two").

ANALYSIS

2019 Memorandum, Step 2A, Prong One The Judicial Exception

We reproduce infra independent claim 1 in Table One. We have considered all of Appellant's arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below.^[5]

Rejection A of Claims 1-21 under § 101

The Examiner concludes independent claims 1, 7, and 13 recite an abstract idea that "is considered to be a fundamental economic practice or an idea of itself." Final Act. 3. Under the 2019 Memorandum, we begin our analysis by first considering whether the claims recite any judicial exceptions, including certain groupings of abstract ideas, in particular: (a) mathematical concepts, (b) mental steps, and (c) certain methods of organizing human activities.

Appellant contends:

It is respectfully submitted that the claims do not recite matter that falls within one of the enumerated groupings of abstract ideas set forth in the Revised Patent Subject Matter Eligibility Guidance effective January 7, 2019. Specifically, the claims do not per se recite mathematical concepts, methods of organizing human activity or mental processes . . .

Accordingly, the claims should not be treated as reciting an abstract idea and are patent eligible.

Independent Claim 1

In Table One below, we identify in italics the specific claim limitations that we conclude recite an abstract idea. We also identify in bold the additional (non-abstract) claim elements that we find are generic computer components:

TABLE ONE ^[6]

Independent Claim 1	2019 Memorandum
[a]A computer-implemented method for identifying excess equipment inventory within an enterprise environment, the enterprise environment comprising a monolithic server type information handling system and a modular server type information handling system, comprising: [7]
[b] analyzing components within at least one of the monolithic server type information handling system, the components of the monolithic server type information handling system comprising a first fan and a power supply unit, and the modular server type information handling system, the components of the modular server type information handling system comprising a first fan and a power supply unit, the at least one of the monolithic server type information handling system and the module server type information handling system being contained in the enterprise environment to perform an excess equipment identification, the components comprising at least one of a second fan and a redundant power supply unit, the excess equipment identification determining whether any of the components comprise excess equipment, the components comprising excess equipment corresponding to at least one of the second fan and the redundant power supply unit;	Abstract Idea: analyzing components within at least one of the monolithic server type information handling system, the components of the monolithic server type information handling system . . . to perform an excess equipment identification can be performed alternatively by a person as a mental process. See 2019 Memorandum, 84 Fed. Reg. At 52. Abstract Idea: identifying excess equipment can be performed alternatively by a person as a mental process. See 2019 Memorandum, 84 Fed. Reg. At 52 Abstract Idea: determining whether any of the components comprise excess equipment can be performed alternatively by a person as a mental process. See 2019 Memorandum, 84 Fed. Reg. at 52.
[c] storing information regarding whether any of the components are excess equipment within an excess equipment inventory record;	Storing information regarding whether any of the components are excess equipment within an excess equipment inventory record is insignificant extra-solution activity (i.e., data gathering). See 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g).
[d] informing a user of identified excess equipment via the excess equipment inventory record, the informing comprising presenting the excess equipment inventory record via an excess equipment inventor...