Adobe Inc.

Patent Trials and Appeals Board

Jul 9, 2020

14877666 - (D) (P.T.A.B. Jul. 9, 2020)

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.
14/877,666 10/07/2015 Trung Thanh Nguyen P5533-US/237705 5044
121363 7590 07/09/2020
Shook, Hardy & Bacon L.L.P.
(Adobe Inc.)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/09/2020 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):
IPDocket@shb.com
docket.shb@clarivate.com
seaton@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRUNG THANH NGUYEN and SHASHANK RAMAPRASAD
Appeal 2019-005640
Application 14/877,666
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–15, and 17–19. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Adobe Inc. as the real party in interest. Appeal
Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a method for cardinality estimation of
audience segments. Claim 9, reproduced below, is illustrative of the claimed
subject matter:
9. A computer-implemented method for determining
cardinalities of audience segments, comprising:

receiving a query for a cardinality associated with a Boolean
expression of a plurality of expressions having a negation
operator;

identifying an equivalent representation for the Boolean
expression of the plurality of expressions having the negation
operator, wherein the equivalent representation has a plurality of
components with each component represented by a Hyperloglog
data structure or a union of Hyperloglog data structures, a second
count of the plurality of components being different from the first
count of the plurality of expressions;

estimating respective cardinality associated with respective
components of the plurality of components, based on respective
Hyperloglog data structures or union of Hyperloglog data
structures, wherein the estimating comprises identifying a
component being associated with the negation operator,
determining a category of the component determining a first
cardinality associated with a union of all Hyperloglog data
structures in the a same category of the component and
determining a second cardinality associated with the component;

determining the cardinality associated with the component being
associated with the negation operator based on a subtraction
operation with the respective cardinality associated with
respective components of the plurality of components, wherein
the determining comprises subtracting the second cardinality
associated with the component from the first cardinality
associated with the union of all Hyperloglog data structures; and

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providing the cardinality of the Boolean expression based on the
cardinality for the component being associated with the negation
operator.
REJECTION
Claims 1–6, 8–15, 17–19 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception (i.e., a law of nature,
a natural phenomenon, or an abstract idea) without significantly more.2 Final
Act. 3.
OPINION
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. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (quotation marks and citation omitted).
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. See Alice, 573 U.S. at 217–18 (citing Mayo Collaborative
Services 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.” 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

2 The Examiner has withdrawn the rejection of claims 1, 9, 18 under 35
U.S.C. § 112(b), second paragraph. Ans. 2 (pagination supplied throughout).
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(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 (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 (1853))); 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
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation 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. (alteration in the 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.
In January of 2019, the PTO published revised guidance on the
application of 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
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ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter
“Eligibility Guidance, 84 Fed. Reg.” and/or “Eligibility Guidance”). Step 2A
of that guidance involves determining 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 a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)
(9th Ed., Rev. 08.2017, 2018)).
If a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, Step 2B of that guidance involved
determining 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.

Analysis
Claim Grouping
The claims are argued as a group for which we select claim 9 as
representative under 37 C.F.R. § 41.37(c)(1)(iv).

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Statutory Category
Claim 9 is recites a process or method, which is a statutory category
but does not end the eligibility inquiry under 35 U.S.C. § 101 because one
must also consider whether the claim is directed to a judicial exception. See
MPEP § 2106.03(II).

Recitation of Judicial Exception
The Examiner reasonably determines:
The claimed invention recites the abstract concept of a
mathematical concept - i.e. mathematical relationships,
mathematical formulas or equations and calculations, which has
been identified as an abstract idea by the Courts. Relevant
claimed limitations include: ‘convert the . . . expression with a
negation operator . . . having a plurality of components . . .
represented by a Hyperloglog data structure or a union of
Hyperloglog data structures[,]’ ‘. . . determine a cardinality for a
component with the negation operator[,]’ ‘determine a first
cardinality [,]’ ‘determine a second cardinality . . . [,]’ ‘. . . by
subtracting the second cardinality . . . from the first cardinality.’
Ans. 3.
Appellant argues that:
The claims of the present Application are not directed to
mathematical concept at least because mathematical
relationships, formulas, or calculations are not explicitly recited
in the claims. Further, even if such relationships, formulas, or
calculations are recited in the claims, the claims are not directed
to a mathematical concept because the claims recite additional
elements (i.e., communication module, conversion module, and
estimation module) such that the relationships, formulas, and
calculations are not recited on their own.
Appeal Br. 18.
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As indicated above, Appellant argues that “the claim is not directed to
a mathematical concept if ‘the mathematical relationships, formulas, or
calculations are not explicitly recited in the claim.”’ Appeal Br. 18 (citing Ex
Parte Kim, Appeal No. 2018–005712, Patent App. No. 14/665,452 (PTAB
Jan. 24, 2019), 6–7). However, the panel decision of Ex Parte Kim is not
precedent authority for other panels. Each case must be decided on its own
facts. The Eligibility Guidance provides that “[m]athematical concepts”
including “mathematical relationships, mathematical formulas or equations,
[and] mathematical calculations” have been identified by courts as abstract
ideas. Eligibility Guidance, 84 Fed. Reg. 52. Although specific formulas or
equations may not be recited in claim 9, the subject matter defined thereby
could largely be expressed as a collection of Boolean algebra logical
expressions—which are undisputedly equations. See Appeal Br. 5–6 (citing
Spec. ¶¶ 15, 16, 19, 29–34, 42, 45, 47, 50, (see Eq. 1, 2)). Holding that the
absence of express recitations of such equations removes the claimed subject
matter from the realm of the excepted “mathematical concepts” would exalt
form over substance—something which our reviewing court and the
Supreme Court have, in the context of a 35 U.S.C. § 101 analysis, repeatedly
cautioned against. “As the Supreme Court has explained, the form of the
claims should not trump basic issues of patentability. See Flook, 437 U.S. at
593 (advising against a rigid reading of § 101 that ‘would make the
determination of patentable subject matter depend simply on the draftsman’s
art’); see also Mayo, 132 S. Ct. at 1294.” Bancorp Servs., L.L.C. v Sun Life
Assurance Co. of Can.(U.S.), 687 F.3d 1266, 1277 (Fed Cir, 2012).
Appellant also argues that “[t]he claims also recite a conversion
module that converts (i.e. transforms) the ALE [i.e., “audience logical
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expression”] with a negation operator into an equivalent representation with
various components, each component represented by a specific HLL [i.e.,
“HyperLogLog”] data structure.” Appeal Br. 18–19. Appellant argues that
“[c]onverting an ALE into its HLL equivalent does not constitute a
mathematical relationship, formula, or calculation.” Appeal Br. 19.
However, Appellant’s Specification provides:
“Audience logical expression” or “ALE” means any arbitrary
Boolean logical expressions over existing audience segments. By
way of example, a Boolean expression relating two or more
audience segments with Boolean operators, e.g., AND, OR,
NOT, etc., is an ALE. Therefore, the cardinality associated with
an ALE refers to the number of elements in the ALE.

A “component” of an expression is a part of the expression. In
various embodiments, the cardinality of an ALE can be
converted into an equivalent expression with one or more
components linked by addition or subtraction operators, wherein
each component is represented by an HLL or a union of HLLs.
As an example, the ALE of “people who purchased a new phone
last week AND also purchased a data plan for the new phone is
equivalent to the Boolean expression of “A AND B”, where A
and B are audience segments representing the set of people who
purchased a new phone last week and the set of people who also
purchased a data plan for the new phone, respectively. The
cardinality of this ALE can be converted into an equivalent
expression with three components as |A| + |B| - |A OR B|, wherein
“A” can be represented by an HLL, “B” can also be represented
by an HLL, and “A OR B” can be.
Spec. ¶¶ 13, 15. Thus, Appellant does not suggest what, if not a
mathematical relationship or calculation, the HLL conversion process
entails.
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Appellant also discloses that HLL refers to an algorithm and related
data structures for approximating the number of distinct elements in a
multiset. Spec. ¶ 14. Appellant further discloses “[t]he server converts the
ALE into an equivalent expression with one or more Hyperloglog (HLL)
data structures based on HLL technology and some properties of Boolean
algebra.” Spec. ¶ 16.
The Specification suggests that the recited steps of “identifying an
equivalent representation for the Boolean expression” and “estimating
respective cardinality” involve the application of mathematical relationships
that can be represented by mathematical formulas, or performed by the
calculations described in the Specification.
The Examiner also determined that “[p]erforming numerical
calculations also represents a method of organizing human activity, which a
human could perform using pen and paper.” Final Act. 4.
Appellant argues that “[t]he claims do not recite certain methods of
organizing human activity at least because the claimed solution recites a
particular approach for determining the number of elements in a set or other
grouping (e.g., audience segments), and more particularly, a particular
approach for improving query performance on cardinality estimation of
ALEs which is not a fundamental economic principle.” Appeal Br. 20.
Appellant argues that “the claims recite steps such as a communication
module that receives a query for a cardinality association with an ALE, a
conversion module that converts (i.e. transforms) the ALE with a negation
operator into an equivalent representation with various components, and an
estimation module that determines and provides the cardinality results of the
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ALE query.” Appeal Br. 20. Appellant contends that “[e]ach of these
limitations do not recite a fundamental economic process.”
However, Appellant’s Specification discloses that:
Digital marketing includes the targeted, measurable, and
interactive marketing of products or services using digital
technologies to reach and convert leads into customers. Digital
marketing may promote brands, build preference, and increase
sales through various digital marketing techniques. One
important aspect of a digital marketing campaign is identifying
individuals to target with marketing messages. Often, digital
marketers try to target a particular audience segment, which is a
set of individuals who have performed and/or not performed an
action that is of relevance to the marketers. In order to identify
such audience segments, marketers frequently construct
“audience logical expressions” (ALEs), which are arbitrary
Boolean logical expressions over existing audience segments.

As an example, consider the following ALE: “people who
visited the newest phone page in the last 7 days but did not
convert.” This ALE is equivalent to the Boolean expression of
“A AND~B[,]” where A and B are audience segments
representing the set of people who visited the new phone page in
the last 7 days and the set of people who bought the new phone,
respectively. For the purpose of budgeting or planning in digital
marketing, marketers would like to know, in real time, and to a
reasonable degree of accuracy, the cardinality of such ALEs.
Spec. ¶¶ 1–2.
The Eligibility Guidance provides that “[c]ertain methods of
organizing human activity” including “commercial or legal interactions
(including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business relations)”
are abstract ideas. Eligibility Guidance, 84 Fed. Reg. 52 (emphasis added).
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Therefore, the claimed invention also recites the abstract method of
organizing human activity involving advertising, marketing, and sales
activities or behaviors. See, e.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229 (Fed. Cir. 2016); see also In re Maucorps, 609 F.2d 481, 485 (CCPA
1979).
Appellant further contends that “the claims do not recite a mental
process and the Examiner does not allege as such.” Appeal Br. 21. However,
the Examiner determines that “a human could perform [the claim] using pen
and paper” which is associated with a determination that the claimed subject
matter is directed to a mental process. Final Act. 4.
The Eligibility Guidance provides that “[m]ental processes—concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion)” are abstract ideas. Eligibility Guidance, 84 Fed. Reg.
52. We agree with the Examiner that the claimed invention can be performed
using pen and paper because the Specification clearly shows that the claimed
invention can be represented by a mathematical relationship which can be
performed with a pen and paper. Spec. ¶¶ 26, 30–32. Mental processes
involve the use of human observation, evaluation, and judgement. See In re
Prater 415 F.2d 1393, 1402 n. 22 (CCPA 1969). “[M]ental processes . . . are
not patentable, as they are the basic tools of scientific and technological
work.” Gottschalk, 409 U.S. at 67 (quoted with approval in Mayo, 566 U.S.
at 71). That a computer can be used to assist the calculative aspects of the
process does not make a claim otherwise directed to a process that “can be
performed in the human mind, or by a human using a pen and paper” patent
eligible. CyberSource, 654 F.3d at 1375. “The fact that the required
calculations could be performed more efficiently via a computer does not
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materially alter the patent eligibility of the claimed subject matter.” See, e.g.,
Bancorp Servs., 687 F.3d at 1278.

Practical Application
Appellant argues that “[r]eceiving a query for a cardinality does not
constitute a mathematical relationship, formula, or calculation.” Appeal Br.
18. This is perhaps true, but as this step effectively amounts to obtaining
user input to begin the calculation process, it falls squarely within the realm
of extra-solution activity or “mere data gathering” held to be not enough to
qualify as significantly more than the judicial exception itself. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) (“We have held that mere ‘[data-gathering] step[s] cannot make an
otherwise nonstatutory claim statutory.’”). This step, therefore, does not
influence the determination that the claim is directed to a judicial exception.
Appellant argues that “they integrate the asserted abstract idea into a
specific practical application by reciting a technological improvement and/or
an improvement to the functioning of a computer.” Appeal Br. 22 (emphasis
omitted). Appellant argues that “the claims provide an accurate and
computationally efficient method to determine the cardinality of a negated
ALE based on determining the cardinality of a component with a negation
operator.” Appeal Br. 23. Appellant argues that the claimed invention
“provide[s] a new computing function over Hyperloglog data structures to
estimate cardinality of a negated expression, which is traditionally not
solvable natively with conventional data structures, including Hyperloglog.”
Reply Br. 4.
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The Examiner determines that “the benefits presented by the
Applicant represent inherent benefits of using the Hyperloglog data
structures/algorithm.” Ans. 6. This would seem to be the case because the
speed and accuracy of obtaining |~A| is still limited by the inherent property
of Hyperloglog of the negated A. Further, the speed and accuracy of the
results from |A OR B OR C| - |A| is still limited by the inherent property of
Hyperloglog of A OR B OR C, and on the dataset of A. The specificity of
negated A, A, B or C would then seem to determine the speed and accuracy
of how a Hyperloglog determines the cardinality of intended datasets.
However, Appellant does not recite any specific steps or elements
responsible for increasing the speed or accuracy of the system or process,
only altering the nature of the calculation used in the existing process.
Appellant does not even recite any relationship between the identifying step
and the estimation step.3 Furthermore, if the ALE does not have any

3 Appellant has not shown that any of the component represented by a
Hyperloglog data structure or a union of Hyperloglog data structure is being
used in the estimation. The limitation of “identifying an equivalent
representation for the Boolean expression of the plurality of expressions
having the negation operator” is not entirely clear because it is unclear if it
means identifying an equivalent of or converting the ALE using a negation
operator, or means identifying an equivalent of or converting a negated
ALE. Similarly, the limitation “determining the cardinality associated with
the component being associated with the negation operator” is not entirely
clear because it is unclear if it means determine a cardinality for a negated
component, or means to use a negation operator to make the determination.
The Appellant and the Examiner may wish to consider these issues of clarity
in the context of the requirements of 35 U.S.C. § 112(b) in any further
prosecution. We note that although the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so. See MPEP § 1213.02.
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negation operation, the identifying and estimating aspects of the claim would
appear to be superflous. “Language that suggests or makes a feature or step
optional but does not require that feature or step does not limit the scope of a
claim under the broadest reasonable claim interpretation.” MPEP § 2143.03
(discussed in the context of obviousness but generally applicable). Hence,
we are not apprised of how the limitations Appellant identifies impose any
meaningful limits on the abstract ideas themselves.
Appellant argues that “at least because the claims ‘apply, rely on, or
use’ the putative judicial exception, and because the practical application is
strongly similar to that of claim 1 of Example 40 of the 2019 Examples, the
claims integrate any putative judicial exception into a practical application
and are therefore eligible under Prong Two of revised step 2A.” Appeal Br.
26.
The Examiner determines that:
First of all, the instant invention and Example 40, Claim 1 have
different fact patterns, and therefore the two are not analogous.
Furthermore, in Example 40, Claim 1, it was found that the
additional elements integrate the judicial exception into a
practical application - i.e. it improves network monitoring, thus
providing “a specific improvement over prior systems[.]”
Therefore, Example 40 Claim 1 provides a specific technical
improvement over prior systems. Contrary to Example 40 Claim
1, the instant claimed invention does not provide a technical
improvement, nor does it improve the functioning of the
computing device itself. Examiner also notes that the Applicant’s
Spec, paras 17-19, 36 discuss the benefits of using Hyperloglog
data structures when estimating the cardinality of large data sets.
Ans. 5.
For the reasons stated by the Examiner, we agree that Appellant’s
claim is different than that of claim 1 of Example 40 of the 2019 Examples.
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Appellant further argues that “[t]he integration of a practical
application here is analogous to Enfish, which implemented ‘self-referential’
tables, where entries in a given table could refer to other entries in the same
table, instead of referring to separate tables.” Reply Br. 5. Appellant
contends that “the new computing function here is significantly more than
some improvement in speed or efficiency in Enfish, where the self-
referential tables improved data processing by speeding up the configuration
process and the time it takes to search for data.” Reply Br. 6. In Enfish, “the
plain focus of the claims is on an improvement to computer functionality
itself, not on economic or other tasks for which a computer is used in its
ordinary capacity.” Enfish, 822 F.3d at 1336. However, Appellant does not
provide any factual evidence or technical explanation as to how the claimed
invention provides improvements to computing functions as opposed to
improvements to economic functions for which a computer is used in its
ordinary capacity. Id. In other words, the specific selection of certain
information for identifying, estimating, and determining, sandwiched
between conventional input and output, receiving and providing, is an
insufficient basis upon which to conclude that claim 1 recites an
improvement to the functionality within a computing system itself.
Appellant also argues that “[a]kin to Ex Parte Smith,[4] the additional
elements in the pending claims have limited the conventional practice of
estimating cardinalities by reciting a specific mechanism for ‘determin[ing]
a cardinality for a component with the negation operator.’” Reply Br. 7.
Smith is an informative decision that, although not binding authority,

4 Appeal No. 2018-000064, (PTAB Feb. 1, 2019) (informative).
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nonetheless provides instructive guidance and Board norms on patent
eligibility issues. See PTAB Standard Operating Procedure 2, Rev. 10 § III,
11.4. In Smith the claimed timing mechanisms and associated temporary
restraints on execution of trades were the additional elements that provided a
specific technological improvement over prior derivative trading systems.
See Smith, 2019 WL 764497, at *5. That is not the case here. The solution
that Appellant provides involves a purely mathematical equivalence of a
cardinality for a component. As an example provided by Appellant, |~A| is a
cardinality for a component with the negation operator, and the
mathematical equivalence of |~A| is |A OR B OR C| - |A|. Spec. ¶¶ 30–32.
Accordingly, the additional elements of claim 1 of the subject
invention discussed above do not integrate the judicial exception into a
practical application.

Well-Understood, Routine, Conventional Activity
Having determined that claim 1 of the subject invention recites a
judicial exception, and does not integrate that exception into a practical
application, we consider whether the claim adds specific limitations beyond
the judicial exception that, considered individually and as an ordered
combination, do not define that which is no more than “well-understood,
routine, conventional” in the field.
Appellant argues that:
Here, the present claims recite significantly more as the claims
relate to improvements to the functioning of a computer. The
claims recite a combination of steps, which provide an accurate
and computationally efficient method to determine the
cardinality of a negated ALE in real-time. The steps support the
determination of a cardinality associated with a component with
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a negation operator, the determination of a cardinality of an ALE
based on determining the cardinality of a component with a
negation operator. Such a solution improves the functioning of a
computer by allowing for a more accurate, instantaneous
cardinality estimation, and in particular, when the entered query
consists of a negated ALE.
Appeal Br. 28–29.
The Examiner determines that:
These represent inherent benefits of using the Hyperloglog
algorithm/data structures, in order to estimate the cardinality of
large data sets- i.e. increased accuracy, and reduced computing
power/storage, and the reason why Hyperloglog are used in the
cardinality estimation process. Examiner notes that the benefits
presented by the Applicant represent inherent benefits of using
the Hyperloglog data structures/algorithm. They do not represent
technical/technological improvements that the claimed invention
itself provides, upon its implementation; rather, they represent
inherent benefits of using the Hyperloglog algorithm itself and
the reason why Hyperloglog is used in cardinality estimation.”
Ans. 7–8.
As we have explained above, each negated ALE is still a Boolean
algebra representation that outputs a new data structure. Appellant makes no
claim to have invented, and indeed the Specification does not provide any
specific guidance on, how to make such a transformation. This further
evinces the well-understood, routine, and conventional nature of the
employed Boolean identity expressions.
Appellant also argues that “the ‘existing HLL framework does not
have native functions to support Boolean operations of HLL data
structures.’” Appeal Br. 29. However, identifying or discovering
mathematical formulae that enable a process to be performed with well-
understood, routine, and conventional steps and components does not mean
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the claim elements define something more than well-understood, routine,
and conventional steps and components. Just the opposite is true.
The Examiner also provides Non-Patent Literature (NPL) to show that
“the Hyperloglog algorithm was developed by Flajolet in 2007,” and that
“the Hyperloglog algorithm represents a ‘state of the art cardinality
estimation algorithm,’” and that “algorithm . . . estimates cardinalities
efficiently.” Ans. 9. As a consequence, it does not appear to be disputed that
Hyperloglog itself is a well-understood, routine, or conventional computing
technique.
Appellant further argues that “the claims recite additional elements
that cannot be considered part of any abstract idea because they are not—
either individually or in combination—well-understood, routine, or
conventional in the field.” Appeal Br. 31 (emphasis omitted). Appellant
additionally contends that “[t]hese claims elements are not well-understood,
routine, or conventional because each pending claim has overcome all cited
references and previous art-based rejections.” Appeal Br. 31. However, we
note that the patent eligibility analysis is not an evaluation of novelty or non-
obviousness. “[A] claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). Whether the claimed concept is “[g]roundbreaking, innovative, or
even brilliant . . . does not by itself satisfy the [section] 101 inquiry.” Ass’n
for Molecular Pathology, 569 U.S. at 591. Consequently, an abstract idea
does not transform into an eligible inventive concept just because the
Examiner has not found prior art that discloses or suggests it. Indeed, “[t]he
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
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within the [section] 101 categories of possibly patentable subject matter.”
Diamond, 450 U.S. at 188–89. Novel and non-obvious subject matter in a
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90–91.
Appellant argues that “[t]he claims of the current Application should
be found to amount to significantly more than the abstract idea under the
Federal Circuit’s DDR decision.” Appeal Br. 28. The Examiner correctly
determines that “[i]n Ultramercial, [t]he Federal circuit court referred to the .
. . [Alice] Supreme Court decision detailing that ‘[t]he Court in [Alice] made
it clear that a claim is directed to an abstract idea does not move into
[section] 101 eligibility territory by ‘merely requir[ing] generic computer
implementation.’” Ans 9. The Examiner also correctly determines that “the
instant claimed invention is in fact merely carried out by a generically
recited computing platform - i.e. [“computer-implemented;”] that is,
essentially generic computing elements as seen in [Appellant’s]
[S]pecification.” Ans. 8–9.
DECISION
We have considered all of Appellant’s arguments in support of the
patent eligibility of claim 1, but find them unpersuasive. We sustain the
Examiner’s rejection of claims 1–6, 8–15, and 17–19 under 35 U.S.C. § 101.
CONCLUSION
The Examiner’s rejection is affirmed.
Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–6, 8–15,
17–19
101 Eligibility 1–6, 8–15,
17–19

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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