Emrah Acar et al.

Patent Trials and Appeals Board

Dec 3, 2019

14635007 - (D) (P.T.A.B. Dec. 3, 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.
14/635,007 03/02/2015 Emrah Acar AUS920150005US1 8095
50170 7590 12/03/2019
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
1701 N. COLLINS BLVD.
SUITE 2100
RICHARDSON, TX 75080
EXAMINER
LAROCQUE, EMILY E
ART UNIT PAPER NUMBER
2182
MAIL DATE DELIVERY MODE
12/03/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMRAH ACAR, RAJESH R. BORDAWEKAR, MICHELE M.
FRANCESCHINI, LUIS A. LASTRAS-MONTANO, HAIFENG QIAN,
and LIVIO B. SOARES
Appeal 2019-000060
Application 14/635,007
Technology Center 2100
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
SAADAT, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2017). Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to a “mechanism for providing
parallelized hybrid sparse matrix representations for performing
personalized content ranking.” Spec. ¶ 1.
Representative Claim
Representative claim 1 under appeal reads as follows:
1. A method, in a data processing system comprising a
processor and a memory, for performing a matrix operation, the
method comprising:
configuring logic of the processor of the data processing
system to perform hybrid compressed representation matrix
operations on an input matrix;
receiving, by the processor, the input matrix, wherein the
input matrix comprises zero value and non-zero value entries;
generating, by compressed matrix representation
generator logic of the processor, a first compressed
representation data structure corresponding to the input matrix,
wherein the first compressed representation data structure
represents the non-zero value entries of the input matrix in a first
compressed format;
generating, by compressed matrix representation
generator logic of the processor, a second compressed
representation data structure corresponding to the input matrix,
wherein the second compressed representation data structure
represents the non-zero value entries of the input matrix in a
second compressed format different from the first compressed
format; and
iteratively executing, by matrix operation engine logic of
the processor, a matrix operation on the input matrix using the
first compressed representation data structure and the second
compressed representation data structure, wherein the first
compressed representation data structure is utilized for a first
subset of iterations of the matrix operation and the second
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compressed representation data structure is utilized for a second
subset of iterations of the matrix operation different from the first
subset of iterations.
REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. See Ans. 3.
ANALYSIS
Appellant presents arguments that apply to all of the pending claims,
using independent claim 1 as representative claim. See Appeal Br. 5–30; see
also Reply Br. 2–14. Appellant also presents separate arguments that apply
to various dependent claims. See Appeal Br. 31–33; see also Reply Br. 14.
In deciding the appeal, we first address independent claims 1, 11, and 20 as
the representative claims. We then address dependent claims 2–10 and 12–
19 separately.
Arguments
The Examiner determines that the claims are directed to “an abstract
idea of obtaining two compressed representations of the non-zero values of
an input matrix and iteratively executing a matrix operation on the input
matrix using one of the two compressed representations,” which the
Examiner characterizes as a “mathematical relationship[] and formula.” See
Final Act. 6. The Examiner adds that the abstract idea described in the
claims is similar to the abstract idea of converting one form of numerical
representation to another that the Supreme Court found to be abstract in
Gottschalk v. Benson, 409 U.S. 63 (1972), and is also similar to the abstract
idea of organizing information through mathematical correlations that the
Federal Circuit found to be abstract in Digitech Image Techs., LLC v.
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Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). See Final
Act. 7.
The Examiner further finds the claims are not directed to an
improvement to computer-related technology by improving computer
functionality as a tool, but rather the claims are directed to improved
mathematical relationships and organizing information through
mathematical correlations that enable more efficient matrix calculations
within a processor (i.e., better math). See Ans. 5–6; see also Final Act. 8–9.
The Examiner adds that any purported technological improvement that may
result with respect to computer-related technology or functionality flows as a
direct consequence of the mathematical concept. See Ans. 6; see also Final
Act. 7.
The Examiner additionally finds the claims, considered individually
and as an ordered combination, do not include additional elements that are
sufficient to amount to significantly more than the identified abstract idea.
See Final Act. 7. As found by the Examiner, the claims merely instantiate
the mathematical relationships and formulas using generic computer
components (e.g., data processing system, processor, memory, computer
readable storage medium), not tied to a specific structure or machine, and
performing well-understood, routine, and conventional computer functions
for which the generic computer components were intended. See id.; see also
Ans. 8.
Regarding preemption, the Examiner noted that the absence of
preemption does not demonstrate that a claim is eligible. See Ans. 6. The
Examiner also provided a specific claim-by-claim eligibility analysis for
claims 1–20, addressing independent claims 1, 11, and 20, as well as
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dependent claims 2–10 and 12–19. See Final Act. 7–14. Based on these
findings, the Examiner concludes that the claims are ineligible under § 101.
Appellant argues the claims do not recite an abstract idea of
“mathematical relationships and formulas.” See Appeal Br. 13. Instead, as
argued by Appellant, the claims are directed to an improved computer tool to
perform matrix operations on large scale matrices, as evidenced by
Appellant’s Specification, and that the claims improve the efficiency, speed
and performance of such matrix operations, and thus, improve an underlying
computer itself. See Appeal Br. 5–10 (citing Spec. ¶¶ 21–38); see also
Reply Br. 2–7. Appellant further argues the claims are not similar to the
claims at issue in Benson and Digitech, and instead, are similar to the claims
at issue in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016), and Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir.
2018) because they recite an improvement to computer-related technology.
See Appeal Br. 10–18, 24–30; see also Reply Br. 8–10.
Appellant further argues the claims clearly recite significantly more
than any alleged abstract idea because the claims require a specifically
configured data processing system in which specifically configured elements
are required to perform their specific operations within the defined
technological environment, where the operations are not merely “well-
understood, routine and conventional computer functions,” as evidenced by
the lack of any prior-art rejections. See Appeal Br. 18–20; see also Reply
Br. 11–12. Appellant additionally argues the claims are similar to the claims
at issue in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016), in that the claims leverage the benefits of
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multiple existing formats for representing matrices that provide a more
efficient and better performing computer logic for performing matrix
operations. See Appeal Br. 21–22. As also argued by Appellant, the
Examiner has not established a prima facie case of establishing that the
additional elements recited in the claims are well-understood, routine, or
conventional, as required by Berkheimer v. HP Inc., 881 F.3d 1360 (Fed.
Cir. 2018). See Reply Br. 12–14.
Appellant also argues the claims clearly tie the matrix operations to a
specifically configured processor and limit the operations to being
performed in such a specifically configured processor, rather than attempting
to preempt all ways of performing matrix operations. See Appeal Br. 23; see
also Reply Br. 7. Appellant further argues that certain dependent claims
(i.e., dependent claims 3–9 and 13–19) recite additional elements that are
significantly more than the abstract idea. See Appeal Br. 31–33; see also
Reply Br. 14.
Principles of 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
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concepts.” Alice, 573 U.S. at 217 (citation omitted). If so, we then examine
“the elements of each 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 claims 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 concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
In January 2019, the USPTO published revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“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 activities 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, Jan. 2018)).
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, and conventional in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
Abstract Idea
To determine whether a claim recites an abstract idea, we (1) identify
the claim’s specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely (a) mathematical concepts; (b) certain methods of
organizing human activity; or (c) mental processes.
Independent claim 1 is directed to an abstract idea because the claim
recites a mathematical concept, one of the abstract idea groupings listed in
the Guidance. See, Guidance 84 Fed. Reg. at 52, 53 (listing “[m]athematical
concepts – mathematical relationship, mathematical formulas or equations,
mathematical calculations” as one of the “enumerated groupings of abstract
ideas”).
The claims are directed to “a method, in a data processing system . . .
for performing a matrix operation,” as well as a corresponding “computer
program product comprising a computer useable or readable medium,” and
“system/apparatus.” Spec. ¶¶ 5–7. The method of claim 1 includes the
following:
(1) “receiving . . . [an] input matrix, wherein the input matrix
comprises zero value and non-zero value entries”;
(2) “generating . . . a first compressed representation data
structure corresponding to the input matrix, wherein the first
compressed representation data structure represents the non-
zero value entries of the input matrix in a first compressed
format”;
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(3) “generating . . . a second compressed representation data
structure corresponding to the input matrix, wherein the
second compressed representation data structure represents
the non-zero value entries of the input matrix in a second
compressed format different from the first compressed
format”; and
(4) “iteratively executing . . . a matrix operation on the input
matrix using the first compressed representation data
structure and the second compressed representation data
structure, wherein the first compressed representation data
structure is utilized for a first subset of iterations of the
matrix operation and the second compressed representation
data structure is utilized for a second subset of iterations of
the matrix operation different from the first subset of
iterations.”
Appeal Br. 34. Independent claims 11 and 20 recite similar limitations.
Consistent with the Examiner’s findings, the aforementioned
limitations of claim 1 describe obtaining two compressed representations of
non-zero values of an input matrix and iteratively executing a matrix
operation on the input matrix using one of the two compressed
representations. See Final Act. 6. We further agree with the Examiner’s
findings that the concept described in claim 1 is similar to the concepts that
courts have held to be abstract ideas in Benson and Digitech. See Final
Act. 7; see also Benson, 409 U.S. at 65, 71–72 (concluding that permitting a
patent on “a method of programming a general-purpose digital computer to
convert signals from binary-coded decimal form into pure binary form,”
“would wholly pre-empt the mathematical formula and in practical effect
would be a patent on the algorithm itself”); Digitech, 758 F.3d at 1350
(holding that claims to a “process of organizing information through
mathematical correlations” are directed to an abstract idea). Thus, the
claimed method of obtaining two compressed representations of non-zero
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values of an input matrix and iteratively executing a matrix operation on the
input matrix using one of the two compressed representations fits squarely
within the mathematical concepts category of the agency’s guidelines. See
Guidance, 84 Fed. Reg. at 52 (listing exemplary mathematical concepts
including (1) mathematical relationships, (2) mathematical formulas or
equations, and (3) mathematical calculations).
Although the claims recite an abstract idea based on these
mathematical concepts, we nevertheless must still determine whether the
abstract idea is integrated into a practical application, namely whether the
claim applies, relies on, or uses the abstract idea in a manner that imposes a
meaningful limit on the abstract idea, such that the claim is more than a
drafting effort designed to monopolize the abstract idea. See Guidance, 84
Fed. Reg. at 54–55. We therefore (1) identify whether there are any
additional recited elements beyond the abstract idea, and (2) evaluate those
elements individually and collectively to determine whether they integrate
the exception into a practical application. See id.
Here, the only recited elements beyond the abstract idea are “data
processing system comprising a processor and a memory,” as recited in
claim 1, “computer program product comprising a computer readable
storage medium having a computer readable program stored therein” and
“computing device,” as recited claim 11, and “processor,” “memory,” and
“computer readable program having instructions which are executed by the
processor,” as recited in claim 20. Consistent with the Examiner’s findings,
these additional elements do not integrate the abstract idea into a practical
application when reading the claims as a whole. See Final Act. 7.
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We are not persuaded by Appellant’s contention that the claimed
invention improves the computer or its components’ functionality or
efficiency, or otherwise changes the way the computer functions. Rather,
consistent with the Examiner’s findings, the alleged technological
improvement results from the claimed first and second compressed
representation data structure formats of the non-zero values of the input
matrix (e.g., Compressed Sparse Row (CSR) and Compressed Sparse
Column (CSC)) that allow representations of the input matrix with fewer
zeros, while still conveying the non-zero values of the input matrix. See
Ans. 6. Thus, as the Examiner found, any improved computer functionality
disclosed in Appellant’s Specification (e.g., avoiding cache misses, efficient
matrix operations applied to the input matrix, etc.) results from improved
mathematical relationships and mathematical correlations that enable more
efficient matrix calculations within a processor of a data processing system.
See Final Act. 8–9; see also Ans. 5. Because of this, contrary to Appellant’s
contention that the claims are similar to the claims at issue in Enfish, McRO,
and Finjan, the claims here merely use generic computing components to
implement the mathematical concepts, but do not improve the underlying
computer, as was the case in Enfish, McRO, and Finjan.
Further, as the Examiner also correctly finds, the claims are not
limited to embodiments performed on a computer, and the claimed invention
can be performed mentally or by pen and paper. See Ans. 7. As indicated in
MPEP § 2106.05(a), a claimed process covering embodiments that can be
performed on computer, as well as embodiments that can be performed
mentally, cannot improve computer technology. See MPEP § 2106.05(a)
(citing RecogniCorp LLC v. Nintendo Co., 855 F.3d 1322, 1328 (Fed. Cir.
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2017) (process for encoding/decoding facial data using image codes
assigned to particular facial features held ineligible because process did not
require a computer)).
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any 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(a)–(c), (e)–(h).
Inventive Concept
Because we determine the claims are “directed to” an abstract idea,
we consider whether the claims recite an “inventive concept.” The
Examiner determined the claims do not recite an inventive concept because
the additional elements in the claims do not amount to “significantly more”
than an abstract idea. See Final Act. 7.
We agree. As previously discussed, the additional elements recited in
the claims are “data processing system comprising a processor and a
memory,” “computer program product comprising a computer readable
storage medium having a computer readable program stored therein” and
“computing device,” “processor,” “memory,” and “computer readable
program having instructions which are executed by the processor.” The
claims recite these elements at a high level of generality, and Appellant’s
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Specification indicates that these elements are generic computer
components, as shown below.
[C]omputer readable program instructions may be provided to a
processor of a general purpose computer, special purpose
computer, or other programmable data processing apparatus to
produce a machine, such that the instructions which execute via
the processor of the computer or other programmable data
processing apparatus, create means for implementing the
functions/acts specified in the flowchart and/or block diagram
block or blocks.
Spec. ¶ 81 (emphasis added).
Moreover, the data processing system 600 may take the form of
any of a number of different data processing systems including
client computing devices, server computing devices, a tablet
computer, laptop computer, telephone or other communication
device, a personal digital assistant (PDA), or the like. In some
illustrative examples, data processing system 600 may be a
portable computing device that is configured with flash memory
to provide non-volatile memory for storing operating system
files and/or user-generated data, for example. Essentially, data
processing system [600] may be any known or later developed
data processing system without architectural limitation.
Spec. ¶ 134 (emphasis added).
Using generic computer components to perform abstract ideas does
not provide the necessary inventive concept. See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”). Thus, these
elements, taken individually or together with the other claim elements, do
not amount to “significantly more” than applying the abstract idea on a
general purpose computer.
We are not persuaded by Appellant’s contention that the lack of any
prior-art rejections definitively establishes that the claims do not recite well-
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understood, routine, and conventional operations. This contention conflates
the non-obviousness test under 35 U.S.C. § 103 with the patent-eligibility
test under 35 U.S.C. § 101.
We are also not persuaded by Appellant’s contention that the claims
are similar to the claims at issue in Bascom. Unlike the claims at issue in
Bascom, the present claims do not recite a technical improvement. Instead,
as previously described, the claims recite improvements to the underlying
mathematical relationships and mathematical correlations themselves.
Further, we are not persuaded by Appellant’s contention that the
Examiner failed to present a prima facie case that the claims recite well-
understood, routine, and conventional operations. As previously discussed,
Appellant’s Specification provides evidence that the recited operations are
well-understood, routine and conventional, as Appellant’s Specification
discloses that any general-purpose computer is capable of performing the
recited operations. See e.g., Spec. ¶¶ 81, 134.
Preemption
Appellant’s argument that the claims do not preempt any alleged
abstract idea and are therefore patent-eligible is also not persuasive. The
Federal Circuit has made clear that “the absence of complete preemption
does not demonstrate patent eligibility” of a claim. Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Dependent Claims
We are also not persuaded by Appellant’s contentions that dependent
claims 2–10 and 12–19 are separately patent-eligible. For the reasons
indicated by the Examiner, we agree with the Examiner’s conclusion that
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dependent claims 2–10 and 12–19 do not recite additional elements that are
significantly more than the underlying abstract idea. See Final Act. 8–14.
Conclusion
For at least the above reasons, we agree with the Examiner that claims
1–20 are “directed to” an abstract idea, and do not recite an “inventive
concept.” Accordingly, we sustain the Examiner’s rejection of claims 1–20
under 35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

TIME PERIOD FOR RESPONSE
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