Ex Parte Dymetman

Patent Trial and Appeal Board

Mar 22, 2017

13572817 (P.T.A.B. Mar. 22, 2017)

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.
13/572,817 08/13/2012 Marc Dymetman 20120159USNP-XER2886US01 2881
62095 7590 03/23/2017
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
LE, THUYKHANH
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
03/23/2017 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 MARC DYMETMAN
____________

Appeal 2016-008434
Application 13/572,817
Technology Center 2600
____________

Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Exemplary Claims
Exemplary claims 1, 9, and 16 under appeal read as follows:
1. A non-transitory storage medium storing
instructions executable by an electronic data processing
device to perform a max-string evaluation of a weighted
finite state automaton (WFSA) A having initial state q0
and final state qf by operations including:
generating an unweighted automaton B having the
same states as the WFSA A and having unweighted
transitions corresponding only to the transitions of the
WFSA A having strictly positive weights;
performing a powerset construction on the
unweighted automaton B to generate a deterministic
automaton B' having states Q including an initial state Q0
corresponding to the initial state q0 of the WFSA A and a
final state Qf corresponding to the final state qf of the
WFSA A;
for each state Q' of the deterministic automaton B'
(1) defining a set of points LQ, representing all vectors w'
= w ·aQQ’ where aQQ’ is a transition label of a dominator
of a predecessor state Q connecting predecessor state Q
with state Q' and w is a prefix of the transition label aQQ'
in predecessor state Q and (2) determining a set of
dominators SQ’ in LQ’ such that LQ’ is included in
hull(SQ’);
identifying the dominant vector wf in the final state
Qf such that LQf is included in hull(wf); and
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following backpointers from the dominant vector
wf to the initial state Q0 to generate the max-string result.

9. A method to perform a max-string evaluation of a
weighted finite state automaton (WFSA) A having initial
state q0 and final state qf wherein the paths through the
WFSA A define a vocabulary of strings representing
possible natural language translations or transcriptions of
natural language content, the method comprising:
(i) generating an unweighted automaton B having
the same states as the WFSA A and having unweighted
transitions corresponding only to the transitions of the
WFSA A having strictly positive weights;
(ii) generating a deterministic automaton B' from
the unweighted automaton B, the deterministic automaton
B' having states Q including an initial state Q0
corresponding to the initial state q0 of the WFSA A and a
final state Qf corresponding to the final state qf of the
WFSA A;
(iii) for each state Q' of the deterministic
automaton B' including the final state Qf (1) defining a
set of points LQ’ representing all vectors w' = w ·aQQ’
where aQQ’ is a transition label of a dominator of a
predecessor state Q connecting predecessor state Q with
state Q' and w is a prefix of the transition label aQQ' in
predecessor state Q and (2) determining a set of
dominators SQ’ in LQ’ such that LQ’ is included in hull(SQ’)
where hull( ... ) is one of the convex-hull, the ortho-hull,
and the ortho-convex-hull;
(iv) identifying the dominant vector wf in the final
state Qf such that LQf is included in hull(wf);
(v) following backpointers from the dominant
vector wf to the initial state Q0 to generate the max-string
result x that maximizes the sum of the weights of all
paths of the WFSA A that yield the string x; and
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(vi) one of (1) generating a target natural language
translation of source language content as the generated
max-string result x and (2) generating a transcription of
audio content as the generated max-string result x;
wherein the operations (i), (ii), (iii), (iv), (v), and
(vi) are performed by an electronic data processing
device.

16. An apparatus comprising:
an electronic data processing device programmed to:
construct a weighted finite state automaton
(WFSA) having an initial state and a final state wherein
the paths through the WFSA define a vocabulary of
strings representing possible natural language translations
or transcriptions of natural language content;
perform a max-string evaluation of the WFSA by
operations including:
(i) generating an unweighted automaton
having the same states as the WFSA and having
unweighted transitions corresponding only to the
transitions of the WFSA having strictly positive
weights;
(ii) generating a deterministic automaton
from the unweighted automaton, the deterministic
automaton having states including an initial state
corresponding to the initial state of the WFSA and
a final state corresponding to the final state of the
WFSA;
(iii) for each state Q' of the deterministic
automaton (1) defining a set of points LQ’
representing all vectors w' = w ·aQQ’ where aQQ’ is
a transition label of a dominator of a predecessor
state Q connecting predecessor state Q with state
Q' and w is a prefix of the transition label aQQ' in
predecessor state Q and (2) determining a set of
dominators SQ, in LQ’ such that LQ’ is included in a
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region defined by the set of dominators SQ’ and
encompassing the set of points LQ’;
(iv) identifying the dominant vector wf in the
final state Qf of the deterministic automaton that
defines a region that encompasses the set of points
LQf; and
(v) following backpointers from the
dominant vector wf to the initial state Q0 to
generate the max-string result x that maximizes the
sum of the weights of all paths of the WFSA that
yield the string x; and
generate a natural language translation or
transcription of the natural language content as the
generated max-string result x.

Rejection on Appeal
The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as failing
to recite patent-eligible subject matter.

Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claims 16–
20 under 35 U.S.C. § 101 because:
Claim 16 recites significantly more than the abstract idea of
performing a max string evaluation to generate a max string
result. To wit, claim 16 additionally recites construct[ing] a
weighted finite state automaton (WFSA) having an initial state
and a final state wherein the paths through the WFSA define a
vocabulary of strings representing possible natural language
translations or transcriptions of natural language content. Claim
16 then recites perform[ing] a max-string evaluation of the
WFSA. Thereafter, claim 16 recites generat[ing] a natural
language translation or transcription of the natural language
content as the generated max-string result x. In analyzing
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whether claim 16 recites significantly more than merely
performing a max string evaluation to generate a max string
result, this ordered combination of limitations must be
considered.
This ordered combination of elements transform the nature of
claim 16 from the abstract idea of merely performing a max
string evaluation into reciting a solution to an outstanding
problem in the area of machine translation and transcription,
namely the problem of computing a natural language translation
or transcription in a way that both (1) uses the preferred max
string path through the constructed WFSA defining a vocabulary
of strings representing possible natural language translations or
transcriptions (rather than using the more computationally
convenient max path surrogate, and (2) performs the translation
in a computationally efficient manner. Claim 16 thus recites
significantly more than the (allegedly) patent ineligible concept
of performing a max string evaluation.
The present claims can be closely analogized to the situation
addressed by the Federal Circuit in Research Corp. v. Microsoft
Corp. [As stated in Research Corp.]:
. . .
The invention presents functional and palpable
applications in the field of computer technology.
These inventions address a need in the art for a
method of and apparatus for the halftone
rendering of gray scale images in which a digital
data processor is utilized in a simple and precise
manner to accomplish the halftone rendering. . . .
This court notes that inventions with specific
applications or improvements to technologies in
the marketplace are not likely to be so abstract that
they override the statutory language and
framework of the Patent Act.
This court also observes that the claimed methods
incorporate algorithms and formulas that control the
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masks and halftoning. These algorithms and
formulas, even though admittedly a significant
part of the claimed combination, do not bring this
invention even close to abstractness that would
override the statutory categories and context. The
Supreme Court has already made abundantly clear
that inventions incorporating and relying upon
even a well known mathematical equation do not
lose eligibility because several steps of the process
use that mathematical equation. . . .
Likewise, claim 16 presents functional and palpable
applications in the field of machine translation and
transcription. Claim 16 addresses a need in the art for machine
translation or transcription in which a max string evaluation is
performed to achieve accurate machine translation in a
computationally efficient manner. Claim 16 is directed to
specific applications or improvements to technologies in the
marketplace, namely machine translation and transcription
systems which are increasingly being used to translate
documents available on the Internet or elsewhere, to perform
automatic dictation, or so forth. The last paragraph of the
immediately above-quoted passage of Research Corp. also
refutes the Examiner’s position that the mere fact that claim 16
involves solving a “mathematical problem” makes it patent
ineligible.
App. Br. 11–12, 14–15, Appellant’s emphasis and citations omitted, panel’s
emphasis added.
2. In the Reply Brief, further as to above contention 1, Appellant also
contends that the Examiner erred in rejecting claims 16–20 under
35 U.S.C. § 101 because:
In arguing for maintaining the rejection of claim 16, the
Examiner’s Answer now appears to argue to the contrary that the
alleged “abstract idea” is the entirety of claim 16 excepting the
very last line reading “generate a natural language translation or
transcription of the natural language content as the generated
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max-string result x.” The Examiner now appears to argue the
abstract idea is the combination of construct[ing] a weighted
finite state automaton (WFSA) having an initial state and a final
state wherein the paths through the WFSA define a vocabulary
of strings representing possible natural language translations or
transcriptions of natural language content and perform[ing] a
max-string evaluation of the WFSA.
Respectfully, at most this bulk of claim 16 might, arguendo,
constitute a combination of two different abstract ideas: the first
being constructing a WFSA whose paths define a vocabulary of
strings representing possible natural language translations or
transcriptions of natural language content, and the second being
performing a max-string evaluation of a WFSA.
The combination of these two ideas, together with the yet
further recitation of generat[ing] a natural language
translation or transcription of the natural language content as
the generated max-string result x, constitutes significantly
more than any single abstract idea that might be argued to be
present in claim 16, and accordingly claim 16 is patent eligible
under Section 101. Claim 16 . . . is directed to a functional and
palpable application in the field of machine translation and
transcription, which improves upon the state of the art in the
machine translation or transcription field by utilizing an
improved max string evaluation to achieve accurate machine
translation in a more computationally efficient manner. This
recited improvement in the field of machine translation and
transcription does not lose its patent eligibility merely because
some, or even a significant portion, of the claimed combination
recites an algorithm or formula.
Reply Br. 5–6, Appellant’s emphasis and citations omitted, panel’s emphasis
added.
3. Appellant also contends that the Examiner erred in rejecting claims
9–15 under 35 U.S.C. § 101 because:
Claim 9 is directed to significantly more than merely
performing a max string evaluation. The ordered combination
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of elements of claim 9 transform the nature of claim 9 from the
abstract idea of merely performing a max string evaluation into
reciting a solution to an outstanding problem in the area of
machine translation and transcription, namely the problem of
computing a natural language translation or transcription in a
way that both (1) uses the preferred max string path through the
constructed WFSA defining a vocabulary of strings representing
possible natural language translations or transcriptions (rather
than using the more computationally convenient max path
surrogate, and (2) performs the translation in a computationally
efficient manner. Claim 9 thus recites significantly more than
the (allegedly) patent ineligible concept of performing a max
string evaluation.
Claim 9 manifestly does not pre-empt all uses of the (alleged)
abstract idea of performing a max string evaluation. Rather,
claim 9 is directed to functional and palpable applications in
the fields of machine translation and transcription. Claim 9
addresses a need in the art for machine translation or
transcription in which a max string evaluation is performed to
achieve accurate machine translation in a computationally
efficient manner. Claim 9 is directed to specific applications or
improvements to machine translation and transcription, which
are increasingly being used to translate documents available on
the Internet or elsewhere, to perform automatic dictation, or so
forth.
App. Br. 16–17, Appellant’s emphasis and citations omitted, panel’s
emphasis added.
4. In the Reply Brief, further as to above contention 3, Appellant also
contends that the Examiner erred in rejecting claims 9–15 under
35 U.S.C. § 101 because:
The Examiner’s Answer performs Step 2A by identifying the
abstract idea as “generating an unweighted automaton ...
generating a deterministic automaton B’ from the unweighted
automaton B ... for each state Q’ of the deterministic automaton
B’ ... identifying the dominant vector Wf ... following
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backpointers from the dominant vector Wf ... that yield the string
x”.
The Examiner’s Answer then performs Step 2B by arguing that
claim 9 recites the additional limitation of “generating a target
natural language translation of source language content as the
generated max-string result x and [sic] generating a transcription
of audio content as the generated max-string result x.” In arguing
this does not constitute "significantly more" so as to satisfy Step
2B, the Examiner argues this is equivalent to “apply it” or “apply
the abstract idea”.
However, even starting, arguendo, with the Examiner’s
proposed abstract idea of generating a max-string result x, claim
9 recites a combination including significantly more than the
single isolated additional limitation addressed by the
Examiner.
More fully, claim 9 recites a method to perform a max-string
evaluation of a weighted finite state automaton (WFSA) A
having initial state q0 and final state qf wherein the paths through
the WFSA A define a vocabulary of strings representing possible
natural language translations or transcriptions of natural
language content, ... comprising ... one of (1) generating a target
natural language translation of source language content as the
generated max-string result x and (2) generating a transcription
of audio content as the generated max-string result x.
Claim 9 thus does not merely recite “apply the max-string
algorithm” or anything remotely that abstract. Rather, claim 9
is directed to the field of machine translation and transcription,
and the recited method outputs a functional and palpable
result, namely a translation or transcription of source language
content into a target language.
Reply Br. 3–4, Appellant’s emphasis and citations omitted, panel’s emphasis
added.
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5. Appellant also contends that the Examiner erred in rejecting claims
1–8 under 35 U.S.C. § 101 because:
Unlike claims 9 and [16], claim 1 is not directed to a machine
translation or transcription task. Accordingly, the arguments of
the previous sections directed to claims 9 and [16] are not
applicable to claim 1.
. . .
It appears . . . that the Office Action is again identifying the
abstract idea as “generating a max string result”. Appellants
respectfully traverse.
. . .
[T]he combination of operations recited in claim 1 transform
the WFSA structure to generate the max string result.
Moreover, this combination of operations recited in claim 1 is
not a well-understood, routine, conventional activity that was
previously known to the industry, but rather presents an
inventive concept. That this is an inventive concept is
recognized by the Examiner, who has never applied any art-
based rejection against claim 1 during the prosecution of this
case.
App. Br. 18–20, Appellant’s emphasis and citations omitted, panel’s
emphasis added.
6. In the Reply Brief, further as to above contention 3, Appellant also
contends that the Examiner erred in rejecting claims 1–8 under
35 U.S.C. § 101 because:
The Examiner’s Answer begins its arguments directed to claim 1
by repeating the above statement. Reference is made back to the
responsive arguments presented in the Appeal Brief.
The remainder of the arguments of the Examiner’s Answer
directed to claim 1 is a quotation of MPEP § 2106.02. However,
MPEP § 2106.02 was removed over three years ago, in Revision
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9 (August 2012) of the MPEP Eighth edition. Thus, the
Examiner’s Answer does not argue claim 1 based on current
MPEP guidelines.
Reply Br. 2–3, Appellant’s emphasis and citations omitted, panel’s
emphasis added.

Issue on Appeal
Did the Examiner err in rejecting claims 1–20 as failing to recite patent-
eligible subject matter?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. Except as noted herein, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which the appeal is
taken (Final Act. 2–6); and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 2–8) in response to the Appellant’s Appeal Brief.
We concur with the conclusions reached by the Examiner. We highlight the
following.
As to Appellant’s above contentions 1 and 2, we are not persuaded the
Examiner erred. In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347,
(2014), the Supreme Court articulated the required analysis for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas (which are not patent eligible under 35 U.S.C. § 101) from
patents that claim patent-eligible applications of these concepts. Alice
Corp., 134 S. Ct. at 2355. The first step in the analysis is to determine
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whether the claims at issue are directed to a patent-ineligible concept, such
as an abstract idea. Id. If the claims are directed to a patent-ineligible
concept, then the second step in the analysis is to consider the elements of
the claims individually and as an ordered combination to determine whether
the additional elements transform the nature of the claim into a patent-
eligible application. Id.
With respect to the first step in the analysis, the Examiner finds that
claim 16 is directed to a mathematical algorithm for performing a max-string
evaluation and generating a max-string result, which is an abstract idea (see
Final Act. 3–4; see also Ans. 4–5), and Appellant does not contest this
finding. See App. Br. 8–15; see also Reply Br. 5–6. Thus, we agree with
the Examiner that claim 16 is directed to an abstract idea.
With respect to the second step in the analysis, we agree with the
Examiner that claim 16 does not recite any additional limitations that
amount to significantly more than the abstract idea. See Ans. 5. As found
by the Examiner, claim 16 merely recites mathematical algorithm steps
(i.e., “generating an unweighted automaton,” “generating a deterministic
automaton from the unweighted automaton,” “for each state Q' of
the deterministic automaton B' (1) defining a set of points . . . and
(2) determining a set of dominators,” “identifying the dominant vector wf,”
and “following backpointers from the dominant vector wf . . . that yield the
string x”) that do not amount to more than the mathematical algorithm. See
Ans. 4–5. As also found by the Examiner, claim 16 further recites an
additional limitation of generating a translation or transcription using the
result of the mathematical algorithm (i.e., “generate a natural language
translation or transcription of the natural content as the generated max-string
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result x”), but this additional limitation is merely the equivalent of an
instruction to apply the mathematical algorithm in either a translation or
transcription context, because the additional limitation fails to explain how
the translation or transcription is generated from the result of the
mathematical algorithm. See Ans. 5. Thus, we agree with the Examiner that
claim 16 does not recite any additional limitations that amount to
significantly more than the abstract idea.
Further, regarding Appellant’s argument that claim 16 can be closely
analogized to the claims at issue in Research Corp. v. Microsoft Corp., 627
F.3d 859 (Fed. Cir. 2010), we disagree with Appellant. In Research Corp.,
the Federal Circuit observed that the claim was not solely directed to the
algorithms and formulas used to control the half-toning of gray scale images
against a blue noise mask, but, instead, was directed to the overall half-
toning technique that utilized the aforementioned algorithms and formulas.
See Research Corp., 627 F.3d at 969. This is in contrast to the Examiner’s
finding that claim 16 is essentially directed to the mathematical algorithm
for performing a max-string evaluation and generating a max-string result.
See Ans. 4–5.
Claim 16 is more similar to the claims at issue in In re Grams, 888
F.2d 835 (Fed. Cir. 1989). In Grams, the Federal Circuit affirmed the
rejection of claims relating to a method of testing a complex system to
determine whether a system condition is normal as non-statutory subject
matter under 35 U.S.C. § 101. See Grams, 888 F.2d at 841. The Federal
Circuit held that, the claims were not statutory because they were essentially
directed to the underlying mathematical algorithm itself, and that the
presence of a physical step in the claim to derive data for the mathematical
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algorithm did not render the claims statutory. See Grams, 888 F.2d at 840.
Like the claims at issue in Grams, claim 16 is essentially directed to the
mathematical algorithm for performing a max-string evaluation and
generating a max-string result, and the presence of an additional limitation
of generating a translation or transcription using the result of the
mathematical algorithm does not render the claims patent-eligible. Thus, we
conclude claim 16 does not recite patent-eligible subject matter.
As to Appellant’s above contentions 3 and 4, we are not persuaded the
Examiner erred. Claim 9 is substantially similar to claim 16, in that claim 9
merely recites steps of a mathematical algorithm for performing a max-
string evaluation and generating a max-string result, and further recites an
additional limitation of generating a translation or transcription using the
result of the mathematical algorithm. Further, the Examiner’s findings
regarding claim 9 are substantially similar to the findings regarding claim 16
(see Final Act. 3–4; see also Ans. 5–6), and Appellant’s above contentions 3
and 4 are substantially similar to Appellant’s above contentions 1 and 2. See
Appeal Br. 16–17; see also Reply Br. 3–4. Thus, for reasons discussed
above, we agree with the Examiner’s findings that: (a) claim 9 is directed to
an abstract idea; and (b) claim 9 does not recite any additional limitations
that amount to significantly more than the abstract idea.
As to Appellant’s above contentions 5 and 6, we are not persuaded the
Examiner erred. As found by the Examiner (see Ans. 6) and as uncontested
by Appellant (see App. Br. 18), unlike claims 9 and 16, claim 1 solely
recites steps of a mathematical algorithm for performing a max-string
evaluation and generating a max-string result, and does not recite an
additional limitation of generating a translation or transcription using the
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result of the mathematical algorithm.1 Thus, claim 1 is even more similar to
the claims at issue in Grams. Thus, for reasons substantially similar to the
reasons discussed above, we agree with the Examiner’s findings that:
(a) claim 1 is directed to an abstract idea; and (b) claim 1 does not recite any
additional limitations that amount to significantly more than the abstract
idea.2

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1–20 as failing to
recite patent-eligible subject matter under 35 U.S.C. § 101.
(2) Claims 1–20 are not patentable.

DECISION
We affirm the Examiner’s rejections of claims 1–20 as failing to recite
patent-eligible subject matter under 35 U.S.C. § 101.

1 Claims 6 and 7 recite an additional limitation of generating a translation or
transcription, respectively, using the result of the mathematical algorithm.
However, for the reasons discussed above, these additional limitations do
not amount to significantly more than the mathematical algorithm.
2 While we agree with Appellant that the reference to Section 2106.02 of the
Manual of Patent Examining Procedure (“MPEP”) in the Examiner’s
Answer is a reference to an outdated section of the MPEP (see Reply Br. 2–
3; see also Ans. 6–7), this does not alter our conclusion that the Examiner
made the correct ultimate finding that claim 1 fails to recite patent-eligible
subject matter.
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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)(1)(iv).

AFFIRMED