Ex Parte Lehman et al

Patent Trial and Appeal Board

May 24, 2017

13867596 (P.T.A.B. May. 24, 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.
13/867,596 04/22/2013 Tobin J. Lehman ARC920120055US1(890.025) 6006
99337 7590 05/24/2017
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
NGO, CHUONG D
ART UNIT PAPER NUMBER
2182
MAIL DATE DELIVERY MODE
05/24/2017 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 TOBIN J. LEHMAN, MARIO H. LICHTSINN,
and HOVEY R. STRONG, JR.
Appeal 2017-000837
Application 13/867,5961
Technology Center 2100
Before LARRY J. HUME, NORMAN H. BEAMER,
and STEVEN M. AMUNDSON, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—21. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. (App. Br. 3.)
Appeal 2017-000837
Application 13/867,596
THE INVENTION
Appellants’ disclosed and claimed inventions are directed to providing
a compressed representation of a number sequence. (Abstract.) Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of providing a compressed representation of a
number sequence, said method comprising:
utilizing a processor to execute computer code
configured to perform the steps of:
receiving an input number sequence;
determining a set of coefficients describing the input
number sequence, via solving at least one algebraic equation,
the at least one algebraic equation comprising at least one of: an
arithmetic equation, and an exponential equation;
accessing a library of stored number sequences, the
number sequences comprising at least one of: arithmetic
number sequences, and exponential number sequences;
determining a representation of the stored number
sequences; and
ascertaining a match of the set of coefficients with
respect to the representation of the stored number sequences.
REJECTIONS
The Examiner rejected claims 1—16 and 21 under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement. (Final
Act. 2-3.)
The Examiner rejected claims 1—17 under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor. (Final Act. 3—4.)
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Application 13/867,596
The Examiner rejected claims 1—21 under 35 U.S.C. § 101 because
the claimed inventions are directed to non-statutory subject matter. (Final
Act. 4—5.)2
ISSUES ON APPEAL
Appellants’ arguments present the following issues:3
Issue One: Whether the Examiner erred in rejecting claims 1—16
and 21 as failing to comply with the written description requirement. (App.
Br. 18-20.)
Issue Two: Whether the Examiner erred in rejecting claims 1—17 as
being indefinite. (App. Br. 20—21.)
Issue Three: Whether the Examiner erred in rejecting claims 1—21 as
directed to non-statutory subject matter. (App. Br. 21—25.)
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner errs. As to the written description and
indefiniteness rejections under 35 U.S.C. § 112, we agree with Appellants.
Otherwise, we disagree with Appellants’ arguments, and we adopt as our
own (1) the pertinent findings and reasons set forth by the Examiner in the
Action from which this appeal is taken (Final Act. 2—5) and (2) the
2 The Examiner has withdrawn the rejection of claims 1—6, 8—12, and 14—20
under 35 U.S.C. § 102(a)(1), and the rejection of claims 7 and 21 under 35
U.S.C. § 103. (Ans. 6.)
3 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed Feb. 22, 2016); the Reply Brief
(filed Oct. 17, 2016); the Final Office Action (mailed Sept. 21, 2015); and
the Examiner’s Answer (mailed Aug. 16, 2016) for the respective details.
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Application 13/867,596
corresponding reasons set forth by the Examiner in the Examiner’s Answer
in response to Appellants’ Appeal Brief (Ans. 6—11). We concur with the
applicable conclusions reached by the Examiner and emphasize the
following.
Issue One — Written Description Support
The Examiner finds the following claimed subject matter lacks written
description support:
In independent claims 1,15, and 16:
a library of stored number sequences, the number
sequences comprising at least one of: arithmetic number
sequences, and exponential number sequences
determining a representation of the stored number
sequences.
In claims 5 and 20:
in response to a failed matching test with respect to the
first library: accessing a second library of stored number
sequences; and testing whether the input number sequence
matches a representation of the stored number sequences of the
second library.
In claims 7 and 21:
adding the input number sequence to the second library
in response to a failed matching test with respect to the second
library.
(Final Act. 2—3.)
We note all of the above-discussed claim limitations appear in the
claims as originally filed, and thus are part of the disclosure for the purpose
of ascertaining compliance with 35 U.S.C. § 112(a). MPEP § 2163. (See
Spec. 1127-29.)
In light of that fact, we do not sustain these rejections.
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Application 13/867,596
Issue Two—Indefiniteness
For independent claims 1,15, and 16, the Examiner concludes “it is
indefinite as to how a representation of the stored number sequences is
determined.” (Final Act. 3.) A claim is indefinite when it contains words or
phrases whose meaning is unclear. MPEP § 2173.02; In re Packard, 751
F.3d 1307, 1310-11 (Fed. Cir. 2014). Appellants argue the Specification
sufficiently explains the meaning of this limitation at issue, citing the
description of how the stored number sequences are “characterized ... by
. . . parameters.” (App. Br. 20; Spec. 122.) We are persuaded the limitation
at issue would be clear to one of ordinary skill in the art in light of this
description in the Specification.
For the limitation in claims 7 and 21, “adding the input number
sequence to the second library in response to a failed matching test with
respect to the second library,” the Examiner concludes it is “unclear whether
the second library stored compressed data or uncompressed data.” (Final
Act. 4.) The Examiner appears to be confusing claim breadth with claim
indefmiteness, and therefore fails to make a prima facie case of
indefmiteness for this limitation. MPEP § 2173.04 (“Breadth of a claim is
not to be equated with indefmiteness. In re Miller, 441 F.2d 689
(CCPA 1971).”)
The Examiner also concludes the term “element” is indefinite as it
appears in claim 12: “‘one element’ is single number, and thus unclear how
a number can be a multiple of ‘a pattern’ which [is] a sequence of numbers.”
(Final Act. 4.) Appellants point to the disclosure in the Specification, which
describes the process shown in Figure 1, for “testing of one or more initial
elements in a sequence.” (App. Br. 11; Spec. 123.)
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Application 13/867,596
We are persuaded the Examiner errs — one of ordinary skill would
understand, based on the description in the Specification, that a single
number of an input sequence (an “element”) is tested to see if it is equal to a
number calculated from various defined multiples of numbers in a stored
number sequence (the “pattern”).
Issue Three — Statutory Subject Matter
In support of the rejection under 35 U.S.C. § 101, the Examiner finds
the claims “merely perform[] computation according to mathematical
relationships or formulas for ascertaining a match of the set of coefficients
with respect to the representation of the stored number sequences.” (Final
Act. 5.)
Patent-eligible subject matter is defined in Section 101 of the Patent
Act, which states:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012). The Supreme Court has “set forth a
framework for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. According to the
framework, the inquiry must first determine whether the claims at issue are
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directed to one of those concepts (i.e., laws of nature, natural phenomena,
and abstract ideas). Id.
If it is determined that the claims at issue are directed to one of the
non-statutory concepts, the second step of the framework is to “consider 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.” Id. (citing Mayo, 132 S. Ct. at
1298, 1297). The second step of the framework also is characterized as “a
search for an ‘inventive concept’” — an element or combination of elements
sufficient to ensure that the claim amounts to “significantly more” than the
abstract idea itself. Id. (citing Mayo, 132 S. Ct. at 1294).
We agree with the Examiner, the claims are directed to the abstract
idea of performing computation according to mathematical relationships or
formulas to obtain a compressed representation of a number sequence.
Appellants argue the claims are “not directed to a ‘fundamental. . . practice
long prevalent in our system,”’ and “are not attempting to preempt every
application of pattern matching via fast array comparison.” (App.
Br. 23—24.) Nonetheless, the claims at issue, on their face, are directed to
abstract mathematical computations. “A method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed. Cir. 2011). The claimed subject matter represents abstract
operations that can be performed either mentally or with “pencil and paper.”
CyberSource, 654 F.3d at 1371.
The Federal Circuit has explained that, in determining whether claims
are patent-eligible under Section 101, “the decisional mechanism courts now
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apply is to examine earlier cases in which a similar or parallel descriptive
nature can be seen—what prior cases were about, and which way they were
decided.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016).4 Accordingly, the Examiner’s analysis is well within
the bounds set out by applicable authorities. Parker v. Flook, 437 U.S. 584
(1978) (computing alarm limits in a catalytic conversion process using a
mathematical formula); Gottschalk v. Benson, 409 U.S. 63 (1972)
(converting signals from BCD to binary recite various steps of storing,
shifting, masking bits, adding binary bits in reentrant shift register).
Moreover, Appellants’ argument that the claims do not preempt
“existing or future DRM [(digital rights management)] schemes that do not
cascade determinations of authorization” (App. Br. 6), is also not persuasive.
“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Turning to the second step of the framework, we agree with the
Examiner:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional element(s) or combination of elements in
the claims other than the abstract idea, such as processor
executing computer code, computer readable storage medium
amount to no more than (i) mere instructions to implement the
abstract idea on a computer, and (ii) recitation of generic
4 The Federal Circuit also noted in that decision that “examiners are to
continue to determine if the claim recites (i.e., sets forth or describes) a
concept that is similar to concepts previously found abstract by the courts.”
Amdocs, 841 F.3d at 1294 n.2 (citation omitted).
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computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry. All steps
performed by the invention as recited in the claims are merely
data gathering, calculating and manipulating numbers, that do
not amount to significantly more than the judicial exception.
(Final Act. 5.) As the Supreme Court explains, regarding the second step of
the framework, “the mere recitation of a generic computer cannot transform
a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 134
S. Ct. at 2358. Stated in other words, “if a . . . recitation of a computer
amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a
computer,’ . . . that addition cannot impart patent eligibility.” Id. (citing
Mayo, 132 S. Ct. at 1301). We also agree with the Examiner, “[vjiewed as a
whole, these additional claim element(s) do not provide meaningful
limitation(s) to transform the abstract idea into a patent eligible application
of the abstract idea such that the claim(s) amounts to significantly more than
the abstract idea itself.” (Final Act. 5.)
Appellants argue, “Applicants’ address the problem when ‘over many
contracts involving thousands of atomic services, hundreds of patterns may
be used, producing millions of distinct predictive cost functions.’” (App.
Br. 25.) This argument is not commensurate with the scope of the claims,
which can be applied by a human being obtaining a compressed
representation of a number sequence by hand.
CONCLUSIONS
For the reasons stated above, we cannot sustain the rejections of
claims 1—16 and 21 as failing to comply with the written description
requirement, nor can we sustain the indefmiteness rejection of claims 1—17.
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However, we do sustain the non-statutory subject matter rejection of
claims 1—21.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. §41.50(a)(1).
DECISION
We affirm the Examiner’s rejections of claims 1—21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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