Ex Parte Lehman et alDownload PDFPatent Trial and Appeal BoardMay 24, 201713867596 (P.T.A.B. May. 24, 2017) Copy Citation 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.) 2 Appeal 2017-000837 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. 3 Appeal 2017-000837 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. 4 Appeal 2017-000837 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.) 5 Appeal 2017-000837 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 6 Appeal 2017-000837 Application 13/867,596 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 7 Appeal 2017-000837 Application 13/867,596 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). 8 Appeal 2017-000837 Application 13/867,596 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. 9 Appeal 2017-000837 Application 13/867,596 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 10 Copy with citationCopy as parenthetical citation