Ex Parte Liu et al

Patent Trials and Appeals Board

Mar 13, 2019

14571224 - (D) (P.T.A.B. Mar. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/571,224 12/15/2014
114605 7590
Bell & Manning, LLC
2801 West Beltline Hwy.
Ste. 210
Madison, WI 53713
03/15/2019
FIRST NAMED INVENTOR
Jun Liu
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
04500-0063 3781
EXAMINER
KIM,EUNHEE
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
03/15/2019 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):
cbell@bellmanning.com
eofficeaction@appcoll.com
docketing@bellmanning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN LIU and ZHENG ZHAO
Appeal2018-006747
Application 14/571,224 1
Technology Center 2100
Before ROBERT E. NAPPI, MICHAEL R. ZECHER, and
MICHAEL T. CYGAN, Administrative Patent Judges.
CYGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 8-10, 20, 28, and 29. App. Br. 1. Claims 3-
7, 11-19, and 21-27 were cancelled during prosecution. App. Br. 42--44.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is SAS Institute, Inc.
App. Br. 3.
Appeal2018-006747
Application 14/571,224
Disclosed Invention and Exemplary Claim
The disclosed invention relates to improving algorithms for selecting
models used to analyze data in various applications. Spec. ,r 3. In
determining a predictive model for a data set, it is assumed that the data set
contains many redundant or irrelevant variables. Id. ,r 22. An algorithm is
thus used to eliminate the redundant variables to improve the performance of
the model. Id. The disclosed model selection algorithm is a form of a
regression algorithm. Id. The regression algorithm applies "regularization
parameters" that set a threshold for determining if a variable is redundant.
Id. ,r 23. The disclosed invention applies a specific type of algorithm, a
"LARS-LASSO" algorithm, which does not require the regularization
parameters to be pre-specified. Id. ,r 20. A LASSO algorithm performs
model selection by "solving a penalized version of the ordinary least squares
regression algorithm," represented by the Lasso Equation (minB Yz IIXB-yll~
+ A IIBlli), where minB Yz IIXB-yll~ is the ordinary least squares regression
and A IIBlli represents the influence of the regularization parameter A. Id. ,r
35.
Independent claim 1 is exemplary of the disclosed invention, and
reads as follows:
1. A computer-program product tangibly embodied in a non-
transitory machine-readable storage medium, including
instructions configured to be executed to cause a data processing
apparatus to:
receive, from a user of the computer-program product,
information associated with a data set, the data set including a set
of variables, the set of variables being related to a linear model
for predicting a response variable of the data set;
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calculate a regularization parameter indicating a maximum
absolute correlation between the set of variables and the response
variable;
for each variable of the set of variables,
calculate a removal parameter for the variable;
if the calculated removal parameter is greater than the
calculated regularization parameter, include the variable in an
active set; and
if the calculated removal parameter is less than the
calculated regularization parameter, exclude the variable
from the active set;
generate the linear model using the active set and a least angle
regression algorithm including a least squares regression
algorithm, the least squares regression algorithm constraining a
number of absolute regression coefficients utilized in the least
angle regression algorithm; and
provide, to the user of the computer-program product,
information related to the generated linear model for use as a
predictive model.
Independent claims 10 and 20 recite a method and a system,
respectively, having limitations commensurate with independent
claim 1. By virtue of their dependency, claims 2, 8, 9, 28, and 29
recite or incorporate the limitations of at least one of independent
claims 1 and 20.
Examiner's Rejection
The Examiner rejects claims 1, 2, 8-10, 20, 28 and 29 under 35
U.S.C. § 101 as failing to claim eligible subject matter. Final Act. 2-3. 2
PRINCIPLES OF LAW
2 The Final Action withdrew rejections under 35 U.S.C. § 112(b ). Final Act.
3.
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Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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 is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: "[l]aws of nature, natural
phenomena, and abstract ideas." Alice Corp. Pty. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014). This exception precludes patenting of "the basic tools
of scientific and technological work" from which all inventions spring. Id.
at 216-17. Invention or discovery under§ 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalkv. Benson, 409 U.S. 63, 67 (1972).
Patent-eligible subject matter is, therefore, present, except where a
claim would be coextensive with a law of nature, natural phenomena, or
abstract idea, or where the claim represents no more than a drafting effort in
furtherance of that purpose. Alice, 573 U.S. at 216, 226-27. Such drafting
efforts, which have been recognized by limitations having the "practical
effect" of claiming a law of nature, natural phenomena, or abstract idea, thus
fail to be inventive "practical applications" of the same. Benson, 409 U.S. at
71-72.
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim, as a whole, must
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
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Application 14/571,224
U.S. at 217-18. In applying this eligibility analysis, our reviewing court has
stated, "the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen ... the
classic common law methodology for creating law when a single governing
definitional context is not available." Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
To address the growing body of precedent, the USPTO recently
published revised examination guidance on the application of§ 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50
(Jan. 7, 2019) (hereinafter, "2019 Guidance"). The 2019 Guidance seeks to
improve the clarity of the subject matter eligibility analysis and improve
consistency of this analysis across the US PTO. Id.
Under the 2019 Guidance, we first look to whether the claim is
directed to a judicial exception because:
( 1) the claim recites a law of nature, natural phenomenon, or abstract
idea; the latter of which includes certain groupings, identified as
mathematical concepts, certain methods of organizing human activity
and mental processes; and
(2) the claim, as a whole, fails to recite additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a}-(c), (e}-(h)).
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 are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Guidance, passim.
ANALYSIS
We have reviewed the Examiner's subject matter eligibility rejections
(Final Act. 2--4) in light of Appellants' contentions that the Examiner has
erred (App. Br. 10-39; Reply Br. 10-51). Further, we have reviewed the
Examiner's response to Appellants' arguments (Ans. 4--21). We disagree
with Appellants' contention that the Examiner erred in rejecting the pending
claims.
"Directed to an Abstract Idea"
The Examiner finds the claim to be directed to "the abstract idea of
calculating a linear model which is a data manipulation using a mathematical
algorithm." Final Act. 2. Appellants do not specifically contest the
existence of, or the Examiner's characterization of, the abstract idea recited
in the claims; instead, Appellants contend that the claims are not directed to
the abstract idea, but are instead directed to an improvement to computer
processing. App. Br. 20; Reply Br. 10.
We agree with the Examiner's uncontested finding that the claims
recite an abstract idea. Each of the claims under appeal require a series of
calculations ("calculating a regularization parameter," "calculating a
removal parameter," comparing the values of removal parameter and
regularization parameter to create an active data set of variables for which
"the calculated removal parameter is greater than the calculated
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regularization parameter," and "generat[ing] the linear model using the
active set and a least angle regression algorithm including a least squares a
regression algorithm," wherein the "least squares regression algorithm [is]
constraining a number of absolute regression coefficients utilized in the least
angle regression algorithm,") on a data set. This series of calculations is the
type of mathematical concept found to be abstract by the courts. See 2019
Guidance, 84 Fed. Reg. at 52; SAP America, Inc. v. InvestPic, LLC, 898 F.3d
1161, 1163 (Fed. Cir. 2018) (holding that claims to a "series of mathematical
calculations based on selected information" are directed to abstract ideas);
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) (holding that claims to a "process of organizing information
through mathematical correlations" are directed to an abstract idea);
Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1280 (Fed. Cir. 2012) (identifying the concept of"managing a stable
value protected life insurance policy by performing calculations and
manipulating the results" as an abstract idea).
Having found the claims to recite an abstract idea, we next determine
if the claims are directed to that abstract idea. The Examiner finds the
claims to contain elements additional to the abstract idea; namely, selecting
information for collection and for display/output in a digital form, and
generically claimed computer elements. Final Act. 2-3; Ans. 7. The
Examiner finds that these do not improve the general functioning of the
computer itself. Ans. 5, 7. The Examiner further finds that these additional
elements do not provide a meaningful limitation such that the claims are not
directed to the abstract idea because they "amount to generic computer
components performing generic computing functions and/or tasks." Ans. 9.
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The Examiner further finds that the claims do not result in a physical
transformation of an article. Ans. 11-12. The Examiner further finds that
neither the problem nor the solution addressed by the claims is rooted in
computer technology because "[t]here is nothing in the claim to suggest that,
once generating/providing a linear model is performed, the computer
functionalities [] improved"; rather, the purported advance is "in uses for
existing computer capabilities, not new or improved computer capabilities."
Ans. 12-13.
Appellants contend that the disclosed subject matter acts to "improve
the overall performance of the regression algorithm by reducing the number
of variables on which to conduct the regression analysis." App. Br. 21
( emphasis omitted) ( quoting Spec. ,r 22). Appellants further cite the
Specification for the proposition that, "[ s ]ince a larger number of irrelevant
or redundant variables can be discarded with safe screening, the LASSO
computation can be significantly accelerated." Id. ( emphasis omitted)
( quoting Spec. ,r 25). Appellants contend that the "claimed subject matter
does make better use of the computer hardware" because it "computes an
optimal solution substantially faster." App. Br. 23. Appellants further state
that the claimed subject matter improves the functioning of the computer
because "the computer can generate a predictive model significantly faster
without a predefined regularization parameter that the user may or may not
understand how to define effectively." Id. at 32-33.
Appellants cite to various authorities to support the proposition that a
mathematical formula, even if well known, can improve the function of a
computer or another technology. See App. Br. 23-37 ( citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); McRO, Inc. v. Bandai
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Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); Diamond v. Diehr,
450 U.S. 175 (1981); Cal. Inst. of Tech. v. Hughes Commc'ns, Inc., 59 F.
Supp. 3d 974 (C.D. Cal. 2014); Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288 (Fed. Cir. 2016); BASCOM Global Internet Servs. Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).
We are not persuaded of error in the Examiner's finding that the
claims are directed to an abstract idea. Appellants' primary contention is
that the claimed subject matter provides an improvement to the functioning
of the computer. App. Br. 20; Reply Br. 10. However, the evidence
provided by Appellants, at best, points to an improvement in the
mathematical algorithm itself. The claimed subject matter "improve[ s] the
overall performance of the regression algorithm"; "the LASSO computation
can be significantly accelerated"; and the computer "computes an optimal
solution substantially faster." App. Br. 21, 23. Appellants' characterization
of the claimed subject matter is of one that is directed essentially to a
method of calculating, using the mathematical LASSO formula for an
improved mathematical analysis, which is the type of subject matter the
courts generally have held to be directed to an abstract idea. Digitech, 758
F .3 d at 13 51 ( finding that without more, "a process that employs
mathematical algorithms to manipulate existing information to generate
additional information" is directed to an abstract idea); SAP, 898 F.3d at
1168 (stating "the focus of the claims is not any improved computer or
network, but the improved mathematical analysis").
By contrast, the cases cited by Appellants illustrate improvements to a
computer technology or to another technology or technical field, which have
been found to be characteristic of patent-eligible subject matter. See Alice,
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573 U.S. 208, 225. The former category includes those in which
improvements are made to the basic functions of a computer itself. See
Enfzsh, 822 F.3d 1327, 1337, 1339 (finding the claimed invention is
"specifically directed to a self-referential table for a computer database,"
reflected in, e.g., a "'means for configuring' algorithm" such that the table
"functions differently than conventional database structures" so as to
"improve the way a computer stores and retrieves data in memory"). Unlike
the invention in Enfzsh, Appellants' purported invention improves the
performance of a task that may be performed on a computer and not an
improvement to computer technology, such as data storage and retrieval.
We concur with the Examiner's finding that the involvement of the
computer is limited to use of existing computer capabilities, and not new or
improved computer capabilities. Ans. 12-13. Accordingly, we do not find
the claims to be integrated into a practical application through improving the
technology of a computer.
The latter category of cases cited by Appellants demonstrate an
improvement to a technology or technical field. See McRO, 837 F.3d 1299,
1314--16 (finding the claimed invention does not "simply use a computer as
a tool to automate conventional activity" but instead uses the computer to
"perform a distinct process" that, unlike the tasks in Parker v. Flook, 437
U.S. 584 (1978), Bilski v. Kappas, 561 U.S. 593 (2010), and Alice, is carried
out in a different way than the prior non-computer method to improve the
technology of 3-D animation techniques); Diehr, 450 U.S. 175, 191
(viewing the claimed invention as "a process for molding rubber products
and not as an attempt to patent a mathematical formula"). However,
Appellants do not identify a non-computer technology or technical field that
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its purported invention allegedly improves. Nor are we persuaded that
improving the performance of a mathematical algorithm, as contended by
Appellants, is sufficiently similar to the type of improvement to a
technology or technical field previously found by the courts to be eligible.
Accordingly, we do not find the claims to be integrated into a practical
application through improving a non-computer technology or technical field.
Still other cases cited by Appellants were found to be directed to an
abstract idea, or were decided without resolving that inquiry. Cal. Inst. of
Tech., 59 F. Supp. 3d at 993 ("[E]ncoding and decoding data for error
correction ... is abstract"); Amdocs, 841 F.3d 1288, 1306 ("For argument's
sake we accepted the district court's view of the disqualifying abstract ideas"
i.e., as the claims being directed to an abstract idea); BASCOM, 827 F.3d at
1348 ("filtering content is an abstract idea"). These cases do not support a
contention that a claimed invention is not directed to an abstract idea, but are
relevant instead to the question of whether a claimed invention provides
"significantly more" than the judicial exception to which the claim is
directed. Accordingly, Appellants' contentions regarding these cases are
addressed with regards to the "significantly more" inquiry of the second step
of Alice, infra.
Furthermore, Appellants have not persuaded us of error in the
Examiner's finding that the additional elements in the claims amount to
anything more than a general-purpose computer. Ans. 7. The passages of
the Specification discussing the underlying computer support the Examiner's
finding. Spec. ,r,r 82 ("computer includes a central processing unit that
interprets and executes instructions; input devices ... ; memory that enables
the computer to store programs and data; and output devices"), 83. These
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types of computer hardware performing basic computing functions of
calculation, storage, and transmissions have been found to be merely generic
computer functions. Alice, 573 U.S. at 226.
Additionally, the passages of the Specification relied upon by
Appellants in the Appeal Brief (App. Br. 20-22) show that the participation
of the generic computer components is limited to the performance of
repetitive calculations, which the courts have found not to impose
meaningful limits on the scope of claims reciting mathematical calculations.
Bancorp, 687 F.3d at 1278. Finally, Appellants have not contested the
Examiner's finding that the claims do not result in a physical transformation
of an article.
With respect to dependent claims 8, 9, 28, and 29, Appellants contend
that these claims "include further detailed instructions ... for providing a
predictive model much faster with equal accuracy." App. Br. 38-39.
However, this amounts to a contention that these claims further define and
improve the mathematical calculations. Appellants do not provide reasoning
as to why these claims would provide an improvement to computer
functionality beyond that in the independent claims. Accordingly, we do not
find the claims under appeal to be integrated into a practical application.
For the foregoing reasons, Appellants have failed to show error in the
Examiner's finding that the claims are directed to a mathematical concept.
Nor are we persuaded that the claims, as a whole, recite additional elements
that integrate the mathematical concept into a practical application.
"Significantly More"
Appellants contend that their purported invention is eligible because
they provide a particular, new, and non-obvious solution as opposed to
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merely claiming the idea of a solution or outcome, citing Amdocs and
BASCOM. App. Br. 34--37. However, the question of whether a claim is
new and non-obvious is separate from the question of eligibility. Diehr, 450
U.S. at 190.
Furthermore, the inventions at issue in Amdocs and BASCOM were
not eligible simply because they claimed a solution with particularity.
Instead, those inventions were eligible because the claim limitations,
considered as an ordered combination, provided significantly more than the
claimed abstract idea. Amdocs, 841 F.3d at 1300--01 (providing an
"unconventional technological solution" in which "generic components
operate in an unconventional manner" through the use of network devices
and "gatherers" that permit data to "reside in the peripheries of the system,"
but are still "accessible from a central location"); BASCOM, 827 F.3d at
1350 (providing "the installation of a filtering tool at a specific location,
remote from the end-users, with customizable filtering features specific to
each end user" by "taking advantage of the ability of at least some ISPs
[internet service providers] to identify individual accounts that communicate
with the ISP server, and to associate a request for Internet content with a
specific individual account").
Nor does Appellants' invocation of California Institute of Technology
provide a basis for finding Appellants' claims to provide significantly more
than the recited abstract idea. Although not binding precedent, we consider
the reasoning presented in California Institute of Technology for any
persuasive value it may have. In California Institute of Technology, the
district court described the claimed invention as solving a problem particular
to computers, i.e., "the corruption of data during transmission," using "error
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correction codes [that] were not conventional activity that humans engaged
in before computers." Cal. Inst. of Tech., 59 F. Supp. 3d at 995. The district
court described the claimed invention as "solv[ing] a problem unique to
computing (data corruption due to noise)." Id. at 1000.
Appellants have not persuasively explained how the additional
elements of their purported invention solve a problem particular to
computers or another technology or technical field, or are otherwise
unconventional in combination, similar to that in Amdocs, BASCOM, or Cal.
Inst. of Tech. Instead, the additional generic computer elements of
Appellants' purported invention are used merely for their ability to perform
repetitive calculations to solve a problem relating to inefficiencies in a
particular mathematical modeling technique.
With respect to dependent claims 8, 9, 28, and 29, Appellants do not
contend that any additional elements are added such that they amount to
significantly more than the mathematical concept itself, but instead contend
that these claims further define and improve the mathematical calculations.
App. Br. 38-39. Appellants have not persuaded us that these claims recite
additional elements that do more than further refine the mathematical
concept, and therefore do not provide subject matter eligibility. See Bilski,
561 U.S. at 611. Accordingly, Appellants have not persuaded us that the
Examiner erred in finding the claims did not provide significantly more than
the mathematical concept to which the claims are directed.
Preemption
Appellants further contend that the claims do not impermissibly
preempt. App. Br. 37-38. We are not persuaded by Appellants' preemption
argument because preemption concerns are addressed by the Supreme
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Court's eligibility framework, which, as applied here, has resulted in a
finding of patent ineligible subject matter. Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (stating "[w]here a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, ... preemption concerns are fully addressed and
made moot"). A lack of complete preemption does not make the claims any
less abstract. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
("[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract.").
DECISION
For the above-described reasons, we affirm the Examiner's rejection
of claims 1, 2, 8-10, 20, 28, and 29 under 35 U.S.C. § 101.
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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