Ex Parte WILLIAMSON

Patent Trials and Appeals Board

Jan 31, 2019

12955768 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/955,768 11/29/2010
14400 7590 02/04/2019
LOWENSTEIN SANDLER LLP / Red Hat
Patent Docket Administrator
One Lowenstein Drive
Roseland, NJ 07068
FIRST NAMED INVENTOR
Eric WILLIAMSON
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.
05220.1388 (Ll338) 8150
EXAMINER
TORGRIMSON, TYLER J
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
patents@lowenstein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC WILLIAMSON
Appeal 2018-004131
Application 12/955,768 1
Technology Center 2100
Before MARC S. HOFF, JOHN P. PINKERTON, and SCOTT E. BAIN,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1--4, 6-14, 16-20, 26, and 28. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
Appellant's invention is a system and method for generating
interpolated input data sets using reduced input source objects. A user can
1 The real party in interest is Red Hat Inc. Br. 3.
2 Claims 5, 15, 21, 22, and 27 have been cancelled. Claims 23-25 were
denied entry by the Examiner (Advisory Action mailed September 28,
2012).
Appeal 2018-004131
Application 12/955,768
input or access a set of target output data that the user wishes to be generated
from an interpolated set of input data based on an interpolation function. The
interpolation engine can receive the target data, and interpolate other inputs
that will produce the target output, and can reduce the number of
predetermined data objects, or the dimensions of input data sets, to generate
interpolated inputs based on more compact inputs. See Abstract.
Claim 1 is exemplary of the claims on appeal:
1. A method, comprising:
receiving a multi-dimensional input data object;
receiving output data;
presenting a selection dialog via a user interface, the
selection dialog comprising a first interface element and a second
interface element;
receiving a selection of the first interface element, the
selection comprising an adjustment to the input data object;
generating, by a processor and in view of the adjustment,
reduced input data from the input data object by removing, from
along an axis of the input data object, a plane of data that distorts
an interpolation function with respect to the input data object,
wherein generating the reduced input data reduces computational
overhead on the processor with respect to computing the
interpolation function;
generating first interpolated input data in view of the input
data object and the output data;
generating, by the processor, second interpolated input data
in view of the reduced input data and the output data, the second
interpolated input data being generated to conformally map a
combination of the reduced input data and the first interpolated
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input data to the output data, wherein by generating the reduced
input data the processor generates the second interpolated input
data more efficiently than generating the second interpolated input
data in view of the input data object; and
in response to receipt of a selection of the second interface
element, accepting the reduced input data in view of a
determination that the second interpolated input data is within a
series output margin of the first interpolated input data.
Claims 1--4, 6-14, 16-20, 26, and 28 stand rejected under 35 U.S.C.
§ 101 as being drawn to patent-ineligible subject matter.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed August 14, 2017), the Reply Brief ("Reply Br.," filed
March 8, 2018), and the Examiner's Answer ("Ans.," mailed January 9,
2018) for their respective details.
ISSUES
1. Is the claimed invention directed to a judicial exception?
2. Is the identified judicial exception integrated into a practical
application?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. v. CLS Bank Int 'l,
573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category,
we are guided by the Supreme Court's two-step framework, described in
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Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed
to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third
party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S.
593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the
basic concept of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978));
and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as "molding rubber products" (Diamond v. Diehr, 450
U.S. 175, 192 (1981)); "tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores" (id. at 184 n. 7 ( quoting Corning
v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour
(Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785
(1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 at 176; see also id. at 192 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.").
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Application 12/955,768
Having said that, the Supreme Court also indicated that a claim "seeking
patent protection for that formula in the abstract ... is not accorded the
protection of our patent laws, ... and this principle cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment." Id. (citing Benson and Flook); see, e.g., id. at
187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be
deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, in which "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to
transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). 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 interactions such as a fundamental economic practice, or
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Application 12/955,768
mental processes); and
(2) 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
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(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 Memorandum.
ANALYSIS
Independent claim 1 recites a method including the steps of, inter alia,
generating reduced input data from the input data object by removing a
plane of data that distorts an interpolation function, wherein generating
reduced input data reduces computational overhead on the processor;
generating first interpolated input data in view of the input data object and
the output data; generating, by the processor, second interpolated input data,
to conformally map a combination of the reduced input data and the first
interpolated input data to the output data, whereby by generating the reduced
input data the processor generates the second interpolated input data more
efficiently. Independent claim 11 recites a system including analogous steps
concerning generating reduced input data and generating second interpolated
input data. Independent claim 26 recites a non-transitory computer readable
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medium having instructions encoded thereon, which when executed cause a
processor to perform analogous steps concerning generating reduced input
data and generating second interpolated input data.
ABSTRACT IDEA
Appellant's invention is concerned with using an interpolation engine
and/or other logic or mechanisms to reduce the data objects and/or
dimensions of the set of predetermined input data, to generate a set of
reduced predetermined input data. Spec. ,r 27. The object of such data
reduction is to remove data that tends to distort, degrade, and/or otherwise
affect the quality of accuracy of the set of interpolated input data, the
interpolation function, or other output generated by the interpolation engine.
See Spec. ,r 26.
Our first task under the Guidelines is to determine whether
Appellant's invention is directed to a judicial exception, particularly any of
certain groupings of abstract ideas. We find that Appellant's invention is
directed to multiple mathematical concepts, similar to those found to be
patent-ineligible by the courts. 3
3 See, e.g., Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of
hedging ... reduced to a mathematical formula ... is an unpatentable
abstract idea[.]"); Diamond v. Diehr, 450 U.S. 175, 191 (1981) ("A
mathematical formula as such is not accorded the protection of our patent
laws") (citing Benson, 409 U.S. 63); Parker v. Flook, 437 U.S. 584, 594
(1978) (''[T]he discovery of [a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.'');
Benson, 409 U.S. at 71-72 (concluding that permitting a patent on the
claimed invention ''would wholly pre-empt the mathematical formula and in
practical effect would be a patent on the algorithm itself''); Mackay Radio &
Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) ("[A]
scientific truth, or the mathematical expression of it, is not patentable
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The claimed invention is directed to a first mathematical concept of
generating reduced input data by removing, from along an axis of the input
data object, a plane of data that distorts an interpolation function. The
claimed invention is further directed to the mathematical concept of
generating first interpolated input data in view of the input object and the
output data. "Interpolation" is a known mathematical operation for
constructing new data points within the range of a discrete set of known data
points. The claimed invention is still further directed to the mathematical
concept of generating second interpolated input data in view of the reduced
input data and the output data, the second interpolated input data being
generated to conformally map a combination of the reduced input data and
the first interpolated input data to the output data.
INTEGRATED INTO A PRACTICAL APPLICATION
Notwithstanding our finding that the claims recite a judicial exception,
i.e., an abstract idea, we further determine under the Guidelines that the
judicial exception identified in the claims ( the plural mathematical concepts
mentioned supra) is integrated into a practical application. Claim 1
explicitly recites that "generating the reduced input data reduces
invention[.]"); 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. (US.), 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).
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Application 12/955,768
computational overhead on the processor with respect to computing the
interpolation function," and that "by generating the reduced input data the
processor generates the second interpolated input data more efficiently than
generating the second interpolated input data in view of the input data
object." We agree with Appellant, and we consider the claimed removal of a
plane of data that distorts an interpolation function to constitute an
improvement to the functioning of a computer, because of the disclosed and
claimed reduction in computational overhead in computing the interpolation
function, and because of the disclosed and claimed greater efficiency in
generating second interpolated input data. MPEP 2106.05(a).
Appellant's Specification recites producing "a set of reduced
predetermined input data 160 in a variety of ways," including "the removal
of entire dimensions of the set of predetermined input data 124, such as to
remove planes or 'slices' of set [sic.] of predetermined input data 124."
Spec. ,r 27. The "substitution of reduced predetermined input data 162
and/or set of reduced predetermined input data 160 for the full complement
of the set of predetermined input data 124 can reduce computational
complexity of the interpolation function 140 and/or other functions;" that
substitution "can likewise improve the accuracy of the interpolation function
140, for instance by removing data objects, segments, and/or dimensions
which tend to distort or skew the interpolation function 140." Spec. ,r 33.
The Examiner argues that the claimed invention does not improve the
functioning of the computer, because "removal of data from the set is an
abstract idea, and therefore the benefits provided by the abstract idea itself
do not provide anything beyond implementing it on a computer." Ans. 6.
This argument is not persuasive because the removal of data from the set
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Application 12/955,768
facilitates greater efficiency in the (subsequent) performance of the
interpolation function 140, and greater computational efficiency in
generating the claimed "second interpolated input data." See Spec. ,r,r 25,
26, 33.
The Examiner argues that Appellant's analogy to McR04 is
misplaced, because the claimed invention does not set forth "'limited rules'
used 'in a process specifically designed to achieve an improved
technological result in conventional industry practice.' .... Rather, the
claims are directed solely to the mathematical algorithm without any
additional steps applying the result." Ans. 6; (citing McRO, 837 F.3d at
1316). We disagree with the Examiner, because the claimed removal of a
plane of data is subsequently applied to Appellant's interpolation process.
After the data removal, Appellant's interpolation function is applied, by its
processor, to the reduced input data object, to generate first interpolated
input data, and to generate second interpolated input data in order to
conformally map a combination of the reduced input data and the first
interpolated input data to the output data. As the claim recites, the generation
of reduced input data enables greater efficiency in the generation of the
second interpolated input data.
Because we conclude that the judicial exception recited in each
independent claim is integrated into the practical application of improving
the functioning of a computer, we conclude that the claimed invention is
patent-eligible. Thus, we do not sustain the Examiner's§ 101 rejection of
4 McRO, Inc. dba Planet Blue v. Bandai Namco Games American Inc., 837
F.3d 1299 (Fed. Cir. 2016).
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claims 1--4, 6-14, 16-20, 26, and 28 as being drawn to patent-ineligible
subject matter.
CONCLUSION
1. The claimed invention is directed to a judicial exception, to wit,
multiple mathematical concepts.
2. The identified judicial exception is integrated into a practical
application: an improvement to the functioning of a computer.
ORDER
The Examiner's decision to reject claims 1--4, 6-14, 16-20, 26, and
28 under 35 U.S.C. § 101 is reversed.
REVERSED
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