Ex Parte ZHUANG et al

Patent Trials and Appeals BoardJun 21, 2019

14559816 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/559,816 12/03/2014 139780 7590 06/25/2019 Sheppard Mullin Richter & Hampton LLP Weiguo Chen 379 Lytton Ave. Palo Alto, CA 94301 FIRST NAMED INVENTOR Hao ZHUANG 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. 50ZC-241198 1038 EXAMINER ALMAN!, MOHSEN ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 06/25/2019 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): wchen@sheppardmullin.com svpatents@sheppardmullin.com SheppardMullin_Pair@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAO ZHUANG and YONGDONG WANG Appeal2018-007815 Application 14/559,816 1 Technology Center 2100 Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-20, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify AppEx Networks Holding Limited as the real party in interest. App. Br. 2. Appeal2018-007815 Application 14/559,816 STATEMENT OF THE CASE Introduction The present invention relates to "compression and decompression of data, and particular to data containing redundancies." Spec. ,r 1. Claim 1 is exemplary: 1. An apparatus, comprising: a memory device that stores first history data; and at least one processor configured to: receive input data; determine a relationship between the first history data and one or more portions of the input data; generate one or more reference tokens reflecting the relationship; and transmit the one or more reference tokens to a recipient device, wherein the first history data includes a working data chunk which is most recently compressed in the first history data, and to determine a relationship between the first history data and one or more portions of the input data, the at least one processor is further configured to first determine a relationship between the working data chunk and one or more portions of the input data. References and Re} ections2 Claims 1-20 are rejected under 35 U.S.C. Â§ 101 because they are directed to patent-ineligible subject matter. Final Act. 2-7. 2 Throughout this opinion, we refer to the ( 1) Final Office Action dated August 28, 2017 ("Final Act."); (2) Appeal Brief dated January 26, 2018 ("App. Br."); (3) Examiner's Answer dated May 25, 2018 ("Ans."); and (4) Reply Brief dated July 25, 2018 ("Reply Br."). 2 Appeal2018-007815 Application 14/559,816 Claims 1-20 are rejected under 35 U.S.C. Â§ 102 as being anticipated by Samuels (US 2008/0224902 Al, published Sept. 18, 2008). Final Act. 7- 19. ANALYSIS 35 U.S.C. Â§ 101 Rejection We have reviewed the Examiner's rejection in light of Appellants' contentions and the evidence of record. We concur with Appellants' contention that the Examiner erred. Section 101 of the Patent Act provides "[ w ]hoever 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." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208,216 (2014) (internal quotation marks and citation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in 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 3 Appeal2018-007815 Application 14/559,816 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, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 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 U.S. at 187; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). 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 4 Appeal2018-007815 Application 14/559,816 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, where "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 ( citation 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 Â§ 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the 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 activity such as a fundamental economic practice, or mental processes) (Step 2A, Prong 1 ); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF p ATENT EXAMINING PROCEDURE ("MPEP") Â§ 2106.05(a}-(c), (e}-(h)) (9th Ed., Rev. 08.2017, 2018) (Step 2A, Prong 2). 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 Â§ 2106.05(d)); or 5 Appeal2018-007815 Application 14/559,816 ( 4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (Step 2B.) See Guidance, 84 Fed. Reg. at 54--56. Even if claim 1 recites an abstract idea (such as mental processes recited in the limitation "determine a relationship between the first history data and one or more portions of the input data"), the Federal Circuit explains the "directed to" inquiry is not simply asking whether the claims involve a patent-ineligible concept: The "directed to" inquiry ... cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon-after all, they take place in the physical world. See Mayo, 132 S.Ct. at 1293 ("For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas."). Rather, the "directed to" inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether "their character as a whole is directed to excluded subject matter." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see also Diehr, 450 U.S. at 188 ("In determining the eligibility of respondents' claimed process for patent protection under Â§ 101, their claims must be considered as a whole."); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a whole "focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery"). Therefore, we proceed to Step 2A, Prong 2 of the Guidance to determine whether additional elements of claim 1 integrate the mental 6 Appeal2018-007815 Application 14/559,816 processes into a practical application. Such additional elements may reflect an improvement to a technology or technical field. See Guidance, 84 Fed. Reg. at 55. We determine additional elements of claim 1 integrate the abstract idea into a practical application, as the additional elements ("a memory device that stores first history data; and at least one processor configured to"; "generate one or more reference tokens reflecting the relationship;" "transmit the one or more reference tokens to a recipient device, wherein the first history data includes a working data chunk which is most recently compressed in the first history data, and to determine a relationship between the first history data and one or more portions of the input data, the at least one processor is further configured to first determine a relationship between the working data chunk and one or more portions of the input data") reflect technology improvement of minimizing the transmission of redundant data in order to improve bandwidth efficiency. See claim 1; see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (holding the claims satisfy Alice step two because "the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks"). Our determination is supported by the Specification, which describes the prior art problem of inefficient utilization of bandwidth caused by transmitting redundant data, and the need to minimize the transmission of redundant data in order to improve bandwidth efficiency: It is common to transfer large volume of data over a computer network, or between storage devices over an I/0 (input/output) interface. For example, a user may transfer a whole home directory from a hard drive to a non-volatile 7 Appeal2018-007815 Application 14/559,816 memory device ( e.g., a flash drive) to perform a periodic backup of the hard drive, or transfer a large document file over the Internet. The data transferred can include redundant data, i.e. data that the recipient already possesses. For example, in the case where the user is creating a periodic backup of the hard drive on the flash drive, the backup data to be transmitted to the flash drive typically contains data that already exists in the flash drive. Similarly, in the case where the user transfers the document file over the Internet, the user may be downloading the file from a network source (e.g., a server), modifying it, and uploading the file back to the network source. If the document file is not completely modified, common data can also exist between the version of the file uploaded and the version of the file downloaded. Transmitting redundant data that is stored in both the source and the destination leads to inefficient utilization of bandwidth of 1/0 interface and network. Existing compression and decompression methods fail to take advantage of such data redundancies, since locating redundant data over gigabytes to terabytes data storage is generally considered to be time-consuming and with low yield. Hence, there is a need for a technique to search for redundant data with huge volume of data, in an efficient manner and with a high probability of locating the redundancies, which can minimize the transmission of redundant data and can improve the utilization of limited bandwidth of I/0 interface and network. Spec. ,r,r 3--4. FIG. 2 is a block diagram depicting an exemplary system 200 with which embodiments of the present disclosure can be implemented .... History data 294 includes data that is recently compressed and/or data that is recently generated as a result of decompressing other data, while tables 296 include information that can facilitate a search for a piece of data within history data 294. In some embodiments, history data 294 includes data which system 200 expects to be redundant for a particular transmission. For example, when system 200 receives an 8 Appeal2018-007815 Application 14/559,816 instruction to transmit data to the recipient system ( e.g. system 140 in FIG. 1 ), it may expect that at least part of the data to be transmitted is already part of corresponding history data stored in system 140, hence rendering this part of the data redundant and obviating the need to transmit the redundant data. Using information from tables 296, system 200 can search for and locate the redundant data within history data 294. After locating the redundant data, and knowing that system 140 also stores the same redundant data, system 200 can then transmit, to system 140, information indicating a relationship between the redundant data and history data 294 (and/or the corresponding history data stored in system 140). Such a relationship can be, for example, a location and size of the redundant data in the corresponding history data stored in system 140. Such a relationship typically can be expressed with much less data than the redundant data itself. Therefore, the transmission of the relationship information, instead of the redundant data, can conserve the bandwidth of the medium (e.g., network 130 of FIG. 1) over which the transmission occurs. System 200 can also compress the information to further reduce the volume of data to be transmitted. Spec. ,r,r 31-32. Because the additional elements of claim 1 integrate the mental processes into a practical application, we determine claim 1 is not directed to an abstract idea. See Guidance, Step 2A, Prong 2. For similar reasons, each of claims 2-20 integrates the mental processes into a practical application, and is not directed to an abstract idea. Therefore, we do not sustain the rejection of claims 1-20 under 35 U.S.C. Â§ 101. 35 U.S.C. Â§ 102 Rejection On this record, the Examiner did not err in rejecting claim 1. 9 Appeal2018-007815 Application 14/559,816 We disagree with Appellants' arguments. To the extent consistent with our analysis below, we adopt the Examiner's findings and conclusions in (i) the action from which this appeal is taken (Final Act. 7-19) and (ii) the Answer (Ans. 9-19). I Appellants contend the cited portions of Samuels do not disclose "a working data chunk which is most recently compressed in the first history data," as recited in claim 1 (emphasis added). See App. Br. 12-13; Reply Br. 5-7. In particular, Appellants argue in Samuels, "[t]he list is reordered based on the access time, not the compression time . . . . Therefore, the most recently accessed data in Samuels is not the most recently compressed data in claim 1." Reply Br. 6; see also App. Br. 12. Appellants have not persuaded us of Examiner error. Samuels explains: a device may initially create a compression history comprising data portions A, B, C, D, E, F, G, H, I, and J. The ordered list may then be J, I, H, G, F, E, D, C, B, A, reflecting the order the portions were created, with J being the most recent. If the device then receives and compresses data comprising data from portion F, the device may reorder the list to F, J, L H, G, E, D, C,B,A. Samuels ,r 301 ( emphasis added). Therefore, Samuels discloses an option of creating a compression history including data portions F, J, I, H, G, E, D, C, B, A, with F being the working data chunk that is most recently compressed. As a result, Samuels discloses "a working data chunk which is most recently compressed in the first history data," as required by claim 1. 10 Appeal2018-007815 Application 14/559,816 II Appellants contend [in] Samuels, "[t]he uncompressed data may be transmitted to .... " Thus, what is transmitted in Samuels is uncompressed data, and the compression step is performed after the data is transmitted. This is different from the limitations in claim 1, wherein what is transmitted is a reference token, and the step of "determin[ing] a relationship . . ." is before the step of transmitting the reference token. Thus, Samuels fails to teach the above-discussed limitations in claim 1. App. Br. 12. We disagree. Samuels explains: [TJ he device may access the compression history to determine whether portions of the compression history with fingerprints corresponding to the input data are byte-for-byte matches of the input data. Or the device may, after accessing the compression history to confirm a match, replace one or more portions of the input data with references to the compression history before retransmitting the input data. Samuels ,r 257 ( emphases added). Samuels' teaching of "accessing the compression history to confirm a match" discloses the claimed "determin[ing] a relationship," and its "references to the compression history" discloses the claimed "reference tokens." Therefore, Samuels discloses "determin[ing] a relationship ... " before "transmit[ ting] the one or more reference tokens," as required by claim 1. Because Appellants have not persuaded us the Examiner erred, we sustain the Examiner's anticipation rejection of independent claim 1, and independent claims 11 and 19 for similar reasons. 11 Appeal2018-007815 Application 14/559,816 We also sustain the Examiner's anticipation rejection of corresponding dependent claims 2-10, 12-18, and 20, as Appellants do not advance separate substantive arguments about those claims. DECISION We reverse the Examiner's decision rejecting claims 1-20 under 35 U.S.C. Â§ 101. We affirm the Examiner's decision rejecting claims 1-20 under 35 U.S.C. Â§ 102. Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision rejecting claims 1- 20. See 37 C.F.R. Â§ 4I.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§ 4I.50(f). AFFIRMED 12