NEC Laboratories Europe GmbH

Patent Trials and Appeals BoardNov 2, 2021

2020005100 (P.T.A.B. Nov. 2, 2021)

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. 15/439,979 02/23/2017 Konstantinos Gkiotsalitis 815603 5804 95683 7590 11/02/2021 Leydig, Voit & Mayer, Ltd. (Frankfurt office) Two Prudential Plaza, Suite 4900 180 North Stetson Avenue Chicago, IL 60601-6731 EXAMINER SCHEUNEMANN, RICHARD N ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 11/02/2021 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): chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KONSTANTINOS GKIOTSALITIS and ODED CATS ____________ Appeal 2020-005100 Application 15/439,9791 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, ROBERT J. SILVERMAN, Administrative Patent Judges. Dissenting opinion filed by SILVERMAN, Administrative Patent Judge. FISCHETTI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant has filed a Request for Rehearing (hereinafter “Req. Reh’g” or “Request”) under 37 C.F.R. § 41.52(a)(3) of our Decision entered on June 30, 2021 (hereinafter “Decision”). Our Decision affirmed the Examiner’s rejection of claims 1–15 under 35 U.S.C. § 101, denominating it as a new 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies NEC Laboratories Europe GmbH as the real party in interest. Appeal 2020-005100 Application 15/439,979 2 ground of rejection under 37 C.F.R. § 41.50(b), and reversed the rejection of claims 1–15 under 35 U.S.C. § 103. (Decision 19). For the reasons identified below, we deny the Request for Rehearing. REQUEST FOR REHEARING ARGUMENTS Appellant argues: [E]ven if steps b), c) or e) of claim 1 may involve or be based on mathematical concepts does not mean that these steps are “directed to” these concepts. On the contrary, step b) of claim 1 recites forming clusters of time periods within the day based on the determined travel time and demand variations and splitting the day into the time periods. This step does not recite a formula, and there are various ways of performing this step using different formulas or no particular formula at all. (Req. Reh’g 4). We disagree with Appellant. Here, as elsewhere in the Request, Appellant attempts to distinguish a mathematical “formula” from the more generally offered “mathematical concepts— mathematical relationships,” but both are enumerated exceptions under the Guidance.2 (Decision 10). On the plain face of the claim language of step b), the claim recites a mathematical concept – division. The limitation, “forming clusters of time periods within the day based on the determined travel time and demand variations and splitting the day into the time periods,” requires dividing “time periods within the day,” as does “splitting the day into the time periods.” The majority’s decision makes clear that “our analysis [is directed] to the mathematical concept aspect of the Examiner’s finding (emphasis added),” and not more specifically as Appellant asserts, to any 2 Enumerated judicial exception included in the Guidance are: (a) mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations. Guidance, 84 Fed. Reg. at 52. Appeal 2020-005100 Application 15/439,979 3 one formula(s)3. (Decision 4). The majority’s decision on pages 11–12 identified for each claim limitation, a mathematical relationship, mathematical formula, equation, or a mathematical calculation, each of which was described in the Specification. Appellant itself mapped these formulas to the claim limitations in its Appeal Brief at the “Summary of Claimed Subject Matter. (Appeal Br. 2). From these Specification citations, it is clear that proper context of the terms in limitations b), c), and e) of claim 1 is that they are representative of mathematical formulas or equations, mathematical calculations. We determine the scope of the claims in patent applications “not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). Appellant asserts, [t]he difference between limitations reciting a mathematical formula and limitations which are merely based or involve on mathematical concepts is illustrated by cases cited in the Decision on Appeal and the Office’s Example 39 set forth below, which, like the present invention, is directed to an improved machine learning method. (Req. Reh’g 5). 3 Appellant’s statement, “This step does not recite a formula, and there are various ways of performing this step using different formulas or no particular formula at all (Req. Reh’g 4),” conflicts with its duty to describe how to enable and set forth the best mode of carrying out the invention. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki, 535 U.S. 722, 736 (2002). Appeal 2020-005100 Application 15/439,979 4 We disagree with Appellant that claim 1 of Example 39 is akin to claim 1 on appeal before us here. (Req. Reh’g 5–6). The difficulty with Appellant’s argument is that exemplary claim 1 of Example 39 was deemed patent-eligible because it provided a specific improvement over prior art systems by more robustly detecting human faces in images where there are shifts, distortions, and variations in scale and rotation of the face pattern in the image. See Subject Matter Eligibility Examples: Abstract Ideas, 8–9, retrieved from https://www.uspto.gov/sites/default/files/documents/ 101_examples_37to42_20190107.pdf. Thus, exemplary claim 1 of Example 39 addressed technological difficulties related to a system retrained with an updated training set containing the false positives produced after face detection has been performed on a set of non-facial images. See id. at 8. As discussed above, Appellant has neither identified nor demonstrated that the present claims provide such a specific technological device improvement over prior art systems. Mathematical formulas/relationships applied for dynamically allocating frequency settings using a plural frequency setting solutions employing a Branch and Bound approach with Sequential Quadratic Programming (SQP) or a sequential genetic algorithm with exterior point penalization to determine a most operationally reliable frequency setting solution are not technological function controlling device operations, they are merely computational. By contrast, the claim of Example 39 requires device–functional steps of, mirroring, rotating, smoothing, or contrast reduction as part of the claimed transformation recitation which presents more than the mere recitation of mathematical relationships and/or formulas presented in claim 1 on appeal before us here. Appellant next argues, Appeal 2020-005100 Application 15/439,979 5 it is respectfully submitted that at least steps b), c) and e) of claim 1 should be considered as additional elements under step 2A prong two, alone and in combination with each other, to determine if they provide an improvement to the technological field of automated transit systems and the specialized computers controlling the same.” (Req. Reh’g 6). We disagree with Appellant. Steps b), c), and e) are listed as follows: b) forming clusters of time periods within the day based on the determined travel time and demand variations and splitting the day into the time periods; c) computing, for each of the time periods for which a new frequency setting will be allocated, frequency allocation ranges within which waiting times at multi-modal transfer stops are reduced and selecting a frequency allocation using criteria including at least a passenger demand coverage, an operational costs reduction and a total multi-modal travel time reduction; . . . e) testing sensitivity of the frequency setting solutions against different travel time and demand scenarios so as to determine a most operationally reliable frequency setting solution. (Req. Reh’g 2). Our Decision on pages 11–12 maps each of these limitations to the enumerated judicial exception of mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations, as described in the Specification. Appellant’s argument fails because mathematical concepts cannot constitute additional elements and such features cannot constitute the “inventive concept.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this Appeal 2020-005100 Application 15/439,979 6 court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.”); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). Appellant asserts the Decision overlooks step g) which recites “updating a timetable of the transit service to include the new frequency setting.” But we did consider the updating step and we direct Appellant to page 15 which notes: “The sequence of data reception-analysis (utilizing/forming/ computing (successively)/testing/providing/updating) and storing is equally generic and conventional or otherwise held to be abstract.” (Decision 15). And we did consider step g) together with step f) in our decision because “[t]he ‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.’” Affinity Labs of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). Like step f), step g) (updating a timetable of the transit service to include the new frequency setting), is no more than an insignificant extrasolution activity coat–tailing on the “providing” step of its previous recited limitation to do no more than update with the post solution data. Appellant argues: In addition to the improvements provided to the technical field of automated transit systems, the claims are also directed to improvements to computers themselves. The majority opinion at page 15 states that “each step does no more than require a generic Appeal 2020-005100 Application 15/439,979 7 computer to perform generic computer functions.” This is factually incorrect because a generic computer would need to be specially configured by software to perform the functions recited in claim 1. (Req. Reh’g 8). The problem with the argument as to improvements to computer functionality is that it presents no evidence that any technological implementation details are recited because no technical device is even claimed. All steps are generic receiving, processing, and analyzing data. At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea. Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). Simply automating steps so no humans perform them is insufficient to confer eligibility. “When claims like the Asserted Claims are directed to an abstract idea and merely require generic computer implementation, they do not move into section 101 eligibility territory.” Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1374 (Fed. Cir. 2017) (internal quotation marks and alterations omitted). Improvements to computer functionality overcoming a problem specifically arising in the realm of computers do not cause the claims to be automatically patent eligible. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1265 (Fed. Cir. 2014). Improvements to computer functionality need to be claim based. See Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). Here, we find no claim limitation reciting how the asserted “improvements provided to the technical field of automated transit systems,” Appeal 2020-005100 Application 15/439,979 8 is effected. The claims do not recite the programming for “determining,” but only the results to be obtained by any and all means. CONCLUSION OF LAW For the reasons above, we are not convinced that Appellant has shown, with particularity, points believed to have been misapprehended or overlooked in our Decision. See 37 C.F.R. § 41.52(a)(1) (2011). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C § Reference(s)/Basis Denied Granted 1–15 101 Eligibility 1–15 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–15 101 Eligibility 1–15 1, 2, 4–9, 11, 13–15 103 Koehler, Huang, Leyffer 1, 2, 4–9, 11, 13–15 3, 12 103 Koehler, Huang, Patriksson 3, 12 10 103 Koehler, Huang, Leyffer, Daum 10 Overall Outcome 1–15 DENIED Appeal 2020-005100 Application 15/439,979 9 SILVERMAN, Administrative Patent Judge, dissenting. For the reasons stated in my previous separate opinion (filed with the panel’s Decision dated June 30, 2021), I respectfully dissent.