Ex Parte Cha et al

Board of Patent Appeals and Interferences

Jun 22, 2007

09512949 (B.P.A.I. Jun. 22, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUANG-HO CHA, CHIN-WAN CHUNG, DRAGUTIN
PETKOVIC, and XIAOMING ZHU
____________

Appeal 2006-3395
Application 09/512,949
Technology Center 2100
____________

Decided: June 22, 2007
____________

Before KENNETH W. HAIRSTON, HOWARD B. BLANKENSHIP, and
ALLEN R. MACDONALD, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-24, the only claims pending in this
application. We have jurisdiction under 35 U.S.C. §§ 6(b), 134(a).
Appeal 2006-3395
Application 09/512,949

INTRODUCTION
The claims are directed to methods and systems for indexing objects
in high dimensional data spaces (e.g., digital images) to respond to user
queries. Claims 1 and 8 are illustrative:
1. A computer programmed to undertake method acts for querying for
data using a query, the method acts undertaken by the computer including:

for at least some data vectors in a data space, generating respective
approximations in polar coordinates; and

based on the approximations, returning “k” nearest neighbors to the
query.

8. A computer program product including a program of instructions
having:

computer readable code means for generating approximations
including local polar coordinates of at least some data vectors p in at least
one data set having a dimensionality of “d”, the local polar coordinates being
independent of “d”; and

computer readable code means for using the approximations to return
“k” nearest neighbors to a query.

The Examiner relies on the following prior art references to show
unpatentability:
Staats US 5,619,717 Apr. 8, 1997
Fayyad US 6,263,334 B1 Jul. 17, 2001
(Filed Nov. 11, 1998)

Department of Mathematics, Coordinate Systems in Two and Three
Dimensions (“Coordinate Systems”), 1-4, Oregon University, (1996),
available at http://oregonstate.edu/dept/math/CalculusQuestStudyGuides/
vcalc/coord/coord.html.

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Application 09/512,949

The rejections as presented by the Examiner are as follows:
1. Claims 8-14 and 23 are rejected under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.
2. Claims 1-4, 8-12, 15-18, and 22-24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fayyad and “Coordinate
Systems.”
3. Claims 5-7, 13, 14, and 19-21 are rejected under 35 U.S.C § 103(a) as
unpatentable over Fayyad, “Coordinate Systems,” and Staats.
OPINION
The Examiner in the Answer1 contends that claim 8 and its depending
claims are drawn to subject matter that is not statutory under 35 U.S.C.
§ 101. According to the rejection, claim 8, reciting a “computer program
product including a program of instructions” in the preamble, is not
embodied on a computer readable medium. (Answer 6.) The “computer
program product” is considered as software; “it is possible to write on a
sheet of paper with a pen or pencil and therefore it is not considered as a
computer readable medium.” (Id. 12.)
In Appellants’ view, claim 8 recites (in the body) “computer readable
code means,” which is described in the Specification (6: 13-21) as module
14. The Specification refers to module 14 as computer-executable
instructions that may be contained on a data storage device with a computer
readable medium, such as a computer diskette, random access memory of
the computer, or various other data storage devices. Appellants submit that
claim 8 thus cannot be considered as mere software or writing on a paper.

1 Mailed July 7, 2006.
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Application 09/512,949

Instant claim 8 contains elements in means plus function format, as
permitted under 35 U.S.C. § 112, sixth paragraph. The scope of the claimed
elements is thus limited to the corresponding structures in the disclosure and
their equivalents. The limitations under 35 U.S.C. § 112, sixth paragraph
must be interpreted by reference to the corresponding disclosure. See, e.g.,
In re Lonardo, 119 F.3d 960, 967, 43 USPQ2d 1262, 1267 (Fed. Cir. 1997)
(citing In re Donaldson Co., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1849
(Fed. Cir.1994) (en banc)); In re Alappat, 33 F.3d 1526, 1541, 31 USPQ2d
1545, 1555 (Fed. Cir. 1994) (en banc).2
Instant claim 8 requires more than software per se, but also structure.
Assuming that a piece of paper can be considered “structure,” a piece of
paper is not a structural equivalent to the exemplary data storage devices
provided at page 6 of the Specification. With all of the storage devices listed
in the Specification, the computer-executable code can be immediately and
directly loaded into a computer (or processor) for execution, unlike a source
code listing on a sheet of paper.
We therefore hold that claim 8 and its depending claims require, at the
least, computer-executable code embodied in a tangible medium,
notwithstanding how the preamble might be interpreted if divorced from the
remainder of the claim. Because we agree with Appellants that the
Examiner has failed to demonstrate that the claimed subject matter is not
statutory, we do not sustain the § 101 rejection of claims 8-14 and 23.

2 Lack of any structure in the disclosure corresponding to the “means”
indicates that the claims fail to pass muster under 35 U.S.C. § 112, second
paragraph. See, e.g., Atmel Corp. v. Information Storage Devices, Inc., 198
F.3d 1374, 1381-82, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999); In re Dossel,
115 F.3d 942, 944-46, 42 USPQ2d 1881, 1883-85 (Fed. Cir. 1997).

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Appeal 2006-3395
Application 09/512,949

Turning to the rejection of claims 1-4, 8-12, 15-18, and 22-24 under
35 U.S.C. § 103(a), we note that all of the claims require specified
operations using polar coordinates. Claim 1, for example, recites “for at
least some data vectors in a data space, generating respective approximations
in polar coordinates . . . .”
According to the rejection, Fayyad teaches all the subject matter of the
independent claims (1, 8, and 15), but does not teach “explicitly” polar
coordinates. The rejection contends that “Coordinate Systems” teaches
conversion of Cartesian to polar coordinates, and vice versa. The rejection
concludes that it would have been obvious to use a polar coordinate system
in Fayyad’s method: first, for general convenience; and second because
“Coordinate Systems” teaches that polar coordinates are easier to use in
situations where circular, cylindrical, or spherical symmetry is present.
(Answer 7-8.)
Appellants respond (Br. 6-7)3 that none of the equations would work
in polar coordinates in the “approximation,” or probability function, on
which the rejection relies (Fayyad col. 7, l. 54 - col. 8, l. 14).
We do not find any response to Appellants’ position in the Answer.
The Examiner does, however, submit (Answer 13 and 14) that in order to
draw polar coordinates on a computer screen, it is well known that the
coordinates have to be converted into Cartesian coordinates according to
known formulas. No explanation is offered, however, as to how the
allegation of what “is well known” might relate to the subject matter that is
claimed.

3 Filed October 22, 2005.
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Appeal 2006-3395
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The Examiner’s position seems to cut against the rationale for the
rejection that has been applied. Contrary to the implications of the statement
of the rejection, it would not be more convenient to add two extra steps to
the Fayyad method in order to perform the approximations using polar
coordinates -- i.e., converting data from Cartesian to polar, performing the
approximations, and then (at some later point) converting the results to
Cartesian coordinates for display of the data. As for the second offered
reason to modify Fayyad, there has been no showing, or explanation offered,
as to why the artisan would appreciate that the operations described by
Fayyad relate to circular, cylindrical, or spherical symmetry, even though the
reference does not, admittedly, show generating approximations using polar
coordinates.4
The rejection thus has not shown suggestion from the prior art for
modifying the relevant operations described by Fayyad. Nor has the
rejection met a lesser standard, such as by showing that the artisan would
have considered the use of either polar or Cartesian coordinates to be
equivalent in the system described by Fayyad.
In order to determine whether there was an apparent reason to
combine known elements in the fashion claimed, the analysis should be
made explicit. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d
1385, 1396 (2007) (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,

4 There may be at least suggestion for using polar coordinates in Figure 3B
and column 9, lines 14 through 35 of Fayyad, which relate to scanning of
clusters most likely to contain the nearest neighbor based on a probability
estimate. In any event, the rejection relies on the probability function
described at columns 7 and 8 as the claimed “approximation,” rather than the
material at column 9 of the reference.
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Application 09/512,949

1336 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”). On the basis of the evidence provided, the
Examiner’s findings and Appellants’ response, we conclude that a prima
facie case for unpatentability has not been set forth for the subject matter of
any of the independent claims.
We therefore do not sustain the § 103(a) rejection of claims 1-4, 8-12,
15-18, and 22-24. Since Staats as applied in the combination against
dependent claims 5-7, 13, 14, and 19-21 does not remedy the deficiencies in
the rejection applied against the base claims, neither do we not sustain the
§ 103(a) rejection of those claims.5
CONCLUSION
The rejection of claims 8-14 and 23 under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter is reversed. The rejection of claims
1-24 under 35 U.S.C. § 103(a) over the applied prior art is reversed.
REVERSED

tdl/ce

John L Rogitz
Rogitz & Associates
SYMPHONY TOWERS
750 B ST., STE. 3120
San Diego CA 92101

5 The Examiner seems to respond (Answer 14-15) to arguments not made in
the Brief. An earlier rejection, alleging lack of enabling disclosure, was
withdrawn sub silentio in the nonfinal rejection mailed October 4, 2004. No
§ 112 rejection is before us.
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