Ex Parte Gitlin

Patent Trial and Appeal Board

Feb 16, 2017

12766889 (P.T.A.B. Feb. 16, 2017)

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.
12/766,889 04/25/2010 Roman Gitlin 2532
89069 7590
Roman Gitlin
PO Box 1004
Rehovot, 76110
ISRAEL
EXAMINER
YAARY, MICHAEL D
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
02/21/2017 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):
romangitlin @ gmail. com
romangitlin@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMAN GITLIN
Appeal 2017-001291
Application 12/766,889
Technology Center 2100
Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Decision rejecting claims 4, 5, 25, 26, 30, 34, 54, 55, 62, 75—78, 80, 97, 98,
100-112, 115—119, 121, and 124—149, all pending claims of the
application.1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 1-3, 6-24, 27-29, 31-33, 35-53, 56-61, 63-74, 79, 81-96, 99,
113, 114, 120, 122, and 123 are canceled.
Appeal 2017-001291
Application 12/766,889
STATEMENT OF THE CASE
According to Appellant, the application relates to efficiently
implementing a multi-dimensional interpolation in a way which
is predicated on dynamic interpolation-input makeup. Spec. (Abstract).2
Claims 4, 5, 25, 54, 62, 103, 124—129, and 132 are independent. Claim 4 is
representative and is reproduced below:
4. A method for efficiently implementing a multi­
dimensional interpolation in any number of dimensions, the
method comprising implementing processing said interpolation’s
third interpolation-input as a recursion.
Appeal Br. 80 (Claims App.).
The art relied upon by the Examiner in rejecting the claims on appeal
includes:
2 Throughout this Opinion, we refer to: (1) Appellant’s Specification filed
April 25, 2010 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed
June 4, 2015; (3) the Appeal Brief (“Appeal Br.”) filed July 5, 2016; (4) the
Examiner’s Answer (“Ans.”) mailed August 19, 2016; and the Reply Brief
(“Reply Br.”) filed October 19, 2016.
REFERENCES
Simpson
Bredehoft
Ito
US 6,820,074 B1 Nov. 16, 2004
US 2007/0061390 A1 Mar. 15, 2007
US 2009/0279151 A1 Nov. 12, 2009
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REJECTIONS
Claims 4, 5, 25, 54, and 116—1193 stand rejected under 35 U.S.C.
§112, second paragraph, as indefinite. Final Act. 9-12.
Claims 4, 5, 25, 26, 30, 34, 54, 55, 62, 75-78, 80, 97, 98, 100-112,
115—119, 121, and 124—149 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 12—14.
Claims 4, 5, 25, 26, 30, 34, 54, 55, 62, 75-78, 80, 97, 98, 100-112,
115—119, 121, and 124 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bredehoft and Ito. Final Act. 15—21.
Claims 125—149 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bredehoft, Ito, and Simpson. Final
Act. 21-25.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellant. We have not considered other possible issues
that have not been raised by Appellant and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUES
1. Does the Examiner err in rejecting claim 4 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?
2. Does the Examiner err in concluding it would have been obvious to
combine the teachings and suggestions of Bredehoft and Ito in the manner
recited in claim 4?
3 Although included among the list of claims rejected under 35 U.S.C. § 112,
second paragraph, claims 67 and 120 were canceled by the Amendment filed
April 29, 2015.
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Application 12/766,889
3. Does the Examiner err in rejecting claims 4—7, 25, 54, 67, and 116—
120 under 35 U.S.C. § 112, second paragraph, as being indefinite?
ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellant’s arguments, as best those arguments could be understood.
Throughout the Briefs, Appellant comments on various non-appealable
issues. These issues are not addressed here. In light of our review, we
disagree with Appellant’s contentions and we adopt as our own: (1) the
findings and reasons set forth by the Examiner in the Final Office Action
from which this appeal is taken (Final Act. 2—25) and (2) the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellant’s
Appeal Brief (Ans. 2—10). We concur with the findings and conclusions
reached by the Examiner, and we highlight the following for emphasis.
35 U.S.C. § 101
The Examiner rejects claim 4 under 35 U.S.C. § 101 as directed to
non-statutory subject matter that does not amount to significantly more than
an abstract idea because “the claim does not have any additional dements
that amount to significantly more than the judicial exception itself to justify
the claims being directed] to an improvement.” Final Act. 2—5; Ans 3—6.
We agree with the Examiner.
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
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Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1296—97
(2012)). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we
must secondly “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(internal citation omitted). The Supreme Court characterizes the second step
of the analysis as “a search for an ‘inventive concept’ — i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. (internal citation omitted).
According to Alice, the first question to be settled is whether claim 4
of the subject application is directed to a patent-ineligible concept. Our
reviewing court, relying on Supreme Court precedent, has “consistently
‘refused to find processes patentable when they merely claimed a mental
process standing alone and untied to another category of statutory subject
matter[,] even when a practical application was claimed.’” CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011)
(quoting In re Comiskey, 554 F.3d 967, 980 (Fed. Cir. 2009)). “Such a
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under § 101.” Id. at 1373.
In this case, the method of claim 4 “can be performed in the human
mind, or by a human using a pen and paper.” See CyberSource Corp., 654
F.3d at 1372 (relying on the Supreme Court’s decision in Gottschalk v.
Benson, 409 U.S. 63, 67 (1972), for the proposition that “methods which can
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be performed mentally, or which are the equivalent of human mental work,
are unpatentable abstract ideas”). For example, assuming two dimensions,
the method of claim 4 can be performed by a human with pen and paper
implementing a multi-dimensional interpolation in two dimensions.
Furthermore, even were Appellant to argue that the calculations could not be
accomplished with pen and paper, the Supreme Court has held that a
computer program implementing “a mathematical formula without
substantial practical application except in connection with digital computer,
was not a patentable process.” Benson, 409 U.S. at 63. Appellant has
provided insufficient evidence that the multi-dimensional interpolation of
claim 4 is not a mathematical formula or is claimed to recite a substantial
practical application. Moreover, as in Benson, granting of a patent on claim
4 “would wholly pre-empt the mathematical formula and in practical effect
would be a patent on the [multi-dimensional interpolation] algorithm itself.”
Id. at 71-72.
Thus, the method of claim 4 is interpreted as being directed to the
abstract idea of a mathematical formula or relationship. See Final Act. 2-4;
see also Ans. 5.
We also agree with the Examiner’s finding that, unlike the claims in
Enfish, the “instant claims are not directed, implicitly or explicitly, to an
improvement in computer related technology.” Ans. 4 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). Here, the
Examiner’s finding is beyond dispute because claim 4 fails to recite any
computer related technology.
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As we noted supra, according to Alice, after finding the claim is
directed to an abstract idea, the question to be settled next is whether claim 4
recites an element, or combination of elements, that is enough to ensure that
the claim is directed to significantly more than an abstract idea.
The Examiner finds claim 4 “merely recites a method to implement
interpolation wherein processing the third interpolation input is recursive.”
Ans. 5. Based on this finding, the Examiner concludes “the claim does not
have any additional elements that amount to significantly more than the
judicial exception itself to justify the claims being direct to an
improvement.” Id. (emphasis omitted). We agree with the Examiner.
Appellant argues that “executing interpolation — which indeed
involves processing of data —rather than being a part of claim’s [sic] 4
scope, is a post-solution activity.” Appeal Br. 41 (emphasis omitted).4 We
find this argument unpersuasive because we agree with the Examiner’s
finding that claim 4 is only directed to implementing “interpolation wherein
processing the third interpolation input is recursive” (Ans. 5). In view of
this finding, we agree there are no other limitations within the claim that
could be construed as post-solution activity.
Appellant further argues “even if any of this invention’s instant claims
were directed to an abstract idea . . . [the] claims amount to significantly
more than an abstract idea.” Appeal Br. 41 (emphasis omitted). As
evidence of this post-solution activity, Appellants argues
one of the limitations that claim 4 set forth is “efficiently
implementing a multi-dimensional interpolation in any number
of dimensions.”
4 Because Appellant does not provide page numbers on either of the
submitted Briefs, our citations to the Briefs may not always be accurate.
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The Applicant submits that the above cited “efficiently
implementing a multi-dimensional interpolation in any number
of dimensions” claim 4 limitation is implemented in this
invention’s preferred embodiments as efficiently-implementing-
a-multi-dimensional-interpolation on a grid in any number of
dimensions.
Appeal Br. 41 (emphasis omitted).
We find this argument unpersuasive because Appellant argues for
patentability on the basis of a limitation that is not recited in claim 4.
Limitations not appearing in the claims cannot be relied upon for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Moreover,
even if the claim were to recite a grid, as Appellant argues, we still find this
insufficient to ensure that the claim is directed to significantly more than an
abstract idea. For all the foregoing reasons, the Examiner correctly
determined that claim 4 is directed to non-statutory subject matter. We,
thus, sustain the Examiner’s rejection of claim 4 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. We further sustain the
rejection of claims 5, 25, 26, 30, 34, 54, 55, 62, 75—78, 80, 97, 98, 100-112,
115—119, 121, and 124—149, which fall with claim 4, which Appellant
argues as representative of these claims. Appeal Br. 39.
35 U.S.C. § 112
The Examiner rejects claim 4 under 35 U.S.C. § 112, second
paragraph, as indefinite. Specifically, the Examiner finds the claim recites a
. . . third interpolation-input as a recursion,’ however the claim is silent to
the first and second input processing thus being unclear and indefinite.”
Final Act. 10 (emphasis omitted). Appellant fails to specifically traverse the
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Examiner’s rejection. Accordingly, we affirm the Examiner rejection of
claim 4 under 35U.S.C. § 112, second paragraph, as indefinite.
The Examiner rejects claim 5, 6, 7, 25, and 116—119 under 35 U.S.C.
§112, second paragraph, as indefinite. Specifically, the Examiner finds the
claims’ recitation of “implementing processing said third input ‘in a way
which . . . ’” is “vague and unclear as the claim lacks any further steps of
actually defining the ‘way which’ of implementation or actual steps of the
processing.” Final Act. 9—12.
In response, Appellant argues that “‘in a way’ expression, by way of
analogy, is the ‘a’ part of in a way which[] idiom, and ‘which’ (and
whatever the ‘which’ part of ‘in a way which’ idiom is-followed-by) is /
functions-as the ‘the’ part of ‘in a way which’ idiom.” Appeal Br. 21.
Appellant then provides numerous unrelated patents that use the expression
“in a way which” as evidence of definiteness. Appeal Br. 23—37.
We find Appellant’s arguments unpersuasive. 35 U.S.C. § 112,
second paragraph, “require[s] that a patent’s claims, viewed in light of the
specification and prosecution history, inform those skilled in the art about
the scope of the invention with reasonable certainty.” Nautilus, Inc. v.
BiosigInstruments, Inc., 134 S. Ct. 2120, 2129 (2014). It is highly desirable
to have applicants resolve ambiguity by amending the claims during
prosecution of the application rather than attempting to resolve the
ambiguity in subsequent litigation of the issued patent. Halliburton Energy
Services., Inc. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). Thus, in
response to an examiner’s rejection for indefmiteness, an applicant may
resolve the ambiguity by amending the claim, or by providing a persuasive
explanation on the record that a person of ordinary skill in the relevant art
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would not consider the claim language unclear. In re Packard, 751 F.3d
1307, 1311 (Fed. Cir. 2014).
Here, apart from the preamble, the only disclosure in claim 5 consists
of “the method comprising implementing said interpolation in a way which
renders said interpolation redundant input processing free.” Thus, we agree
Appellant fails to persuasively rebut the Examiner’s finding that claim 5
recites a result rather than a means for obtaining the result, thus, rendering
the claim indefinite under 35 U.S.C. § 112, second paragraph. Final Act. 9—
12. Claims 6, 7, 25, and 116—120, which are not argued separately, are
rejected for reasons similar to those provided for claim 5.
The Examiner rejects claim 54 as indefinite under 35 U.S.C. § 112,
second paragraph, “as being incomplete for omitting essential steps, such
omission amounting to a gap between the steps.” Final Act. 12. (citing
Manual of Patenting Examining Procedure (MPEP) § 2172.01).
Section 2172.01 of the MPEP states that “a claim which fails to interrelate
essential elements of the invention as defined by applicant(s) in the
specification may be rejected under 35 U.S.C. [§] 112(b) or pre-AIA 35
U.S.C. [§] 112, second paragraph, for failure to point out and distinctly
claim the invention.”
We find that, in this case, the Examiner has failed to explain what
“essential elements” “defined by applicant(s) in the specification” have been
omitted by the claims. Put differently, the Examiner has not shown by a
preponderance of the evidence that an element that Appellant disclosed as
“essential” to the invention has been omitted from the claim. Because there
is insufficient evidence that the legal boundaries of the claims are unclear for
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omitting “essential elements,” we do not sustain the rejection of claim 54
based on this rationale.
In view of the above, we affirm the Examiner’s decision to reject
claims 4—7, 25, and 116—120 under 35 U.S.C. § 112, second paragraph, as
indefinite. We reverse the Examiner’s decision to reject claim 54 under 35
U.S.C. § 112, second paragraph, as indefinite.
35 U.S.C. § 103(a)
The Examiner finds the combination of Bredehoft and Ito teaches or
suggests “implementing a multi-dimensional interpolation in any number of
dimensions,” as recited in claim 4. Final Act. 15—16; see also Ans. 8—10.
Specifically, the Examiner finds “Ito teaches interpolation in the dimension
no less than 4.” Final Act. 7, 15—16 (citing Ito H 3, 21, 22, 54).
Appellant argues the Examiner errs in finding Ito teaches
“implementing a multi-dimensional interpolation in any number of
dimensions,” as recited in claim 4, because the Examiner’s interpretation of
the word “any” is in error. Appeal Br. 67.
The Examiner interprets “any” as . . [o]ne or some indiscriminately
of whatever kind; one or some indiscriminately of whatever quantity; one or
more, used to indicate an undetermined number or amount.’” Ans. 9 (citing
Webster’s Ninth New Collegiate Dictionary 93 (1983) (“any”)).
Instead, Appellant argues that “any” should be defined as “‘[ejvery—
. . . used to indicate one selected without restriction ” Appeal Br. 67 (emphasis omitted) (citing Merriam-Webster.com,
https://www.merriam-webster.com/dictionary/any (“any”)). Appellant
further argues “[i]n the field of Computer Science and, by extension, in this
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invention’s field of endeavor, . . . the meaning of any is every.” Reply Br.
23 (emphasis omitted).
Appellant, thus, argues the Examiner’s interpretation of the term
“any,” as recited in claim 4, is unreasonably broad and urges we instead use
Appellant’s proffered definition. Appellant, however, fails to establish the
Examiner’s interpretation is not the broadest reasonable interpretation,
consistent with Appellant’s Specification. See In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under a broadest reasonable
interpretation, the words of the claim must be given their plain meaning
unless the plain meaning is inconsistent with the specification. In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston,
Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004). The plain meaning of a term is
the ordinary and customary meaning given to the term by those of ordinary
skill in the art at the time of the invention. In re Suitco Surface, Inc., 603
F.3d 1255, 1259—60 (Fed. Cir. 2010). The presumption that a term is given
its ordinary and customary meaning may be rebutted by Appellant clearly
setting forth a different definition of the term in the specification. In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Here, Appellant appears to acknowledge “any” is not explicitly
defined by the Specification, but instead submits an undated definition from
Merriam-Webster.com to support Appellant’s proffered meaning. Appeal
Br. 67—69; Reply Br. 23 42. Appellant urges that we use a meaning gleaned
from the undated online dictionary definition in lieu of the dictionary
definition used by the Examiner. Appellant further urges that we use a
meaning of “any” gleaned from multiple proffered definitions from
Microsoft Computer Dictionary of other terms such as “call,” “digit,”
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“fatbits, ” “Fortran,” etc., in lieu of the dictionary definition used by the
Examiner. Reply Br. 30—39. However, “[ajbsent an express definition in
their specification, the fact that [Appellant] can point to definitions or usages
that conform to their interpretation does not make the PTO’s definition
unreasonable when the PTO can point to other sources that support its
interpretation.” Morris, 127 F.3d at 1056. Accordingly, because no express
definition is provided from the Specification, and because Appellant fails to
establish the Examiner’s interpretation of “any” is inconsistent with the
Specification (Zletz, 893 F.2d at 32), we find unpersuasive Appellant’s
argument that the Examiner’s definition is unreasonably broad.
In view of the Examiner’s interpretation, we agree with the
Examiner’s finding that Ito’s description of “multi-dimensional interpolation
of N dimensions where N is not less than 4” teaches “implementing a multi­
dimensional interpolation in any number of dimensions,” as recited in claim
4. Final Act. 15—16; see also Ans. 8—10.
Appellant argues the “modification of Bredehoft’ s primary reference
by Ito’s second reference is unsatisfactory for its intended purpose”
(emphasis omitted) because Bredehoft “is not intended for interpolation in
the dimension 3.” Appeal Br. 69. We are not persuaded of error. “[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Here, the Examiner, rather than finding that Bredehoft is limited to
interpolation in a single dimension, instead finds “Bredehoft does not
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explicitly disclose a multi-dimensional interpolation in any number of
dimensions.” Final Act. 15. The Examiner concludes
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the teachings of Bredehoft,
by incorporating the multidimensional interpolation, as taught by
Ito, for the benefit of providing high speed interpolation
processing, in N dimensions, allowing for parallel interpolation
processing, thus increasing efficiency.
Final Act. 15.
Thus, the Examiner finds the teachings of Ito may be adapted to the
teachings of Bredehoft by incorporating Ito’s teaching of multidimensional
interpolation. Because we agree with the Examiner’s finding regarding
Bredehoft, we disagree with Appellant’s argument that Bredehoft is limited
to interpolation in a single dimension and that Ito would, thus, render
Bredehoft inoperable for its intended purpose. Rather, we determine the
Examiner provides a well-reasoned rationale for combining the teachings of
Bredehoft and Ito by using a known technique of Ito to improve a similar
method of Bredehoft. KSR, 550 U.S. at 401.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 4. We also sustain the Examiner’s § 103(a) rejections of
independent claims 5, 25, 54, 62, 103, 124—129, and 132, which are argued
with independent claim 1, for similar reasons. Appeal Br. 26. Dependent
claims 26, 30, 34, 55, 75-78, 80, 97, 98, 100-102, 104-112, 115-119, 121,
130, 131, and 133—149, are not argued separately and fall with their
respective independent claims. Appeal Br. 66—67.
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DECISION
We affirm the Examiner’s decision rejecting claims 4, 5, 25, 26, 30,
34, 54, 55, 62, 75-78, 80, 97, 98, 100-112, 115-119, 121, and 12^149
under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 4, 5, 25, 26, 30,
34, 54, 55, 62, 75-78, 80, 97, 98, 100-112, 115-119, 121, and 12^149
35 U.S.C. § 103(a).
We affirm the Examiner’s decision rejecting claims 4, 5, 25, and 116—
119 under 35 U.S.C. § 112, second paragraph, as indefinite.
We reverse the Examiner’s decision rejecting claim 54 under 35
U.S.C. § 112, second paragraph, as indefinite.
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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