Ex parte KATZ

Board of Patent Appeals and Interferences

Nov 27, 1998

07728426 (B.P.A.I. Nov. 27, 1998)

Application for patent filed July 11, 1991.1
1
Paper No. 16
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ALAN J. KATZ
______________
Appeal No. 95-0633
Application 07/728,4261
_______________
ON BRIEF
_______________
Before HAIRSTON, KRASS, and JERRY SMITH, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 22-25, which
constitute all the claims remaining in the application.
Appeal No. 95-0633
Application 07/728,426
2
The invention pertains to a method for training a neural
network classifier.
Representative claim 22 is reproduced as follows:
22. A method of training a neural network classifier,
comprising the steps of:
(a) providing a first set of target points Z , Z , ... Z 1 2 L
in a feature space;
(b) forming an estimated target probability density P on
said feature space from said target points Z , Z , ... Z ;1 2 L
(c) providing a second set of target points W , W , ... W 1 2 M
in said feature space;
(d) defining a threshold T from the number of W withj
P(W ) > T and the number of W with P(W ) < T;j j j
(e) providing a third set of points X , X , ... X in said1 2 N
feature space, and forming a set of pairs (X , Y ) where Y isj j j
“target” when P(X ) > T and Y is “clutter” when P(X ) < T; andj j j
(f) using the pairs (X , Y ), (X , Y ), ..., (X , Y ), ..., 1 1 2 2 j j
(X , Y ) as input/output pairs to train a neural networkN N
classifier.
The examiner relies on no references.
Claims 22-25 stand rejected under 35 U.S.C. § 101 as
being directed to nonstatutory subject matter in the form of a
mathematical algorithm. Claims 22-25 also stand rejected
under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the invention.
Appeal No. 95-0633
Application 07/728,426
3
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
reasons relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that claims 22-25 are directed to statutory subject matter
within the meaning of 35 U.S.C. § 101. We are also of the
view that claims 22-25 recite the invention in a manner which
complies with 35 U.S.C. § 112. Accordingly, we reverse.
We consider first the rejection of claims 22-25 under
35 U.S.C. § 101 as being directed to nonstatutory subject
matter in the form of a mathematical algorithm. The brief and
Appeal No. 95-0633
Application 07/728,426
4
examiner’s answer were filed in 1994. The Board remanded
this case to the examiner in 1995 for consideration of the
applicability of the Commissioner’s published “Examination
Guidelines for Computer-Implemented Inventions.” On remand,
the examiner determined that the rejection under 35 U.S.C. §
101 was still proper, and the case is now before us for
decision on the merits.
The examiner’s rejection applies the two-step test which
is now commonly referred to as the Freeman-Walter-Abele test.
See In re Freeman, 573 F.2d 1237, 197 USPQ 464 (CCPA 1978) as
modified by In re Walter, 618 F.2d 758, 205 USPQ 397
(CCPA 1980). The test has been thus articulated:
First, the claim is analyzed to
determine whether a mathematical
algorithm is directly or indirectly
recited. Next, if a mathematical
algorithm is found, the claim as a
whole is further analyzed to determine
whether the algorithm is “applied in any manner
to physical elements or process steps,” and,
if it is, it “passes muster under § 101.”
In re Pardo, 684 F.2d 912, 915, 214 USPQ 673, 675-76 (CCPA
1982)
(citing In re Abele, 684 F.2d 902, 214 USPQ 682 (CCPA 1982)).
Although the examiner applied the Freeman-Walter-Abele test in
Appeal No. 95-0633
Application 07/728,426
5
a manner which was consistent with the law at that time, the
most recent decisions of the Court of Appeals for the Federal
Circuit cast substantial doubt on the propriety of this test.
It is the current view of the court that unpatentable
mathematical algorithms are identifiable by showing that they
are merely abstract ideas constituting disembodied concepts or
truths that are not “useful.” From a practical standpoint,
this means that to be patentable an algorithm must be applied
in a “useful” way. See State Street Bank & Trust Co. v.
Signature Financial Group, Inc., 149 F.3d 1368, 47 USPQ2d 1596
(Fed. Cir. 1998).
Independent claim 22 is directed to a method for training
a neural network classifier. Pairs of data points are
determined and used as input/output pairs to train a neural
network classifier. We are of the view that the training of a
neural network clearly has practical utility. Even if the
mathematical algorithm by which the data pairs are determined
can be considered an abstract idea, that abstract idea is
clearly employed in a useful way. The transformation of data
through a series of mathematical calculations to produce
input/output training pairs for a neural network classifier
Appeal No. 95-0633
Application 07/728,426
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constitutes a practical application of the abstract idea or
mathematical algorithm because it produces a useful, concrete
and tangible result. Id. Since the claimed invention has
practical application for the reasons just discussed, we do
not sustain
the rejection of claims 22-25 under 35 U.S.C. § 101.
We now consider the rejection of claims 22-25 under the
second paragraph of 35 U.S.C. § 112. The examiner’s rejection
states the following:
As per claim 1 [sic, 22], “providing” is not a
physical step in a method claims [sic],
applicant must set forth the actual steps being
performed such as “generating” etc. [answer,
page 5].
Appellant responds that “providing” is just as definite as
“generating” [brief, page 3]. The examiner replies that
“providing” is not “analogous to generating because providing
can mean anything, and it is not definite because providing
can mean inputting, outputting, or defining, which concludes
that ‘providing’ is indeed indefinite” [answer, page 6].
We fail to see any indefiniteness in the step of
providing or why the step of generating would make the scope
Appeal No. 95-0633
Application 07/728,426
7
of the invention clearer to the artisan. The examiner’s
concern about the breadth of the term providing should not be
equated with indefiniteness. Breadth and indefiniteness are
two different concepts. We are of the view that the artisan
who has read the disclosure of this application would clearly
understand the metes and bounds of the claimed invention.
Therefore, we do not sustain the rejection of claims 22-25
under 35 U.S.C. § 112.
In summary, we have not sustained either of the
examiner’s rejections of claims 22-25. Therefore, the
decision of the examiner rejecting claims 22-25 is reversed.
REVERSED

Kenneth W. Hairston )
Administrative Patent Judge )
)
Appeal No. 95-0633
Application 07/728,426
8
)
)
Errol A. Krass ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jerry Smith )
Administrative Patent Judge )

JS/cam
Richard A. Stoltz
Texas Instruments
Patent Department
Mail Station 219
P. O. Box 655474
Dallas, TX 75265