Ex Parte Markram et al

Patent Trials and Appeals Board

May 14, 2019

13566128 - (D) (P.T.A.B. May. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/566, 128 08/03/2012
26171 7590 05/16/2019
FISH & RICHARDSON P.C. (DC)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Henry Markram
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.
25294-0003001 I EPFL
6.09
CONFIRMATION NO.
2047
EXAMINER
PELLETT, DANIEL T
ART UNIT PAPER NUMBER
2121
NOTIFICATION DATE DELIVERY MODE
05/16/2019 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRY MARKRAM, RODRIGO de CAMPOS PERIN,
and THOMAS K. BERGER
Appeal2018-008410
Application 13/566,128 1
Technology Center 2100
Before JASON V. MORGAN, MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-22 and 24--31, all of the claims pending in this application. 2 This
appeal is related to an appeal (2018-008166) for co-pending application
14/838,013. See App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Ecole Polytechnique Federale De Lausanne as the real
party in interest. App. Br. 1.
2 Claim 23 is cancelled. See App. Br. 25.
Appeal2018-008410
Application 13/566, 128
THE INVENTION
According to Appellants, the disclosed and claimed invention is
directed to configuring a neural network "to achieve improved information
processing and/ or information storage." Spec. 2: 6-7. 3
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A neural network device implemented in hardware or in a
combination of hardware and software, the neural network
device comprising:
a collection of node assemblies interconnected by
between-assembly links, each node assembly itself comprising a
network of nodes interconnected by a plurality of within-
assembly links, wherein each of the between-assembly links and
the within-assembly links have an associated weight, each
weight embodying a strength of connection between the nodes
joined by the associated link, the nodes within each assembly
being more likely to be connected to other nodes within that
assembly than to be connected to nodes within others of the node
assemblies, wherein the nodes are connected and the nodes
assemblies are formed according to pairwise connectivity
profiles, wherein the likelihood of a connection between a pair
of nodes is positively correlated with the number of common
neighbors shared by the nodes in the pair.
3 This Decision refers to: ( 1) Appellants' Specification filed March 14,
2016 ("Spec."); (2) the Non-Final Office Action mailed June 27, 2017
("Non-Final Act."); (3) the Appeal Brief filed December 26, 2017 ("App.
Br."); (4) the Examiner's Answer mailed June 28, 2018 ("Ans."); and (5) the
Reply Brief filed August 13, 2018 ("Reply Br.").
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Application 13/566, 128
REJECTION
Claims 1-22 and 24--31 are rejected under 35 U.S.C. § 101 because
the Examiner concludes the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more. See Non-Final Act. 3-7.
DISCUSSION
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments articulated by
Appellants. We are persuaded by Appellants' arguments regarding the
pending claims.
Standard for Patent Eligibility
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
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
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Application 13/566, 128
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, 69 (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 (1853))); 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 176; 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
to a known structure or process may well be deserving of patent
protection.").
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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 ( quotation marks 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.
USPTOJanuary 7, 2019, Revised Section 101 Memorandum
The USPTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. at 50 (Jan. 7, 2019) ("Memorandum"). Under the
Memorandum 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); and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a}-
( C ), ( e }-(h)).
See 84 Fed. Reg. at 52-55.
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:
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(3) adds a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional"
in the field (see MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See 84 Fed. Reg. at 56.
Furthermore, the Memorandum "extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that the abstract
idea exception includes the following groupings of subject matter, when
recited as such in a claim limitation(s) (that is, when recited on their own or
per se )":
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Id. at 52 (footnotes omitted).
Analysis
The Examiner concludes the claims fall within the judicial exception
of an "abstract idea ... similar to 'organizing information through
mathematical correlations.'" Non-Final Act. 4 ( citing Digitech Image
Techs., LLCv. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014)). The Examiner further concludes that the claimed "steps are similar
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to concepts and ideas that have been identified as abstract by the courts."
Non-Final Act. 4.
Appellants argue that the claims are "not directed to an abstract idea
of organizing information but rather to a neural network device with a
particular technical structure." App. Br. 4; See Reply Br. 2-3.
On the current record, we are persuaded that the Examiner has failed
to establish the claims recite an ineligible abstract idea. Because a "neural
network device implemented in hardware or in a combination of hardware
and software" and comprising "a collection of [interconnected] node
assemblies" is not a mathematical concept, an identified method of
organizing human activity, or a mental process, as set forth in our Guidance,
we conclude the claimed "neural network device" does not recite an abstract
idea. See 84 Fed. Reg. at 52 ("Claims that do not recite matter that falls
within these enumerated groupings of abstract ideas should not be treated as
reciting abstract ideas, except" in rare circumstances.); see also App. Br. 4.
Although the Examiner concludes the claims are similar to "organizing
information through mathematical correlations" (Non-Final Act. 4), the
Examiner has not demonstrated the claims recite a mathematical
relationship, formula, or calculation. See 84 Fed. Reg. at 52. Accordingly,
we do not sustain the Examiner's rejection.
DECISION
For the above reasons, we reverse the Examiner's decisions rejecting
claims 1-22 and 24--31.
REVERSED
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