Ex Parte Rosman et al

Patent Trial and Appeal Board

May 31, 2018

14093671 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/093,671 12/02/2013
47795 7590 06/04/2018
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2631
FIRST NAMED INVENTOR
Guy Rosman
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. CONFIRMATION NO.
I1L.2921C1US (P47115C) 8283
EXAMINER
NGO, CHUONG D
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
tphpto@tphm.com
Inteldocs _ docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUY ROSMAN, ALEXANDER BRONSTEIN,
MICHAEL BRONSTEIN, and RON KIMMEL
Appeal2017-009696
Application 14/093,671
Technology Center 2100
Before JOHN A. JEFFERY, JAMES R. HUGHES, and SCOTT E. BAIN,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-5, 7-15, 17-25, and 27-30. We have jurisdiction
under 35 U.S.C. § 6(b ). We affirm.
STATEMENT OF THE CASE
Appellants' invention analyzes multidimensional data sets and, in
particular, involves multidimensional scaling (MDS) techniques using vector
extrapolation to reduce iterations in obtaining a solution point. Because
existing MDS algorithms require many computationally-intensive iterations,
1 Appellants identify the real party in interest as Technion Research and
Development Foundation. App. Br. 3.
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Application 14/093,671
the disclosed invention uses vector extrapolation techniques to accelerate the
numerical solution ofMDS problems. See generally Abstract; Spec. 1, 10.
Claims 1 and 3 are illustrative:
1. One or more non-transitory computer readable storage
media using instructions stored thereon, which, when executed,
cause a machine to perform a method, the method comprising:
(i) applying an iterative optimization technique a
predetermined amount of times on a coordinates vector, said
coordinates vector representing the coordinates of a plurality of
data elements of a data set, each data element identified by its
coordinate and obtaining a modified coordinates vector;
(ii) applying a vector extrapolation technique on said
modified coordinates vector obtaining a further modified
coordinates vector; and
(iii) repeating steps (i) and (ii) until one or more
predefined conditions are met.
3. The media according to claim 1, wherein said iterative
optimization technique is scaling by majorizing a complicated
function (SMACOF).
THE REJECTI0N2
The Examiner rejected claims 1-5, 7-15, 17-25, and 27-30 under 35
U.S.C. § 101 as not directed to patent-eligible subject matter. Ans. 2-3. 3
2 Because the Examiner withdrew an indefiniteness rejection under§ 112,
second paragraph (Ans. 3), that rejection is not before us.
3 Throughout this opinion, we refer to (1) the Appeal Brief filed April 4,
2017 (supplemented May 3, 2017) ("App. Br."); (2) the Examiner's Answer
mailed June 23, 2017 ("Ans."); and (3) the Reply Brief filed July 7, 2017
("Reply Br.").
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Application 14/093,671
CONTENTIONS
The Examiner finds that the claimed invention is directed to an
abstract idea, namely a mathematical algorithm, by merely reciting
calculations and/or manipulating numerical data values according to
mathematical relationships or formulas corresponding to an iterative
optimization technique, including SMACOF. Ans. 2, 4. The Examiner adds
that the claimed elements do not add significantly more to the abstract idea
because the additional recited elements, such as the recited computer storage
media, processor, and memory, amount to no more than (1) mere
instructions to implement the abstract idea on a computer, and (2) generic
computer structure that performs generic computer functions that are well-
understood, routine, and conventional activities previously known to the
pertinent industry. Ans. 2--4.
Appellants argue that not only is there no intended use recited in
independent claim 1, the claimed invention improves processor operation by
(1) speeding up convergence using vector extrapolation, and (2) improving
results in terms of speed and accuracy as explained in the Specification's
sections 4.2 4 and 5. App. Br. 6. According to Appellants, the Examiner's
conclusion that the claims do not improve the computer's functioning is not
only unsupported, but also rebutted by the results cited in the Specification's
section 5. Id.
4 Section 4.2 corresponds to Appellants' citation of page 50, lines 5 to 8 of
the Specification on page 6 of the Appeal Brief.
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Application 14/093,671
ISSUE
Has the Examiner erred in rejecting claims 1-5, 7-15, 17-25,
and 27-30 by concluding that they are directed to ineligible subject
matter under § 101? This issue turns on whether the claimed invention
is directed to a patent-ineligible abstract idea and, if so, whether
the claim's elements----considered individually and as an ordered
combination-transform the nature of the claim into a patent-eligible
application of that abstract idea.
ANALYSIS
Claims 1, 2, 4, 5, 7-12, 14, 15, 17-22, 24, 25, and 27-30
We begin by noting, as does the Examiner (Ans. 4), that only the
Examiner's ineligibility rejection of dependent claims 3, 13, and 23 is
contested in this appeal. Accord App. Br. 4, 6 (limiting the arguments to
these claims). 5
Therefore, we summarily sustain the Examiner's uncontested
ineligibility rejection of claims 1, 2, 4, 5, 7-12, 14, 15, 17-22, 24, 25, and
27-30. See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 1205.02
(9th ed. Rev. 08.2017 (Jan. 2018)) ("Ifa ground of rejection stated by the
examiner is not addressed in the appellant's brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
5 Although Appellants argue that there no intended use recited in claim 1
despite only contesting the Examiner's rejection of claims 3, 13, and 23 (see
App. Br. 4, 6), claim 3 nevertheless depends from claim 1 and, therefore,
incorporates those limitations.
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Application 14/093,671
it, unless the examiner subsequently withdrew the rejection in the
examiner's answer.").
Claims 3, 13, and 23
Claim 3 depends from claim 1, and adds that the iterative optimization
technique is SMACOF.
To determine whether claims are patent eligible under§ 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of nature,
natural phenomena, and abstract ideas. Id. at 2354--55. If so, we then
proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
Applying Alice step one, we agree with the Examiner that the claimed
invention is directed to an abstract idea, namely a mathematical algorithm,
by merely reciting calculations and/or manipulating numerical data values
according to mathematical relationships or formulas corresponding to an
iterative optimization technique, including SMACOF, as the Examiner
indicates. Ans. 2, 4.
Independent claim 1, from which claim 3 depends, recites three steps.
First, an iterative optimization technique is applied a predetermined amount
of times on a coordinates vector that represents coordinates of data elements
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of a data set, each data element identified by its coordinate and obtaining a
modified coordinates vector. Second, a vector extrapolation technique is
applied on the modified coordinates vector obtaining a further modified
coordinates vector. These two steps are then repeated until one or more
predefined conditions are met.
As noted above, there is no dispute that these limitations are directed
to an abstract idea. Nor do we find that claim 3 's specifying the iterative
optimization technique as SMACOF changes this assessment.
As the Specification explains, the disclosed invention analyzes
multidimensional data sets and, in particular, involves multidimensional
scaling (MDS) 6 techniques using vector extrapolation to reduce iterations in
obtaining a solution point. Spec. 1 :5-8. Because existing MDS algorithms
require many computationally-intensive iterations, the disclosed invention
uses vector extrapolation techniques to accelerate the numerical solution of
MDS problems. Spec. 10:6-8. Although any iterative optimization
technique can be used, a preferred embodiment uses a stress function as an
error measure, and the iterative optimization technique is SMACOF. Spec.
10:25-28.
A SMACOF algorithm is detailed on pages 16 and 17 of the
Specification. Due to this algorithm's slow convergence, a large number of
6 MDS is a generic name for a family of algorithms that, given a matrix
representing the pair wise distances between a set of points in some abstract
metric space, attempts to find a representation of these points in a low-
dimensional (typically Euclidean) space. Spec. 1:20-23; 9:21-23. MDS can
be applied in different fields including, among other things, ( 1) visualizing
abstract data, (2) machine learning for pattern recognition, (3) image
retrieval, ( 4) geometric surfaces processing, etc. Spec. 11: 15-23.
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iterations may be required if high accuracy is needed, depending on the data
set size and distance matrix composition. Spec. 17: 14--21. This
convergence is, therefore, accelerated using vector extrapolation. Spec.
50:4--8.
In essence, claim 3 is directed to a mathematical algorithm-an
abstract idea as the Examiner indicates. Ans. 2, 4. As the Examiner
explains (Ans. 2), claim 3 is analogous to the mathematical algorithm at
issue in Gottschalk v. Benson, 409 U.S. 63 (1972). In Benson, the U.S.
Supreme Court held that claims involving a mathematical algorithm and
directed to a method for converting binary-coded-decimal (BCD) numerals
into pure binary numerals for use with a computer were ineligible under
§ 101. Benson, 409 U.S. at 68-72. In reaching this conclusion, the Court
emphasized that the claim at issue was so abstract and sweeping as to cover
both known and unknown uses of the BCD to pure binary conversion, and
that the mathematical formula had no substantial practical application except
in connection with a digital computer. Id. at 68, 71-72.
That is the case here, for the claimed invention-like that in Benson-
is directed to an abstract idea, namely a mathematical algorithm. Accord Ex
parte Gutta, 93 USPQ2d 1025, 1027-35 (BP AI 2009) (precedential)
(holding that claims directed to a mathematical algorithm, namely
identifying mean items by (1) computing a symbolic value variance, and (2)
selecting a mean item with a symbolic value minimizing the variance, were
ineligible under § 101 ).
Appellants' reliance on McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) on page 6 of the Appeal Brief
is unavailing. There, the claimed process used a combined order of specific
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rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques-an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike McRO, the claimed invention here applies SMACOF
iterative optimization and vector extrapolation techniques repetitively until a
predefined condition is met. Although these repetitive applications may be
beneficial, a claim for a useful or beneficial abstract idea is still an abstract
idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379-80 (Fed. Cir. 2015).
We, therefore, agree with the Examiner that claim 3 is directed to an
abstract idea.
Alice Step Two
Nor do the recited elements----considered individually and as an
ordered combination-transform the nature of claim 3 into a patent-eligible
application of the abstract idea to ensure that the claim amounts to
significantly more than that idea. See Alice, 134 S. Ct. at 2357.
That some claims recite computer readable storage media, or a
memory coupled to a processor does not change our conclusion. As the
Examiner indicates, the claimed invention merely uses generic computing
components to perform the recited abstract idea. Ans. 2--4. Merely reciting
these generic computing components cannot transform a patent-ineligible
abstract idea into a patent-eligible invention. Id. at 2358. In other words,
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merely reciting an abstract idea while adding the words "apply it with a
computer" does not render an abstract idea non-abstract: there must be more.
See Alice, 134 S. Ct. at 2359.
Indeed, these generic computing components merely do that which
can be performed mentally or with a pen and paper----exclusive functions
ineligible for patent protection under § 101. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375 (Fed. Cir. 2011) ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson."). That claim 13 7 and its respective independent claim 11 do not
even recite a computer only further underscores the notion that these steps
could be performed entirely mentally or with pen and paper.
Nor are we persuaded that the claimed invention improves the
computer processor device's functionality or efficiency, or otherwise
changes the way that device functions, at least in the sense contemplated by
the Federal Circuit in Enfzsh LLC v. Microsoft Corporation, 822 F.3d 1327
(Fed. Cir. 2016), despite Appellants' arguments to the contrary (App. Br. 6;
Reply Br. 1-2). Leaving aside the fact that Appellants do not cite Enfish in
the Appeal Brief despite Enfzsh predating that brief, Appellants' reliance on
Enfzsh in the Reply Brief is nonetheless unavailing.
The claimed self-referential table in Enfzsh was a specific type of data
structure designed to improve the way a computer stores and retrieves data
in memory. Enfzsh, 822 F.3d at 1339. To the extent that Appellants contend
7 Because claim 13 contains an apparent typographical error, we presume
that the term "jaorizing" is intended to refer to "majorizing" consistent with
its usage elsewhere in the disclosure.
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that the claimed invention uses such a data structure to improve a
computer's functionality or efficiency, or otherwise change the way that
device functions (see Reply Br. 1-2), there is no persuasive evidence on this
record to substantiate such a contention.
To be sure, Appellants' disclosed invention accelerates SMACOF
iteration convergence by vector extrapolation. Spec. 50:4--8. The
Specification also explains that extrapolation methods tend to work better
when a higher degree of accuracy is needed, and associated test results are
presented in section 5. Spec. 50:9-53:6. But "[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible." Bancorp Services, L.L.C. v. Sun Life Assurance Co., 687 F.3d
1266, 1279 (Fed. Cir. 2012). Accord FairWarning IP, LLC v. Iatric
Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp, 687
F.3d at 1278 ("[T]he fact that the required calculations could be performed
more efficiently via a computer does not materially alter the patent eligibility
of the claimed subject matter.")).
Although applying SMACOF iterative optimization and vector
extrapolation techniques repetitively until a predefined condition is met as
claimed may be beneficial, a claim for a useful or beneficial abstract idea is
still an abstract idea. See Ariosa, 788 F.3d at 1379-80.
For the foregoing reasons, then, the recited elements----considered
both individually and as an ordered combination----do not contain an
"inventive concept" sufficient to transform the claimed abstract idea into a
patent-eligible application. Therefore, we are not persuaded that the
Examiner erred in rejecting claim 3, and claims 13 and 23 not argued
separately with particularity.
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CONCLUSION
The Examiner did not err in rejecting claims 1-5, 7-15, 17-25, and
27-30 under§ 101.
DECISION
We affirm the Examiner's decision to reject claims 1-5, 7-15, 17-25,
and 27-30.
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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