Ex Parte Subramanian et al

Patent Trial and Appeal Board

Jun 16, 2017

13168382 (P.T.A.B. Jun. 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.
13/168,382 06/24/2011 Shivaram SUBRAMANIAN T9049-19555US01 9917
74739 7590 06/20/2017
MILES & STOCKBRIDGE P.C.
Oracle International Corporation
1751 Pinnacle Drive
Suite 1500
Tysons Corner, VA 22102-3833
EXAMINER
DELICH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/20/2017 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):
Ipdocketing @ Miles S tockbridge. com
bgoldsmith @ miles stockbridge .com
smcvean @ milesstockbridge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIVARAM SUBRAMANIAN
and BHARATH KUMAR KRISHNAN
Appeal 2016-001627
Application lS/168,3821
Technology Center 3600
Before ALLEN R. MacDONALD, DAVID J. CUTITTAII, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Non-Final
Rejection of claims 1—7, 9—15, and 17—20,2 which constitute all of the
pending claims in the application on appeal. Appeal Br. 2. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Oracle International
Corporation. See Appeal Br. 2.
2 Claims 8 and 16 are cancelled. See Claims App’x 4, 7.
Appeal 2016-001627
Application 13/168,382
STATEMENT OF THE CASE
According to Appellants, the application relates to using “a series of
mathematical transformations to generate an LP [linear programming]
formulation for a parameter estimation problem. The LP formulation can be
used to estimate parameters for a forecasting model that predicts retail sales
resulting from a promotional offer, but can also be used outside of the retail
environment.” Spec. | 52.3
CLAIMED SUBJECT MATTER
Claims 1, 9, and 17 are independent. Claim 1 is exemplary and is
reproduced below:
1. A non-transitory computer readable medium
having instructions stored thereon that, when executed by a
processor, causes the processor to perform parameter estimation
of a plurality of variables to perform retail forecasting, the retail
forecasting comprising:
receive input data comprising user acceptance criteria
and user objectives;
encode the input data into a matrix;
transform the input data using a dual linear program;
solve the dual linear program using a dual simplex
method with boxed variables;
recover parameter values for the parameter estimation;
and
3 Throughout this Decision, we refer to the following documents for their
respective details: (1) Appellants’ Specification filed June 24, 2011
(“Spec.”); (2) the Non-Final Office Action (“Non-Final Act.”) mailed
October 28, 2014; (3) the Appeal Brief (“Appeal Br.”) filed April 22, 2015;
(4) the Examiner’s Answer (“Ans.”) mailed September 23, 2015; and (5) the
Reply Brief (“Reply Br.”) filed November 23, 2015.
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input the recovered parameter values as parameter values
for a retail pricing predictive model, and solve the retail pricing
predictive model to predict sales of a product in response to a
promotion of the product;
wherein the solve the dual linear program comprises:
generating an array of three or more coefficients
for each boxed variable that can be flipped from a lower
bound to an upper bound or from the upper bound to the
lower bound, wherein the three coefficients comprise a
boxed variable index, a ratio of a reduced cost of each
boxed variable to a modified pivot value, and a potential
improvement value for the boxed variable; and
sorting the coefficients in an order of the ratio,
wherein the sorting maximizes a number of boxed
variables that can be flipped.
Appeal Br. 12 (Claims App’x).
REJECTIONS
Claims 1—7, 9—15, and 17—20 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Non-Final Act. 5—7.
Claims 1—7, 9—15, and 17—20 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Non-Final Act. 7—8.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellants. We have not considered other possible issues
that have not been raised by Appellants and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv).
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ISSUES
(1) Does the Examiner err in rejecting claims 1—7, 9—15, and 17—20
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement?
(2) Does the Examiner err in rejecting claims 1—7, 9—15, and 17—20
under 35 U.S.C. § 101 as being directed to non-statutory subject matter?
CONTENTIONS AND ANALYSIS
Issue 1 - Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter
(i.e., using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date that Appellants
were in possession of the claimed invention. See id.
The Examiner finds
The claims provide details relating to mathematic calculations
and algorithms but fail to provide full, clear and concise
information with regards to how the mathematics are applied to
perform retail forecasting. The claim is broadly limited to
“retail forecasting” but fails to define what the parameters are,
what the inputs are, how it is specifically applied to retail
forecasting.
Non-Final Act. 5.
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Appellants argue the rejection is improper, and that the requisite
written description is provided in the Specification at paragraphs 21 and 40
and within the claim itself. Appeal Br. 4—6; see also Reply Br. 2—3.
We have reviewed the cited portions of the Specification on which
Appellants rely. We are persuaded that the Specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date,
Appellants were in possession of the claimed invention.
In response to the Examiner’s finding that the claim fails to define
how it is specifically applied to retail forecasting, we agree with Appellants
that “[t]he claims themselves limit the retail forecasting to ‘solv[ing] the
retail pricing predictive model to predict sales of a product in response to a
promotion of the product.’” Appeal Br. 5. Thus, the claims define how the
model is specifically applied to retail forecasting by predicting sales of a
product in response to a promotion of the product.
The Examiner indicates the claim fails to define what the inputs are.
Non-Final Act. 5. The Examiner, however, fails to establish one of ordinary
skill would not have understood the types of inputs that would be used in the
retail forecasting environment based on the specific examples of input data
provided in the Specification. These example include “user acceptance
criteria, user objectives and observations and variables of interest.”
Spec. 21. We agree with Appellants that the Specification “is not required to
list all possible inputs to [the] algorithm.” Reply Br. 3. Rather, the
Specification need only provide sufficient examples of inputs to convey to
those skilled in the art that Appellants were in possession of the claimed
invention.
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The Examiner indicates the claim fails to define what the parameters
are. Non-Final Act. 5. We disagree because when read in light of the
Specification, the claim indicates the parameter values are recovered by
solving the dual linear program after receiving the input data. Spec. H 7, 8,
26, and 52. See also, e.g., claim 1, Claims App’x 1.
Therefore, we do not sustain the Examiner’s rejection of claims 1—7,
9—15, and 17—20 under 35 U.S.C. § 112, first paragraph.
Issue 2 - Subject Matter Eligibility
Appellants argue claims 1—7, 9—15, and 17—20 as a group (Appeal
Br. 7—10). We select independent claim 1 as representative. The remaining
claims stand or fall with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CIS
BankInt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), “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., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” id., e.g., to an
abstract idea. If the claims are not directed to patent-ineligible concept, the
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inquiry ends. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered “individually and ‘as an ordered
combination”’ to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Alice
Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
concludes that claims are directed to the abstract idea of mathematical
formulas and algorithms for estimating parameters to perform retail
forecasting stating,
The claims are directed to a series of steps for executing
mathematical functions to perform parameter estimation on a
plurality of variables. The claims recite a series of steps for
receiving input, transforming data using a dual linear program,
solving the program, recovering the results of the program, and
inputting the results into a model. The ability to transform data,
solve a dual linear program, model data and perform the
functions illustrated in the dependent claims, illustrate
mathematical formulas with no substantial practical application
except in connection with a digital computer, similar to
Gottschalk v. Benson which was found ineligible since the
claims would in effect be a patent on the algorithm itself.
Ans. 5 (citing Gottschalk v. Benson, 409 US 63 (1972)).
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The Examiner further concludes “[t]he claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the claims merely recite a medium storing
instructions to be executed by a processor, receiving input, recovering output
and inputting values.” Id.
Appellants argue “the Examiner is ignoring most of the limitation
[sic] of the claims, and is over-generalizing the claims. For example, as
discussed above in conjunction with the 35 U.S.C. §112 rejection, the claims
are directed to retail forecasting instead of generic formulas/algorithms.”
Appeal Br. 7. “Even if the claims are considered to be directed to an
abstract idea (not admitted by Applicants), the claims include an ‘inventive
concept’ or additional elements so that the abstract idea is transformed into a
patent-eligible application.” Id.
We find these arguments unpersuasive. Our reviewing court, the
Federal Circuit, has treated analyzing information by mathematical
algorithms, without more, as essentially a mental process within the abstract-
idea category. Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). See also, e.g., In re TLI Commc ’ns LLC Patent
Litig., 823 F.3d 607, 613 (Fed. Cir. 2016).; SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 Fed. Appx. 950, 955 (Fed. Cir. 2014); Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266,
1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372 (Fed. Cir. 2011); SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1333 (Fed. Cir. 2010). And our reviewing court has
recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
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particular tool for presentation), is abstract as an ancillary part of such
collection and analysis. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014).
Here, beyond the abstract idea of predicting sales of a product in
response to a promotion of the product, the claim merely recites an
algorithm and “well-understood, routine conventional activities],” either by
requiring conventional computer activities or routine data-gathering steps.
Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294) (alterations in
original). The Examiner correctly concludes the “claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the claims merely recite a medium storing
instructions to be executed by a processor, receiving input, recovering output
and inputting values.” Ans. 5. Considered individually or taken together as
an ordered combination, the claim elements fail to transform the claimed
abstract idea into a patent eligible application. That is, apart from the
abstract idea of the mathematical algorithm, claim 1 is not directed to
otherwise eligible subject matter. “Adding one abstract idea (math) to
another abstract idea [receiving input, recovering output and inputting
values] does not render the claim non-abstract.” RecogniCorp, LLC v.
Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Turning again to the second step of the Alice framework, and
specifically referring to claim 1, Appellants assert even if claim 1 is directed
to an abstract idea, “the claims are indicated to be allowable over the prior
art, which further contradicts the Examiner’s assertion that the claims recite
‘generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.’” (Appeal
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Br. 9). Yet to the extent Appellants argue the claims necessarily contain an
“inventive concept” based on their alleged novelty and non-obviousness
{id.), Appellants misapprehend the controlling precedent. Although the
second step in the Alice/Mayo framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non­
obviousness, but rather, a search for “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.’” Alice,
134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely
abstract idea is, nevertheless, patent-ineligible. See Mayo, 132 S. Ct. at
1304.
Appellants next argue “the claims do not preempt every application of
the abstract idea, no matter as to how it is characterized.” Appeal Br. 9.
As the Examiner notes, “the courts do not use pre-emption as a stand­
alone test for eligibility.” Ans. 7. “The fact that the claims do not preempt
do not make them any less abstract.” See, e.g., OIP Technologies Inc. v.
Amazon.com Inc., 788 F.3d 1359, 1364—65 (Fed. Cir. 2015) (concluding that
the claims do not become “any less abstract” due to lack of preemption);
Fairwarning IP LLC, v. Iatric Systems Inc., No. 2015-1985, slip op., *14
(Fed. Cir. Oct. 11, 2016) (concluding that “the absence of complete
preemption does not demonstrate patent eligibility.”). Moreover, our
reviewing court has further held that “[w]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015) “Where a patent’s claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
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as they are in this case, preemption concerns are fully addressed and made
moot.” Id.
Accordingly, we find this argument unpersuasive.
Citing a District Court case discussing “the inventive concepts in
[Diehr, DDR Holdings, and Cal. Tech],” Appellants further argue the recited
claims provide improvements to the functioning of the computer both by
speeding up the determination of retail forecasting, and using less memory.
Reply Br. 4 (citing Fabricating Corp. v. Autodesk, Inc., 2015 WL 226084, at
*9 (D.N.H Jan. 15,2015).
The Examiner concludes,
the argument that the embodiments consume a limited amount
of memory and increase empirical performance only modestly
with an increase is data is not an example of a technological
improvement. The ability to use less memory is merely a work
around and not an actual improvement to another technology,
technical field or functioning of the computer itself since
utilizing less memory does not actually impact or change the
structure or function of the technology itself.
Ans. 8.
We agree with the Examiner. We further find Appellants’ argument
unpersuasive because we find no parallel between claim 1 and the claims at
issue, for example, in DDR Holdings. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1249-1250 (Fed. Cir. 2014). In DDR
Holdings, the Federal Circuit determined that, although the patent claims at
issue involved conventional computers and the Internet, the claims
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host’s website after “clicking” on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
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The Federal Circuit, thus, held that the claims were directed to statutory
subject matter because they claim a solution “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Id.
No such technological advance is evident in the presently claimed
invention. Unlike the situation in DDR Holdings, Appellants do not identity
any problem particular to computers, computer networks, or the Internet that
claim 1 allegedly overcomes. Instead, apart from the abstract algorithm,
claim 1 merely employs generic computer components to perform generic
computer functions, i.e., “receiving input, recovering output and inputting
values.” Ans. 5. Like the claimed invention in Versata Development v.
SAP, the presently claimed invention is “basically a method of determining a
price” and thus, can “be achieved ‘in any type of computer system or
programming or processing environment,’ and accordingly ‘no specific,
unconventional software, computer equipment, tools or processing
capabilities are required.’” Versata Development Group, Inc. v. SAP
America, Inc., 793 F.3d 1306, 1327 (Fed. Cir. 2015).
This case is also similar to Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). There, the
claims of the challenged patent were directed to the abstract idea of
organizing information through mathematical correlations. Id. at 1350—51.
The Federal Circuit explained that the claim at issue “recites a process of
taking two data sets and combining them into a single data set” simply by
organizing existing data into a new form. Id. at 1351. A process that started
with data, added an algorithm, and ended with a new form of data was
directed to an abstract idea. Id. Here, in claim 1, data is received from a
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user, encoded into a matrix, a new form of data is obtained in the form of
recovered parameter values, the recovered parameter values are input into a
retail pricing predictive model and the process ends with still another new
form of data. Appellants establish no material difference between the Alice
analysis in Digitech and the analysis here.
For all the reasons discussed above, the Examiner correctly
determines that claim 1 is directed to non-statutory subject matter and so we
sustain the rejection of claim 1 under 35 U.S.C. § 101. Claims 2—7, 9—15,
and 17—20, which are not argued separately, are rejected for similar reasons.
DECISION
We reverse the Examiner’s decision rejecting claims 1—7, 9—15, and
17—20 under 35 U.S.C. § 112, first paragraph,.
We affirm the Examiner’s decision rejecting claims 1—7, 9—15, and
17-20 under 35 U.S.C. § 101.
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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