Ex Parte Suresh et al

Patent Trial and Appeal Board

Nov 30, 2018

13828673 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/828,673 03/14/2013 Krishnan Suresh
72088 7590 12/04/2018
WISCONSIN ALUMNI RESEARCH FOUNDATION
C/0 BOYLE FREDRICKSON S.C
840 North Plankinton A venue
Milwaukee, WI 53203
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.
282.159 2407
EXAMINER
CRAIG, DWIN M
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
docketing@boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISHNAN SURESH and JOSHUA DANCZYK
Appeal2018-003916
Application 13/828,673 1
Technology Center 2100
Before ALLEN R. MacDONALD, HUNG H. BUI, and
MICHAEL M. BARRY, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-12 and 14--23, which are all the
claims pending in the application. Claim 13 is cancelled. App. Br. 10-15
(Claims App'x). We have jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM. 2
1 According to Appellants, Wisconsin Alumni Research Foundation is the
real party in interest. App. Br. 3.
2 Our Decision refers to Appellants' Appeal Brief filed November 10, 2017
("App. Br."); Reply Brief filed February 28, 2018 ("Reply Br."); Examiner's
Answer mailed December 29, 2017 ("Ans."); Final Office Action mailed
November 7, 2016 ("Final Act."); and original Specification filed March 14,
2013 ("Spec.").
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Application 13/828,673
STATEMENT OF THE CASE
Finite element analysis (PEA) is a computerized method used by
engineers and designers used to design new products or refine existing
products. Spec. 1: 8-11. For example, a user is able to verify if a proposed
design of a product will perform in accordance with desired specification
prior to manufacturing, or to predict how a product reacts to real-world
forces, vibration, heat, fluid flow, and other physical effects. Spec. 1: 11-14.
According to Appellants, "the geometry of the proposed design is
identified" and "is broken up into a discrete representation, known as a mesh
. . . made up of a plurality of finite elements." Spec. 1: 14--16. However,
"none of the [finite] elements must overlap, i.e., the mesh must not be
tangled," but "the tangling of a finite element mesh is unavoidable in
modem PEA." Spec. 1:23-27. As such, Appellants "provide a method for
carrying accurate finite element analysis over a tangled mesh which allows a
user to generate physically valid solutions to the equations governing a
proposed design." Spec. 2: 16-18.
Claims 1 and 14 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below:
1. A method for carrying out accurate finite element analysis on a
proposed product design, the proposed product design having desired
specifications, comprising the steps of:
defining a domain of the proposed product design;
meshing the domain of the proposed product design, the
mesh being defined by a plurality of finite elements;
computing a stiffness contribution due to the plurality of
finite elements;
computing a stiffness contribution due to the finite
elements overlapping finite elements;
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combining the stiffness contribution of the plurality of
finite elements and the stiffness contribution due to the
overlapping finite elements;
applying user selected boundary conditions to the mesh;
calculating an effect of the boundary conditions on the
plurality of finite elements; and
verifying the proposed product design will perform in
accordance with the desired specifications in response to the
effect.
App. Br. 10 (Claims App'x).
EXAMINER'S REJECTION
Claims 1-12 and 14--23 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a patent-ineligible "abstract idea"
without significantly more. Final Act. 5-9.
DISCUSSION
To determine whether subject matter is patent-eligible under§ 101,
the Supreme Court has set forth a two part test "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. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). The first step in the analysis
is to "determine whether the claims at issue are directed to one of those
patent-ineligible concepts," such as an abstract idea. Id. For computer-
related technologies, "the first step in the Alice inquiry ... asks whether the
focus of the claims is on the specific asserted improvement in computer
capabilities" (which would be eligible subject matter) or instead "on a
process that qualifies as an 'abstract idea' for which computers are invoked
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merely as a tool" (which would be ineligible subject matter). Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36, 1338 (Fed. Cir. 2016) (emphasis
added). If the claims are directed to eligible subject matter, the inquiry ends.
Id. at 1339.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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, 134 S.Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "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. (citing Mayo, 566 U.S. at 72-73).
In rejecting claims 1-12 and 14--23 under 35 U.S.C. § 101, the
Examiner determines these claims are directed to an abstract idea, i.e., "an
algorithm for verification of a proposed product design" and contain
"mathematical manipulations of an abstraction [i.e., a mesh that has been
subjected to a Finite Element Analysis]" without any "real-world"
application. Final Act. 5; Ans. 3--4. The Examiner also determines these
claims are directed to an abstract idea because the process recited in these
claims can be implemented mentally or performed manually by a human
with pen and paper. Final Act. 6; see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). The Examiner
further determines additional elements in the claims, whether taken
separately or in an ordered combination, do not amount to "significantly
more" than an abstract idea, because Appellants' claims only recite an
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algorithm, i.e., "mathematical manipulations of an abstraction" and do not
suggest any "real-world" application of the claimed "algorithm." Final Act.
8-9.
Alice/Mayo--Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue the
claims are not directed to an abstract idea because ( 1) "the steps in the
methodology provided in the independent claims are sufficient concrete as to
set them outside the broad definition of an abstract idea, as set forth in
Alice," and (2) the claims are analogous or similar to those discussed in Ex
Parte Wegman, Appeal No. 2013-008168 (PTAB September 22, 2015)
where "the Board determined that the steps directed toward ' ... performing
an analysis of objects, either actual or virtual, and calculating coefficients
for the model based upon that analysis . . . are sufficiently concrete as to set
them outside the broad definition of abstract idea as set forth in Alice." App.
Br. 5-6.
Appellants' arguments are not persuasive. First, Appellants' reliance
on Ex Parte Wegman is misplaced. Non-precedential Board decisions
including Ex Parte Wegman are not binding, and those decisions are highly
fact-specific to those cases.
Second, the appropriate authority for this case is Gottschalk v.
Benson, 409 U.S. 63 (1972) where the Supreme Court held Benson's process
claim of converting signals from binary coded decimal "BCD" form into
binary, via a series of mathematical calculations to be an "abstract idea"
under 35 U.S.C. § 101. For example, Benson's claim recites "a method of
converting signals from binary coded decimal form into binary which
comprises the steps of:
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(1) storing the binary coded decimal signals in a reentrant shift
register,
(2) shifting the signals to the right by at least three places, until
there is a binary '1' in the second position of said register,
(3) masking out said binary ' 1 ' in said second position of said
register,
( 4) adding a binary '1' to the first position of said register,
( 5) shifting the signals to the left by two positions,
( 6) adding a ' 1 ' to said first position, and
(7) shifting the signals to the right by at least three positions
in preparation for a succeeding binary ' 1 ' in the second position of said
register."
As shown in Benson's claim, the process of converting BCD numerals
into pure binary numerals is an "algorithm" including a series of
mathematical calculations without a particular practical application.
Fittingly, the Supreme Court held Benson's process claim to be an
impermissible "abstract idea" because it was "so abstract and sweeping as to
cover both known and unknown use" of such an "algorithm" with or without
a computer. Id. at 65---68. The Supreme Court also observed that the
conversion of BCD numerals to pure binary numerals can be done mentally,
using a mathematical table. Id. at 67.
Similar to Benson, Appellants' claims 1 and 14 are directed to an
abstract idea of "carrying out accurate finite element analysis on a proposed
product design," i.e., "an algorithm for verification of a proposed product
design," and contain a series of mathematical calculations, including, for
example, ( 1) "computing a stiffness contribution due to the plurality of finite
elements [in a mesh];" (2) "computing a stiffness contribution due to the
finite elements overlapping finite elements;" (3) "combining the stiffness
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contribution of the plurality of finite elements and the stiffness contribution
due to the overlapping finite elements;" ( 4) "applying user selected
boundary conditions to the mesh;" ( 5) "calculating an effect of the boundary
conditions on the plurality of finite elements;" and (6) "verifying the
proposed product design will perform in accordance with the desired
specifications."
Information, as such, is intangible, and data analysis and algorithms
are also abstract ideas. See, e.g., Microsoft Corp. v. AT & T Corp., 550 U.S.
437, 451 n.12 (2007); Alice, 134 S.Ct. at 2355; Parker v. Flook, 437 U.S.
584, 589, 594--95 (1978) ("Reasoning that an algorithm, or mathematical
formula, is like a law of nature, Benson applied the established rule that a
law of nature cannot be the subject of a patent."); and Benson, 409 U.S. at
71-72. "[C]ollecting information, including when limited to particular
content (which does not change its character as information)," and
"analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more," are "within the realm of abstract
ideas." Electric Power, 830 F.3d at 1353-54; see also Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource, 654 F.3d at 1370. That is,
"[ w ]ithout additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible." Digitech, 758 F.3d at 1349-50 ("Data in
its ethereal, non-physical form is simply information that does not fall under
any of the categories of eligible subject matter under section 101. ").
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As further recognized by the Examiner (Final Act. 6), the steps recited
in Appellants' claims 1 and 14 are also mental steps that could be performed
in the human mind or by a human using a pen and paper. See CyberSource,
654 F.3d at 1372-73 ("[A] method that can be performed by human thought
alone is merely an abstract idea and is not patent-eligible under
[section] 101."); see also In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009)
("[M]ental processes----or processes of human thinking-standing alone are
not patentable even if they have practical application."); Benson, 409 U.S. at
67 ("Phenomena of nature,[] mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work.") ( emphasis added). Additionally, mental processes
remain unpatentable even when automated to reduce the burden on the user
of what once could have been done with pen and paper. Cy her Source, 654
F.3d at 1375 ("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.").
Accordingly, we agree with the Examiner that claims 1-12 and 14--23
are directed to an abstract idea, i.e., "an algorithm for verification of a
proposed product design."
Alice/Mayo--Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue the claims
recite elements that amount to "significantly more" [i.e., inventive concept]
than the alleged abstract idea" because:
(1) Appellants' claim 1 "specifically requires performing an
analysis of a virtual object (namely, applying user selected
boundary conditions to the mesh of a proposed product
design)" and "not only requires the calculation of the
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effect of the boundary conditions on the plurality of finite
elements, but further requires verifying the proposed
product design will perform in accordance with the desired
specification in response to that effect"; and
(2) Similar to independent claim 1, claim 7 specifically
requires performing an analysis of a virtual object
(namely, applying user selected boundary conditions to
the mesh of a proposed product design) and calculating
coefficients for the model based upon that analysis
(namely, calculating an effect of the boundary conditions
on the plurality of finite elements)."
App. Br. 7-8. In the Reply, Appellants acknowledge "the pending claims do
not include actual real-world elements" but argue the "claims do include a
virtual object, which corresponds to a potential real-world object, being
subjected to virtual collisions by various user selected boundary conditions
(e.g. stress, constraints and/or loads), which represent potential real-world
physical stresses on the potential real world product to verify the potential
real-world object will perform as designed." Reply Br. 3.
Appellants' arguments are not persuasive. Under current Federal
Circuit precedent, an "inventive concept" under Alice step 2 can be
established by showing, for example, that the patent claims:
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks"
(see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014);
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
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end user" (see BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352, 1350
(Fed. Cir. 2016)); or
(3) "entail[] an unconventional technological solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously
required massive databases)" and "improve the
performance of the system itself' (see Amdocs (Israel)
Ltd. v. Openet Telecom, Inc. 841 F.3d 1288, 1300 (Fed.
Cir. 2016)).
In this case, however, we find no element or combination of elements
recited in Appellants' claims 1 and 14 that contains any "inventive concept"
or adds anything "significantly more" to transform the abstract concept into
a patent-eligible application. Alice, 134 S.Ct. at 2357. For example,
Appellants' abstract idea of "carrying out accurate finite element analysis" is
not rooted in computer technology; nor does it ( 1) provide any technical
solution to a technical problem unique to the Internet as required by DDR
Holdings; (2) provide any particular practical application as required by
Bascom; or (3) entail an unconventional technological solution to a
technological problem as required by Amdocs. As correctly recognized by
the Examiner, "the claims are silent as to the actual real-world elements [i.e.,
a computer]" and "all of the claimed steps are either generating models or
performing computations on the models." Ans. 4. Even if generic computer
elements such as a computer system or processor were to be included in the
claims, such generic computer limitations do not transform an otherwise
abstract idea into patent-eligible subject matter. See DDR, 773 F.3d at 1256
( citing Alice, 134 S.Ct. at 2358).
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Because Appellants' claims 1 and 14 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
claims 1-12 and 14--23 under 35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-12 and 14--23 under
35 U.S.C. § 101.
DECISION
As such, we AFFIRM the Examiner's rejections of claims 1-12 and
14--23 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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