Ex Parte Tannor et alDownload PDFPatent Trial and Appeal BoardMay 31, 201713822297 (P.T.A.B. May. 31, 2017) Copy Citation 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. 13/822,297 04/04/2013 David J. Tannor P-78808-US 6242 49443 7590 06/02/2017 Pearl Cohen Zedek Latzer Baratz LLP 1500 Broadway 12th Floor New York, NY 10036 EXAMINER MALZAHN, DAVID H ART UNIT PAPER NUMBER 2182 NOTIFICATION DATE DELIVERY MODE 06/02/2017 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): US PTO @ PearlCohen .com Arch-USPTO @ PearlCohen. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID J. TANNOR and ASAF SHIMSHOVITZ Appeal 2017-002654 Application 13/822,297 Technology Center 2100 Before JAMES R. HUGHES, ERIC S. FRAHM, and JOHN D. HAMANN, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1—9, 13, 15, 24—26, 28—32, and 38. Claims 10-12, 14, 16—23, 27, and 33—37 have been canceled. Final Act. 1; App. Br. 3, 9-12.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer to Appellants’ Specification (“Spec.”) filed March 12, 2013; Appeal Brief (“App. Br.”) filed June 14, 2016; Supplemental Appeal Brief (“Supp. App. Br.”) filed Sept. 6, 2016; and Reply Brief (“Reply Br.”) filed Dec. 1, 2016. We also refer to the Examiner’s Answer (“Ans.”) mailed Oct. 6, 2016, and Final Office Action (Final Rejection) (“Final Act.”) mailed Jan. 5,2016. Appeal 2017-002654 Application 13/822,297 Appellants ’ Invention The invention generally concerns signal processing and compressing signal data, in particular, signal processors and image processors for compressing signal (image) data. The signal processor includes a function shapes generator for receiving parameters and for generating an output of shape parameters, a matrix generator receiving the shape parameters and generating an output of a matrix, a signal transformer receiving original signals and the matrix, and generating a transformed signal, and a signal compressor receiving the transformed signal and generating a compressed representation of the transformed signal. Spec. 2—17; Abstract. Representative Claim Independent claim 1, reproduced below, further illustrates the invention: 1. A signal processor for compressing signal data, comprising: a function shapes generator for receiving as input time and frequency scale parameters, and for generating as output a plurality of shape parameters for a corresponding plurality of localized functions, wherein the shape parameters govern the centers and spreads of the localized functions; a matrix generator, coupled with said function shapes generator, for receiving as input the plurality of shape parameters generated by said function shapes generator, and a sequence of sampling times, and for generating as output a matrix G* whose elements are the values of the localized functions at the sampling times, wherein each column of the matrix corresponds to one of the localized functions, and wherein each row of the matrix corresponds to one of the sampling times; a signal transformer, coupled with said matrix generator, for receiving as input an original signals, and the matrix generated by said matrix generator, and for generating as output 2 Appeal 2017-002654 Application 13/822,297 a transformed signal c by applying the matrix G* to the original signals; and a signal compressor, coupled with said signal transformer, for receiving as input the transformed signal c generated by said signal transformer, and for generating as output a compressed representation of the transformed signal c. Rejection on Appeal The Examiner rejects claims 1—9, 13, 15, 24—26, 28—32, and 38 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. ISSUE Based upon our review of the record, Appellants’ contentions, and the Examiner’s findings and conclusions, the issue before us follows: Did the Examiner err in rejecting claims 1—9, 13, 15, 24—26, 28—32, and 38 under 35 U.S.C. § 101 as being directed to non-statutory subject matter? ANALYSIS Appellants argue independent claims 1, 9, and 24 together as a group (see App. Br. 3—6) and also present additional arguments with respect to claim 24 (see App. Br. 6—8). We select independent claims 1 and 24 as representative of Appellants’ arguments with respect to claims 1—9, 13, 15, 24—26, 28-32, and 38. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner rejects the claims as being directed to non-statutory subject matter in that the claims are “directed to a judicial exception, namely the abstract idea of compressing/decompressing signal data which is defined by mathematical relationships, without significantly more” (Final Act. 2). 3 Appeal 2017-002654 Application 13/822,297 See Final Act. 2—3; Ans. 4—5. Appellants contend that the “claims recite patentable subject matter under 35 U.S.C. § 101 at least because the claims are not ‘directed to’ an abstract idea, and even if the claims are viewed as being directed to an abstract idea, they amount to significantly more than mere implementation of the alleged abstract idea with a computer.” App. Br. 3 ; see also App. Br. 3—8; Reply Br. 1—3.2 Under 35 U.S.C. § 101, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has “‘. . . long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 77—80 (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, 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 an abstract idea, the 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 2 The Reply Brief lacks page numbering. We cite to the Reply Brief as if it were consecutively numbered from pages 1 to 4. 4 Appeal 2017-002654 Application 13/822,297 determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting 566 U.S. at 78-80). 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, 566 U.S. at 71. 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). Turning to the first step of the eligibility analysis, the Examiner finds that claim 1 is directed to the abstract idea of compressing signal data. Final Act. 2. Conversely, the Appellants contend that “Appellants’ claimed invention” similar to the invention in Enfish “includes an improvement for data compression/decompression in a computer of modifying a Gabor transform to represent a signal in terms of coefficients that are calculated with a complexity that causes faster compression/decompression, compression/decompression, smaller memory requirements, and more accurate compression/decompression.” App. Br. 4. Appellants further contend “[t]he invention claimed in [the] independent claims . . . [is] directed towards data compression/decompression, which is clearly rooted in computer technology, as data compression/decompression does not even exist pre-computer world.” App. Br. 6. See also Reply Br. 2—3 (discussing Alice step 1 analysis). The independent claims (claims 1, 9, and 24) are directed to a processor for compressing signal (or image) data. The compression is 5 Appeal 2017-002654 Application 13/822,297 accomplished utilizing a number of mathematical processes implemented in software (see, e.g., Spec. pp. 36-42). Unlike the claims in Enfish — systems comprising means for configuring memory according to a self-referential table — that were found to be directed to “an improvement to [the] computer functionality itself’ (Enfish, 822 F.3d. at 1336), the instant claims are more akin to the claims for analyzing information found to be abstract in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016), or the claims directed to image data processing discussed in Digitech Image Technologies, LLCv. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (finding “a process that employs mathematical algorithms to manipulate [data or information] to generate additional information is [abstract and] not patent eligible”). See Elec. Power Grp., 830 F.3d at 1353—54 (citing Digitech, 758 F.3d at 1351). Notwithstanding Appellants’ contention that digital compression is not abstract, referencing dicta in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (see App. Br. 6; DDR, 773F.3datl259), we agree with the Examiner and find Appellants’ claims to be directed to an abstract concept of compressing signal data. Having found Appellants’ claims are directed to an abstract concept under Alice’s step 1 analysis, we next address whether the claims “add significantly more to the alleged abstract idea” (App. Br. 6). As directed by our reviewing Court, we search for an “‘inventive concept’ sufficient to ‘transform the nature of the claim into a patent-eligible application.’” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2355). Appellants contend claim 24 (and the other independent claims) 6 Appeal 2017-002654 Application 13/822,297 requires .. . matrices [be] applied to a digital image to transform the digital image, and that the transformed digital image is compressed .... [which is] similar to the additional steps of Research Corp. . . . [and] pushes the claims beyond merely implementing mathematical operations of multiplying matrices, such that claim 24 defines patentable subject matter. App. Br. 7 (citing Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010)). We disagree. Appellants’ claim 1 (and claim 24) recites processes for manipulating data utilizing mathematical operations — generating “shape parameters for a corresponding plurality of localized functions,” “generating ... a matrix . . . whose elements are the values of the localized functions at the sampling times” (claim 1) or generating matrices “whose elements are the values of the localized functions at the [first or second] sequence of spatial sampling points” (claim 24), “generating ... a transformed [signal or image] by applying the [matrix or matrices],” and “generating ... a compressed representation of the transformed [signal or image].” See claims 1 and 24. Such steps — generating parameters, generating matrices, transforming data (signals or images) by applying a matrix, and compressing the result — are all routine and conventional computer functions (i.e., mathematical operations) of a general processor. The Specification supports this view in discussing mathematical processes implemented in software which operates on generic computers to perform the recited data manipulations steps. See, e.g., Spec. pp. 14, 36-42. Appellants contend that the claims “require[] more than using mathematical equations to generate a data file” (App. Br. 7), but the claims only recite broad functional steps {supra). The claims do not recite how the computer performs the steps (utilizing the software) to: derive the local functions, use the local functions to generate the matrices, transform the 7 Appeal 2017-002654 Application 13/822,297 signal or image using the matrices, or compress the signal or image. Therefore, we are unpersuaded that Appellants’ claims recite the requisite “inventive concept” necessary to transform the claims from an abstract concept. For at least the reasons above, we are not persuaded of Examiner error in the rejection of claims 1 and 24 under 35 U.S.C. § 101. Thus, we sustain the Examiner’s rejection under § 101 of independent claims 1 and 24, and also of independent claim 9 (not separately argued with particularity) and dependent claims 2—8, 13, 15, 25, 26, 28—32, and 38, which fall with claims 1, 9, and 24, respectively. CONCLUSIONS Appellants have not shown that the Examiner erred in rejecting claims 1-9, 13, 15, 24—26, 28-32, and 38 under 35 U.S.C. § 101. DECISION We affirm the Examiner’s rejection of claims 1—9, 13, 15, 24—26, 28— 32, and 38. 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 8 Copy with citationCopy as parenthetical citation