Ex Parte Tannor et al

Patent Trial and Appeal Board

May 31, 2017

13822297 (P.T.A.B. May. 31, 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.
13/822,297 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
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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).
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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.
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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
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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)
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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
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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
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