Ex Parte Tristan et al

Patent Trials and Appeals Board

Jun 21, 2019

14316186 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/316,186 06/26/2014 Jean-Baptiste Tristan
42425 7590 06/25/2019
HICKMAN PALERMO BECKER BINGHAM/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
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.
50277-4527 5885
EXAMINER
BUSS, BENJAMIN J
ART UNIT PAPER NUMBER
2125
NOTIFICATION DATE DELIVERY MODE
06/25/2019 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-BAPTISTE TRISTAN, GUY L. STEELE, JR.,
DANIELE. HUANG, and JOSEPH TASSAROTTI1
Appeal 2018-004459
Application 14/316, 186
Technology Center 3600
Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-20, all the pending claims in the
present application (see Claims Appendix). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to a probabilistic programming
compiler that generates data-parallel inference code (see Abstract).
1 Appellants name Oracle International Corporation as the real party in
interest (App. Br. 2).
Appeal 2018-004459
Application 14/316, 186
Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A method comprising:
compiling source code, representing a model of a body of
data, into an intermediate representation of the model;
wherein the model of the body of data specifies one or
more probability distributions;
wherein the intermediate representation of the model
represents at least one probability distribution, of the one or more
probability distributions, with one or more mathematical expressions;
identifying a particular inference algorithm of a plurality
of inference algorithms; and
producing inference code that implements the particular
inference algorithm;
wherein the inference code is configured to sample from
the at least one probability distribution of the one or more probability
distributions; and
wherein producing the inference code is based, at least in
part, on an analysis of the one or more mathematical expressions;
wherein the method is performed by one or more
computing devices.
Appellants appeal the following rejections: 2
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to patent-ineligible subject matter (Final Act. 3-5).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
2 The Examiner withdrew both the rejection of claims 5 and 15 under 35
U.S.C. § l 12(b) and the rejection of claims 1, 5-9, 11, and 15-19 under 35
U.S.C. § 102(a) as being anticipated by Brooks Paige & Frank Wood, A
Compilation Target for Probabilistic Programming Languages, In Proc. of
the 3 pt Int'l Conf. on Mach. Leaming (ICML-14), 1935-1943 (March 3,
2014). (Ans. 2).
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Application 14/316, 186
(precedential).
ANALYSIS
Rejection under§ 1 OJ
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with the framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk."). For example, concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594-95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63,
69 (1972)).
Recently, the USPTO published revised guidance on the application
of 35 U.S.C. § 101. USPTO's 2019 Revised Patent Subject Matter
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Application 14/316, 186
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance").
Under the Revised Guidance "Step 2A," the office first looks to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). 84 Fed. Reg. at
51-52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance "Step 2B") look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 1, and similarly, computer-
readable media claim 11, the Examiner determines that the claims are
directed to the abstract idea of "mathematical relationships" (Final Act. 3),
which the Examiner appears to conclude are mental processes i.e.,
identifying a particular inference algorithm and producing inference code
(see claim 1 ).
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Application 14/316, 186
A claim recites a mental process when the claim encompasses acts
people can perform using their minds or pen and paper. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed.
Cir. 2011) ( determining that a claim whose "steps can be performed in the
human mind, or by a human using a pen and paper" is directed to an
unpatentable mental process). This is true even if the claim recites that a
generic computer component performs the acts. See, e.g., Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) ("Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person's mind."); see also 2019 Eligibility Guidance 84 Fed.
Reg. at 52 n.14 ("If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.").
Appellants' Specification discloses:
There are many different inference algorithms, most of which
are conceptually complicated and difficult to implement at
scale. Despite the enthusiasm that many people who practice
data analysis have for machine learning, this complexity is a
barrier to deployment.
Spec. ,i 3.
Probabilistic programming is a way to simplify the application
of machine learning based on Bayesian inference. The key
feature of probabilistic programming is separation of concerns:
a user specifies what needs to be learned by describing a
probabilistic model, while a compiler automatically generates
the inference procedure for the described model. In particular,
the programmer writes source code that describes one or more
probability distributions, and the source code is parsed by a
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probabilistic programming compiler. The compiler then
generates inference code that implements an inference
algorithm configured to sample from the one or more described
distributions. Using the compiler-generated inference code, the
programmer samples from the described distribution(s).
Spec. ,i 4.
Doing inference on probabilistic programs is computationally
intensive and challenging. Most of the algorithms developed to
perform inference are conceptually complicated, and it is not
clear, especially for non-experts, which algorithm would work
best for a given model. It would be beneficial to facilitate
selection of an inference algorithm in the context of
probabilistic programming.
Spec. iJ5.
In other words, when read in light of the Specification, the claimed
"identifying a particular inference algorithm" is difficult and challenging for
non-experts due to their computational complexity. As such, we conclude
that one of ordinary skill in the art would not find it practical to perform the
aforementioned "identifying" step mentally. Additionally, Appellants'
Specification explicitly states that "the compiler then generates inference
code" (Spec. ,i 4.), not an individual using his/her mind or pen and paper.
As such, we also conclude that it is not practical for one of ordinary skill in
the art to perform the aforementioned "producing" step mentally.
Nor do ,ve see how the clairned invention recites organizing human
activity or recites mathematical concepts. For example, the claims do not
include fundamental economic principles or practices, commercial or legal
interactions, managing personal behavior or relationships or interactions
between people. Also, while the Specification identifies "implement[ing] an
inference algorithm" (Spec. i1 4), the specific mathematical algorithm or
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fonnula is not explicitly recited in the claims. As such, under the recent
1\1emorandurn, the claims do not recite a mathematical concept. See, e.g.,
Subject Matter Eligibility hxamples: Abstract Ideas, at 7 (Jan. 7, 2019)
(discussing Example 38 and noting that '"The claim does not recite a
mathematica1 relationship, formula, or calculation. \Vhile some of the
limitations may be based on rnathematical concepts, the rnathematical
concepts are not recited in the claims.").
As such, based on the record before us, we are persuaded that the
Examiner erred in Prong 1 in determining that the claims recite an abstract
idea. Thus, there is no need to proceed further with the § 101 analysis.
DECISION
We reverse the Examiner's§ 101 rejection.
REVERSED
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