Ex Parte Zakrzewski

Board of Patent Appeals and Interferences

Nov 16, 2010

10803872 (B.P.A.I. Nov. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RADOSLAW ROMUALD ZAKRZEWSKI

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Appeal 2009-005745
Application 10/803,872
Technology Center 2100
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Before JAMES D. THOMAS, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 10/803,872

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
Appellant’s invention describes “techniques for using statistical
analysis to reduce the number of samples required in accordance with
statistical analysis confidence intervals to verify correctness of a component.
These techniques may be used in verification of a neural network or other
hardware or software component.” (Abst. 65).

Claim 1 is illustrative:
1. A method for verifying accuracy of a component that is
implemented from a model, comprising:

receiving a number of randomly selected sample, M, that result from
at least one test of the component, for M ≥ 1/ε ln(1/δ),

wherein

δ represents a confidence value in the range 0<δ<1,

ε represents an accuracy level of p-est to its true value p, in the
range 0<ε<1,

p represents a probability that a randomly selected point is in
accordance with a selected criterion, F,

p-est, an estimate of p based on the M randomly selected samples,
is zero,

and a probability that (p≥ε) is equal to or less than δ;

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determining if each of said randomly selected samples is not in
accordance with said selected criterion, F; and

verifying accuracy of said component based on said determining.

Appellant appeals the following rejections:
1. Claims 1-36 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1, 16-19, and 34-36 stand rejected under 35 U.S.C. § 101 as
lacking patentable utility.

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Under 35 U.S.C. § 101, did the Examiner err in concluding that claims
1-36 are directed to non-statutory subject matter?
2. Under 35 U.S.C. § 101, did the Examiner err in finding that claims 1,
16-19, and 34-36 lack patentable utility?

GROUPING OF CLAIMS
Appellant argues all rejected claims as a group (App. Br. 8 et seq.).
We select representative claim 1 to decide the appeal for the first issue
before us on appeal. See 37 C.F.R. § 41.37(c)(1)(vii).

FINDINGS OF FACT (FF)
1. Appellant’s Specification discloses:

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The component may be one of: a neural network, a fuzzy
logic model, a fuzzy logic classifier, and a statistical k-
neighbor classifier. The component may be included in a
system with at least one other component. The
component may be a first component, and an output of a
second component may be used as an input to the first
component, and the method may further comprise:

determining whether said first component is verified as
correct in accordance with error that may be introduced
by said second component's output.

(Spec. 3:21 –4:3).
35 U.S.C. § 101
PRINCIPLES OF LAW
Statutory Subject Matter
The subject matter of claims permitted within 35 U.S.C. § 101 must
be a machine, a manufacture, a process, or a composition of matter.
Moreover, our reviewing court has stated that “[t]he four categories [of
§ 101] together describe the exclusive reach of patentable subject matter. If
the claim covers material not found in any of the four statutory categories,
that claim falls outside the plainly expressed scope of § 101 even if the
subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346,
1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359, 1365 (Fed.
Cir. 2009). This latter case held that claims directed to a “paradigm” are
nonstatutory under 35 U.S.C. § 101 as representing an abstract idea. Thus, a
“signal” cannot be patentable subject matter because it is not within any of
the four categories. Nuijten, 500 F.3d at 1357.
The Supreme Court has held that “[e]xcluded from such patent
protection are laws of nature, natural phenomena, and abstract ideas.”
Diamond v. Diehr, 450 U.S. 175, 185 (1981). “An idea of itself is not
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patentable.’” Id. at 185 (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall.
498, 507, 22 L.Ed. 410 (1874); Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
(“[M]ental processes, and abstract intellectual concepts are not patentable.”);
see also id. at 71 (“It is conceded that one may not patent an idea.”).
A claim that recites no more than software, logic or a data structure
(i.e., an abstraction) does not fall within any statutory category. In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly, “[a]bstract
software code is an idea without physical embodiment.” Microsoft Corp. v.
AT&T Corp., 550 U.S. 437, 449 (2007). The unpatentability of abstract ideas
was recently reaffirmed by the U.S. Supreme Court in Bilski v. Kappos, 130
S.Ct. 3218, 3222 (2010).

ANALYSIS – statutory subject matter under § 101
We decide the question of whether the Examiner erred in concluding
that claims 1-36 are directed to non-statutory subject matter under 35 U.S.C.
§ 101.
At the outset, based upon our review of the claims in light of
Appellant’s Specification (see e.g., “Summary of Invention” pp. 3-6
describing explicit statistical mathematical formulas), we conclude that each
of Appellant’s claims 1-36 is directed to a mathematical algorithm. Cf. also
EQUATIONS 1-34 described in the Specification, pp. 16-33.
Appellant contends, inter alia, that “the final result of the presently
claimed invention, for example, a component implemented from a model
that is verified as accurate according to the recited criteria, is useful,
concrete and tangible . . . .” (App. Br. 10).
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However, our reviewing court has determined that the “useful,
concrete, and tangible result” test associated with State Street Bank & Trust
Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373 (Fed. Cir.
1998) is inadequate. In re Bilski, 545 F.3d 943, 959-960 (Fed. Cir. 2008)
(en banc); see also Bilski v. Kappos, 130 S.Ct. 3218, 3231 (2010)
(“[N]othing in today’s opinion should be read as endorsing interpretations of
§ 101 that the [CAFC] has used in the past. See, e.g., State Street, 149 F.3d,
at 1373; AT&T Corp., 172 F.3d, at 1357.”). Therefore, we find Appellant’s
argument unavailing regarding the “useful, concrete and tangible” test of
State Street. (See App. Br. 10).
Appellant further avers that “[f]or example, a practical application
would be determining if a component has not been accurately implemented
from a model of the component, in which case, for example, the component
could be discarded or indicated as needing to be corrected.” (App. Br. 11).
However, we note that Appellant’s Specification discloses that “[t]he
component may be one of: a neural network, a fuzzy logic model, a fuzzy
logic classifier, and a statistical k-neighbor classifier.” (FF 1). We conclude
that these disembodied mathematical constructs are “paradigms” that are
nonstatutory under 35 U.S.C. § 101 as representing abstract ideas. See
Ferguson, 558 F.3d at 1365.
Based upon our review of Appellant’s claims, we conclude that the
end result of each independent claim on appeal is a plurality of iteratively
computed numeric values similar to the computed updated alarm limit data
values proscribed by Parker v. Flook, 437 U.S. 584 (1978). The numeric
values resulting from the data gathering and mathematical computations of
the present claims on appeal fall short of being utilized in any manner to
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perform a corresponding control function of a physical machine, such as
opening a rubber mold, as in Diamond v. Diehr, 450 U.S. 175. Additionally,
these claims do not survive the analysis from Ex parte Gutta, 93 USPQ2d
1025 (BPAI 2009) (precedential).
In particular, we conclude that the claims on appeal are not limited to
a tangible practical application in which the mathematical algorithm is
applied that results in a real-world use. See Ans. 3; see also Gutta, 93
USPQ2d at 1031 (holding that system claim 14 was non-statutory under
§ 101 despite reciting a memory and processor). Nor are the claims on
appeal limited so as to not encompass substantially all practical applications
of the mathematical algorithm even in one field of use. See id.
Overshadowing all of this analysis, we are in accord with the
Examiner’s conclusion (Ans. 3) that the claims in this appeal are directed to
abstract ideas according to the earlier-noted precedent since these claims are
directed to verification of a component that is implemented from a
mathematical model.
For at least the aforementioned reasons, we find no reversible error
regarding the Examiner’s rejection of representative claim 1 and claims 2-36
(and not argued separately) as being directed to non-statutory subject matter
under 35 U.S.C. § 101. See 37 C.F.R. § 41.37(c)(1)(vii).
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35 U.S.C. § 101
PRINCIPLES OF LAW
Utility Requirement
The utility requirement of § 101 mandates that the invention be
operable to achieve useful results. Brooktree Corp. v. Advanced Micro
Devices, Inc., 977 F.2d 1555, 1571 (Fed. Cir. 1992). Lack of utility is a
question of fact. In re Cortright, 165 F.3d 1353, 1356 (Fed. Cir. 1999).
The PTO has the initial burden of challenging a patent applicant's
presumptively correct assertion of utility. In re Brana, 51 F.3d 1560, 1566
(Fed. Cir. 1995). “If the PTO provides evidence showing that one of
ordinary skill in the art would reasonably doubt the asserted utility, however,
the burden shifts to the applicant to submit evidence sufficient to convince
such a person of the invention's asserted utility. Id.” In re Swartz, 232 F.3d
862, 864 (Fed. Cir. 2000).

ANALYSIS - Utility Requirement under § 101
We decide the question of whether claims 1, 16-19, and 34-36 lack
patentable utility under 35 U.S.C. § 101.
At the outset, we observe that the Examiner has withdrawn in the
Answer (p. 2) the § 112, first paragraph, enablement rejection for claims 12
and 30 as set forth on page 5 of the Final Rejection. Therefore, we do not
reach the issue of enablement under § 112, first paragraph, as this rejection
is not before us on appeal.
Regarding the issue of patentable utility under 35 U.S.C. § 101, the
Examiner makes the following factual findings:

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Examiner’s response

Claim 1 contains the formula M≥(1/ε)ln(1/δ) where the ranges
can be 0<δ<1 and 0<ε<1. Lack of utility comes from the values of 1/δ
and 1/ε as these values approach 0. When these values approach 0 the
resulting values approach infinity. As both δ and ε approach 0, the
values of 1/δ and 1/ε approach infinity. Using the initial equation
M≥Infinityln(infinity), which lacks utility.

(Ans. 11).
We note that “[t]he PTO may establish a reason to doubt an
invention's asserted utility when the written description ‘suggest[s] an
inherently unbelievable undertaking or involve[s] implausible scientific
principles.’” In re Cortright 165 F.3d at 1357 (quoting In re Brana, 51 F.3d
at 1566).
Here, from basic calculus, we agree with the Examiner that the values
of 1/δ and 1/ε will both approach infinity in the limit as the denominators δ
and ε approach zero. However, we observe that the express language of the
claim provides ranges where “δ represents a confidence value in the range
0 < δ < 1” and “ε represents an accuracy level of p-est to its true value p, in
the range 0 < ε < 1.” (Claim 1). Thus, we conclude that the denominators δ
and ε are each expressly limited by the claim language to values of greater
than zero and less than one.
Given the express ranges recited in the claim, we find the claimed
functions 1/δ and 1/ε can never actually be infinity (i.e., 1/zero = undefined)
because the denominators δ and ε are expressly limited by the claim
language to ranges of greater than zero and less than one. Thus, the
mathematically undefined limit of zero in the denominator can never be
reached under a broad but reasonable interpretation of the claim. (Claim 1).
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Therefore, we find the Examiner has not established a reason to doubt
the invention's asserted utility under 35 U.S.C. § 101. Moreover, because
the Examiner has withdrawn the § 112 enablement rejection, (Ans. 2) the
Examiner has also not established under 35 U.S.C. § 112, first paragraph,
that “the written description ‘suggest[s] an inherently unbelievable
undertaking or involve[s] implausible scientific principles.’” See In re
Cortright 165 F.3d at 1357.
Because the utility requirement of § 101 and the question of whether
the Specification provides an enabling disclosure under § 112 are closely
related,2 we find the Examiner’s withdrawal of the enablement rejection also
undermines the Examiner’s rejection of claims 1, 16-19, and 34-36 as
lacking patentable utility under 35 U.S.C. § 101. See MPEP
§ 2164.07(I.)(A.)(“If a claim fails to meet the utility requirement of
35 U.S.C. 101 because it is shown to be nonuseful or inoperative, then it
necessarily fails to meet the how-to-use aspect of the enablement
requirement of 35 U.S.C. 112, first paragraph.”). See also MPEP §
2164.07(I.)(B.)(“When the examiner concludes that an application is
describing an invention that is nonuseful, inoperative, or contradicts known
scientific principles, the burden is on the examiner to provide a reasonable
basis to support this conclusion. Rejections based on 35 U.S.C. 112, first
paragraph and 35 U.S.C. 101 should be made.”)(underline added).
For these reasons, we reverse the Examiner’s rejection of claims 1,
16-19, and 34-36 as lacking patentable utility under 35 U.S.C. § 101.

2 See Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1358
(Fed. Cir. 1999).

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CONCLUSIONS

1. The Examiner did not err in concluding that claims 1-36 directed to
non-statutory subject matter under 35 U.S.C. § 101.

2. The Examiner erred in finding that claims 1, 16-19, and 34-36 lack
patentable utility under 35 U.S.C. § 101.

DECISION
Because we have sustained at least one rejection for each claim on
appeal, the Examiner’s decision rejecting claims 1-36 under 35 U.S.C. § 101
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED

pgc

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