International Business Machines Corporation

Patent Trials and Appeals Board

Aug 31, 2020

2019003264 (P.T.A.B. Aug. 31, 2020)

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.
14/500,023 09/29/2014 Noel C. Codella YOR920130939US1 5860
48062 7590 08/31/2020
RYAN, MASON & LEWIS, LLP
2425 Post Road
Suite 204
Southport, CT 06890
EXAMINER
CHANG, LI WU
ART UNIT PAPER NUMBER
2124
NOTIFICATION DATE DELIVERY MODE
08/31/2020 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):
ctoffice@rml-law.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NOEL C. CODELLA, GANG HUA, and JOHN R. SMITH
____________

Appeal 2019-003264
Application 14/500,023
Technology Center 2100
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–10 and 12–20, which constitute all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention relates to “information technology, and more
particularly, to machine learning technology.” Spec. 1, ll. 4–5. Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A method comprising the following steps:
identifying an anchor data point in a given class of data
points, wherein the given class of data points is
underrepresented among multiple classes in a data set of
multiple data points, wherein each of the multiple data points
represents a vector;
determining a given number of data points in the given
class that neighbor the anchor data point, wherein the given
number comprises two or more;
applying a weight to (i) each of the given number of data
points in the given class that neighbor the anchor data point to
create a given number of weighted neighboring data points, and
(ii) the anchor data point to create a weighted anchor data point,
wherein said weight applied to the anchor data point is equal to
the number of data points in the given class that neighbor the
anchor data point;
performing a vector summation by summing the given
number of weighted neighboring data points and the weighted
anchor data point; and
generating a synthetic data point to be associated with the
given class of data points, wherein the synthetic data point
represents the result of said vector summation;
wherein the steps are carried out by at least one
computing device.

REJECTION
Claims 1–10 and 12–20 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 2.
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ANALYSIS
Section 101 Rejection
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 that 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. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
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 at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal citation omitted).
“A claim that recites an abstract idea must include ‘additional features’
to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO has published revised guidance on the application of § 101.
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”); October 2019 Update: Subject Matter Eligibility, 84 Fed. Reg.
55,942 (available at the USPTO’s website) (“October 2019 PEG Update”).
Under the 2019 Guidance, we first look 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 Manual of Patent Examining
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Procedure (MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed. rev.
08.2017 Jan. 2018)).
See 2019 Guidance, 84 Fed. Reg. at 52, 55–56. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, do we then 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.
See id. at 56.
2019 Guidance, Step 2A, Prong 1
Under the first step of the Alice/Mayo framework, the Examiner finds
that the claimed invention is “directed to a mathematical process for
generating synthetic data.” Final Act. 2; Ans. 6. The Examiner compares
the claims to those found to be abstract ideas in Digitech, Bilski, and Benson.
Final Act. 3; see Ans. 6–7; see Digitech Image Techs., LLC v. Elecs. for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014); Bilski v. Kappos, 561 U.S.
593 (2010); Gottschalk v. Benson, 409 U.S. 63 (1972). Specifically, the
Examiner finds that the “claimed mathematical process is basically an
algorithm comprising a couple of math steps (determining a number,
applying weights, summarizing the vector to generate a resulting data
point).” Ans. 6.
Appellant does not persuasively refute the Examiner’s conclusion that
the claim is directed to mathematical concepts. Rather, Appellant merely
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argues that the Examiner oversimplifies the claims and provides only “non-
specific and conclusory characterizations” without “identify[ing] a particular
basis for alleging that the claimed invention is directed to an abstract idea.”
Appeal Br. 7–8. According to Appellant, the claimed “‘generating a
synthetic data point’ is clearly not a mathematical process.” Reply Br. 3
We agree with the Examiner that the claims recite mathematical
concepts. See Ans. 6–7; 84 Fed. Reg. at 52. In the Specification, Appellant
describes “[i]mbalanced data sets [that] are prevalent in many practices . . .
when training data are presented to a machine learning system.” Spec. 1,
ll. 8–10. This “imbalance . . . can have significant negative impacts on
training classifiers,” and current balancing approaches are “limited and
encompass[] an insufficient amount and/or variety of data.” Spec. 1,
ll. 11–14. To solve this problem, the Specification describes “utilizing
information from multiple neighboring data points simultaneously to
represent the variety exhibited in a local neighborhood of data.” Spec. 1,
ll. 15–17.
For example, claim 1 recites a method that performs the following
steps:
identifying an anchor data point in a given class of data
points, wherein the given class of data points is
underrepresented among multiple classes in a data set of
multiple data points, wherein each of the multiple data points
represents a vector;
determining a given number of data points in the given
class that neighbor the anchor data point, wherein the given
number comprises two or more;
applying a weight to (i) each of the given number of data
points in the given class that neighbor the anchor data point to
create a given number of weighted neighboring data points,
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and (ii) the anchor data point to create a weighted anchor data
point, wherein said weight applied to the anchor data point is
equal to the number of data points in the given class that
neighbor the anchor data point;
performing a vector summation by summing the given
number of weighted neighboring data points and the weighted
anchor data point; and
generating a synthetic data point to be associated with
the given class of data points, wherein the synthetic data point
represents the result of said vector summation;
wherein the steps are carried out by at least one
computing device.
Br. 11 (Claims App.) (emphasis added).
Appellant has not persuasively argued why the italicized claim
limitations above are not directed to mathematical concepts—specifically,
“mathematical relationships, mathematical formulas or equations, [and]
mathematical calculations.’” See 2019 Guidance, 84 Fed. Reg. at 52. As
described in the Specification, Appellant utilizes statistical models and
“yield[s] a broader distribution of new synthetic data points” by
implementing algorithms. E.g., Spec. 4. ll. 3–5.
Accordingly, we conclude claim 1 recites mathematical concepts as
identified in the 2019 Guidance, and thus an abstract idea.
2019 Guidance, Step 2A, Prong 2
In determining whether the claims are “directed to” the identified
abstract idea, we next consider whether the claims recite additional elements
that integrate the judicial exception into a practical application. For the
reasons set forth below, we discern no additional element (or combination of
elements) recited in the claims that integrate the judicial exception into a
practical application. See 2019 Guidance, 84 Fed. Reg. at 54–55.
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Appellant argues that the claims “reflect an improvement in the
functioning of a computer, or an improvement to other technology or
technical field.” Reply Br. 5. Specifically, Appellant argues that “the
claimed embodiments improve computerized methods for intelligently
generating synthetic data points to balance class distribution in a given data
set.” Id. Appellant also characterizes the claims as “overcom[ing] problems
associated [with] imbalanced data sets (particularly, challenges arising from
insufficient amounts and/or varieties of data).” Id.
We are not persuaded by Appellant’s arguments and agree with the
Examiner’s findings and conclusions. See Ans. 8–9. Appellant has not
sufficiently shown that the claims are directed to an improvement to the
computer system or technological process. Rather, we agree with the
Examiner’s conclusion that the claimed “use of computing devices merely
facilitates more effective implementation of the process without achieving
substantively different results.” Final Act. 3; see also Ans. 9 (citing Versata
Development Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015)).
As the Examiner properly reasons, there is “no indication that the additional
elements improve . . . technology.” Ans. 9. Furthermore, Appellant has not
shown that the alleged improvement to generating synthetic data points and
balancing class distribution changes the manner in which the computer
operates or changes the functionality of the computer itself. Instead,
Appellant’s alleged improvement is directed to the abstract idea.
Here, the claimed invention merely uses generic computer
components to analyze data (i.e., “wherein the steps are carried out by at
least one computing device”). See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1167–68 (Fed. Cir. 2018) (distinguishing McRO, Inc. v. Bandai
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Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016). This is in contrast
to, for instance, McRO, where the claims recited a “specific . . .
improvement in computer animation” using “unconventional rules” that
related “sub-sequences of phonemes, timings, and morph weight sets” to
automatically animate lip synchronization and facial expressions for three-
dimensional characters that only human animators could previously produce.
McRO, 837 F.3d at 1302–03, 1307–08, 1313–15. There, the recited process
automatically animated characters using particular information and
techniques, which was an improvement over manual 3-D animation
techniques and, therefore, not abstract. Id. at 1316. Unlike the claims in
McRO that improved how the physical display operated to produce better
quality images, the present claims merely “carry out” the abstract idea using
“computing devices.”
Moreover, Appellant does not direct our attention to any disclosure in
the Specification that indicates the claimed computer components used to
perform the limitations in the claim, such as the “at least one computing
device,” are anything other than generic computer components. For
example, the Specification explains that the “present invention can make use
of software running on a general purpose computer or workstation.” Spec.
7, ll. 21–22. The Specification also explains that a “‘processor’ . . .
include[s] any processing device.” Spec. 7, ll. 24–26. Simply implementing
an abstract idea using conventional machines or devices adds nothing of
substance. See Alice, 573 U.S. at 223 (“Stating an abstract idea ‘while
adding the words ‘apply it’’ is not enough for patent eligibility.”); see also
Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
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mathematical principle on a physical machine” does not suffice for patent
eligibility (citing Gottschalk v. Benson, 409 U.S. 63, 64–65, 71 (1972))).
Accordingly, for the foregoing reasons, the claims fail to integrate the
abstract idea into a practical application.
2019 Guidance, Step 2B
Turning to step 2 of the Alice/Mayo framework, we look to whether
the claims (a) add a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
append well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. 2019 Guidance, 84 Fed. Reg. at 56.
The Examiner determines that the claims “apply[] the computing
device or processors to perform the claimed process,” and that the
Specification “describes generic processors and memories” and “the claimed
process running on a general purpose computer.” Ans. 8–9 (citing Spec. 7, l.
24–8, l. 3; 7, ll. 21–22; 8, ll. 13–14).
Appellant argues that the additional limitations of the claims
“constitute limitations other than what is well-understood, routine and
conventional in the field.” Appeal Br. 9. Appellant also argues that the
Examiner has not provided any “support [for] a determination that the
limitations in question are well-understood, routine, and conventional.” Id.
at 12 (citing USPTO Memorandum, Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (April 19, 2018)).
We are not persuaded by Appellant’s argument. As discussed above,
the Specification describes the claimed computer-system components
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generically and evidences their conventional nature. See, e.g., Spec. 7–8.
For example, the Specification explains that the “present invention can make
use of software running on a general purpose computer.” Spec. 7, ll. 21–22.
Appellant does not direct our attention to anything in the Specification that
indicates the claimed computer components perform anything other than the
well-understood, routine, and conventional function of manipulating data.
See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir.
2016) (“Nothing in the claims, understood in light of the specification,
requires anything other than off-the-shelf, conventional computer, network,
and display technology for gathering, sending, and presenting the desired
information.”); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”);
In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016)
(server that receives data, extracts classification information from the
received data, and stores the digital images insufficient to add an inventive
concept); Alice, 573 U.S. at 225–26 (receiving, storing, sending information
over networks insufficient to add an inventive concept).
When viewed as a whole, nothing in the claims adds significantly
more (i.e., an inventive concept) to the abstract idea. The claimed
“computing device” amounts to no more than mere instructions to apply the
abstract idea using generic computer components, which is insufficient to
provide an inventive concept. Furthermore, we are unable discern anything
in the claims, even when the recitations are considered in combination, that
represents something more than the performance of routine, conventional
functions of a generic computer. That is, the claims at issue do not require
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any nonconventional computer components, or even a “non-conventional
and non-generic arrangement of known, conventional pieces,” but merely
call for performance of the method “on a set of generic computer
components.” Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1350 (Fed. Cir. 2016).
Appellant argues that the claims are “novel and non-obvious” and
“cannot plausibly be simultaneously argued as being ‘well-understood,
routine and conventional in the field.’” Appeal Br. 11; see Appeal Br. 13–
14). However, Appellant’s argument is not persuasive because it improperly
conflates the requirements for eligible subject matter (§ 101) with the
independent requirements of novelty (§ 102) and nonobviousness (§ 103).
Although the second step in the Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or
nonobviousness. Alice, 573 U.S. at 217–18. A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 78–79. Further, “under the Mayo/Alice framework, a
claim directed to a newly discovered law of nature (or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility.” Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Given the claimed generic computer components performing generic
computer functions, we conclude that the combination of limitations in each
independent claim does not supply an “inventive concept” that renders the
claim “significantly more” than an abstract idea. Thus, the claims do not
satisfy § 101 under Mayo/Alice step two.
For at least the above reasons, we sustain the Examiner’s rejection of
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independent claims 1, 19, and 20 as being directed to patent-ineligible
subject matter, as well as dependent claims 2–10 and 12–18, which were not
separately argued.

CONCLUSION
We affirm the Examiner’s rejection of claims 1–10 and 12–20 under
35 U.S.C. § 101.
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1–10, 12–20 101 Eligibility 1–10, 12–20

TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).

AFFIRMED