Jean-Baptiste Tristan et al.

Patent Trials and Appeals Board

May 13, 2020

2018008621 (P.T.A.B. May. 13, 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.
14/599,272 01/16/2015 Jean-Baptiste Tristan 50277-4632 5349
42425 7590 05/13/2020
HICKMAN PALERMO BECKER BINGHAM/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
EXAMINER
VINCENT, DAVID ROBERT
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
05/13/2020 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):
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 and GUY STEELE
____________

Appeal 2018-008621
Application 14/599,272
Technology Center 2100
____________

Before JOSEPH L. DIXON, BETH Z. SHAW, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–19, i.e., all pending claims. 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 (2017). Appellant identifies the real party in interest
as Oracle International Corporation. Appeal Br. 2.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the “invention relates to sampling
from a statistical model, and, more specifically, to sampling from a latent
Dirichlet allocation (LDA) model using a partially-collapsed Gibbs
sampler.” Spec. ¶ 1.2 The Specification explains that “[i]n the context of
Gibbs sampling, a fully-collapsed Gibbs sampler can be used to efficiently
identify parameter values in that a fully-collapsed Gibbs sampler identifies
parameter values with a relatively small number of iterations.” Id. ¶ 3. But
the Specification also explains that inefficiencies result with certain
computer architectures because the “processing of a fully-collapsed Gibbs
sampler is sequential” and “not efficiently implemented on highly parallel
architectures, such as a graphics processing unit (GPU).” Id.
Hence, the invention provides a Markov-Chain Monte Carlo
algorithm “based on a highly parallel partially-collapsed Gibbs sampler” for
estimating the parameters of an LDA topic model. Spec. ¶ 19, Abstract; see
id. ¶¶ 31, 43–44, 53–54. According to the Specification, the invention
exploits “massive amounts of parallelism by processing the algorithm on a
highly-parallel architecture, such as a GPU,” to improve upon conventional
algorithms. Id. ¶ 19, Abstract. More specifically, the Specification states
that “[u]sing a GPU to perform the calculations results in faster convergence

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed January 16, 2015; “Final Act.” for the Final Office
Action, mailed November 15, 2017; “Advisory Act.” for the Advisory
Action, mailed January 24, 2018; “Appeal Br.” for the Appeal Brief, filed
May 15, 2018; “Ans.” for the Examiner’s Answer, mailed July 25, 2018;
and “Reply Br.” for the Reply Brief, filed August 30, 2018.
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because calculations for each document” in a document set occur “in
parallel, thus taking advantage of the high level of parallelism in the
GPU architecture.” Id. ¶ 76.
Exemplary Claims
Independent claims 1 and 8 exemplify the claims at issue and read
as follows (with formatting added for clarity):
1. A method comprising:
generating a topic model that identifies sets of correlated
words by:
receiving information for a set of documents;
wherein the set of documents comprises a plurality
of words;
running a partially-collapsed Gibbs sampler over
a Dirichlet distribution of the plurality of words in the
set of documents to produce sampler result data, further
comprising: calculating a mean of the Dirichlet
distribution; and
determining, from the sampler result data, one
or more sets of correlated words;
wherein the topic model comprises the one or
more sets of correlated words; and
analyzing text within one or more documents, other than
the set of documents, based at least in part on the topic model;
wherein the method is performed by one or more
computing devices.
8. One or more computer-readable media storing
instructions which, when executed by one or more processors,
cause performance of:
generating a topic model that identifies sets of correlated
words by:
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receiving information for a set of documents;
wherein the set of documents comprises a plurality
of words;
running a partially-collapsed Gibbs sampler over
a Dirichlet distribution of the plurality of words in the
set of documents to produce sampler result data, further
comprising: calculating a mean of the Dirichlet
distribution;
determining, from the sampler result data, one
or more sets of correlated words;
wherein the topic model comprises the one or
more sets of correlated words; and
analyzing text within one or more documents, other than
the set of documents, based at least in part on the topic model.
Appeal Br. 17–18 (Claims App.).
The Rejection on Appeal
Claims 1–19 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2–8; Ans. 3–5.
ANALYSIS
We have reviewed the rejection in light of Appellant’s arguments that
the Examiner erred. For the reasons explained below, we agree with the
Examiner’s conclusion concerning ineligibility under § 101. We adopt the
Examiner’s findings and reasoning in the Final Office Action, Advisory
Action, and Answer insofar as consistent with the following analysis. See
Final Act. 2–8; Advisory Act. 1; Ans. 3–8. We add the following analysis to
address and emphasize specific findings and arguments.
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Introduction
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. “Those four categories define
the explicit scope and reach of subject matter patentable.” In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007).
“For all categories except process claims, the eligible subject matter
must exist in some physical or tangible form.” Digitech Image Techs., LLC
v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir. 2014).
“A transitory, propagating signal . . . is not a ‘process, machine,
manufacture, or composition of matter.’” Nuijten, 500 F.3d at 1357.
Moreover, in Mayo and Alice, the Supreme Court explained that § 101
“contains an important implicit exception” for laws of nature, natural
phenomena, and abstract ideas. Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012); Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014); see Diamond v. Diehr, 450 U.S. 175, 185 (1981). In Mayo
and Alice, the Court set forth a two-step analytical framework for evaluating
patent-eligible subject matter. Mayo, 566 U.S. at 77–80; Alice, 573 U.S.
at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
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In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for
providing policy direction” for the PTO). Neither the Examiner nor
Appellant had the benefit of the 2019 Guidance when presenting their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
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221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Nonstatutory Subject Matter: PTO Step 1 for Claims 8–14
In the Answer, the Examiner determines that independent claim 8 and
dependent claims 9–14 encompass “transitory propagating signals” and,
therefore, do not fall within one of § 101’s four categories. Ans. 3–4. The
Examiner explains that the “broadest reasonable interpretation of a claim
drawn to a computer readable medium” encompasses “transitory
propagating signals per se in view of the ordinary and customary meaning of
computer readable media.” Id. at 4. Hence, the Examiner concludes that
claims 8–14 encompass nonstatutory subject matter. Id.
In the Reply Brief, Appellant does not contest the nonstatutory-
subject-matter rejection. See Reply Br. 1–2. Rather, Appellant “request[s]
that this rejection be held in abeyance until conclusion of the appeal.” Id.
at 1.
Because Appellant does not contest the nonstatutory-subject-matter
rejection, we summarily sustain that rejection. See In re Berger, 279 F.3d
975, 980, 984–85 (Fed. Cir. 2002) (holding that the Board did not err in
sustaining an indefiniteness rejection when the appellant failed to contest
that rejection on appeal); see also Manual of Patent Examining Procedure
(MPEP) § 1205.02 (9th ed. rev. 08.2017 Jan. 2018) (explaining that “[a]n
appellant’s brief must present arguments responsive to every ground of
rejection stated by the examiner in the Office action from which the appeal
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has been taken (as modified by any advisory action and/or pre-appeal brief
conference decision)”).
Mayo/Alice Step One: PTO Step 2A Prong One for Claim 1
Patent-ineligible abstract ideas include mathematical formulas, mental
processes, and fundamental economic practices. See, e.g., Alice, 573 U.S.
at 219–20 (fundamental economic practice of intermediated settlement);
Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010) (fundamental economic
practice of hedging or protecting against risk in independent claim and
mathematical formula in dependent claim); Parker v. Flook, 437 U.S. 584,
585–86, 596–98 (1978) (mathematical formula for calculating updated alarm
limit); Gottschalk v. Benson, 409 U.S. 63, 65–67 (1972) (mental process of
converting binary-coded-decimal representation to binary representation).
The 2019 Guidance enumerates three groupings of abstract ideas:
(1) mathematical concepts, (2) mental processes, and (3) certain methods
of organizing human activity. 84 Fed. Reg. at 51–52.
In Alice, the Supreme Court “did not establish any ‘precise contours’
for defining whether claims are directed to ‘abstract ideas’ or something
else.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir.
2019) (citing Alice, 573 U.S. at 221). Further, for Mayo/Alice step one, the
Federal Circuit has noted that “[a]n abstract idea can generally be described
at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016).
Here, the Examiner determines that “[t]he claims viewed as a whole
are directed to an abstract idea e.g., a mathematical relationship/formula.”
Final Act. 5; see Ans. 5, 7. The Examiner explains that the claims are
“similar to organizing and manipulating information through mathematical
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correlations (Digitech)” because the claims concern “generating a model,
running an[] algorithm/software and determining one or more sets of
correlated words.” Ans. 5, 7; see Final Act. 6 (citing Digitech).
Appellant disputes that the claims are directed to an abstract idea. See
Appeal Br. 6–11; Reply Br. 2–5. Appellant asserts that the Examiner
mischaracterizes claim 1 as “collecting and comparing known information”
and “organizing information through mathematical operations” because
those characterizations do not “reflect the inventor’s improvement” in
claim 1. Appeal Br. 9–10.
We disagree that the Examiner mischaracterizes claim 1. In
determining that claim 1 is directed to an abstract idea, the Examiner
accurately assesses the “focus” of the claim and its “character as a whole.”
See Final Act. 5–6; Advisory Act. 1; Ans. 5–7; see also SAP Am., 898 F.3d
at 1167. In addition, we determine that claim 1 recites abstract ideas falling
within two of the three groupings of abstract ideas enumerated in the 2019
Guidance. See 84 Fed. Reg. at 51–52. Specifically, claim 1 recites
mathematical concepts and mental processes.
First, the 2019 Guidance describes mathematical concepts as
including “mathematical relationships, mathematical formulas or equations,
[and] mathematical calculations.” 84 Fed. Reg. at 52. Here, claim 1 recites
“generating a topic model” that (1) “identifies sets of correlated words” and
(2) “comprises the one or more sets of correlated words.” Appeal Br. 17.
Generating a topic model that identifies and comprises sets of correlated
words involves mathematical relationships, i.e., mathematical relationships
specifying how the correlated words relate to one another.
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Claim 1 also recites “running a partially-collapsed Gibbs sampler over
a Dirichlet distribution of the plurality of words in the set of documents to
produce sampler result data, further comprising: calculating a mean of the
Dirichlet distribution.” Appeal Br. 17. Running a partially collapsed Gibbs
sampler over a Dirichlet distribution involves mathematical calculations, i.e.,
mathematical calculations specifying probabilities. See Spec. ¶¶ 32–37,
63–67, 73–79, 84–86, Figs. 2, 7–8. Moreover, calculating a mean of the
Dirichlet distribution also involves mathematical calculations. See id. ¶¶ 19,
54, 67–68, 72–73. The mean for a set of numbers equals the sum of the
numbers in the set divided by the number of numbers in the set.
For these reasons, claim 1 recites mathematical relationships and
mathematical calculations. The 2019 Guidance identifies mathematical
relationships and mathematical calculations as mathematical concepts, and
thus an abstract idea. 84 Fed. Reg. at 52.
Second, the 2019 Guidance describes mental processes as “concepts
performed in the human mind,” such as “an observation, evaluation,
judgment, [or] opinion.” 84 Fed. Reg. at 52 (footnote omitted). Here,
claim 1 recites “analyzing text within one or more documents, other than the
set of documents, based at least in part on the topic model.” Appeal Br. 17.
Analyzing text based at least in part on a topic model encompasses
evaluations performed by a human mentally or with pen and paper. For
example, someone could mentally evaluate a topic model and then rely on
the results of that evaluation to mentally evaluate text within a document.
Consistent with those mental evaluations, the Specification discloses using
a topic model to recognize names, tag parts of speech, and search text. Spec.
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¶ 29. The human mind may recognize names, tag parts of speech, and
search text.
For these reasons, claim 1 recites evaluations performed by a human
mentally or with pen and paper. The 2019 Guidance identifies evaluations
performed by a human mentally or with pen and paper as mental processes,
and thus an abstract idea. 84 Fed. Reg. at 52 & nn.14–15; see also
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“Symantec”) (“[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”).
For the reasons discussed above, claim 1 recites mathematical
concepts and mental processes, and thus recites abstract ideas.
Mayo/Alice Step One: PTO Step 2A Prong Two for Claim 1
Because we determine that claim 1 recites abstract ideas, we consider
whether the claim as a whole integrates the recited abstract ideas into a
practical application. See 84 Fed. Reg. at 54–55. “Only when a claim
recites a judicial exception and fails to integrate the exception into a
practical application, is the claim ‘directed to’ a judicial exception . . . .”
Id. at 51.
As additional elements, claim 1 recites computer components, i.e.,
“one or more computing devices.” Appeal Br. 17. Further, claim 1 recites
the following data-collecting limitation: “receiving information for a set of
documents; wherein the set of documents comprises a plurality of words.”
Id.
We determine that claim 1 as a whole does not integrate the recited
abstract ideas into a practical application because the additional elements do
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not impose meaningful limits on the abstract ideas. See 84 Fed. Reg.
at 53–54; see also Final Act. 5–6; Ans. 7–8. Instead, the claimed computer
components constitute generic computer components that perform generic
computer functions. See Final Act. 5–6; Ans. 7–8; Spec. ¶¶ 21, 24, 87–99,
Fig. 9. Further, the data-collecting limitation constitutes insignificant extra-
solution activity. See, e.g., Mayo, 566 U.S. at 79; Bilski, 561 U.S. at
611–12; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64
(Fed. Cir. 2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011); In re Grams, 888 F.2d 835, 839–40 (Fed. Cir.
1989).
As an example of insignificant extra-solution activity, in Mayo the
Supreme Court decided that measuring metabolite levels for later analysis
constituted purely “conventional or obvious” pre-solution activity. Mayo,
566 U.S. at 79. Similarly, the Federal Circuit has held that mere data-
gathering steps “cannot make an otherwise nonstatutory claim statutory.”
CyberSource, 654 F.3d at 1370 (quoting Grams, 888 F.2d at 840). The
Federal Circuit has also held that (1) presenting offers to potential customers
and (2) gathering statistics concerning responses were “conventional data-
gathering activities that [did] not make the claims patent eligible.” OIP
Techs., 788 F.3d at 1363–64. Consistent with those decisions, the MPEP
identifies “gathering data” as an example of insignificant pre-solution
activity. MPEP § 2106.05(g).
Here, the data-collecting limitation amounts to mere data gathering
and requires nothing unconventional or significant. See Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir.
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2011) (analogizing “data gathering” to “insignificant extra-solution
activity”). In particular, claim 1’s “receiving information” limitation
operates to make data available for processing like the “conventional data-
gathering activities” in OIP Technologies. See OIP Techs., 788 F.3d
at 1363–64. Hence, claim 1’s “receiving information” limitation does not
help integrate the recited abstract ideas into a practical application.
Appellant contends that claim 1 “improves the functioning of a
computer” by “configuring the generation of a topic model in a way (via
calculating the mean of the Dirichlet distribution) to allow massively-
parallel processing of the Gibbs sampler, i.e., using calculations that are
suited to be run on massively parallel hardware, such as a Graphics
Processing Unit (GPU).” Appeal Br. 6–7 (citing Spec. ¶¶ 30, 65–66,
76, 78); see id. at 7–9 (citing Spec. ¶¶ 3–5, 19); Reply Br. 2–4, 8–9, 13–14.
Further, Appellant asserts that “weight should be given to all improvements
provided by the invention, regardless of whether the improvements
themselves are explicitly mentioned in the claims.” Reply Br. 4; see Appeal
Br. 8.
Appellant’s arguments do not persuade us of Examiner error because
claim 1 does not require “massively parallel processing” on “massively
parallel hardware.” See Appeal Br. 17. Unclaimed improvements do not
support patent eligibility. See ChargePoint, Inc. v. SemaConnect, Inc.,
920 F.3d 759, 769 (Fed. Cir. 2019); Berkheimer v. HP Inc., 881 F.3d 1360,
1369–70 (Fed. Cir. 2018); Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1338–39 (Fed. Cir. 2017); Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331–32 (Fed. Cir.
2017).
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As the Examiner properly reasons, “there is no mention” of
“massively parallel processing” or “massively parallel hardware” in claim 1,
and “the specification is not the measure of the invention.” Ans. 6. Further,
Federal Circuit case law “counsels against incorporating a feature of a
preferred embodiment into the claims.” Arthrex, Inc. v. Smith & Nephew,
Inc., 935 F.3d 1319, 1330 (Fed. Cir. 2019).
Claim 1 requires “one or more computing devices” that “generat[e] a
topic model” from “a plurality of words” by “running a partially-collapsed
Gibbs sampler over a Dirichlet distribution of the plurality of words.”
Appeal Br. 17. A “plurality” means “more than one.” August Tech. Corp. v.
Camtek, Ltd., 655 F.3d 1278, 1286 (Fed. Cir. 2011). As broadly drafted,
claim 1 encompasses one computing device with one processor core that
processes a few words sequentially. Due to its breadth, claim 1 does not
exploit “massive amounts of parallelism by processing the algorithm on a
highly-parallel architecture” to improve computer performance. See Spec.
¶ 19, Abstract.
Appellant analogizes claim 1 to the claims in Thales. See Appeal
Br. 8–9, 15 (citing Thales Visionix Inc. v. United States, 850 F.3d 1343
(Fed. Cir. 2017)); Reply Br. 4. Specifically, Appellant asserts that “[t]he
mere fact that a claim involves mathematical principles does not doom the
claim to patent-ineligibility.” Appeal Br. 15.
We disagree that claim 1 resembles the claims in Thales. There, the
patent at issue disclosed “an inertial tracking system for tracking the motion
of an object relative to a moving reference frame.” Thales, 850 F.3d
at 1344. Each independent claim required two inertial sensors, i.e., one
sensor mounted on the object and another sensor mounted on the moving
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reference frame. Id. at 1345–46, 1348. The claimed inertial sensors
supplied signals for determining the object’s orientation relative to the
moving reference frame. Id. at 1345–46, 1348. The Federal Circuit decided
that the claims satisfied § 101 under Mayo/Alice step one because they
employed “inertial sensors in a non-conventional manner to reduce errors
in measuring the relative position and orientation of a moving object on a
moving reference frame.” Id. at 1348–49.
Unlike the claims in Thales, claim 1 does not employ conventional
components in a non-conventional manner. Appeal Br. 17; see Final
Act. 5–6; Ans. 7–8. The Specification describes the claimed computer
components generically and evidences their conventional nature. See Spec.
¶¶ 21, 24, 87–99, Fig. 9. For example, the Specification explains that
“computing devices” include “workstations, personal computers, laptop
computers, personal digital assistants (PDAs), tablet computers, cellular
telephony devices such as smart phones, and any other type of computing
device.” Id. ¶ 21; see id. ¶ 87.
Appellant also analogizes claim 1 to the claims in Core Wireless.
Appeal Br. 6–7 (citing Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
880 F.3d 1356 (Fed. Cir. 2018)). Specifically, Appellant asserts that claim 1
“is not merely a ‘method of creating a mathematical model’, or even a
method that merely performs math.” Id. at 6.
We disagree that claim 1 resembles the claims in Core Wireless.
There, the “claims recite[d] a specific improvement over prior systems,”
i.e., a “particular manner of summarizing and presenting information in
electronic devices.” Core Wireless, 880 F.3d at 1362–63. The Federal
Circuit decided that the claims satisfied § 101 under Mayo/Alice step one
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because the “invention improve[d] the efficiency of using the electronic
device.” Id. at 1363.
Unlike the claims in Core Wireless, claim 1 does not improve the
efficiency of using a computing device or any other electronic device.
Appeal Br. 17; see Ans. 6. As discussed above, unclaimed improvements
do not support patent eligibility. See, e.g., ChargePoint, 920 F.3d at 769.
A “process that start[s] with data, add[s] an algorithm, and end[s] with
a new form of data [is] directed to an abstract idea.” RecogniCorp, 855 F.3d
at 1327. Claim 1 recites a “process that start[s] with data, add[s] an
algorithm, and end[s] with a new form of data.” Thus, claim 1 is directed
to an abstract idea.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis
indicates, we have evaluated Appellant’s arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that claim 1 as a whole does not integrate the recited abstract
ideas into a practical application. Thus, claim 1 is directed to a judicial
exception and does not satisfy § 101 under Mayo/Alice step one.
Mayo/Alice Step Two: PTO Step 2B for Claim 1
Because we determine that claim 1 is directed to a judicial exception,
we “consider the elements of” the claim “both individually and ‘as an
ordered combination’ to determine whether the additional elements” add
enough to transform the “nature of the claim” into “significantly more” than
the judicial exception. See Alice, 573 U.S. at 217–18, 221–22 (quoting
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Mayo, 566 U.S. at 78–79). Under Mayo/Alice step two, we “look with more
specificity at what the claim elements add, in order to determine ‘whether
they identify an “inventive concept” in the application of the ineligible
subject matter’ to which the claim is directed.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). An
“inventive concept” requires more than “well-understood, routine,
conventional activity already engaged in” by the relevant community. Rapid
Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016)
(quoting Mayo, 566 U.S. at 79–80). But a “non-conventional and
non-generic arrangement of known, conventional pieces” may provide an
“inventive concept” satisfying step two. BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
As discussed above, claim 1 recites computer components, i.e., “one
or more computing devices.” Appeal Br. 17. As also discussed above, the
claimed computer components constitute generic computer components that
perform generic computer functions. See Final Act. 5–6; Ans. 7–8; Spec.
¶¶ 21, 24, 87–99, Fig. 9.
Further, as discussed above, the Specification describes the claimed
computer components generically and evidences their conventional nature.
See Spec. ¶¶ 21, 24, 87–99, Fig. 9. For example, the Specification explains
that “the techniques described herein are implemented by” either (1) “one or
more special-purpose computing devices” or (2) “one or more general
purpose hardware processors programmed to perform the techniques
pursuant to program instructions in firmware, memory, other storage, or a
combination.” Spec. ¶ 87. The Specification describes “special-purpose
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computing devices” as including (1) “digital electronic devices such as one
or more application-specific integrated circuits (ASICs) or field
programmable gate arrays (FPGAs) that are persistently programmed to
perform the techniques” and (2) “desktop computer systems, portable
computer systems, handheld devices, networking devices or any other device
that incorporates hard-wired and/or program logic to implement the
techniques.” Id.
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk, 409 U.S. at 64–65, 71).
Moreover, the claimed computer components operate to collect,
manipulate, and communicate data. Appeal Br. 17; see Ans. 5. Court
decisions have recognized that generic computer components operating to
collect, manipulate, and communicate data are well understood, routine, and
conventional to a skilled artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP
Am., 898 F.3d at 1164–65 & n.1, 1170; Apple, 842 F.3d at 1234, 1241–42;
Symantec, 838 F.3d at 1316–20; Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, 772 F.3d at 715–16;
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
For example, the system claims in Alice recited a “data processing
system” with a “communications controller” and a “data storage unit.”
Alice, 573 U.S. at 226. The Supreme Court decided that the system claims
failed to satisfy § 101 because “[n]early every computer” includes those
generic components for performing “basic calculation, storage, and
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transmission functions” and the system claims simply implemented the same
abstract idea as the method claims. Id. at 226–27. The Court reasoned that
(1) “the system claims are no different from the method claims in
substance”; (2) “[t]he method claims recite the abstract idea implemented on
a generic computer”; and (3) “the system claims recite a handful of generic
computer components configured to implement the same idea.” Id. at 226.
Here, the claimed computer components perform “basic calculation,
storage, and transmission functions” that nearly every computer performs.
See Appeal Br. 17. Consequently, the claimed computer components do not
satisfy the “inventive concept” requirement. See, e.g., Customedia Techs.,
LLC v. Dish Network Corp., 951 F.3d 1359, 1361, 1366 (Fed. Cir. 2020)
(describing the claimed “processor,” “storage device,” “programmable
receiver unit,” and “remote server” as “generic computer components”);
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (holding that “generic computer components such
as an ‘interface,’ ‘network,’ and ‘database’” did not satisfy the “inventive
concept” requirement); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1095–96 (Fed. Cir. 2016) (describing the claimed “microprocessor”
and “user interface” as “generic computer elements”); Prism Techs. LLC v.
T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17 (Fed. Cir. 2017)
(describing the claimed “authentication server,” “access server,” “Internet
Protocol network,” “client computer device,” and “database” as
“indisputably generic computer components”).
We reach a similar conclusion concerning claim 1’s data-collecting
limitation, i.e., “receiving information for a set of documents; wherein the
set of documents comprises a plurality of words.” As discussed above, this
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limitation amounts to mere data gathering and requires nothing
unconventional or significant. Consequently, the claimed insignificant
extra-solution activity does not satisfy the “inventive concept” requirement.
See, e.g., Mayo, 566 U.S. at 79–80; OIP Techs., 788 F.3d at 1363–64;
CyberSource, 654 F.3d at 1370.
Appellant analogizes claim 1 to patent-eligible claim 4 in Berkheimer.
See Appeal Br. 12–13 (citing Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018)); Reply Br. 7–8, 12. In our view, however, claim 1 parallels
patent-ineligible claims 1–3 and 9 in Berkheimer.
In Berkheimer, the Federal Circuit decided that disputed factual issues
did not preclude a summary judgment of ineligibility for independent
claim 1 and dependent claims 2, 3, and 9. Berkheimer, 881 F.3d at 1369–70.
In contrast to those claims, the court decided that disputed factual issues
precluded a summary judgment of ineligibility for dependent claims 4–7. Id.
at 1370. The court said, “Whether claims 4–7 perform well-understood,
routine, and conventional activities to a skilled artisan is a genuine issue of
material fact making summary judgment inappropriate with respect to these
claims.” Id. The court explained that “improvements [described] in the
specification, to the extent they are captured in the claims, create a factual
dispute regarding whether the invention describes well-understood, routine,
and conventional activities.” Id. at 1369. Because claims 1–3 and 9 did not
“capture the purportedly inventive concepts” described in the specification,
the court affirmed a summary judgment of ineligibility for those claims. Id.
at 1370.
Here, claim 1 does not “capture the purportedly inventive concepts”
described in the Specification. As discussed above, claim 1 does not require
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“massively parallel processing” on “massively parallel hardware.” See
Appeal Br. 17; Ans. 6. Because claim 1 does not “capture the purportedly
inventive concepts” described in the Specification, claim 1 parallels patent-
ineligible claims 1–3 and 9 in Berkheimer.
Appellant contends that claim 1 includes an “inventive concept”
because claim 1 includes the following bolded features that go beyond
“mathematical relationships and formulas”:
1. A method comprising:
generating a topic model that identifies sets of
correlated words by:
receiving information for a set of documents;
wherein the set of documents comprises a plurality of
words;
running a partially-collapsed Gibbs sampler
over a Dirichlet distribution of the plurality of words
in the set of documents to produce sampler result
data, further comprising: calculating a mean of the
Dirichlet distribution; and
determining, from the sampler result data, one
or more sets of correlated words;
wherein the topic model comprises the one or
more sets of correlated words; and
analyzing text within one or more documents, other
than the set of documents, based at least in part on the topic
model;
wherein the method is performed by one or more
computing devices.
Reply Br. 7–8 (emphasis by Appellant).
But Appellant wrongly relies on the recited abstract ideas to satisfy
the “inventive concept” requirement. A “claimed invention’s use of the
ineligible concept,” e.g., an abstract idea, “cannot supply the inventive
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concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018). Under “the Mayo/Alice framework, a claim directed to a
newly discovered” 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).
Appellant asserts that “based on the lack of any art-based rejections,”
the claimed features “are both novel and non-obvious, which represent
a much higher bar than is presented by the ‘well-understood, routine,
conventional activity’ standard.” Reply Br. 2; see id. at 13. But the absence
of anticipation and obviousness “does not resolve the question of whether
the claims embody an inventive concept” under Mayo/Alice step two.
Symantec, 838 F.3d at 1315; see SAP Am., 898 F.3d at 1163. “The search
for a § 101 inventive concept” differs “from demonstrating § 102 novelty.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016); see Two-Way Media, 874 F.3d at 1340. “The ‘novelty’ of any
element[s] or steps” in a claim or even the claim itself “is of no relevance in
determining whether the subject matter of a claim” satisfies § 101. Diehr,
450 U.S. at 188–89.
Appellant cites PTO guidance about Berkheimer.3 See Reply Br. 2,
10–13. Appellant asserts that the Examiner “fails to carry [the] burden of
proof” that the additional elements in claim 1 are “well-understood, routine,

3 PTO Memorandum, Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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conventional activity” according to that PTO guidance. Reply Br. 12–13
(emphasis omitted).
But Appellant concedes that “[a] citation to one or more . . . court
decisions” may demonstrate that additional elements are well understood,
routine, and conventional to a skilled artisan. Reply Br. 11 (emphasis
omitted). As discussed above, court decisions have recognized that generic
computer components operating to collect, manipulate, and communicate
data are well understood, routine, and conventional to a skilled artisan. See,
e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170;
Apple, 842 F.3d at 1234, 1241–42; Symantec, 838 F.3d at 1316–20; Versata,
793 F.3d at 1334; Ultramercial, 772 F.3d at 715–16; buySAFE, 765 F.3d
at 1355.
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
Without sufficient additional elements, “a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible.” Digitech, 758 F.3d at 1351.
Here, considering claim 1’s limitations as an ordered combination
adds nothing to the abstract ideas that is not already present when the
limitations are considered separately. See Mayo, 566 U.S. at 79; Final
Act. 5–6; Ans. 7–8. Claim 1’s ordered combination of limitations amounts
to nothing more than the abstract ideas implemented with generic computer
components that perform generic computer functions. See Alice, 573 U.S.
at 225–26; Final Act. 5–6; Ans. 7–8. Hence, we conclude that claim 1’s
ordered combination of limitations does not supply an “inventive concept”
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that renders the claim “significantly more” than the abstract ideas. See Final
Act. 5–6; Ans. 7–8. Thus, claim 1 does not satisfy § 101 under Mayo/Alice
step two.
Summary for Claim 1
For the reasons discussed above, Appellant’s arguments have not
persuaded us of any error in the Examiner’s findings or conclusions for
claim 1 under Mayo/Alice step one or step two. Hence, we sustain the
§ 101 rejection of claim 1.
Dependent Claims 4 and 5
Claim 4 depends from claim 1 and specifies that “running the
partially-collapsed Gibbs sampler over the Dirichlet distribution comprises
computing a plurality of values, for the partially-collapsed Gibbs sampler,
in parallel.” Appeal Br. 17. Claim 5 depends from claim 4 and specifies
that “the plurality of values . . . are computed in a plurality of parallel Single
Program Multiple Data (SPMD) units on a graphics processing unit (GPU).”
Id.
Appellant contends that claims 4 and 5 are “not directed to an
‘abstract’ idea, but to an improved method of generating a topic model
utilizing parallel capabilities of a computing device (e.g., a GPU).” Appeal
Br. 7 (emphasis omitted). Further, Appellant asserts that claims 4 and 5
“take advantage of parallel architecture of a computing device for running a
highly-parallel partially-collapsed Gibbs sampler with a replaced stochastic
step to efficiently and effectively create a topic model based on a sample set
of documents.” Id. at 9. Appellant also asserts that “optimizations”
according to claims 4 and 5 “directly improve the performance of a
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computing device generating a topic model by generating the topic model
via ‘faster than state-of-the art algorithms’ while generating as good or better
solutions.” Id. (emphasis omitted).
Appellant’s arguments do not persuade us of Examiner error because
claims 4 and 5 do not “capture the purportedly inventive concepts” described
in the Specification. As explained in more detail below, claims 4 and 5 do
not require “massively parallel processing” on “massively parallel
hardware.”
Instead, claim 4 merely narrows the abstract ideas recited in claim 1.
Dependent claims that merely narrow abstract ideas “add nothing outside the
abstract realm.” SAP Am., 898 F.3d at 1169. Narrowing “an abstract idea
does not add ‘significantly more’ to it.” BSG Tech, 899 F.3d at 1291. And
adding “a degree of particularity” as specified in claim 4 does not save
a claim from abstraction. See Ultramercial, 772 F.3d at 715.
As discussed above, claim 1 encompasses one computing device with
one processor core that processes a few words sequentially. Similar to
claim 1, claim 4 encompasses one computing device with two processor
cores that process a few words in parallel. Consistent with this, the
Specification distinguishes computing devices with multicore processors
from computing devices with GPUs. See Spec. ¶ 30. Hence, claim 4 does
not require “massively parallel processing” on “massively parallel
hardware.” Due to its breadth, claim 4 does not exploit “massive amounts of
parallelism by processing the algorithm on a highly-parallel architecture” to
improve computer performance. See id. ¶ 19, Abstract; see also id. ¶ 30.
Moreover, claim 4 employs the same generic computer components as
claim 1 to perform generic computer functions, i.e., collecting, manipulating,
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and communicating data. Consequently, claim 4’s ordered combination of
limitations amounts to nothing more than the abstract ideas implemented
with generic computer components that perform generic computer functions.
Claim 5 recites certain components, i.e., “a plurality of parallel Single
Program Multiple Data (SPMD) units on a graphics processing unit (GPU).”
But “claims are not saved from abstraction merely because they recite
components more specific than a generic computer.” BSG Tech, 899 F.3d
at 1286.
Similar to claim 4, claim 5 encompasses one computing device with
two SPMD units on a GPU that process a few words in parallel. Consistent
with this, the Specification explains that certain calculations for each
document in a document set “may be processed in parallel,” e.g., by
“a particular SPMD unit” that “processes calculations specific to a particular
document” in a document set. Spec. ¶ 78 (emphasis added); see Appeal
Br. 17 (claim 6 depending from claim 5). A document set may consist of
two documents with a handful of words between them. Although claim 5
recites SPMD units on a GPU, claim 5 does not require “massively parallel
processing” on “massively parallel hardware.” Due to its breadth, claim 5
does not exploit “massive amounts of parallelism by processing
the algorithm on a highly-parallel architecture” to improve computer
performance. See Spec. ¶ 19, Abstract; see also id. ¶¶ 30, 78.
In addition, the Specification describes a GPU generically. See Spec.
¶ 24. For example, the Specification explains that the functionality of a
GPU on a server “may be performed by” any of the following: (1) “another
entity running on [the] server,” (2) “a GPU or other hardware on [a] client,”
and (3) “other devices that are communicatively coupled to [a] network.”
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Id. Consequently, claim 5’s ordered combination of limitations amounts to
nothing more than the abstract ideas implemented with generic computer
components that perform generic computer functions.
For the reasons discussed above, Appellant’s arguments have not
persuaded us of any error in the Examiner’s findings or conclusions for
claims 4 and 5 under Mayo/Alice step one or step two. Hence, we sustain
the § 101 rejection of claims 4 and 5.
Independent Claims 8 and 15 and
Dependent Claims 2, 3, 6, 7, 9–14, and 16–19
In the Appeal Brief, Appellant did not argue eligibility separately for
independent claims 8 and 15 or dependent claims 2, 3, 6, 7, 9–14, and
16–19. See Appeal Br. 6–16.
In the Reply Brief, Appellant argues that claims 2, 3, 6, and 7 recite
“significant details” that “go far beyond the very broad ‘organizing and
manipulating information through mathematical correlations’.” Reply
Br. 8–9 (emphasis omitted). Those arguments do not, however, respond to
any arguments in the Answer. See Ans. 5–8. Appellant advances those
arguments for the first time in the Reply Brief. Such arguments “will not be
considered by the Board” unless an appellant shows good cause. See
37 C.F.R. § 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d 1473, 1475
(BPAI 2010) (informative) (discussing procedural difficulties with belated
arguments).
Here, Appellant has not shown good cause for the belated arguments.
Hence, we decline to consider them. “Considering an argument advanced
for the first time in a reply brief . . . is not only unfair to an appellee, but also
entails the risk of an improvident or ill-advised opinion on the legal issues
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tendered.” McBride v. Merrell Dow & Pharm., Inc., 800 F.2d 1208, 1211
(D.C. Cir. 1986) (citation omitted).
Because Appellant did not argue eligibility separately for independent
claims 8 and 15 or dependent claims 2, 3, 6, 7, 9–14, and 16–19 in the
Appeal Brief, we sustain the § 101 rejection of these claims for the same
reasons we sustain the § 101 rejection of claims 1, 4, and 5. See Appeal
Br. 6–16; 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–19.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 101 Eligibility 1–19
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