Ligong Chen

Patent Trials and Appeals Board

Oct 8, 2019

13690034 - (D) (P.T.A.B. Oct. 8, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/690,034 11/30/2012 Ligong Chen 1035
111099 7590 10/08/2019
Ligong Chen
1014 Julian Place
Rockville, MD 20852
EXAMINER
MALZAHN, DAVID H
ART UNIT PAPER NUMBER
2182
MAIL DATE DELIVERY MODE
10/08/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LIGONG CHEN
____________________

Appeal 2018-002936
Application 13/690,034
Technology Center 2100
____________________
Before BRADLEY W. BAUMEISTER, SHARON FENICK, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–16, all of the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held September 9,
2019. A transcript of the proceeding will be added to the file in due course.
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 the
inventor, Ligong Chen. Appeal Br. 1–2.
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STATEMENT OF THE CASE
Invention
Appellant’s described invention generally relates to a new model for
more accurate statistical analysis. Spec. ¶ 11. Instead of using a
conventional statistical model, such as a normal distribution having a mean
and standard deviation, Appellant’s model applies self-weights (convex and
concave) to describe a continuous random variable, resulting in more
accurate estimates for the central tendency and the dispersive tendency for
the continuous random variable’s distribution. Spec. ¶¶ 33–40.
Exemplary Claim
Claims 1, 5, and 11 are independent claims. Claim 1 is exemplary of
the claimed subject matter and is reproduced below:
1. The measurements of the two self-weights, convex
self-weight (denoted by C{ci}) and concave self-weight
(denoted by R{ri}), defined for each random sample point xi of
an original continuous random variable X to describe central
tendency and dispersive tendency of the point xi in a sampling
distribution, as shown in the computation framework in Table 1
based on the formulas from (7) to (19).
Appeal Br. 30 (Claims Appendix).
REJECTION
Claims 1–16 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. See Final Act. 2–3.
Claims 1–16 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. See Final Act. 3.
Our review in this appeal is limited to the above rejections and the
issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. § 41.37(c)(1)(iv).
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ANALYSIS
Rejection under 35 U.S.C. § 101
I. Principles of Law
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) (citation omitted).
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 id. 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 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
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175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
India 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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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 (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. (alterations in original) (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Guidance”). Under that 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 activities 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) (9th ed.
Rev. 08.2017, Jan. 2018)).
Guidance, 84 Fed. Reg. 52–55.
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.
Guidance, 84 Fed. Reg. 56.

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II. The Examiner’s § 101 Rejection
The Examiner determines that exemplary2 claim 1 is directed to a
judicial exception: an abstract idea. Final Act. 2–3; Ans. 4. According to
the Examiner, claim 1 is “directed to the abstract idea of computing two self-
weights.” Final Act. 2. The Examiner also determines that “[v]iewed as a
whole[,] the claim[] fail[s] to contain any element or elements that would
provide meaningful limitations to transform the abstract idea into a patent
eligible application of the abstract idea such that the claim[] amount[s] to
significantly more than the abstract idea itself.” Id.
We analyze the exemplary claim and the Examiner’s rejection in view
of the Guidance, and we adopt the nomenclature for the steps used in the
Guidance.

III. Appellant’s Arguments
We summarize Appellant’s arguments in favor of eligibility, as best
understood, as follows: (1) “a statistical formula is a statistical measurement
tool, just like any other physical measurement tools,” and, thus, is different
from a non-statistical mathematical formula; (2) “although all statistical
formulas can be considered as a kind of mathematical formulas . . . , not all
mathematical formulas can be considered as statistical formulas”;
(3) Appellant’s “new methodology is designed in complete details to be used
by any statisticians under any applied situations without any unclear issues[,
so] the claims as a whole definitely amount to significantly more than an

2 Appellant argues the claims as a group. See Appeal Br. 12. We, thus,
select independent claim 1 as representative of claims 2–16. See
37 C.F.R. § 41.37(c)(1)(iv).
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abstract idea”; (4) “The Examiner did not recognize and acknowledge that
the Claims 1 ~ 16 are only for the subjects that [Appellant] created and
improved” and the claims will never hurt or sabotage any others’ rights”;
(5) Appellant’s “new methodology can be made into an independent
software product or integrated into an existing software product for
commercial purpose”; (6) “The Examiner did not recognize and
acknowledge that whether I, the inventor, should have some natural personal
rights that must be statutory and protected by the patent law for my creative
works on this subject matter”; (7) “The Examiner only recognize[d] and
acknowledged that there are a lot of ‘mathematical formulas’ in this new
statistical methodology, and this is only the reason that the Examiner made
the rejections according to the 35 U.S.C § 101”; (8) “I am applying [for]
patent protection for a newly designed statistical methodology . . .
[t]herefore, this new statistical methodology must fall onto the category of
‘process’, which is one of the four statutory categories of acceptable subject
matter” (emphasis omitted); (9) the claims are not directed to an abstract
idea because they “provide clear, useful, concrete and tangible result as long
as a real sample is given to be measured with the new methodology[,] just
like [how] a patient comes to a doctor to be measured [for] blood pressure
with a sphygmomanometer”; (10) the claims are “not directed to non-
statutory subject matter because the methodology has been designed
completely for specific purposes in a statistical analysis, and the
methodology can be applied to a given sample without any unclear issue,
and thus the claims as a whole amount to significantly more than an abstract
idea”; (11) “several statistical software companies” can use the invention
“without [Appellant’s] authorization if [Appellant’s] methodology is not
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protected by the patent law” and this is not “fair to the inventor”; and (12)
“so far none of statistical methods has ever been patented in the USA or
anywhere in the world, because it was considered as a mathematical
approach” and “[t]his is a serious mistake” because “[n]one of statistical
formula is a theorem or law of nature” –– “[t]hey are just a special kind of
measurement tools.” Appeal Br. 12–25.

IV. Our Review, Guidance, Step 1
Analyzing the Examiner’s rejection in view of the Guidance, we must
first determine whether the claim is directed to a statutory class of invention.
Section 101 provides that “[w]hoever 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. As discussed
below in the section relating to the Examiner’s 35 U.S.C. § 112, second
paragraph rejection, it is unclear whether independent claim 1 recites a
process or a result of the process. See Appeal Br. 30. For the purpose of our
35 U.S.C. § 101 analysis, however, we will assume the claim is directed to a
process. Processes are a statutory class of invention. 35 U.S.C. § 101.
V. Guidance Step 2A–Prong 1, (Alice/Mayo—Step 1)
We next determine whether the claim, being directed to a statutory
class of invention, nonetheless falls within a judicial exception. See
Guidance, 84 Fed. Reg. 51. The PTO has synthesized the key concepts
identified by the courts as abstract ideas into three primary subject-matter
groupings: (1) mathematical concepts, (2) certain methods of organizing
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human activities (e.g., a fundamental economic practice), and (3) mental
processes. Id. at 52.
Claim 1 incorporates by reference, formulas that are contained in
Appellant’s Specification. For example, claim 1 recites measuring self-
weights C{ci} and R{ri} “of an original continuous random variable X . . .
based on formulas (7) to (19).” Formula (7)–(9), for example, read, in
relevant part, as follows:
Dj{dij} = |X {xi} – xj|/RX
Sj{sij} = 1 –Dj {dij}
where j=1,2,…, n; RX is the range of X over xi, and
RX = max(X{xi}) – min(X{xi}).
Spec. ¶ 54.
Accordingly, we conclude that claim 1 recites a mathematical
concept, which the Guidance recognizes as constituting an abstract idea.
Guidance, 84 Fed. Reg. 52, n. 12.

VI. Guidance Step 2A, Prong Two (Integration into a Practical Application)
Because claim 1 recites at least one abstract idea, we now determine
whether the claim integrates the abstract idea into a practical application,
i.e., whether the claim is directed to an improvement to the underlying
technology. See, e.g., Alice, 573 U.S. at 223, discussing Diehr, 450 U.S. at
175. Under prong two of revised step 2A, we determine whether the recited
judicial exception is integrated into a practical application by:
(a) identifying whether there are any additional elements recited in the claim
beyond the judicial exception; and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
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exception into a practical application. We use the term “additional
elements” to refer to features, limitations, or steps that the claim recites
beyond the abstract idea itself. Guidance, 84 Fed. Reg. 55 n.24.
The Examiner determines, and we agree, that claim 1 “fail[s] to recite
any physical structure.” Ans. 4. Moreover, the claim does not recite any
additional elements beyond the abstract idea of computing two self-weights.
Appellant argues that the claimed statistical formula is not abstract
because it is “just a special kind of [physical] measurement tool[]” like a
“sphygmomanometer” used by a doctor to measure blood pressure. Appeal
Br. ¶¶ 59, 74. This argument is unpersuasive because, as noted by the
Examiner, unlike a sphygmomanometer, Appellant’s claim 1 does not recite
physical structure. See Ans. 4.
Appellant argues that method claim 1 recites a practical application
because the claimed subject matter could “be made into a commercial
software product to help people in statistical data analysis,” and “were I to
write the methodology I invented into a software product, the current patent
law would not deem this product as merely an abstract idea.” Appeal
Br. ¶¶ 49, 87 (emphasis omitted).
These arguments are unpersuasive because, as discussed directly
above, claim 1 does not recite a software product, a computer, or any other
machine performing the claimed abstract idea. It is well established that
features not appearing in the claim cannot be relied upon for patentability.
See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Furthermore, even if claim 1 had recited a computer, the claim still
would not integrate the recited abstract idea into a practical application
because the incidental use of a computer or other generic hardware does not
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make a claim otherwise directed to an abstract process patent eligible. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, (Fed.
Cir. 2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”).
We, therefore, determine claim 1 is not directed to a specific asserted
improvement in technology (MPEP § 2106.05(a), does not recite a particular
machine or transformation (MPEP § 2106.05(b),(c)), or add other
meaningful limitations (MPEP § 2106.05(e). As such, Appellant has not
demonstrated that claim integrates the recited abstract idea into a practical
application. 84 Fed. Reg. 52–55. Thus, we are not persuaded the claim is
integrated into a practical application and we determine that claim 1 is
directed to a judicial exception.

VII. Guidance Step 2B, Alice/Mayo—Step 2 (Inventive Concept)
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 72–73). To determine whether the claim provides an inventive
concept, the additional elements are considered—individually and in
combination—to determine whether they (1) add a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field or (2) simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Guidance, 84 Fed. Reg. 56.
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The Examiner finds, and we agree, that claim 1 does not recite any
additional elements beyond “the abstract idea of computing two self-
weights” using formulas. Final Act. 2. Nor does Appellant identify an
ordered combination in the claim that allegedly adds significantly more to
the abstract idea to provide an inventive concept.
Appellant argues his “new methodology is designed in complete
details to be used by any statisticians under any applied situations without
any unclear issues. So, the claims as a whole definitely amount to
significantly more than an abstract idea.” Appeal Brief ¶ 61.
This argument is unpersuasive because neither clarity nor detail is
sufficient to render a claim directed to an abstract idea patentable. Instead,
there must be some practical application or the claim must add a specific
limitation beyond the mathematical formula that is not well-understood,
routine, conventional in the field.
Appellant provides several policy-based arguments. For example,
Appellant argues “a statistical formula is a statistical measurement tool, just
like any other physical measurement tools,” and thus is different from a non-
statistical mathematical formula. Appeal Br. ¶ 59. Appellant further argues
no statistical method “has ever been patented in the USA or anywhere in the
world, because it was considered as a mathematical approach” and “[t]his is
a serious mistake” because “[n]one of [the] statistical formula[e] is a
theorem or law of nature.” Id. at ¶ 99. Appellant also pointed out in the oral
hearing that he worked 22 to years to “find this methodology” and without
patent protection, larger companies “can put my methodology into their
software product and sell it on the market and earn money. I cannot.”
Hearing transcript 13, 16–17; see Appeal Br. ¶¶ 92–95, 99.
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Although we sympathize with Appellant’s arguments, our ability to
consider the Examiner’s rejection is constrained by the relevant statute on
patentable subject matter, as enacted into law, and as interpreted by our
reviewing courts. The “Constitution vests in Congress complete law-making
authority over [] particular area[s].” See Seminole Tribe of Florida v.
Florida, 517 U.S. 44, 72 (1996).
We, thus, are constrained to conclude that when viewing the claim
elements alone, or in combination, claim 1 lacks additional elements that
amount to significantly more than the above-identified judicial exception
(the abstract idea) and that claim 1 does not recite patent-eligible subject
matter.
Because claim 1 is argued as representative of the other claims, we
also conclude that claims 2–16 do not recite patent-eligible subject matter.
Therefore, we sustain the rejection of claims 1–16 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.

Rejection Under 35 U.S.C. § 112, second paragraph
The Examiner rejects claims 1–16 under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 3. Exemplary claim 1 recites, in part,
“[t]he measurements of the two self-weights.” Appeal Br. 30. The
Examiner finds “[i]t appears that the claims are intended to be method
claims[,] but method claims are basically a sequence of actively [per]formed
steps that[,] when implemented[,] results in that which is recited in the
preamble.” Final Act. 3. The Examiner determines claim 1 recites no such
steps. Id.
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In response, Appellant states “I had been trying to rigorously restrict
my claims in different contexts on each of the formulas. So, I cannot accept
the Examiner’s statement that ‘. . . ., as being indefinite for failing to
particularly point out and distinctly claim the subject matter[].’” Appeal
Br. 26.
“The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994) (citation omitted). “‘[A] claim is indefinite
when it contains words or phrases whose meaning is unclear.’” In re
Packard, 751 F.3d 1307, 1310, 1314–15 (Fed. Cir. 2014) (citing Manual of
Patent Examining Procedure (MPEP) § 2173.05(e)).
We agree with the Examiner that claim 1 contains words or phrases
whose meaning is unclear because the claim is reasonably susceptible to at
least two interpretations. Under one potential interpretation, Appellant may
have intended to claim the act of measuring two self-weights. But it is not
reasonably clear whether this interpretation actually is intended because
claim 1 does not recite any affirmative method steps. For example, claim 1
does not affirmatively recite method steps of gathering or measuring data.
Under an alternative potential interpretation, Appellant may have
intended to claim only the final measurements that result from an algorithm
that uses Appellant’s formulas. This distinction matters because if Appellant
intended to claim the final measurements, the scope of the claims would
have to be analyzed in accordance with the product-by-process legal
doctrine. The scope of claim protection being sought under such an
interpretation would differ from the scope of protection being sought for a
method.
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To summarize, it is not reasonably clear whether claim 1 is intended
to set forth a method claim or, alternatively, to set forth a product claim that
is directed to a measurement or calculation that results from Appellant’s
methodology. “[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential); see also Ex parte McAward, Appeal No. 2015-006416, 2017
WL 3669566 (PTAB Aug. 25, 2017) (precedential).
Accordingly, we affirm the Examiner’s indefiniteness rejection under
35 U.S.C. § 112, second paragraph.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–16 § 101 1–16
1–16 § 112, second
paragraph
1–16
Overall
Outcome
1–16

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED