RONAGH, POOYA et al.

Patent Trials and Appeals Board

Dec 9, 2019

15014576 - (D) (P.T.A.B. Dec. 9, 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.
15/014,576 02/03/2016 POOYA RONAGH 5815-004 7605
22429 7590 12/09/2019
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
Alexandria, VA 22314
EXAMINER
MALZAHN, DAVID H
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
12/09/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte POOYA RONAGH, EHSAN IRANMANESH, and
BRAD WOODS
Appeal 2019-000864
Application 15/014,576
Technology Center 2100

Before J. JOHN LEE, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 9–12. Claims 4–8 have been
cancelled. 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(a). Appellant identifies the real party in interest as 1QB
INFORMATION TECHNOLOGIES INC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to a method for
solving the Lagrangian dual of a constrained binary quadratic programming
problem.2 Abstract. Claim 1, reproduced below, is representative of the
claimed subject matter, with bracketed lettering added for discussion
purposes:
1. A method for solving the Lagrangian dual of a constrained
binary quadratic programming problem, the method comprising:
[a] use of a processor for:
[b] obtaining a constrained quadratic binary programming
problem;
[c] providing a Lagrangian dual problem of the
constrained quadratic binary programming problem;
[d] initializing a constrained linear programming problem;
[e] initializing a set of dual variables;
[f] until a convergence is detected, iteratively,
[g] providing an unconstrained quadratic binary
programming problem representative of a Lagrangian
relaxation of the constrained quadratic binary
programming problem at a current value of the dual
variables;

2 This Decision refers to: (1) Appellant’s Specification filed February 3,
2016 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed December
26, 2017; (3) the Appeal Brief (“Appeal Br.”) filed August 23, 2018; (4) the
Examiner’s Answer (“Ans.”) mailed September 13, 2018; and (5) the Reply
Brief (“Reply Br.”) filed November 13, 2018.
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[h] providing the unconstrained quadratic binary
programming problem to a quantum annealer, the
quantum annealer comprising:
[i] a digital computer embedding a binary
quadratic programming problem as an Ising spin
model, and
[j] an analog computer that carries
optimization of a configuration of spins in the Ising
spin model;
[k] solving the unconstrained quadratic binary
programming problem using the quantum annealer;
[l] obtaining from the quantum annealer at least one
corresponding solution;
[m] using the at least one corresponding solution to
update the constrained linear programming problem;
[n] solving the constrained linear programming
problem and obtaining a corresponding solution; and
[o] using the corresponding solution to generate
both an approximation or a Lagrangian dual bound and to
update the values of the dual variables; and
[p] providing a corresponding solution to the Lagrangian
dual of the constrained binary quadratic programming problem
after the convergence.
REJECTION
Claims 1–3 and 9–12 stand rejected under 35 U.S.C. § 101 and being
directed to patent-ineligible subject matter. Final Act. 2–4.
Our review in this appeal is limited to the above rejection 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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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 U.S. 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. See, 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 Court’s two-step framework, described in Alice and Mayo.
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 recites. 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.”).
If the claim recites an abstract idea, we turn to the second step of the
Alice and Mayo framework, in which “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 (quotation marks 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
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implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The Office published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “Guidance”). Recently, the USPTO published an
update to that guidance. October 2019 Patent Eligibility Guidance Update,
84 Fed. Reg. 55,942 (hereinafter “Guidance Update”). Under the Guidance
and the Guidance Update, in determining whether a claim falls within an
excluded category, we first look to whether the claim recites:
(1) Step 2A — Prong One: 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) Step 2A — Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP3
§ 2106.05(a)–(c), (e)–(h)).
See Guidance, 84 Fed. Reg. 54–55 (“Revised Step 2A”). 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 (Step 2B):
(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 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).

3 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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ANALYSIS
We analyze the claims and the Examiner’s rejection in view of the
Guidance and the Guidance Update, and we adopt the nomenclature for the
steps used in the Guidance. Appellant’s arguments are directed to the
limitations recited in claim 1, and Appellant does not present separate
arguments addressing limitations recited in the remaining claims. See
Appeal Br. 13–14, 18. We, thus, select independent claim 1 as
representative of claims 2, 3, and 9–12. See 37 C.F.R. § 41.37(c)(1)(iv).
Step 1
As an initial matter, the claims must recite at least one of four
recognized statutory categories, namely, machine, process, article of
manufacture, or composition of matter. MPEP § 2106(I); see 35 U.S.C.
§ 101. Independent claim 1 recites a method, claim 10 recites a digital
computer, and claim 11 recites a non-transitory computer-readable storage
medium. Thus, the pending claims recite recognized statutory categories
under § 101, i.e., processes, machines, and articles of manufacture, and we
turn to the two-step Alice/Mayo analysis applied in accordance with the
Guidance.

Step 2A, Prong One in the Guidance (Alice/Mayo–Step 1)
(Judicial Exceptions)
Next, we determine whether claim 1, being directed to a statutory
class of invention, nonetheless recites a judicial exception. Guidance, 84
Fed. Reg. 51.
The Examiner determines that exemplary claim 1 recites a judicial
exception: an abstract idea. Final Act. 2. In particular, the Examiner
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determines the claim recites steps for “solving the Lagrangian dual of a
constrained binary quadratic programming problem, which is defined by
mathematical relationships.” Id. According to the Updated Guidance, such
mathematical concepts are a category of abstract idea. Updated Guidance 7.
Appellant argues that the Examiner “has grossly overgeneralized the
pending claims” and
fail[s] to recognize or properly consider and address the ordered
application of data manipulation, multiple iterative processes,
and specialized hardware necessary for carrying out the recited
method in order to achieve an improvement in the operation of
the associated computers/processors in obtaining one or more
solutions to the initial constrained binary quadratic programming
problem.”
Appeal Br. 10–11. We are not persuaded the Examiner erred.
The Examiner’s determination that the claims recite “solving the
Lagrangian dual of a constrained binary quadratic programming problem,
which is defined by mathematical relationships,” even if at a high-level,
accurately characterizes the claimed invention. Id. The level of abstraction
at which the Examiner describes the invention does not change the accuracy
of the Examiner’s determination. See Apple v. Ameranth Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at
different levels of abstraction.”). It is clear from the Specification that the
purpose of the invention is to solve a mathematics problem. For example,
the Specification repeatedly describes that “this invention pertains to a
method and system for solving the Lagrangian dual problem corresponding
to a binary quadratic programming problem.” Spec. ¶ 2; see id. ¶¶ 3, 9, 18–
19, 21, 23, 153–154. The “term ‘Lagrangian dual’ of a constrained binary
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quadratic programming problem,” as defined by the Specification, “is used
for the optimization problem reproduced below:

The optimization problem shown above is reproduced from paragraph 38 of
the Specification. To solve the Lagrangian dual problem, the Specification
details the performance of a series of mathematical processes. See id.
¶¶ 126–144. And, the resulting “solution to the Lagrangian dual problem,”
as described by the Specification, is a
collection of information received after solving the Lagrangian
dual problem: (1) the (unique) optimal value of the Lagrangian
dual problem, also known as the Lagrangian dual bound; (2) a
set of (not necessarily unique) optimal Lagrange multipliers as
described above; and (3) a set of (non necessarily unique) binary
vectors at which the optimal value of the Lagrangian dual
problem is obtained at the given optimal Lagrange multipliers.
Id. ¶ 41. Accordingly, the Specification discloses that the Lagrangian dual
problem, the process for solving the problem, and the resultant solution are
all mathematical concepts.
Corresponding with the description provided by the Specification,
claim 1 recites a process of solving the Lagrangian dual problem using
mathematical concepts. Claim 1 recites hardware elements for performing
the recited method, including “[a] use of a processor for” and “[h] a quantum
annealer . . . comprising: [j] a digital computer embedding a binary quadratic
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programing problem as an Ising spin model, and [j] an analog computer that
carries optimization of a configuration of spins in the Ising spin model.” We
discuss these additional elements separately in the two steps below. Apart
from the hardware elements, the remaining claim limitations recite steps
using mathematical concepts. Limitations [b]–[e] and [g] identify the
variables and equations used to solve the Lagrangian dual problem, e.g., “a
constrained quadratic binary programming problem,” “a constrained linear
programming problem,” and “a set of dual variables.” Absent evidence to
the contrary, the variables and equations recited in limitations [b]–[e] and [g]
are indicative of mathematical concepts. Limitations [f] and [k]–[p] use
mathematical concepts to solve the Lagrangian dual problem.
In particular, limitations [g]–[o] broadly recite “solving” and
“obtaining . . . corresponding solution[s]” for certain equations and using
those solutions “to update” variables. See Spec. ¶¶ 31, 35, 38, 127, 132,
143. Limitations [f] and [p] recite “iteratively” performing the mathematical
processes of limitations [g]–[o] until convergence, i.e., until consecutive
iterations are not “improved,” to thereby obtain, and then provide, a solution
to the Lagrangian dual problem. Id. ¶ 126. Solving equations iteratively in
order to reach a solution is a mathematical concept. We, therefore, conclude
claim 1 recites an abstract idea, i.e., a mathematical concept, as provided for
in the Guidance and our Guidance Update.

Step 2A, Prong Two in the Guidance
(Integration into a Practical Application)
Because claim 1 recites an abstract idea, we now determine whether
the claim is directed to the abstract idea itself or whether it is instead
directed to some technological implementation or application of, or
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improvement to, this idea, i.e., integrated into a practical application. See,
e.g., Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S. 175
(1981)). We determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception or exceptions; and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application. Guidance 84 Fed. Reg. 54–55. This
evaluation requires an additional element or a combination of additional
elements in the claim to apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the
exception. Id.
The Examiner determines that “[t]here is no indication that the
combination of elements improves the functioning of a computer or
improves any other technology.” Final Act. 3.
Appellant argues “operation of the claimed subject matter improves
the operation of a computer and overcomes a problem specifically arising in
the realm of computer networks.” Appeal Br. 16 (citing Spec. ¶ 23); Reply
Br. 4. Appellant further argues “the methods defined by the present claims,
like those at issue in McRO, define methods for the iterative manipulation of
an initial programming problem in a manner that provides more efficient
solutions to substantial, real-world problems.” Reply Br. 4 (citing McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016));
Appeal Br. 16–17.
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We are not persuaded by Appellant’s arguments. As discussed above,
the Specification describes that the improvement addressed by the claims is
an improved manner of solving a mathematics problem, namely the
Lagrangian dual problem. Appellant has not provided persuasive argument
or evidence that the Lagrangian dual problem is a problem specifically
arising in the realm of computer networks. In fact, the Specification states,
“[d]uality is an important phenomenon in optimization theory.” Spec. ¶ 3.
Optimization is not a problem exclusive to computers. Indeed, Appellant
describes that the claimed solution to the Lagrangian dual is used in fields
that do not require the use of a computer, e.g., “social networks,
bioinformatics, and computational chemistry.” Reply Br. 3–4.
Further, using a computer as a tool to solve the Lagrangian dual does
not improve the computer. The claims recite the procedure used to solve the
Lagrangian dual but do not recite how solving the Lagrangian dual improves
the operation of a computer. As the Examiner points out, there is no
evidence in the record showing that the computer performing the recited
procedure is improved. See Final Act. 3 (“There is no indication that the
combination of elements improves the functioning of a computer . . . .”).
Although Appellant highlights (Appeal Br. 16) that the Specification states
the “method disclosed herein greatly improves the processing of a system for
solving a Lagrangian dual of a constrained binary quadratic programming
problem which is of great advantage” (Spec. ¶ 23), the improvement
highlighted is an improvement to the abstract mathematical concept, rather
than an improvement to the computer itself. That is, the improvement is an
improved process for solving the Lagrangian dual problem, not an
improvement to the computer’s functionality. Indeed, the Specification
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describes that the claimed subject matter is one of “several methods for
solving the Lagrangian dual problems, e.g. subgradient method, outer
Lagrangian linearization method, and bundle method.” Spec. ¶ 6. Although
the claimed process ostensibly requires the computer to perform fewer steps
(see Reply Br. 3–4), that reduction in steps is due to an improvement
realized in the performance of the improved abstract idea, not due to some
improvement to the computer.
Furthermore, Appellant’s reliance on McRO (Reply Br. 2–4, Appeal
Br. 16–17) is misplaced. Our reviewing court has explained that the “claims
in McRO were directed to the creation of something physical — namely, the
display of ‘lip synchronization and facial expressions’ of animated
characters on screens for viewing by human eyes. The claimed
improvement was to how the physical display operated (to produce better
quality images).” SAP Am., Inc. v. Investpic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018) (citing McRO, 837 F.3d at 1313). Here, the claim
“provid[es] a corresponding solution to the Lagrangian dual of the
constrained binary quadratic programming problem.” But the claim does not
recite using that solution to the Lagrangian dual, let alone using the solution
to create something physical such as an animation viewable by human eyes.
Additionally, the remaining indicia listed by the Guidance do not
favor integration. For example, the claim does not recite a “[t]ransformation
and reduction of an article ‘to a different state or thing.’” Bilski, 561 U.S.
593, 604 (2010) (emphasis added), quoted in MPEP § 2106.05(c). The
claim does not transform a physical object or substance. In this way, the
claim is unlike the transformations found in some eligible claims. See, e.g.,
Diehr, 450 U.S. at 184 (a process that transforms rubber).
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We, therefore, determine claim 1 is not directed to a specific asserted
improvement in technology or otherwise integrated into a practical
application and, thus, is directed to a judicial exception.
Step 2B in the Guidance (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 as an
ordered 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.
The Examiner finds that the additional computer-hardware elements
and functions recited in claim 1, i.e., “a processor,” “[h] a quantum annealer,
the quantum annealer comprising: [i] a digital computer embedding a binary
quadratic programing problem as an Ising spin model, and [j] an analog
computer that carries optimization of a configuration of spins in the Ising
spin model,” “are recited at a high level of generality and are performing
generic computer functions routinely used in computer applications” and,
thus, “when considered both individually and as an ordered combination do
not amount to significantly more than the abstract idea.” Final Act. 3;
Ans. 6.
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Appellant argues that “the recitation regarding the quantum annealer
is not a generic limitation.” Appeal Br. 14–15.
We are not persuaded by Appellant’s argument that the recited use of
a “quantum annealer” provides significantly more than the recited judicial
exception. We agree with the Examiner’s finding that the claimed use of “a
quantum annealer including a digital computer embedding a binary
polynomial constrained polynomial programming as an Ising spin model and
an analog computer that carries optimization of a configuration of spins in
an Ising spin model” recites “well-understood, routine and conventional
activities.” Ans. 6. The Examiner supports that finding based on the
references cited in the Specification. Id. (citing Spec. ¶ 43). Indeed, the
Specification identifies multiple prior art references describing exemplary
quantum annealers “consisting of a digital computer embedding a binary
quadratic programming problem as an Ising spin model, attached to an
analog computer that carries optimization of a configuration of spins in an
Ising spin model using quantum annealing.” Spec. ¶ 43 (citing Edward
Farhi et al., “Quantum Adiabatic Evolution Algorithms versus Simulated
Annealing” (2002) (available at arXiv.org:quant-ph/0201031); Catherine C.
McGeoch and Cong Wang, “Experimental Evaluation of an Adiabiatic
Quantum System for Combinatorial Optimization” (2013) (available at
https://www.cs.amherst.edu/~ccmcgeoch/cf14-mcgeoch.pdf); US 8,655,828
B2)). Appellant does not respond to the Examiner’s reliance on those
references in support of the Examiner’s finding. See Reply Br. 2–4.
Furthermore, the claim recites that the “quantum annealer” generically
performs common computer functions, namely “solving” an equation and
“obtaining . . . at least one corresponding solution.” Accordingly, we are not
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persuaded that the Examiner erred in finding that additional elements recited
in the claim are well-understood, routine, and conventional.
Appellant argues “even assuming arguendo that pending claim 1 is
directed to an abstract idea, when the recited claim features are properly
considered as an ordered combination . . . the claim as a whole amounts to
significantly more than a mathematical relationship.” Appeal Br. 13.
Appellant, however, does not identify any inventive concept in the
recited combination of steps here or any specific arrangement of computing
components. Indeed, the claim’s focus is on solving the Lagrangian dual
problem. Thus, we agree with the Examiner that in the claimed
arrangement, the additional elements are merely “generic elements
implementing a mathematical algorithm” without reciting any patent-eligible
combination of elements. Ans. 6.
We, thus, conclude that claim 1 does not provide an inventive concept
because the additional elements recited in claim 1 do not provide
significantly more than the recited judicial exception. Accordingly, claim 1
does not recite patent-eligible subject matter. Because claim 1 is
representative of the other claims, we also conclude that claims 2, 3, and 9–
12 do not recite patent-eligible subject matter. Therefore, we sustain the
rejection of claims 1–3 and 9–12 under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–3, 9–12 101 Eligibility 1–3, 9–12
Overall
Outcome
1–3, 9–12

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED