Ex Parte Kim et al

Patent Trial and Appeal Board

Dec 19, 2018

13701347 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/701,347 05/20/2013 Jong Wook Kim
24498 7590 12/21/2018
Vincent E. Duffy
THOMSON Licensing
19868 Collins Road
CANYON COUNTRY, CA 91351
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PU100135 3556
EXAMINER
CHAWAN, VIJAYB
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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):
mike.pugel@eurekovation.com
vincent.duffy@technicolor.com
Patricia. Verlangieri@InterDigital.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONG WOOK KIM, ASHWIN S. KASHYAP, DEKAI LI,
SAND IL YA BHAMIDIP ATI, A VIN ASH SRIDHAR,
SAURABHMATHUR, andBANKIMA. PATEL
Appeal2018-005344 1
Application 13/701,3472
Technology Center 2600
Before CARLA M. KRIVAK, JAMES B. ARPIN, and NABEEL U. KHAN,
Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
I. DECISION ON APPEAL
Appellants appeal, under 35 U.S.C. § 134(a), the Examiner's final
decision rejecting claims 1-3, 5-8, 10-12, 14--16, 18-21, 23-25, and 27-30.
App. Br. 2. Claims 4, 9, 13, 17, 22, 26, and 31 are cancelled. Id. at 14--18
(Claims Appx.). We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 In this Decision, we refer to Appellants' Appeal Brief ("App. Br.," filed
July 11, 2017); the Final Office Action ("Final Act.," mailed December 30,
2016); the Examiner's Answer ("Ans.," mailed February 22, 2018); and the
Specification ("Spec.," filed November 30, 2012).
2 According to Appellants, the real party-in-interest is Thomas Licensing
DTV. App. Br. 3.
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Application 13/701,347
II. STATEMENT OF THE CASE
The Specification discloses methods, systems, instructions stored on
computer readable media, and apparatus, which relate to "obtaining one or
more keywords for semantic interpretation; computing top-k concepts in a
knowledge database for the one or more keywords; and mapping the one or
keywords into a concept space using the top-k concepts." Spec. 3: 14--17.
The one or more keyword[ s] can be obtained in any
number of ways. Keywords may be obtained using keyword
extraction involving close caption data as described above in
reference to FIG. 3. In other embodiments keywords can be
extracted from data related to a piece of content such a summary,
program description, abstract, synopsis, etc. In still other
embodiments a user can provide search terms. In the description
of the process below the keywords are provided as part of a
document.
Id. at 11:9-24, 14:3-8, Fig. 3; see also App. Br. 14, 16, 17 (Claims Appx.
(see claims 3, 16, and 25)). In particular, the Specification describes use of a
SparseTopk algorithm "that can effectively estimate the scores of unseen
objects in the presence of a user (application) provide[] acceptable precision
rate and compute[] the approximate top-k results based on these expected
scores." Spec. 3:11-13; see id. at 22:6-23:12, Fig. 7. A content search
based on the concept space then is performed, and one or more content
recommendations are provided to a user based on the performed content
search. See id. at 12:2--4.
As noted above, claims 1-3, 5-8, 10-12, 14--16, 18-21, 23-25 and
27-30 are pending. Claims 1, 10, 14, and 23 are independent. See App.
Br. 14, 15, 16, and 17 (Claims Appx.). Claims 2, 3, and 5-8 depend directly
from claim 1; claims 11 and 12 depend directly from claim 10; claims 15, 16
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and 18-21 depend directly from claim 14; and claims 24, 25, and 27-30
depends directly from claim 23. Id. at 14--18 ( Claims Appx. ).
Claim 1, reproduced below, is illustrative.
1. A method performed by a device for searching audio,
video and/or web content, the method comprising:
obtaining one or more keywords for the searching;
accessing a knowledge database wherein the knowledge
database is not generated from the content;
computing top-k concepts in the knowledge database for
the one or more keywords using a SparseTopk algorithm;
mapping the one or keywords into a concept space using
the computed top-k concepts from the knowledge database;
performing a content search based on the concept space;
and
providing one or more content recommendation[ s] to a
user based on the performed content search.
Id. at 14 (Claims Appx.).
III. THE REJECTION
Claims 1-3, 5-8, 10-12, 14--16, 18-21, 23-25, and 27-30 stand
rejected "under 35 U.S.C. [§] 101 because the claimed invention is directed
to non-statutory subject matter because the claimed invention is directed to a
judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract
idea) without significantly more." Final Act. 2; see also Ans. 2. We address
this rejection below. 3
3 The Examiner also objects to claims 1, 10, 14, and 23 "because of the
following informalities: It is not clear from the claim language how the
keywords for searching are obtained, i.e., are they input by the user, or, are
they somehow automatically obtained and if so how?" Final Act. 2; see also
App. Br. 8-9. Such objections are not reviewed on appeal. MPEP 706.01
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IV. ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The U.S. Supreme Court has "long held
that this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Court
in Alice reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 75-
79 (2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id.
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific method or means that improves the relevant
technology, or are directed instead to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
If the claims are not directed to an abstract idea, the inquiry ends. Enfish,
822 F.3d at 1339; see also Ancora Techs., Inc. v. HTC America, Inc., 908
Rev. 08.2017, January 2018. All MPEP citations herein are to MPEP Rev.
08.2017, January 2018.
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F.3d 1343, 1349 (Fed. Cir. 2018) ("It therefore passes muster under Alice
step one, as it is not directed to patent-ineligible subject matter. We need
not and do not apply step two of the Alice analysis."); Thales Visionix Inc. v.
United States, 850 F.3d 1343, 1346 (Fed. Cir. 2017) ("While the two steps
of the Alice framework are related, the 'Supreme Court's formulation makes
clear that the first-stage filter is a meaningful one, sometimes ending the
§ 101 inquiry."') ( citation omitted). Otherwise, the inquiry proceeds to the
second step in which the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78, 79).
That is, whether the claims recite elements making the claims significantly
more than the judicially excepted subject matter.
A. Alice Step One
With regard to the first step of the Alice analysis, the Examiner
determines that:
Claims 1-3, 5-8 are directed to a method for performing
semantic interpretation for keywords. Claims 1-3, 5---8 are
directed to an abstract idea of performing semantic
interpretation by using mathematical principle to peiform
calculations.
Claims 14, 16, 18-21 are directed toward a non-transitory
computer readable medium implementing the method of claims
1-3, 5-8 are rejected under 35 U.S.C. [§] 101 under similar
rationale.
Claims 23-25, 27-30 are directed toward an apparatus
which perform the method of claims 1-3, 5-8 and are rejected
under similar rationale.
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Final Act. 3 ( emphasis added); see also Ans. 2-3. In particular, the
Examiner finds that the recited methods, systems, instructions stored on
computer readable media, and apparatus "merely organize[] information
through mathematical correlations, that can be performed on any general
purpose computer, or hardware apparatus, or using a combination of both a
computer and hardware." Final Act. 4; see also, e.g., Spec. 5:1---6:13.
Moreover, the Examiner finds that "[t]he claim(s) [do] not require
improvements to another technology or technical field, improvements to the
functioning of a computer, nor meaningful limitations beyond generally
linking the use of an abstract idea to a particular technological
environment." Id. at 5. Finally, the Examiner concludes that the recited
methods, systems, instructions stored on computer readable media, and
apparatus are directed
merely [to] a generic computer performing the mathematical
function of the independent claims. On pages 14--23 of the
[S]pecification, the claimed invention is described in
mathematical terms using probabilities functions for top-k
processing, and as such the claimed invention is definitely
mathematical in nature requiring no more than a generic
computer to perform generic computer functions that are well
understood, routine, and conventional activities previously
known in the industry.
Id. at 6.
Appellants disagree and contend that the pending claims are not
impermissibly directed to an abstract idea. In particular, Appellants
contend:
The present principles relate to improvements in computer-
related technology and more specifically to improvements in
computer-related technology of content ( e.g., audio, video and/or
web content) searching and recommendation. In particular, the
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present principles convert one or more search words into top k
number of concepts using a knowledge database ( e.g.,
Wikipedia). As explained in the specification, part of the
improvement brought on by the present principles is to be able to
efficiently map the search keywords into a limited number of the
best k concepts from a concept knowledge database (see e.g.,
Abstract, [0008], [0009], [0049]). The obtained top k concepts
are then used for further searching of the content in order to
provide the improved audio, video and/or web content searching,
and therefore, making better content recommendation to a user.
App. Br. 8-9. Although other methods of ranked or top-k processing have
been proposed, the Specification explains that those methods are deficient.
Spec. 15:20-16:13, 16:25-17:10-16 ("Naive Solutions to Skln this section,
naive schemes (i.e. impractical solutions) are first described for exactly
computing the top-k concepts, Sk, of a given document."). The Specification
asserts that the key challenge to the problem of mapping a document from
word-space into concept-space is "to efficiently identify such approximate
top-k concepts, Sk,a- To address this problem, a novel ranked processing
algorithm is presented to efficiently compute Sk,a for a given document." Id.
at 17: 11-13 (emphasis added), 22:6-23: 12 (describing the SparseTopk
algorithm with respect to pseudo code set forth in Fig. 7).
The Specification explains that the SparseTopk algorithm is a
No Repeating Algorithm ("NRA") based method for computing Sk. Id. at
17: 17-18: 14. "NRA is employed as a base framework, since it requires only
a sorted-access method, and thus is suitable for high-dimensional data, such
as a concept matrix C." Id. at 17:6-10 (distinguishing NRA from
"prohibitively expensive" alternatives). Nevertheless, NRA is itself
deficient. As the Specification further explains,
NRA maintains a cut off score, mink, equals to the lowest score
in the current top-k candidates. NRA would stop the computation
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when a cut off score, mink, is greater than ( or equal to) the highest
best-score of concepts not belonging to the current top-k
candidates. Although this stopping condition always guarantees
to produce the correct top-k results (i.e., Sk in our case), such
stopping condition is overly pessimistic, assuming that all
unknown values of each concept vector would be read after the
current scan position of each list. This, however, is not the case
especially for the sparse keyword-concept matrix where
unknown values of each concept vector are expected to be O with
a very high probability. Therefore, NRA may end up scanning
the entire lists, which would be quite expensive.
Id. at 18:6-14. Thus, the Specification explains that:
As described above, the threshold-based algorithms are based on
the assumption that given sorted-lists, each object has a single
score in each list. The possible scores of unseen objects in NRA
algorithm are computed based on this assumption. This
assumption, however, does not hold for the sparse keyword-
concept matrix where most of entries are 0. Thus, []first a
method is described to estimate the scores of unseen objects with
the sparse keyword-concept matrix, and then present a method to
obtain the approximate top-k concepts of a given document
leveraging the expected scores.
Id. at 18:21-27. Consequently, we understand that the recited SparseTopk
algorithm is different from known ranking algorithms and achieves
improvements in semantic reinterpretation in the recited methods, systems,
instructions stored on computer readable media, and apparatus. See id. at
24: 1-2 ("Experimental results show that the proposed technique
significantly improves efficiency of semantic reinterpretation without
causing significant reduction in precision.").
As the Federal Circuit explained in Thales Visionix,
In Enfish LLC v. Microsoft Corp., we held claims directed
to a self-referential logical model for a computer database patent-
eligible under step one of Alice. The disclosed technique enabled
faster searching and more effective storage of data than previous
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methods. We found the claims directed to "a specific
improvement to the way computers operate, embodied in the
self-referential table." We explained that the claims are "not
simply directed to any form of storing tabular data, but instead
are specifically directed to a self-referential table for a computer
database" that functions differently than conventional databases.
In Diamond v. Diehr[, 450 US. 175 (1981)], the Supreme
Court confirmed the eligibility of patent claims despite the
inclusion of a mathematical formula in a claimed method for
molding raw, uncured rubber into cured rubber products. The
claimed method used the well-known Arrhenius equation to
calculate the optimal cure time using, among other variables, the
internal temperature of the mold. The invention improved upon
prior art molding methods by constantly measuring the actual
temperature inside the mold, recalculating the ideal cure time,
and automatically opening the press when the ideal cure time
equaled the actual time elapsed.
Thales Visionix, 850 F.3d. at 1347 (emphases added, citations omitted).
Thus, the Federal Circuit concluded that, like those at issue in Diehr, the
claims in Thales Visionix were not directed to a judicial exception to patent
eligibility, but, instead, to the particular mathematical application of laws of
physics. Id. at 1348.
Similarly, in Ancora, the Federal Circuit determined that methods of
preventing a computer from running unauthorized software are not abstract
"if done by a specific technique that departs from earlier approaches to solve
a specific computer problem." Ancora, 908 F.3d. at 1348. Thus, the Federal
Circuit concluded the claims at issue in Ancora were not abstract under
step one of Alice analysis because those claims were "directed to a solution
to a computer-functionality problem: an improvement in computer
functionality that has 'the specificity required to transform a claim from one
claiming only a result to one claiming a way of achieving it."' Ancora, 908
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F.3d at 1349; see also Data Engine Techs. LLC v. Google LLC, 906 F.3d
999, 1007-1008 (Fed. Cir. 2018) (Claims directed to "a specific method for
navigating through three-dimensional electronic spreadsheets" are "not
directed to an abstract idea."); Core Wireless Licensing S.A.R.L. v. LG
Elecs., Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018) (The claims "are directed
to an improvement in the functioning of computers, particularly those with
small screens," not to an abstract idea.); Visual Memory LLC v. NVIDIA
Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017) (Claims are "directed to an
improved computer memory system, not to the abstract idea of categorical
data storage."). Like the claims at issue in Ancora, as well as those in Data
Engine, Core Wireless, and Visual Memory, the pending claims specifically
identify how an improvement in computer functionality is achieved and a
particular improved result. See Final Act. 5---6.
As with the claims at issue in Diehr, we determine that the use of a
mathematical equation, i.e., the SparseTopk algorithm, is required to
complete the methods, systems, instructions stored on computer readable
media, and apparatus recited in the pending claims. Thales Visionix, 850
F.3d at 1349. Similar to the claims at issue in Enfzsh, we find that the
pending claims describe new and useful techniques for performing content
searches based on a concept space and providing content recommendations
to users based on such searches-an improvement in computer-related
technology. Id.; see also App. Br. 8-9. Thus, the use of a mathematical
equation to achieve the particular application recited in the pending claims
"does not doom the claims to abstraction." Thales Visionix, 850 F.3d at
1349.
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We are persuaded that the Examiner erred in finding the pending
claims directed to an abstract idea.
B. Alice Step Two
Because we determine the pending claims are not directed to an
abstract idea, we need not proceed to step two of the Alice analysis. Alice,
134 S.Ct. at 2355; see Enfzsh, 822 F.3d at 1339. The pending claims are
patent eligible under 35 U.S.C. § 101.
We are persuaded the Examiner erred in determining that the claims
are directed to an abstract idea. Consequently, we are persuaded that the
Examiner erred in rejecting claims 1-3, 5-8, 10-12, 14--16, 18-21, 23-25
and 27-30, and we do not sustain the rejection thereof.
V. DECISION
For the above reasons, we reverse the Examiner's decision rejecting
claims 1-3, 5-8, 10-12, 14--16, 18-21, 23-25, and 27-30.
REVERSED
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