Ex Parte Liu et al

Patent Trial and Appeal Board

Jan 29, 2015

12134279 (P.T.A.B. Jan. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KUN LIU and EVIMARIA TERZI
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Appeal 2012-008890
Application 12/134,2791
Technology Center 2600
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Before ELENI MANTIS MERCADER, ROBERT E. NAPPI, and
CARL L. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
Appellants’ invention relates to generating an anonymous graph of a
network in which nodes represent identities and edges represent
relationships and wherein privacy of the nodes is improved. Abstract, Spec.,
48. Claim 1 is exemplary of the matter on appeal:

1 The Real Party in Interest is International Business Machines Corporation.
(App. Br. 1).

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1. A computer-based method as executed by a processor for
generating an anonymous graph of a network while preserving
individual privacy and the basic structure of the network, said
processor executing computer readable program code stored in non-
transitory computer storage medium to implement a method
comprising the steps of:
( a) receiving an input graph G(V, E), wherein V is the set of
nodes in said input graph and E is the set of edges in the input graph;
(b) determining a degree sequence d of the input graph G(V, E),
wherein d is a vector of size n = |V|, such that d(i) represents a degree
of the ith node of the input graph G(V,E);
(c) applying a programming algorithm to the degree sequence d
to construct a new degree sequence d , wherein the new degree
sequence d has an integer k degree of anonymity wherein, for every
element v in sequence d, there are at least (k-l) other elements taking
the same value as v, and wherein said programming algorithm
minimizing distance between the degree sequence d and the new
degree sequence d·,
(d) constructing an output graph Ĝ(V, Ề) based on the new
degree sequence d; and
(e) outputting the constructed output graph Ĝ(V, Ề), wherein Ề
is the new set of edges in the output graph, and such that Ề ∩ E = E or
Ề ∩ E ≈ E (relaxed version).

App. Br. 11(Claims Appendix.)

REJECTIONS
The following rejections are before us for review:
Claims 1–25 stand rejected under 35 U.S.C. § 112, first and second
paragraphs.
Claims 1–25 stand rejected under 35 U.S.C. § 101.

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ANALYSIS
The 35 U.S.C. § 112, paragraph 1, rejection
The Examiner finds that there is no enabling disclosure of the
programming algorithm of step (c) to make the “new degree sequence d” in
the Specification, nor in the excerpt from Graph Text Theory book by
Diestal cited by Appellants in the Appeal Brief. This limitation is recited in
independent claims 1 and 15. Ans. 7–8, 10.
Appellants argue in conclusory fashion in the Appeal Brief that one of
ordinary skill in the art with a basic knowledge of graph theory would
understand how a degree sequence is constructed, and provide an excerpt
from Graph Theory book by Diestal as support. App. Br. 7–8. In the Reply,
Appellants provide additional explanation why they believe Diestal enables
one of ordinary skill in the art to make the new degree sequence d. App. Br.
7–8, Reply Br. 2–4.
Appellants’ arguments are not persuasive of error by the Examiner
because the Diestal text does not provide sufficient description to
demonstrate that one of ordinary skill in the art would understand how to
make the claimed new degree sequence d given the disclosure in Appellants’
Specification. Appellants’ arguments in the Appeal Brief recite the claim
language without sufficiently explaining how the text and Specification
enable one of ordinary skill in the art. Further, Appellant’s arguments in the
Reply Brief, which provide additional explanation have not been considered
as they are presented for the first time in the Reply Brief and deemed
waived. See, e.g., Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
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that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.”).
In view of the above, we sustain the 35 U.S.C. § 112, paragraph 1,
rejection of claims 1–25.
The 35 U.S.C. § 112, paragraph 2, rejection of claims 1–25
The Examiner finds that the claims
Do not provide sufficient particularity and clarity to
inform skilled artisans of the bounds of the claim. Whom or
what performs the abstract method steps is not claimed since
the mechanism by which the claim's abstract method steps are
implemented is subjective or imperceptible and since the metes
and bounds of the claimed computer is unclear.
Ans. 9.
Appellants argue that one of ordinary skill in the art would know the
metes and bounds of the claims because the method is “extremely specific
and precise with regards to how the output graph is constructed and output
[sic].” App. Br. 7–8, Reply Br. 4.
Appellants’ argument is not persuasive of error by the Examiner
because it does not address “who or what performs the abstract method
steps” of claim 1. The preamble recites a “computer based method as
executed by a processor” but the method steps do not refer back to the
preamble terms and one of ordinary skill in the art would not know the scope
of the claims with reasonable certainty. A preamble is generally not
accorded any patentable weight where it merely recites the purpose of a
process or the intended use of a structure, and where the body of the claim
does not depend on the preamble for completeness but, instead, the process
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steps or structural limitations are able to stand alone. See In re Hirao, 535
F.2d 67 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951).
Accordingly, we sustain the 35 U.S.C. § 112, paragraph 2, rejection of
claim 1, and its dependent claims 2–14.
Appellants’ argument is persuasive of error by the Examiner with
respect to independent claim 15, which recites “computer readable program
code” implementing each of the method steps.
Accordingly we do not sustain the 35 U.S.C. § 112, paragraph 2,
rejection of claim 15, and its dependent claims 16–25.
The 35 U.S.C. § 101 Rejection
The Examiner rejected the claims as being directed to an abstract idea
and lacking necessary indicia for patent eligibility:
because the method claimed in both sets of claims
is directed to abstract idea steps which:
1) are not tied to a particular apparatus because
only abstract method steps are claimed with no particular
machine or apparatus being claimed;
2) do not transform underlying subject matter
because no physical transformation is claimed; and
3) do not clearly claim the mechanism by which
the claim's abstract mathematical idea steps are
implemented. Computer-based method claims 1-14 claim
abstract method steps and do not claim a particular
machine or apparatus or physical transformation of an
article or thing. At the most the abstract mathematical
method in method claims 1-14 are in connection with
mathematical operations within a general purpose
processor which has been held to not be a particular
machine or apparatus.
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Ans. 10.
Appellants’ argue that independent claim 1 is directed toward a
computer-based method with very specific steps that outputs a constructed
output graph and that independent claim 15 includes a non-transitory
computer medium storing computer readable program code implementing
the method of claim 1. Appellants do not persuasively rebut the Examiner’s
finding that the claims are directed to an abstract idea and lack the necessary
indicia for patent eligibility. App. Br. 9, Ans. 10.
The Supreme Court in Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347
(2014) reiterated the framework set out in Mayo Collaborative Servs. v.
Prometheus Labs Inc., 132 S.Ct. 1289 (2012) for “distinguishing patents that
claim … abstract ideas from those that claim patent-eligible applications
from those concepts.” Alice, 134 S.Ct. at 2355. The first step in the analysis
is to determine if the claim is directed toward a patent-ineligible concept
and, if so, the second step is to determine whether there are additional
elements that transform the nature of the claim into a patent eligible
application. The second step searches for an inventive concept that is
sufficient to ensure that the patent amounts to significantly more than a
patent on the patent-ineligible concept.
Applying the first step, we find that claim 1 is directed to a
mathematical method for producing a mathematical based graph. Each step
involves the use of mathematics and/or algorithms. Accordingly, we find
that the claim is directed to a patent-ineligible concept.
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Having determined that the claim is directed to a patent-ineligible
concept, step 2 of the analysis considers whether the claim contains an
inventive concept such as additional limitations that narrow, confine or
otherwise tie down the claim so that it does not fully cover the abstract idea
itself. See Alice, 134 S.Ct. at 2357. The preamble of the claim includes
features such as computer-based method, processor, computer storage
medium, but these features are not set forth in the method steps. Moreover,
these features are the type of generic element that has been determined to be
insufficient by the Supreme Court to transform a patent-ineligible claim into
one that is patent-eligible. See Alice, 134 S.Ct. at 2358. The claim includes
no limitations that prevent it from covering the abstract idea itself.
In view of the above, even assuming arguendo, that that the features in
the preamble argued by Appellants to render the claims patent-eligible
should be considered as limitations, we are unpersuaded by Appellants’
argument that that the claims constitute an inventive concept that is
significantly more than a patent on the patent-ineligible concept.
Accordingly, we sustain the 35 U.S.C. § 101 rejection of claim 1. We
also sustain the rejection of dependent claims 2–14 as these claims were not
separately argued.
Independent claim 15 is directed to an article of manufacture with
similar limitations as claim 1 and its rejection is sustained for the same
reason as discussed above. We also sustain the rejection of dependent claims
16–25, as these claims were not separately argued.
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DECISION
The Examiner’s decision rejecting claims 1–25 under 35 U.S.C.
§ 112, first paragraph, is affirmed.
The Examiner’s decision rejecting claims 1–14 under 35 U.S.C.
§ 112, second paragraph, is affirmed.
The Examiner’s decision rejecting claims 15–25 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The Examiner’s decision rejecting claims 1–25 under 35 U.S.C.
§ 101 is affirmed.
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-IN-PART

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