Ex Parte Makkinejad et alDownload PDFPatent Trial and Appeal BoardMay 16, 201411888507 (P.T.A.B. May. 16, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BABAK MAKKINEJAD and PHILIP C. JACKSON JR. ____________________ Appeal 2011-012801 Application 11/888,507 Technology Center 2100 ____________________ Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and DANIEL N. FISHMAN, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012801 Application 11/888,507 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The claims are directed to automated determination of solutions to known equations. Abst. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A system for automated determination of solutions to known equations, comprising: a process orchestrator configured to retrieve at least one known solution from a known solutions datastore; a mathematics preprocessor configured to convert the at least one known solution to at least one machine-usable converted known solution; a genetic algorithm processor configured to generate at least one candidate solution from the at least one machine- usable converted known solution; and a results datastore configured to store a new solution corresponding to the candidate solution. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: NASA, Maxwell's Equations: The Vector and Scalar Potentials (Oct. 3, 2002) verified by Wayback Machine, http://web.archive.org/web/20021003012503/http://www.grc.nasa.gov /WWW/K- 12/Numbers/Math/Mathematical_Thinking/maxwells_equations.htm (last visited June 21, 2010) (hereinafter “NASA”). Mustapha Ishak & Kayll Lake, An Online Interactive Geometric Database Including Exact Solutions of Einstein's Field Equations, Appeal 2011-012801 Application 11/888,507 3 Institute of Physics Publishing, Classical and Quantum Gravity, Vol. 19, 505-514 (2002) (hereinafter “Ishak”). Angel Fernando Kuri-Morales, Solution of Simultaneous Non-Linear Equations using Genetic Algorithms, WSEAS Transactions on Systems, WSEAS Greece, Vol. 2, No. 1, 44-51 (Jan. 2003) (hereinafter “Kuri”). Maciej Matyka, Solution to two-dimensional Incompressible Navier- Stokes Equations with SIMPLE, SIMPLER and Vorticity-Stream Function Approaches. Driven-Lid Cavity Problem: Solution and Visualization, Computational Physics Section of Theoretical Physics, Dept. of Physics and Astronomy, Univ. of Wroclaw, Poland (2004) (downloaded June 21, 2010) (hereinafter “Matyka”). Terrance C. Fogarty & Runhe Huang, Implementing The Genetic Algorithm on Transputer Based Parallel Processing Systems, Parallel Problem Solving from Nature, Lecture Notes in Computer Science, Vol. 496, 145-149 (1991) (hereinafter “Fogarty”). Appeal 2011-012801 Application 11/888,507 4 REJECTIONS1 The Examiner made the following rejections: Claims 19 and 20 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Ans. 4-5. Claims 1-9 and 12-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kuri, Fogarty, and Ishak. Ans. 5-17. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kuri, Fogarty, Ishak, and NASA. Ans. 17-19. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kuri, Fogarty, Ishak, and Matyka. Ans. 19-21. APPELLANTS’ CONTENTIONS 1. In connection with the rejections under 35 U.S.C. § 101, Appellants argue storage media actually stores data and therefore does not encompass a propagation medium that conveys information. App. Br. 12. 1 In connection with the rejection under 35 U.S.C. § 101, Appellants argue the rejection of claim 19 and do not provide separate argument in connection with claim 20. Therefore, as to this rejection, we decide the appeal of claims 19 and 20 based on claim 19 alone. In connection with the rejections under 35 U.S.C. § 103(a), Appellants argue the rejection of claims 1 and 8. Separate patentability is not argued for claims 2-7 and 9-20. “A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii) (last sentence). Further, merely restating with respect to a second claim an argument previously presented with respect to a first claim, is not an argument for separate patentability of the two claims. Therefore, based on Appellants’ arguments, we decide the appeal of claims 1-7 and 9- 20 based on claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-012801 Application 11/888,507 5 2. In connection with the rejection of claim 1 under 35 U.S.C. § 103(a), Appellants argue : a. Fogarty’s processors operate in parallel to perform the same computations, not “a number of processors that can perform differing computations [as required by claim 1.]” App. Br. 14 (emphasis added). b. Fogarty’s “‘distribution of processing over a number of processors’ [fails to teach] a process orchestrator that determines which processors is given which task [as required by claim 1.]” App. Br. 15. c. Ishak’s “database that ‘contains exact solutions of Einstein’s field equations’ . . . does not teach a results datastore . . . [and] the ability to store new solutions in a database [as required by claim 1.]” App. Br. 15-16. 3. In connection with the rejection of claim 8 under 35 U.S.C. § 103(a), Appellants argue Ishak’s translation of TeX objects into HTML does not teach storing a mathematical equation in TeX form and, instead, teaches away from the known solution being in TeX typesetting system form as required by claim 8. App. Br. 28-29. ISSUES ON APPEAL Based on Appellants’ arguments in the Appeal Brief (App. Br. 11-30) and Reply Brief (Reply Br. 4-25), the issues presented on appeal are: 1. Whether the Examiner erred in finding a broadest reasonable interpretation of computer readable storage medium of claim 19 Appeal 2011-012801 Application 11/888,507 6 encompasses signals, which are patent ineligible under 35 U.S.C. § 101. 2. Whether the Examiner erred in finding the combination of Kuri, Fogarty, and Ishak teaches or suggests the disputed limitations of claims 1 and 8. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 4-8 and 13- 17) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 21-32) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. 35 U.S.C. § 101 Appellants contend that, while a signal can convey information, it cannot store data and, therefore, “[t]he term ‘storage media’ would not include any embodiments in which the medium is merely a propagation medium, as opposed to a medium that actually stores data.” App. Br 12. The Examiner responds by finding that, while Appellants’ Specification does not define the disputed computer readable storage medium of claim 19, it does disclose that “machine readable mediums include . . . transmission type mediums such as digital and analog communication links.” Ans. 22; Spec. [0063]. The Examiner concludes, “[the] claim must be interpreted at its Appeal 2011-012801 Application 11/888,507 7 broadest reasonable interpretation, which includes transmission media and carrier waves.” Ans. 22-23. Signals are not patentable eligible subject matter under § 101. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also United States Patent and Trademark Office (USPTO), Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010), the policy statement by former USPTO Director David J. Kappos, as published in the Official Gazette of the USPTO. The Kappos USPTO policy statement guides: “The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media . . . .” As set forth in the aforementioned USPTO policy guidance, a claim drawn to a computer readable medium that covers both transitory and non- transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101, by adding the limitation “non-transitory” to the claim. (Id.). See also MPEP § 2106 (I) (8th ed., Rev. 9 Aug. 2012). To the extent the claimed “computer readable storage medium” is construed by Appellants as being limited to a physical storage medium (i.e., excluding signals), we are bound under agency authority (SOP2) by the holding of Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential). Given the significant amount of available guidance and evidence supra, we conclude that those of ordinary skill in the art would understand the claim term “computer readable storage medium” would include signals Appeal 2011-012801 Application 11/888,507 8 per se. Furthermore, we add in passing, we disagree with Appellants’ premise that while a signal can convey information, it cannot store data (App. Br. 12), directing Appellants’ attention to circulating memory.2 For the reasons supra, the broadest reasonable interpretations of claims 19 and 20 covers a signal per se. Accordingly, we sustain the rejection of claims 19 and 20 under 35 U.S.C.§ 101. 35 U.S.C. § 103(a) Claim 1 In connection with Contention 2(a), Appellants assert “that the processors of Fogarty can not function in the same manner as the process orchestrator, mathematics preprocessor, and genetic algorithm processor of claim 1” because the “processors are configured to perform the same computations” rather than the different computations of the respective recited functional units or objects. App. Br. 14. The Examiner responds by finding “that every step of claim 1, other than the storing of new solutions [which is found to be obvious3] and the particular use of a separate orchestrator, preprocessor, and processor, is found entirely within the Kuri reference. Therefore the actions taken by these objects is covered by the Kuri reference.” Ans. 23-24. The Examiner further finds the processors of Fogarty are not limited to handling action in parallel but, under control of a 2 A digital computer device that uses a delay line to store information in the form of a pattern of pulses in a train; the output pulses are detected electronically, amplified, reshaped, and reinserted in the delay line at the beginning. Also known as delay-line memory; delay-one storage; circulating storage. McGraw-Hill Dictionary of Electrical and Computer Engineering, 90. New York: McGraw-Hill, 2004. 3 See discussion infra. Appeal 2011-012801 Application 11/888,507 9 host computer, may be orchestrated to perform genetic algorithm processing. Id. The Examiner additionally finds a reasonable interpretation of each of the disputed units includes software. See id. at 25. We agree with the Examiner and find Appellants’ contentions unpersuasive of reversible error. The Specification discloses the disputed units may be part of a computer program product of machine usable instruction, i.e., software. Ans. 25; Spec. [0024], claim 19. Conversely, the Specification does not define any of the disputed terms to require hardware nor have Appellants provided sufficient evidence that one skilled in the art would have understood the process orchestrator, mathematics preprocessor, genetic algorithm processor or results datastore to be particular structures much less hardware. See Ans. 25. Instead, the functionality for which each of the disputed objects is configured defines, and therefore, teaches the respective object. That is, according to claim 1, software, hardware, or some combination thereof, which is configured to retrieve at least one known solution from a known solutions datastore, is, by definition supplied by the claim language itself, a process orchestrator according to claim 1. Similarly, the mathematics preprocessor, genetic algorithm processor, and results datastore are likewise defined as software and/or hardware configured to perform the respective recited actions. Furthermore, one of ordinary skill in the art would have understood that Kuri’s algorithms were to be implemented as software. For example, Kuri describes that the “VGA [(Vasconcelos Genetic Algorithm)] ran for 500 generations” (Kuri 50, emphasis added) and includes a discussion of the use of binary fixed point encoding thereby teaching or at least suggesting implementing the disclosed algorithm as a program of computer instructions. That is, “running” an Appeal 2011-012801 Application 11/888,507 10 algorithm using binary fixed point data representations, particularly 500 times, would be understood as, and at a minimum suggests, embodying the algorithm in computer software as a program of machine executable instructions. Therefore, because Kuri teaches the recited actions (Ans. 24), it also teaches the disputed process orchestrator, mathematics preprocessor, genetic algorithm processor, and results datastore. Furthermore, even if the disputed units were to be narrowly interpreted as hardware devices, we are not persuaded that the Examiner erred in finding that the combination of Kuri and Fogarty teaches or suggests the disputed claim limitations. In particular, Appellants have provided insufficient evidence to persuade us that the multiple processors of Fogarty could not be configured as required by claim 1. Instead, we agree with the Examiner that “the Fogarty reference could be used to fulfill the actions of the Kuri reference.” Ans. 24. Therefore, for the reasons supra, Contention 2(a) is not persuasive of Examiner error. We are also not persuaded of Examiner error by Contention 2(b) for the reasons supra. The Examiner finds Kuri teaches or suggests the actions that the disputed process orchestrator is configured to perform. Ans. 5-6. Therefore, because Kuri’s algorithm performs (or suggests performing) the recited step of retrieving at least one known solution from a known solutions datastore and because we find Kuri teaches or suggests the algorithm would be implemented as a software program of instructions, we find that Kuri teaches or suggests the disputed process orchestrator as defined by claim 1. Furthermore, Appellants’ argument that Fogarty fails to teach that “the various processors have a process orchestrator that determines which processor is given which task” (App. Br. 15) is unpersuasive of error Appeal 2011-012801 Application 11/888,507 11 because it is not commensurate in scope with claim 1. Claim 1, while requiring the process orchestrator be configured to retrieve at least one known solution form a known solutions datastore, omits any recitation corresponding to the argued omission of Fogarty. Appellants’ Contention 2(c) is also unpersuasive of Examiner error. While Appellants argue “Kuri, Fogarty, and Ishak fail to teach or suggest, ‘a results datastore configured to store a new solution corresponding to the candidate solution’ [as required by claim 1]” (App. Br. 15), we find, for the reasons supra, Kuri’s algorithm teaches or suggests the disputed limitations. See Ans. 6; Kuri 49-51. Furthermore, we agree with the Examiner’s finding that it would have been obvious to save new solutions found by the genetic algorithm; as queried by the Examiner, “[w]hy go through the trouble of running a genetic algorithm to find new solutions only to throw them away without saving them.” Ans. 28. Still further, because Ishak’s database contains exact solutions of Einstein’s field equations and Kuri teaches a genetic algorithm for generating new candidate solutions, we agree with the Examiner that it would have been obvious “to combine the work of Kuri and Ishak in order to use a database to take known solutions from, and to save new solutions to.” Ans. 8 (emphasis added). For the reasons supra Appellants’ Contentions 2(a) – (c) are not persuasive of reversible Examiner error. Accordingly, we sustain the rejection of independent claim 1 and, for the same reasons, the rejection of independent claims 12 and 19 under 35 U.S.C. § 103(a) over Kuri, Fogarty, and Ishak together with the rejection of dependent claims 2-7, 9, 13-18 and 20 not separately argued. For similar reasons, we sustain the rejections of dependent claim 10 under 35 U.S.C. § 103(a) over Kuri, Fogarty, Ishak, and Appeal 2011-012801 Application 11/888,507 12 NASA and the rejection of dependent claim 11 over Kuri, Fogarty, Ishak, and Matyka, these dependent claims also no argued separately. Claim 8 In connection with Contention 3 Appellants argue “Ishak specifically teaches away from the known solution being in the TeX typesetting system form when it discloses that ‘[t]he program TTH is used to translate TeX into HTML in order to produce mathematical HTML text.’” App. Br. 28. The Examiner responds by finding Ishak “at no time disparages the use of TeX or in any way says that TeX is unsuitable for storing information. Therefore the reference clearly does not teach away from the use of TeX.” Ans. 30. We agree with the Examiner and find Appellants’ argument unpersuasive of Examiner error. Appellants have not provided explicit evidence from Ishak specifically discouraging or discrediting storing information in a TeX form. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Instead, we agree with the Examiner that, rather than teaching away, Ishak “clearly shows that the data was stored in the TeX typesetting format, as it would be impossible to translate the data from TeX were it not stored in the system in some manner.” Ans. 30. Therefore, we find Contention 3 unpersuasive of Examiner error and sustain the rejection of claim 8 under 35 U.S.C. § 103(a) over Kuri, Fogarty, and Ishak. Appeal 2011-012801 Application 11/888,507 13 CONCLUSIONS 1. The Examiner did not err in finding a broadest reasonable interpretation of computer readable storage medium of claim 19 includes signals which are unpatentable under 35 U.S.C.§ 101. 2. The Examiner did not err in rejecting claims19 and 20 under 35 U.S.C. § 101 because the claimed invention is directed to non- statutory subject matter. 3. The Examiner did not err in finding the combination of Kuri, Fogarty, and Ishak teaches or suggests the disputed limitations of claims 1 and 8. 4. The Examiner did not err in rejecting claim 1-9 and 12-20 under 35 U.S.C. § 103(a) over Kuri, Fogarty, and Ishak 5. The Examiner did not err in rejecting claim 10 under 35 U.S.C. § 103(a) over Kuri, Fogarty, Ishak, and NASA. 6. The Examiner did not err in rejecting claim 11 under 35 U.S.C. § 103(a) over Kuri, Fogarty, Ishak, and Matyka. DECISION The Examiner’s decision to reject claims 1-20 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)(1)(iv). AFFIRMED msc Copy with citationCopy as parenthetical citation