Ex Parte Makkinejad et al

Patent Trial and Appeal Board

May 16, 2014

11888507 (P.T.A.B. May. 16, 2014)

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

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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,
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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”).

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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).
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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
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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
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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
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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.
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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
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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
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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
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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.

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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

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