PHADKE ASSOCIATES, INC.Download PDFPatent Trials and Appeals BoardNov 25, 20202019003319 (P.T.A.B. Nov. 25, 2020) Copy Citation 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. 14/192,291 02/27/2014 MADHAV S. PHADKE PHAD-004 6280 14333 7590 11/25/2020 Meagher Emanuel Laks Goldberg & Liao, LLP ONE PALMER SQUARE SUITE 325 Princeton, NJ 08542 EXAMINER MAPAR, BIJAN ART UNIT PAPER NUMBER 2128 NOTIFICATION DATE DELIVERY MODE 11/25/2020 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): 14333-docket@meagheremanuel.com molech@meagheremanuel.com tmeagher@meagheremanuel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MADHAV S. PHADKE and KEDAR M. PHADKE ____________ Appeal 2019-003319 Application 14/192,291 Technology Center 2100 ____________ Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and GARTH D. BAER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2019-003319 Application 14/192,291 2 STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–32, which are all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION Appellant’s claimed invention is directed to “iteratively generat[ing] one or more equations (conforming to one or more functions or functions types) of increasing complexity (e.g., degree or order) to provide one or more corresponding approximations of a System Under Study (SUS)” (Abstract). Independent claim 1, reproduced below with emphases added, is representative of the subject matter on appeal: 1. A computer implemented method for improving a model of a System Under Study (SUS), the SUS exhibiting at least one output adapted in response to at least one input parameter, comprising: loading, into a non-transitory computer readable storage medium, data representing a list of candidate input parameters associated with the SUS; loading, into the non-transitory computer readable storage medium, data representing an initial approximation of said SUS; generating an improved approximation model for said SUS comprising a summation of the initial approximation 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies PHADKE ASSOCIATES, INC. as the real party in interest (Appeal Br. 7). Appeal 2019-003319 Application 14/192,291 3 model and a plurality of polynomials, each polynomial being associated with a respective N-tuplet of input parameters for greater than zero integer values of N; wherein polynomials included within said improved approximation model are generated by iteratively performing the following steps until an evaluated difference between the SUS model and the SUS is below a threshold level is achieved: rank ordering the N-tuplets of input parameters; selecting a highest ranking N-tuplet of input parameters from among the remaining N-tuplets of input parameters to be processed; fitting a polynomial involving input parameters in the selected N-tuplet of input parameters; updating the current approximation model by adding the fitted polynomials; adjusting the constant term to match the evaluations of the SUS and the current approximation model at a point; and evaluating fit of the said current approximation model to the SUS; wherein data representative of the improved approximation model of said SUS is stored in memory. (Claims Appendix (Appeal Br. 54)). REFERENCES The prior art relied upon by the Examiner is the following: Appeal 2019-003319 Application 14/192,291 4 Kent US 2009/0109195 A1 Apr. 30, 2009 Tunay US 2009/0206972 A1 Aug. 20, 2009 Cormode US 2010/0235362 A1 Sept. 16, 2010 Kirby US 2011/0257950 A1 Oct. 20, 2011 Singh US 8,190,537 B1 May 29, 2012 Larimore US 2014/0372091 A1 Dec. 18, 2014 Rodriguez Jose F. Rodriguez et al., “Sequential approximate optimization using variable fidelity response surface approximations,” Structural and Multidisciplinary Optimization 22.1 2001 REJECTIONS The Examiner made the following rejections: Claim 17 stands rejected under 35 U.S.C. § 112(b) as being indefinite (Final Act. 8). Claims 1–32 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exemption (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more (Final Act. 8). Claims 1, 4, 7–10, 15–20, 22, and 25–32 stand rejected under 35 U.S.C. § 103 as being unpatentable over Larimore, Cormode, Tunay, and Kirby (Final Act. 11).2 Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable over Larimore, Cormode, Tunay, Kirby, and Rodriguez (Final Act. 40). 2 The rejection of claim 2 under 35 U.S.C. § 103 as being unpatentable over Larimore, Cormode, Tunay, and Kirby was withdrawn in the Answer (See Final Act. 11, Ans. 45). Appeal 2019-003319 Application 14/192,291 5 Claims 5, 6, 11, 13, 14, and 23 stand rejected under 35 U.S.C. § 103 as being unpatentable over Larimore, Cormode, Tunay, Kirby, and Singh (Final Act. 41). Claims 12 and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Larimore, Cormode, Tunay, Kirby, Singh, and Rodriguez (Final Act. 47). Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable over Larimore, Cormode, Tunay, Kirby, and Kent (Final Act. 49). ISSUES The issues are whether the Examiner erred in finding that: 1. claim 17 is indefinite; 2. claims 1–32 are directed to non-statutory subject matter; and 3. the combination of Larimore, Cormode, Tunay, and Kirby teaches or suggests the limitations of: rank ordering the N-tuplets of input parameters; selecting a highest ranking N-tuplet of input parameters from among the remaining N-tuplets of input parameters to be processed, as recited in independent claim 1, and similarly recited in independent claims 29, 31, and 32. ANALYSIS Except where noted, we adopt the Examiner’s findings in the Answer and Final Office Action and we add the following primarily for emphasis. We note that if Appellant failed to present arguments on a particular rejection, we will not unilaterally review those uncontested aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI Appeal 2019-003319 Application 14/192,291 6 2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (the Board may treat arguments Appellant failed to make for a given ground of rejection as waived). Indefiniteness Claim 17 recites [t]he computer implemented method of claim 1, further comprising: post-processing said improved approximation model of said SUS according to at least one of an equation, a distribution and a region of interest of input parameters to update thereby decision processes; and storing data representative of the decision processes in memory. Appellant argues that the “improved approximation model” associated with a system under study is used to make decisions regarding how the model is used to improve thereby the “decision processes” associated with the SUS (e.g., to control the system output by appropriately changing system inputs) and to store data representative of this in memory (Appeal Br. 31). Appellant contends that “[t]he ‘decision processes’ are simply those processes representing the behavior of the SUS being modeled as well known to those skilled in the art (Appeal Br. 31, citing Spec. 37:3– 11). We are persuaded of Examiner error. The Examiner finds that “[i]t is wholly unclear where the boundary is between being excluded or included by this term. To take a simple example, does a processor executing arithmetic on its ALU qualify as a ‘decision process’?” (Ans. 45). The Examiner reasons that “it is unclear if this arithmetic result qualifies as a Appeal 2019-003319 Application 14/192,291 7 ‘decision process’ for determining a math value, or if some outside source of additional judgment or resolution is required to qualify” (Ans. 45). The term “decision processes” also appears in the drawings. Particularly, Figure 12 “describes [a] method of post-processing SUS- characterizing information” (Spec. 4:18–19), stating that POST-PROCESSING ACTIVITIES MAY COMPRISE GENERATING SUMMARY DATA INCLUDING MEAN, VARIANCE, STANDARD DEVIATION, FACTOR EFFECTS, PERCENTILES, CONFIDENCE INTERVALS, MINIMUM, MAXIMUM, INFLECTION POINTS, INTEGRALS, DERIVATIVES AND/OR OTHER FUNCTIONS (Fig. 12 Item 1230), and to “UPDATE ALGORITHMS, DECISION PROCESSES, AND OTHERS UTILIZING SUMMARY DATA” (Fig. 12 Item 1240). Upon reading the disclosure, one skilled in the art would understand that “summary data” claimed as “at least one of an equation, a distribution and a region of interest” that is determined by the “improved approximation model of said SUS” may be used to update “decision processes” that are dependent on the values of “improved approximation model.” In other words, one skilled in the art would consider a process whose outcome or action to be taken is dependent on the value of the “summary data” to be a “decision process.” Accordingly, we are constrained by the record to reverse the indefiniteness rejection of claim 17. Patent Eligibility The Examiner determines claim 1 is patent ineligible under 35 U.S.C. § 101, because the claims are “directed to the abstract idea of mathematical Appeal 2019-003319 Application 14/192,291 8 calculations, specifically involving manipulation of polynomials with generic mathematical modeling” (Final Act. 8) and “simple extrasolution input and output [recited in the claims] do[es] not amount to significantly more than an abstract idea, and neither does collecting information, analyzing it, and displaying certain results of the collection and analysis” (Final Act. 9, citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The Examiner further finds that “nothing in the independent claims amounts to significantly more than the abstract idea, either alone or in combination” (Final Act. 10; see also Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts”)). Prior to the filing of the Appeal Brief, the USPTO published revised guidance on the application of § 101 (“Guidance”). See USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”); USPTO October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019) (“Update”), noticed at 84 Fed. Reg. 55942 (Oct. 18, 2019). Pursuant to the Guidance “Step 2A,” the Office first looks to whether the claim recites: (1) 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 Appeal 2019-003319 Application 14/192,291 9 (2) Prong Two: additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017 (Jan. 2018))). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then (pursuant to the Guidance “Step 2B”) look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are 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 Memorandum, 84 Fed. Reg. at 54–56. Appellant argues the rejection with respect to independent claim 1 (See Appeal Br. 32–41). We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Pursuant to Step 2A, Prong One of the Guidance, the Office first looks to “evaluate whether the claim recites a judicial exception, i.e., an abstract idea” (Memorandum, 84 Fed. Reg. at 54). Here, claim 1 recites “[a] computer implemented method for improving a model of a System Under Study (SUS)” and recites the limitations italicized supra. The italicized portions of claim 1 recite generation of an improved approximation model using mathematical calculations, and is described by Appellant in the disclosure using mathematical terms in which [g]enerally speaking, the various methods iteratively generate one or more equations (conforming to one or more functions or function types) of increasing complexity (e.g., degree or order) Appeal 2019-003319 Application 14/192,291 10 to provide one or more corresponding approximations of the SUS, where each approximation or “fit” provides additional information about the SUS, wherein the various equations may be summed to provide a final “fit” having an adequate level of accuracy (Spec. 6:20–26). The Guidance provides that the italicized limitations, therefore, recite the abstract idea of “mathematical concepts.” Update at 4; Memorandum, 84 Fed. Reg. at 52; see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (“[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis . . . is all abstract”); Elec. Power Grp., 830 F.3d at 1354 (“analyzing information . . . by mathematical algorithms, without more” is abstract). Accordingly, claim 1 “recites a judicial exception . . . [and] requires further analysis in Prong Two” of the Guidance. See Memorandum, 84 Fed. Reg. at 54. Pursuant to Step 2A, Prong Two, we are not persuaded the Examiner has erred in finding that claim 1 is directed to an abstract idea. That is, we determine claim 1 does not integrate the recited judicial exception into a practical application. See Memorandum, 84 Fed. Reg. at 54. Appellant argues that claim 1 relates to the generation of a system model, and more particularly to improvements in the generation of a system model via processing steps that enable the generation of the improved system model more rapidly etc. than previous model generation processes (Reply Br. 6–7) and that “[t]he practical application to which the additional elements of the claim are integrated into is the use of a rather lengthy Appeal 2019-003319 Application 14/192,291 11 sequence of mathematical functions, formula and calculations” (Reply Br. 7). We do not agree with Appellant’s arguments. That Appellant’s claimed method improves the generation of an improved system model, particularly “more rapidly . . . than previous model generation processes,” the italicized limitations of claim 1 fail to integrate the recited judicial exceptions into a practical application, as the limitations do not reflect an improvement in the function of a computer or an improvement to other technology or technical field. See, e.g., Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“[M]erely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”); Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir. 2019) (“This invention makes the trader faster and more efficient, not the computer. This is not a technical solution to a technical problem.”). Moreover, Appellant’s purportedly improved abstract concept is still an abstract concept under the Guidance. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”) (emphasis omitted). That is, the italicized limitations, which form steps to calculate the new model terms, are part of the recited abstract idea as discussed above. As the argued elements are part of the abstract idea, they are not additional elements that integrate the identified abstract idea into a practical application. See Memorandum, 84 Fed. Reg. 54–55 (“evaluate integration into a practical application by: (a) Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s)”). Appeal 2019-003319 Application 14/192,291 12 Accordingly, we determine the claim does not integrate the judicial exception into a practical application. See Memorandum, 84 Fed. Reg. at 54. We determine the “claim recites a judicial exception and fails to integrate the exception into a practical application,” therefore we proceed with “further analysis pursuant to the second step of the Alice/Mayo test (USPTO Step 2B).” Memorandum, 84 Fed. Reg. at 51. We agree with the Examiner that the claimed elements and combination of elements do not amount to significantly more than the judicial exception itself (See Ans. 46–50); see also Memorandum, 84 Fed. Reg. at 56. Independent claim 1 additionally recites two steps of “loading, into a non-transitory computer readable storage medium, data . . .” and a final step in which “data representative of the improved approximation model of said SUS is stored in memory.” We agree with the Examiner that “[t]he approximation model is carried out by using a computer as a tool, but this amounts to invoking generic computer components merely as tools to carry out the abstract idea, which is not sufficient to amount to significantly more” (Ans. 48). None of independent claims 1, 29, 31, and 32 recites any hardware components other than a “non-transitory computer readable storage medium” and a “memory.” All of the hardware elements depicted in the disclosure use functional and generic terminology (See Spec. 57:20–58:15 and Fig. 13); see also Alice, 573 U.S. at 226 (“But what petitioner characterizes as specific hardware . . . is purely functional and generic. Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”); OIP Techs., Inc. v. Appeal 2019-003319 Application 14/192,291 13 Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (Claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite “well- understood, routine conventional activit[ies].” ). Claim 1’s abstract ideas are accomplished through conventional functions implemented using generic computer components. Accordingly, we affirm the Examiner’s patent eligibility rejection of independent claim 1, and independent claims 29, 31, and 32, as well as dependent claims 2–28 and 30 not separately argued (see Appeal Br. 31–41). Obviousness Appellant argues that the ranking of Cormode is entirely focused on the relative probabilities of whether data elements exist, and NOT the effect or impact of the data elements on anything else, much less an approximation model as claimed. By contrast, the ranking of the claimed invention is entirely focused on the relative effect or impact of the tuplets on an approximation model, and NOT the relative probabilities of the tuplets existing (Appeal Br. 43). We agree. The Examiner finds that Cormode teaches in ¶65 that it will “compute the expected score of each tuple, rank the tuples according to this expected score”. This is submitted to clearly render obvious the first of the limitations at issue (rank ordering the N-tuplets of input parameters). Cormode then teaches in ¶66 that it is “selecting the k highest tuples according to the ordering.” This is submitted to clearly fall within the scope of and render Appeal 2019-003319 Application 14/192,291 14 obvious the second of the limitations at issue (selecting a highest ranking N-tuplet...) (Ans. 51). While the Examiner correctly quotes Cormode, the Examiner’s findings regarding the motivation to combine Cormode with Larimore illustrate Appellant’s argument against obviousness. The Examiner finds that [i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to apply the rank functionality of Cormode to the system modeling of Larimore, in order to reduce the number of data tuples that need to be accessed, thereby improving efficiency (Final Act. 14 (emphasis added), citing Cormode ¶ 26). However, the cited portion of Cormode describes ranking benefits solely in the context of a “probabilistic database” (Cormode ¶ 26). Particularly, Cormode states that the ranking techniques described herein can be tailored to determine expected ranks in conjunction with probabilistic databases employing an attribute-level uncertainty relation that associates sets of scores and respective score probabilities with each data tuple and then realizes a possible non-deterministic data set instantiation by selecting a score for each data tuple according to its score probability (Cormode ¶ 26). The Examiner supplies no reasoning why one skilled in the art would consider combining the teachings of Cormode and Larimore to seek such database-related benefits. Further, the Examiner’s cited motivation of “improving efficiency” expressed in Cormode is with respect to “pruning techniques” (see Cormode ¶ 26) that are independent of the ranking teachings applied by the Examiner (Compare, e.g., Cormode ¶¶ 65– 66 (see Final Act. 13–14, Ans. 51) with Cormode ¶¶ 103–105). Appeal 2019-003319 Application 14/192,291 15 Accordingly, we are constrained by the record to reverse the Examiner’s obviousness rejection of independent claim 1, as well independent claims 29, 31, and 32 commensurate in scope, and all dependent claims. CONCLUSION The Examiner: 1. erred in finding claim 17 is indefinite; 2. did not err in finding claims 1–32 are directed to non-statutory subject matter; and 3. erred in finding the combination of Larimore, Cormode, Tunay, and Kirby teaches or suggests the limitations of: rank ordering the N-tuplets of input parameters; selecting a highest ranking N-tuplet of input parameters from among the remaining N-tuplets of input parameters to be processed, as recited in independent claim 1, and similarly recited in independent claims 29, 31, and 32. Appeal 2019-003319 Application 14/192,291 16 DECISION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 17 112(b) Indefiniteness 17 1–32 101 Eligibility 1–32 1, 4, 7–10, 15–20, 22, 25–32 103 Larimore, Cormode, Tunay, Kirby 1, 4, 7–10, 15–20, 22, 25–32 3 103 Larimore, Cormode, Tunay, Kirby, Rodriguez 3 5, 6, 11, 13, 14, 23 103 Larimore, Cormode, Tunay, Kirby, Singh 5, 6, 11, 13, 14, 23 12, 24 103 Larimore, Cormode, Tunay, Kirby, Singh, Rodriguez 12, 24 21 103 Larimore, Cormode, Tunay, Kirby, Kent 21 Overall Outcome 1–32 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation