PHADKE ASSOCIATES, INC.

Patent Trials and Appeals Board

Nov 25, 2020

2019003319 (P.T.A.B. Nov. 25, 2020)

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