Bowers, Kevin J. et al.

Patent Trials and Appeals Board

Jun 26, 2020

2019003049 (P.T.A.B. Jun. 26, 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.
13/329,852 12/19/2011 Kevin J. Bowers 30023-006002 7448
69713 7590 06/26/2020
OCCHIUTI & ROHLICEK LLP
50 Congress Street
Suite 1000
Boston, MA 02109
EXAMINER
LUU, CUONG V
ART UNIT PAPER NUMBER
2129
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEVIN J. BOWERS, RON O. DOR, and DAVID E. SHAW
____________________

Appeal 2019-003049
Application 13/329,852
Technology Center 2100
____________________

Before ROBERT E. NAPPI, THU A. DANG, and JOHN P. PINKERTON,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 1, 6, 8 through 45, 131, and 133 through 140. Oral
arguments were heard on June 17, 2020. A transcript of the hearing will be
added to the record in due course. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, D.E. Shaw Research, LLC is the real
party in interest. Appeal Br. 1.
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INVENTION
The invention relates generally to hardware to improve the overall
computation time for simulation of multiple body interaction, such as
celestial dynamics and computational chemistry (biomolecular or
electrostatic particle interaction simulation). Spec., para 004-005. Claims 1
and 25 are reproduced below.
1. A non-abstract method comprising causing an
improvement in computer technology,
wherein causing said improvement comprises causing a
parallel-processing system that comprises a plurality of nodes
to conceal communication delays within computations and to
simplify interaction filtering,
wherein, details of how said non-abstract method would
conceal communication delays comprise by creating
opportunities for concurrency between communications and
computations,
wherein further details of how said non-abstract method
would conceal communication delays and simplify interaction
filtering by creating said opportunities for concurrency between
communications and computations comprise executing the
detailed steps of causing said parallel processing system to
perform computations that are associated with bodies that are
located in a global cell that has been divided into a plurality of
home boxes,
wherein, as a result of having caused said parallel
processing system to perform computations that are associated
with bodies that are located in a global cell that has been
divided into a plurality of home boxes, communication delays
within said computations are concealed and interaction filtering
is simplified,
wherein further details of causing said parallel-
processing system to perform said computations, and thereby
causing concealment of said communication delays and
simplification of interaction filtering comprise causing a node
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of said parallel processing system to carry out the steps of
importing data, defining a set of zones, executing a first subset
of said computations, executing a second subset of said
computations, and executing a third subset of said
computations,
whereby, as a result of having caused said node to import
said data, to define said set of zones, and to execute said first,
second, and third subsets of computations, concealment of said
communication delays and simplification of interaction filtering
is achieved,
wherein said data that has been imported is data that is
indicative of bodies that are located in at most one import
region,
wherein a union of said import region and a homebox
that is associated with said node comprises said set of zones,
wherein said set of zones comprises at least a first zone, a
second zone, and a third zone,
wherein said set of bodies comprises a first subset of
bodies, a second subset of bodies, and a third subset of bodies,
wherein bodies in said first subset of bodies are located
in said first zone,
wherein bodies in said second subset of bodies are
located in said second zone, and
wherein bodies in said third subset of bodies are located
in said third zone, defining a first combination, said first
combination being a combination of said first zone and said
second zone, defining a second combination, said second
combination being a combination of said first zone and said
third zone, defining a
third combination, said third combination being a
combination of said second zone and said third zone,
wherein said first subset of computations comprises
computations that are associated with a first set of bodies,
wherein said second subset of computations comprises
computations that are associated with a second set of bodies,
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wherein said third subset of computations comprises
computations that are associated with a third set of bodies,
wherein said first set of bodies comprises a first body that
is located in said first zone and a second body that is located in
said second zone,
wherein said second set of bodies comprises a first body
that is located in said first zone and a second body that is
located in said third zone, and
wherein said third set of bodies comprises a first body
that is located in said second zone and a second body that is
located in said third zone.

25.A method comprising performing computations
associated with bodies located in a global cell that has been
divided into a plurality of home boxes, each of the
computations in the set of computations being associated with a
pair of the bodies, wherein performing said computations
comprises causing a node of a parallel-processing system to
execute the steps of: accepting data for bodies located in a
neighborhood that, in union with a home box of said node,
comprises at least a first zone, a second zone, and a third zone
and performing computations associated a first body and a
second body, wherein said first body is in said first zone,
wherein said second body is in said second zone, and wherein a
spatial extent of at least one of the zones is determined to
eliminate at least some bodies in one of the zones that are
further away than a minimum distance from all bodies in
another of the zones.

EXAMINER’S REJECTION2
The Examiner rejected claims 1, 6, 8 through 45, 131, and 133

2 Throughout this Decision we refer to the Appeal Brief filed October 4,
2018 (“Appeal Br.”); Reply Brief filed March 8, 2019 (“Reply Br.”); Final
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through 140 under 35 U.S.C. § 101 for being directed to patent-ineligible
subject matter. Final Act. 4–7.

ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of all the claims under 35 U.S.C. § 101. Patent
eligibility under § 101 is a question of law that may contain underlying
issues of fact.

PRINCIPLES OF LAW
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at

Office Action mailed February 23, 2018 (“Final Act.”); and the Examiner’s
Answer mailed January 15, 2019 (“Answer”).
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219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
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(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) 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) (“Step 2A, Prong One”); and
(2) 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)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance — Section III(A)(2), 84
Fed. Reg. at 54–55.
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DISCUSSION
The Examiner determines the claims are not patent eligible because
they are directed to a judicial exception without reciting significantly more.
Final Act. 4–7. Specifically, the Examiner determines the claims are
directed to:
a concept of receiving data, organizing data, manipulating them
through mathematical correlations, and optimizing partitioning
data, which corresponds to concepts identified as abstract ideas
by the courts, such as organizing and manipulating information
through mathematical correlations in Digitech or using an
algorithm for determining the optimal number of visits by a
business representative to a client in Maucorps.

Final Act. 4 (citing Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014), and In re Maucorps, 609 F.2d 481,
485 (CCPA 1979)). Further, the Examiner finds that the claims do not
include additional elements that amount to significantly more than the
judicial exception. Final Act 5. The Examiner states that the additional
limitations of a parallel processing system are generic recitations and there is
no indication that the combination of elements improves the functioning of
the computer or any other technology. Final Act 5.
Appellant argues the Examiner has erred in in determining the claims
recite an abstract idea. Appeal Br. 7–8. Further, Appellant argues that the
claims are directed to an improvement in a computer process and are patent
eligible as they are similar to those held patentable in Enfish. Appeal Br. 8–
14 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1, 25, 34, 42, 131, and 138 under 35 U.S.C.
§ 101, because the record does not support the Examiner’s determination
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that the claims do not recite an improvement in a computer related
technology.
We concur with the Examiner that the claims recites a concept similar
to those found abstract by the courts. Each of claims 1, 25, 34, 42, 131, and
138 recites limitations directed to performing computations associated with
bodies that are located in a home box or region (a part of a global cell that
has been divided) and their interaction with other bodies in other zones.
Thus, we concur with the Examiner that the claims recite a mathematical
concept of performing computations of interactions between bodies.
However, as argued by the Appellant, the claims recite these
calculations as being performed on a parallel computer system and the use of
the home box (or region) and zones operates to improve how the parallel
computing system performs computations related to the interaction between
bodies. Appeal. Br. 8–12. Specifically, Appellant argues that it simplifies
interactive filtering and conceals communication delays. Appeal Br. 10. We
concur and consider the claims to be more than just implementing an
abstract idea on a computer, but rather to be directed to improving how the
computer operates to perform a process, similar to the claims at issue in
Enfish. In Enfish, the invention was directed to a data structure which
included a very specifically defined means for configuring a logical data
table that required a four-step algorithm to render the table self-referential.
Enfish, 822 F.3d at 1336. Further, the Enfish court found “the plain focus of
the claims is on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity.” Id. Here, independent claims 1, 34, 131, and 138 expressly recite
that performing the computations associated with bodies that are located in a
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home box or region, and bodies in other zones as claimed conceal the
communication delays in the parallel processing system. Independent claim
42 does not recite the use of parallel processing, but nonetheless discuses
performing computations on bodies in regions and bodies in other zones as a
part of a method to concealing communication delays. Further, Appellant’s
Specification identifies, in section 6, paragraphs 331–349, that the use of
zones, reduces bandwidth requirements, eliminates some filtering
requirements to avoid redundant computations, and thereby allows more
concurrent communications (which hides communication delays) when
calculating the interactions between bodies. See Spec. ¶¶ 343–345. Thus,
similar to Enfish the focus of the claims is on an improvement in how the
computer operates to perform the calculations on the interactions between
bodies. Thus, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 101, as we consider independent claims 1, 25, 34, 42, 131, and 138, and
the claims which depend thereupon, to recite an improvement to a computer
technology.
New Rejection of under 35 U.S.C. § 112, second paragraph
We enter a new rejection against claim 1 under 35 U.S.C. § 112,
second paragraph, as it contains several ambiguities. Specifically, claim 1
recites “wherein said set of bodies comprises a first subset of bodies, a
second subset of bodies, and a third subset of bodies.” The recitation of
“said set of bodies” in this limitation, does not have prior antecedent basis in
the claim, and it is unclear if this is referring to the “bodies that are located
in a global cell that has been divided into a plural home boxes” or the
“bodies that are in at most one import region.” Claim 1, further, recites “a
first set of bodies,” “a second set of bodies” and “a third set of bodies,”
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which further confuses which bodies are being referred to. Thus, we now
enter a new ground of rejection of claim 1, and claims 6, 8 through 24, 133
through 137, and 140, which depend from claim 1 and inherit the ambiguity
of claim 1.
CONCLUSION
We reverse the Examiner’s rejection of claims 1, 6, 8 through 45, 131,
and 133 through 140, under 35 U.S.C. § 101. We enter a new ground of
rejection under 35 U.S.C. § 112, second paragraph.
In summary:
Claim
Rejected
35 U.S.C.
§
Basis Affirmed Reversed New Ground

1, 6, 8–45,
131, 133–
140
101 Eligibility 1, 6, 8–45, 131,
133–140

1, 6, 8–24,
133–137,
140
112,
second
paragraph
Indefinite 1, 6, 8–24, 133–
137, 140
Overall
Outcome
1, 6, 8–45, 131,
133–140
1, 6, 8–24, 133–
137, 140

This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). This section provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
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to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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). See 37
C.F.R. § 41.50(f).
REVERSED; 37 C.F.R. § 41.50(b)