Charles J. Camp et al.

Patent Trials and Appeals Board

Feb 4, 2020

15079268 - (D) (P.T.A.B. Feb. 4, 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.
15/079,268 03/24/2016 CHARLES J. CAMP SJO920150115US1 2459
124717 7590 02/04/2020
Russell Ng PLLC (IBM TUC/BOU/SJO)
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
EXAMINER
SHANMUGASUNDARAM, KANNAN
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
stephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHARLES J. CAMP, CHARALAMPOS POZIDIS,
NIKOLAOS PAPANDREOU, ROMAN A. PLETKA,
THOMAS MITTELHOLZER, THOMAS PARNELL,
and
TOBIAS BLAETTLER
____________________

Appeal 2018-003680
Application 15/079,2681
Technology Center 2100
____________________

Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOVAN,
Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1–23, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2

1 We use the word “Appellant” to refer to “applicant[(s)]” as defined in 37
C.F.R. § 1.42. The real party in interest is International Business Machines
Corporation. (Appeal Br. 2.)
2 Our Decision refers to the Specification (“Spec.”) filed March 24, 2016,
the Final Office Action (“Final Act.”) mailed March 24, 2017, the Appeal
Brief (“Appeal Br.”) filed August 23, 2017, the Examiner’s Answer (“Ans.”)
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CLAIMED INVENTION
The claims are directed to a method and system for “updating prefix
codes utilized for pseudo-dynamic data compression based on a workload of
a data storage system” by augmenting a number of prior prefix codes S for
pseudo-dynamic compression, where the augmenting includes “determining
a new set S’ of prefix codes for pseudo-dynamic compression from a
training data set selected from a workload of the data storage system and
storing the new set S’ in the data storage system with the prior set S.” (Spec.
¶ 1; Abstract.)
Claims 1, 8, and 15 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for updating parameters for data compression,
the method comprising:
storing, in a data storage system, a prior set S of prefix
codes for pseudo-dynamic compression as well as data
compressed utilizing prefix codes in the prior set S;
while storing in the data storage system data compressed
utilizing prefix codes in the prior set S, augmenting a number of
prefix codes for pseudo-dynamic compression in the data storage
system by:
determining a new set S’ of multiple prefix codes
for pseudo-dynamic compression from a training data set
selected from a workload of the data storage system,
wherein the determining includes determining each of the
multiple prefix codes in the new set S’ from a respective
one of a plurality of clusters of data pages from the training
data set;
storing the new set S’ in the data storage system
with the prior set S; and

mailed December 21, 2017, and the Reply Brief (“Reply Br.”) filed February
21, 2018.
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performing pseudo-dynamic compression on input data to
be stored within the data storage system in a multi-step process
including:
encoding the input data utilizing a lossless data
compression encoder to produce an encoded sequence of
data;
encoding, by a prefix encoder, the encoded
sequence of data utilizing prefix codes selected from the
prefix codes stored in the data storage system to produce
compressed data; and
storing the compressed data obtained from the
prefix encoder in the data storage system.

(Appeal Br. 18–24 (Claims App.).)

REJECTIONS3 & REFERENCES
(1) Claims 1–14, 21, and 22 stand rejected under 35 U.S.C. § 101
as directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. (Final Act. 3.)
(2) Claims 1, 7, 8, 14, 15, and 21–23 stand rejected under
35 U.S.C. § 103 based on Kelly et al. (US 2016/0124983 A1, published May
5, 2016) (“Kelly”) and Ottesen et al. (US 2004/0223651 A1, published Nov.
11, 2004) (“Ottesen”). (Final Act. 4–7.)
(3) Claims 2–6, 9–13, and 16–20 stand rejected under
35 U.S.C. § 103 based on Kelly, Ottesen, and Berger et al. (US 5,973,626,
issued Oct. 26, 1999) (“Berger”). (Final Act. 7–12.)

3 Claims 15–20 and 23 were rejected under 35 U.S.C. § 101, for not falling
within at least one of the four categories of patent eligible subject matter
because “claim 15 recites a ‘program product’ that can be considered non-
statutory signals.” (Final Act. 2–3.) However, this rejection was withdrawn
as noted in the Examiner’s Answer, and is no longer pending on appeal.
(Ans. 14.)
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ANALYSIS
Rejection of Claims 1–14, 21, and 22 under 35 U.S.C. § 101
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
(“Mayo”); Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(“Alice”). The rationale is that patents directed to basic building blocks of
technology would not “promote the progress of science” under the U.S.
Constitution, Article I, Section 8, Clause 8, but instead would impede it.
Accordingly, laws of nature, natural phenomena, and abstract ideas, are not
patent-eligible subject matter. Thales Visionix Inc. v. United States, 850
F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice (573 U.S. at 217–18). The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the
second step of the Alice/Mayo test in which we “examine the elements of the
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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) (quoting Mayo,
566 U.S. at 72, 79). There is no need to proceed to the second step,
however, if the first step of the Alice/Mayo test yields a determination that
the claim is directed to patent-eligible subject matter.
The Patent Office has recently revised its guidance for how to apply
the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (January 7, 2019) (“the Revised Guidance”).
Under the Revised Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).
84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. 84 Fed. Reg.
at 54. When the judicial exception is so integrated, then the claim is not
directed to a judicial exception and is patent-eligible under § 101. 84 Fed.
Reg. at 54. Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. 84 Fed. Reg. at 56; Alice,
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573 U.S. at 217–19, 221. Evaluation of the inventive concept involves
consideration of whether an additional element or combination of elements
(1) adds a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present; or (2) simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present.
Applying Step 1 of the Revised Guidance (which is unchanged from
the prior guidance) to the present case, we determine independent claim 1
recites a “method for updating parameters for data compression,” which is a
form of “process,” thereby falling within one of the categories enumerated
under § 101 and satisfying Step 1 of the Revised Guidance. We also
determine independent claim 8 recites a “data processing system,” which is a
form of “machine,” thereby falling within one of the categories enumerated
under § 101 and satisfying Step 1 of the Revised Guidance.
We proceed to apply Step 2A of the Revised Guidance to determine if
claim 1 is “directed to” a judicial exception. As discussed supra, the first
prong of Step 2A under the Revised Guidance is to determine whether the
claim recites a judicial exception including (a) mathematical concepts; (b)
certain methods of organizing human activity; and (c) mental processes.
We find that independent claim 1 (and independent claim 8 reciting
similar limitations) does not recite any of the three judicially-excepted
groupings of abstract ideas identified in the Revised Guidance. First, claim
1 does not recite any of the methods of organizing human activity identified
in the Revised Guidance. For example, claim 1 does not recite fundamental
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economic principles or practices, commercial or legal interactions, or
managing personal behavior or relationships or interactions between people.
See Revised Guidance, 84 Fed. Reg. at 51–52. Second, claim 1 does not
recite a mathematical concept, such as a specific mathematical algorithm or
formula. See Parker v. Flook, 437 U.S. 584, 586 (1978); Diamond v. Diehr,
450 U.S. 175, 187 (1981). Instead, claim 1 recites “augmenting a number of
prefix codes for pseudo-dynamic compression” by “determining a new set S’
of multiple prefix codes for pseudo-dynamic compression from a training
data set selected from a workload of the data storage system” and
“determining each of the multiple prefix codes in the new set S’ from a
respective one of a plurality of clusters of data pages from the training data
set.” While these limitations involve or are based on mathematical
relationships, formulas, or calculations, the mathematical relationships,
formulas, or calculations are not explicitly recited in the claim.
Third, although the Examiner found that the claim could be performed
mentally because “there is nothing stopping the human brain from
performing the actions of the invention. . . . [and] replacing one set of data
with another can be performed mentally” (see Ans. 3), we agree with
Appellant that claim 1 recites “steps that cannot be performed solely
mentally” (Reply Br. 6–7). For example, claim 1’s steps—including
“storing, in a data storage system, a prior set S of prefix codes for pseudo-
dynamic compression as well as data compressed utilizing prefix codes in
the prior set S,” “augmenting a number of prefix codes for pseudo-dynamic
compression in the data storage system by: determining a new set S’ of
multiple prefix codes for pseudo-dynamic compression,” “determining each
of the multiple prefix codes in the new set S’ from a respective one of a
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plurality of clusters of data pages from the training data set [of the data
storage system’s workload],” “storing the new set S’ in the data storage
system with the prior set S,” “performing pseudo-dynamic compression on
input data to be stored within the data storage system” by multiple encoding
steps including “encoding the input data utilizing a lossless data
compression encoder,” and “storing the compressed data obtained from the
prefix encoder in the data storage system”—exist exclusively in the realm of
computers and cannot practicably be performed in the human mind or with
pen and paper, and thus do not amount to a mental process. (Reply Br. 5–7.)
We also disagree with the Examiner’s finding that claim 1 is “directed
to a judicial exception” of “collecting and comparing prefix information.”
(Final Act. 3; see also Ans. 4.) Claim 1 recites a “method for updating
parameters for data compression” that includes, inter alia, (i) “augmenting a
number of prefix codes for pseudo-dynamic compression in the data storage
system” by “determining a new set S’ of multiple prefix codes for pseudo-
dynamic compression from a training data set selected from a workload of
the data storage system” and “determining each of the multiple prefix codes
in the new set S’ from a respective one of a plurality of clusters of data
pages from the training data set,” (ii) “performing pseudo-dynamic
compression on input data to be stored within the data storage system” by
“encoding the input data utilizing a lossless data compression encoder to
produce an encoded sequence of data,” “encoding, by a prefix encoder, the
encoded sequence of data utilizing prefix codes selected from the prefix
codes stored in the data storage system to produce compressed data,” and
“storing the compressed data obtained from the prefix encoder in the data
storage system.” As can be seen, claim 1 does not merely recite “collecting
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and comparing prefix information” or data manipulation in an abstract sense
(Final Act. 3 and Ans. 4), but rather relates to data compression and storage
on physical storage media and optimization of the data’s compression based
on workloads of a data storage system. (See Appeal Br. 18 (claim 1); see
also Spec. ¶¶ 1–2, 6, 43, 51, 61.) That is, the claimed steps all relate to
pseudo-dynamic data compression and optimization of compression codes
that improve the utilization of storage capacity in a data storage system,
which is not an abstract idea. (Reply Br. 5, 7–10; Appeal Br. 6, 9–10.)
Accordingly, in light of the Revised Guidance, we determine that
claim 1, and independent claim 8 reciting similar limitations, do not recite an
abstract idea that would make them patent-ineligible under 35 U.S.C. § 101.
For these reasons, we do not sustain the Examiner’s rejection of
claims 1 and 8, and dependent claims 2–7, 9–14, 21, and 22, as directed to
patent-ineligible subject matter under 35 U.S.C. § 101.

Rejection of Claims 1–23 under 35 U.S.C. § 103
With respect to independent claim 1, the Examiner finds Kelly’s
technique of adding new prefixes to a dictionary table teaches the claimed
“determining a new set S’ of multiple prefix codes” and “storing the new set
S’ in the data storage system with the prior set S [of prefix codes].” (Final
Act. 4 (citing Kelly ¶¶ 17–19, Fig. 1).) The Examiner further finds the
combination of Kelly and Ottesen teaches the claimed “performing pseudo-
dynamic compression on input data to be stored within the data storage
system in a multi-step process.” (Final Act. 4–5; Ans. 8–9.) In particular,
the Examiner finds Kelly’s compression by inserting prefixes in the table
performs a “pseudo-dynamic compression on input data to be stored within
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the data storage system in a multi-step process” that includes (1) “encoding
the input data utilizing a data compression encoder to produce an encoded
sequence of data” and (2) “encoding, by a prefix encoder, the encoded
sequence of data utilizing prefix codes selected from the prefix codes stored
in the data storage system to produce compressed data,” as recited in claim
1. (Final Act. 4–5 (citing Kelly ¶¶ 23, 26–27, 30).) The Examiner also finds
Ottesen performs “lossless encryption and compression” using an “encoder
[that] is lossless.” (Final Act. 5 (citing Ottesen ¶ 29) (emphasis omitted).)
We do not agree.
We agree with Appellant that Kelly and Ottesen, alone or in
combination, fail to teach or suggest performing a multi-step pseudo-
dynamic compression process that doubly encodes input data by (1)
encoding the input data utilizing a lossless data compression encoder to
produce an encoded sequence of data, and (2) encoding, by a prefix encoder,
the encoded sequence of data utilizing prefix codes selected from the prefix
codes stored in the data storage system to produce compressed data, as
recited in claim 1. (Appeal Br. 12; Reply Br. 18.)
As Appellant explains, Kelly merely discloses “a single operation on
raw data to produce compressed and encrypted data. . . . This single
operation is the lossless dictionary based encryption (e.g., LZW) disclosed,
for example, in ¶ [0017] of Kelly.” (Reply Br. 18 (citing Kelly ¶¶ 5, 17).)
For example, Kelly sets a first prefix as the first character of the string in a
file, reads successive characters from the input data (file) and creates
concatenated prefixes that are inserted into a dictionary table, then performs
“a determination . . . whether there is more file data to compress” and “[i]f
there is not, then [] all of the data in the file has been securely compressed
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and the securely compressed file is completed.” (See Kelly ¶¶ 19–20; see
also Kelly ¶¶ 23 (“upon determining that a concatenated prefix is not in the
table, e.g., flow branches NO from decision operation 210, the index of the
prefix is output to the securely compressed file” and “flow continues to
operation 218 where the concatenated prefix is added to the table,” “the
concatenated prefix is truncated to the most recently read input (e.g.,
character, number, string, byte, etc.),” and “the method 200 continues until
there is no more data to be compressed from the file or data stream”), 26–27,
30.) Thus, Kelly compresses input data in a single operation that creates
prefixes as the input data is read and compressed. (See Kelly ¶¶ 17–18.) In
contrast, Appellant’s claimed multi-step compression doubly encodes data
by (1) a lossless compression to produce an encoded sequence of data
followed by (2) encoding the encoded sequence of data with a prefix
encoder utilizing previously determined prefix codes.
Ottesen does not make up for the above-noted deficiencies of Kelly,
as Ottesen merely mentions a “lossless compression or encryption” and “a
lossless Lempel-Ziv-Welch (LZW) compression algorithm” (see Ottesen
¶ 29), but does not describe a multi-step compression process that doubly
encodes data by a lossless compression to produce an encoded sequence of
data followed by encoding the encoded sequence of data with a prefix
encoder utilizing prefix codes, as recited in claim 1. (Reply Br. 18; Appeal
Br. 12.)
The Examiner also has not shown that the additional teachings of
Berger make up for the above-noted deficiencies of Kelly and Ottesen.
Thus, for the reasons set forth above, we do not sustain the Examiner’s
obviousness rejection of independent claim 1, and independent claims 8 and
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15 reciting similar limitations. We also do not sustain the Examiner’s
obviousness rejection of dependent claims 2–7, 9–14, and 16–23. Because
the above-discussed issues are dispositive as to the obviousness rejections of
all claims on appeal, we do not reach additional issues raised by Appellant’s
arguments as to the § 103 rejections of claims 1, 2 and 6.

CONCLUSIONS
The Examiner’s rejection of claims 1–14, 21, and 22 under
35 U.S.C. § 101 is REVERSED.
The Examiner’s rejection of claims 1–23 under 35 U.S.C. § 103 is
REVERSED.

In summary:
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–14, 21, 22 101  Eligibility 1–14, 21, 22
1, 7, 8, 14, 15, 21–
23
103 Kelly, Ottesen 1, 7, 8, 14,
15, 21–23
2–6, 9–13, 16–20 103 Kelly, Ottesen,
Berger
2–6, 9–13,
16–20
Overall Outcome 1–23

REVERSED