Equalum Ltd.

Patent Trials and Appeals Board

Jul 1, 2020

2019002380 (P.T.A.B. Jul. 1, 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.
14/975,899 12/21/2015 Ofir MANOR EQUL P0951 7450
122066 7590 07/01/2020
M&B IP Analysts, LLC
500 Headquarters Plaza
Morristown, NJ 07960-7070
EXAMINER
NGUYEN, ANH
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
eofficeaction@appcoll.com
michael.benshimon@gmail.com
pair@mb-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OFIR MANOR and NIR LIVNEH
____________
Appeal 2019-002380
Application 14/975,899
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, JOHN A. EVANS, and
CARL L. SILVERMAN, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1–16, all pending claims. Claims
App’x.; see also Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant states the real party in interest is Equalum Ltd.
Appeal Br. 3.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief filed October 23, 2018 (“Appeal Br.”); the Reply
Brief filed January 1, 2019 (“Reply Br.”); the Examiner’s Answer mailed
November 30, 2018 (“Ans.”); the Final Action mailed July 12, 2018 (“Final
Act.”); and the Specification filed December 21, 2015 (“Spec.”) for their
respective details.
Appeal 2019-002380
Application 14/975,899

2
STATEMENT OF THE CASE
The claims relate to dynamic shared compression methods. See
Abstract.
Invention
Claims 1, 9, and 13 are independent. Claims App’x. An
understanding of the invention can be derived from a reading of illustrative
claim 1, which is reproduced below in Table I.
References
Name Publication Number Date
Paparella US 7,743,165 B2 June 22, 2010
Freundlich US 2012/0257117 A1 Oct. 11, 2012
Parkinson US 2015/0370827 A1 Dec. 24, 2015
Filed June 24, 2014

Rejections3
Claims Rejected 35 U.S.C. § References/Basis
1–16 101 Subject Matter Eligibility
Final Act. 5–6
1–5, 7–16 103, Obviousness

Parkinson, Paparella
Final Act. 7–15
6 103, Obviousness Parkinson, Paparella, Freundlich
Final Act. 15–16

3 The Application was examined under the first inventor to file provisions of
the AIA. Final Act. 2.
Appeal 2019-002380
Application 14/975,899

3
ANALYSIS
We have reviewed the rejections of claims 1–16 in light of Appellant’s
arguments that the Examiner erred.
CLAIMS 1–16: INELIGIBLE SUBJECT MATTER

Appellant argues these claims as a group without specific reference to
any particular claim or claims. See Appeal Br. 7–17. Therefore, we decide
the appeal of the 35 U.S.C. § 101 rejection on the basis of illustrative claim
1 and refer to the rejected claims collectively herein as “the claims.” See 37
C.F.R. § 41.37(c)(1)(iv); see also In re King, 801 F.2d 1324, 1325 (Fed. Cir.
1986).

The Rejection and Appellant’s Contentions.
The Examiner finds Claims 1, 9, and 13 involve generating and
storing pattern-related compression data and providing the data to a second
node. Final Act. 5. The Examiner finds the process of collecting, analyzing,
and transmitting data is an abstract idea. Id., 5–6 (citing Classen,4 Electric
Power Group,5 and Smart Systems Innovations6). The Examiner further
finds the steps of the claimed method are not intrinsic to computers, rather,
the computer is being used merely as a tool. Final Act. 6. The Examiner

4 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (2011).
5 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
6 Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364 (2017).
Appeal 2019-002380
Application 14/975,899

4
finds the additional steps of the method, i.e., “wherein the compression
metadata comprises a data set smaller than a data set of the determined
pattern,” is not sufficient to amount to significantly more than the judicial
exception because “this addition [sic, “additional”] limitation is a well-
known term.” Id.
Appellant contends “the claims are directed strictly to an
improvement in a computer system and not to using the computer system as
a tool to implement some practice outside of the computer world along with
the requirement to perform it on a computer.” Appeal Br. 8. Appellant
argues the claims impart improved functionality to any computer system
comprising at least two nodes. Id. at 9. Appellant argues the claims “strictly
relate[] to the computer function of reducing the number of bits that need to
be transmitted, thereby, advantageously, increasing effective transmission
speed, reducing required bandwidth, and saving power regardless of the
application for which the computer is being used or for which the
information is being transferred.” Id.
We review the record de novo. SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn
to patent-eligible subject matter is an issue of law that we review de novo.”).
Patent eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying factual findings. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018). Based upon our review of the record in light of
recent policy guidance with respect to patent-eligible subject matter rejection
under 35 U.S.C. § 101, we reverse the rejection of claims 1–16 for the
Appeal 2019-002380
Application 14/975,899

5
specific reasons discussed below.7
35 U.S.C. § 101
Section 101 provides that a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” See 35 U.S.C. § 101. The Supreme Court
has long recognized, however, that 35 U.S.C. § 101 implicitly excludes
“[l]aws of nature, natural phenomena, and abstract ideas” from the realm of
patent-eligible subject matter, as monopolization of these “basic tools of
scientific and technological work” would stifle the very innovation that the
patent system aims to promote. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–78 (2012); and Diamond v. Diehr,
450 U.S. 175, 185 (1981).
Under the mandatory Revised Guidance, we reconsider whether
Appellant’s claims recite:
1. any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental
processes), and
2. additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).

7 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).
Appeal 2019-002380
Application 14/975,899

6
Only if a claim, (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then reach
the issue of 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.
Whether the claims recite a judicial exception.
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the abstract-idea
exception includes the following groupings of subject matter, when recited
as such in a claim limitation(s) (that is, when recited on their own or per se):
(a) mathematical concepts,8 i.e., mathematical relationships, mathematical
formulas, equations,9 and mathematical calculations;10 (b) certain methods
of organizing human activity—fundamental economic principles or practices

8 Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“The concept of hedging . . .
reduced to a mathematical formula . . . is an unpatentable abstract idea.”).
9 Diehr, 450 U.S. at 191 (“A mathematical formula as such is not accorded
the protection of our patent laws.”); Parker v. Flook, 437 U.S. 584, 594
(1978) (“[T]he discovery of [a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.”).
10 SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a “series of mathematical calculations based on
selected information” are directed to abstract ideas).
Appeal 2019-002380
Application 14/975,899

7
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions);11 and (c) mental processes—concepts performed in the human
mind (including observation, evaluation, judgment, opinion).12
The preamble of independent claim 1 recites: “A computerized
method for dynamic shared compression between a first node and at least a
second node communicatively connected over a network, the method
comprising.” The limitations recited in the body of the claim are analyzed in
Table I against the categories of abstract ideas as set forth in the Revised
Guidance.

11 Alice, 573 U.S. at 219–20 (concluding that use of a third party to mediate
settlement risk is a “fundamental economic practice” and thus an abstract
idea); see Revised Guidance, 84 Fed. Reg. 52 n.13 for a more extensive
listing of “certain methods of organizing human activity” that have been
found to be abstract ideas.
12 Mayo, 566 U.S. at 71 (“[M]ental processes[ ] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work.”) (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
Appeal 2019-002380
Application 14/975,899

8
Table I
Claim 1 Revised Guidance
[a]13 receiving by the first node a
first plurality of data inputs from the
at least a second node;
Insignificant extra-solution activity,
mere data-gathering. Revised
Guidance, 84 Fed. Reg. 55 n.31.
[b] continuously determining at
least a pattern corresponding to the
received first plurality of data
inputs;
Mental processes, i.e., concepts
performed in the human mind
including observation, evaluation,
judgment, opinion. 84 Fed. Reg.
52.
[c] periodically generating
compression metadata
corresponding to the at least a
pattern;
Mathematical concepts, i.e.,
mathematical relationships,
mathematical formulas or equations,
mathematical calculations. 84 Fed.
Reg. 52.14
[d] storing the compression
metadata in a memory; and
Insignificant extra-solution activity,
mere data-storage. Revised
Guidance, 84 Fed. Reg. 55 n.31.
[e] providing the compression
metadata to the at least a second
node for use by the second node to
at least compress subsequent data to
be transmitted to the first node;
Not Applicable.
[f] wherein the compression Not Applicable.

13 Step designators, e.g., “[a],” were added to facilitate discussion.
14 If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind. See Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
Appeal 2019-002380
Application 14/975,899

9
metadata comprises a data set
smaller than a data set of the
determined pattern.

In view of Table I, we find limitations [b] and [c] of independent
Claim 1 recite abstract ideas, i.e., mental processes and mathematical
concepts. Appellant contends the claims are directed to an improvement in
computer function. Appeal Br. 8. Under the Revised Guidance, Appellant’s
“directed to” contention is addressed at Step 2A(ii).
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, as we conclude above,
we proceed to the “practical application” Step 2A(ii) wherein we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
For the reasons which follow, we conclude that Appellant’s claims
integrate the judicial exception into a practical application.
MPEP § 2106.05(a) “Improvements to the Functioning of a Computer
or to Any Other Technology or Technical Field.”
“In determining patent eligibility, examiners should consider whether
the claim ‘purport(s) to improve the functioning of the computer itself’” or
“any other technology or technical field.” MPEP § 2106.05(a).
Appeal 2019-002380
Application 14/975,899

10
With respect to technological improvements, Appellant contends the
claims relate to the computer function of reducing the number of bits that
need to be transmitted between two nodes in a network. Appeal Br. 9.
Appellant argues the claims thereby, advantageously, increase the effective
transmission speed, reduce the required bandwidth, and save power
regardless of the application for which the computer is being used or for
which the information is being transferred. Id.
The Examiner finds the claims are focused on recognizing input data
and transmitting that data to another node. Ans. 4. The Examiner finds the
claims do not improve computer processing or solve a technical problem.
Id. However, the Answer fails to respond to Appellant’s contention that the
claims operate to reduce the number of bits required to be transmitted,
increase transmission rates, and reduce the required bandwidth and power
consumption, all problems intrinsic to computer technology.
Appellant discloses “[a]dvances in technology result in an abundance
of data generated, such as measurements, performance indicators, [and]
sensor readings.” Spec. ¶ 2. Appellant discloses “each event may be small .
. . events may be tens or hundreds of thousand event per second. Typically,
the data is generated by many nodes connected through a network to a main
node.” Id. Appellant discloses a problem in that “sending data of this
volume requires substantial bandwidth.” Id. Appellant contend this
problem is solved by the claimed “computerized method for dynamic shared
compression between a first node and at least a second node
communicatively connected over a network.” Spec. ¶ 4. According to
Appellant, the claims continuously determine a pattern corresponding to a
Appeal 2019-002380
Application 14/975,899

11
received first plurality of data inputs, the claims generate compression
metadata corresponding to the determined pattern, and the compression
metadata is provided to at least a second node. Id. The compression
metadata is used to compress and decompress subsequently transmitted data.
Spec. ¶ 5. Appellant discloses “[c]ompression of a second plurality of data
input is performed at the second node using the compression metadata.
Upon receiving this compressed data from the second node, decompression
is performed at the first node using the stored compression metadata.” Spec.
¶ 12.
Under Alice, we determine whether the claims are directed to an
abstract idea. Alice, 573 U.S. at 217. “In cases involving software
innovations, this inquiry often turns on whether the claims focus on specific
asserted improvements in computer capabilities or instead on a process or
system that qualifies an abstract idea for which computers are invoked
merely as a tool.” Uniloc USA, Inc. v. LG Electronics USA, Inc., 2019-1835,
slip op. at 5 (Fed. Cir. April 30, 2020) (citing Customedia Techs., LLC v.
DISH Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citing Finjan,
Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018)).
In Uniloc, the Federal Circuit held “the claims at issue are directed to
a patent-eligible improvement to computer functionality, namely the
reduction of latency experienced by parked secondary stations in
communication systems.” Uniloc, slip op. 7. Similarly, we find the claims
improve a computer technology, i.e., data transmission in computer
networks. We, therefore, do not sustain the rejection of Claims 1–16 under
§ 101.
Appeal 2019-002380
Application 14/975,899

12
CLAIMS 1–16: OBVIOUSNESS OVER
PARKINSON, PAPARELLA, AND FREUNDLICH
Appellant argues these claims as a group with reference to the
recitations of independent Claim 1. See Appeal Br. 17, 24. Therefore, we
decide the appeal of the 35 U.S.C. § 101 rejection on the basis of illustrative
Claim 1 and refer to the rejected claims collectively herein as “the claims.”
See 37 C.F.R. § 41.37(c)(1)(iv); see also In re King, 801 F.2d 1324, 1325
(Fed. Cir. 1986).
Independent Claim 1 recites, inter alia, “continuously determining at
least a pattern corresponding to the received first plurality of data inputs
[and] periodically generating compression metadata corresponding to the
at least a pattern.” Independent Claims 8 and 13 contain commensurate
recitations.
The Examiner finds Parkinson teaches periodically generating
compression metadata corresponding to the at least a pattern. Final Act. 7
(citing Parkinson, ¶ 10).
Appellant contends Parkinson fails to teach “generating compression
metadata,” as claimed. Appeal Br. 18. Appellant argues in Parkinson’s
teaching there is no compression metadata corresponding to the claimed “at
least a pattern” that is generated where such compression metadata is to be
used for compressing future data. Id. Rather, Appellant argues, Parkinson
generates compressed metadata and further argues “compressed metadata” is
something very distinct from “compression metadata” and moreover, is not
used to compress subsequently-transmitted data, but is used to bring an older
file version up to date. Id.
Appeal 2019-002380
Application 14/975,899

13
The Examiner finds Parkinson teaches a cloud controller receives a
version update request for a file and version differences are determined as
metadata deltas. Ans. 7 (citing Parkinson ¶ 10). Parkinson’s system
compresses the metadata and transmits the metadata to the requesting cloud
controller. Id. The Examiner finds “the compressed metadata [of
Parkinson] can be interpreted as a compression metadata [as claimed]”
because “providing the compression metadata to the at least a second node
for use by the second node to at least compress subsequent data to be
transmitted to the first node,” as claimed, “is intended use.” Ans. 8. We
disagree.
According to the claims, the second node uses the compression
metadata to compress subsequently-transmitted data based on patterns
present in a “first plurality of data inputs.” See Claim 1. Thus, and
according to the claims, the claimed compression metadata must correspond
to patterns present in a “first plurality of data inputs” for which the Examiner
has provided no finding that the prior art so teaches. The Examiner does not
apply secondary reference, Freundlich, to teach this limitation. See Ans. 7–
9.
In view of the foregoing, we decline to sustain the rejection of Claims
1–16 under 35 U.S.C. § 103.

CONCLUSION

In summary:
Appeal 2019-002380
Application 14/975,899

14
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16 101 Eligibility -- 1–16
1–5, 7–16 103 Parkinson,
Paparella
-- 1–5, 7–16
6 103 Parkinson,
Paparella,
Freundlich
-- 6
Overall
Outcome
-- 1–16

REVERSED