Ex Parte ABE

Patent Trial and Appeal Board

Nov 19, 2018

14684796 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/684,796 04/13/2015
27562 7590 11/21/2018
NIXON & V ANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Tomokazu ABE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AC-723-4137 7487
EXAMINER
JACKSON, JAKIEDA R
ART UNIT PAPER NUMBER
2657
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOKAZU ABE
Appeal2018-004394
Application 14/684, 796 1
Technology Center 2600
Before HUNG H. BUI, ADAM J. PYONIN, and MICHAEL J. ENGLE,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Non-Final Rejection of claims 21--43, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE. 2
1 According to Appellant, the real party in interest is NINTENDO CO.,
LTD. App. Br. 3.
2 Our Decision refers to Appellant's Appeal Brief ("App. Br.") filed
November 28, 2017; Reply Brief ("Reply Br.") filed March 22, 2018;
Examiner's Answer ("Ans.") mailed January 22, 2018; Non-Final Office
Action ("Non-Final Act.") mailed August 24, 2017; and original
Specification ("Spec.") filed April 13, 2015.
Appeal2018-004394
Application 14/684,796
STATEMENT OF THE CASE
Appellant's invention describes data compression and decompression
techniques that are used to compress and decompress audio, image, and
other digital data processed by a computer. Conventional data compression
techniques divide music data on the basis of frequency ranges and convert
divided signals into frequency domain data for encoding purposes. Spec.
,r 2. However, such techniques divide music data on the basis of fixed
frequency ranges determined in advance. Spec. ,r 3. As such, Appellant's
invention seeks to improve the efficiency of data compression on a block
basis where music data is divided into a plurality of pieces of frequency
domain data and a plurality of blocks is generated on the basis of the
characteristics or properties of pieces of frequency domain data such that
separation positions of the blocks are variable, or alternatively, such that the
number of pieces of frequency domain data included in each block is
variable. Spec. ,r,r 6-9; Abstract. According to Appellant, "[t]his
[technique] makes it possible to categorize pieces of data into some types
[(i.e., different categories)], and generate blocks on the basis of the types"
and therefore is "more suitable for data compression." Spec. ,r,r 17, 19. In
other embodiments, the plurality of blocks may also be generated on the
basis of (1) a continuity between pieces of frequency domain data when
arranged (Spec. ,r 22), (2) the number of bits for representing each of the
pieces of frequency domain data (Spec. ,r 24), or (3) taking into account the
size of decompression information used to decompress compressed data
(Spec. ,r 39).
Claims 21, 38, 39, 40, 41, 42, and 43 are independent. Claim 21 is
illustrative of the claimed subject matter, as reproduced below:
2
Appeal2018-004394
Application 14/684,796
21. A data compression apparatus for compressing a plurality
of pieces of input data to generate compressed data, the data
compression apparatus comprising:
a processing system that includes at least one processor
coupled to a memory, the processing system configured to:
acquire input data that is separated into a plurality
of pieces;
determine that values of two adjacent ones of the
plurality of pieces of input data are representable by the same
required number of bits;
based on the number of bits required to represent
values of the plurality of pieces of input data, generate a plurality
of blocks such that each of the plurality of pieces of input data
is included in any one of the plurality of blocks, where the pieces
of input data for each one of the plurality of blocks is stored using
a number of bits for the corresponding block, wherein the two
adjacent ones of the plurality of pieces of input data are included
in the same one of the plurality of blocks that are generated based
on the determination, where pieces of input data for at least two
of the blocks of the plurality of blocks are stored using a different
number of bits;
compress, on a block basis, the pieces of input data
included in the generated blocks, thereby generating the
compressed data; and
output the compressed data to a memory storage
medium.
App. Br. 24 (Claims App'x).
EXAMINER'S REJECTION
Claims 21--43 stand rejected under 35 U.S.C. § 101 for being directed
to non-statutory subject matter. Non-Final Act. 2---6.
3
Appeal2018-004394
Application 14/684,796
ANALYSIS
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). Patent-
eligible 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 § 101, the Supreme Court has emphasized that patent
protection should not preempt "the basic tools of scientific and technological
work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014). 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, rather, would impede it. Accordingly, laws of nature, natural
phenomena, and abstract ideas are not patent-eligible subject matter. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 134
S. Ct. at 2354).
In Alice, the Supreme Court has reiterated the analytical two-step
framework previously set forth in Mayo "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at
2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. If the claims are directed to eligible subject matter, the
4
Appeal2018-004394
Application 14/684,796
inquiry ends. Thales, 850 F.3d at 1349; Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to "search for an 'inventive concept'-i.e.,
an element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (quoting Mayo, 566 U.S. at 72-73).
"'[W]ell-understood, routine, [and] conventional activit[ies]' previously
known to the industry" are insufficient to transform an abstract idea into
patent-eligible subject matter. Alice, 134 S. Ct. at 2359 (quoting Mayo, 566
U.S. at 73).
In rejecting claims 21--43 under 35 U.S.C. § 101, the Examiner
determines the claims are directed to an abstract idea of "data compression"
and contain limitations such as "acquiring input data ... determining values,
generating blocks, compressing data and outputting the compressed data"
that are akin or analogous to "a process of organizing information through
mathematical correlations" discussed in Digitech. Ans. 2-3 ( citing Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed.
Cir. 2014 ). The Examiner also determines these claims are directed to an
abstract idea because the process recited in these claims can be implemented
mentally or performed manually by a human with pen and paper. Non-Final
Act. 4; see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
5
Appeal2018-004394
Application 14/684,796
13 72 (Fed. Cir. 2011 ). The Examiner further determines additional elements
in the claims, whether taken separately or in an ordered combination, do not
amount to significantly more than an abstract idea, because (i) "the
additional computer elements [( e.g., processor, memory)], which are recited
at a high level of generality, provide conventional computer functions that
do not add meaningful limits to practicing the abstract idea"; and (ii) "data
compression is algorithmic in nature and the data compression does not
improve the apparatus." Ans. 2-3.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellant argues
"independent claims 21, [and] 3 8--4 3 are not directed to an abstract idea"
( emphasis and capitalization omitted) because:
(1) "data compression is NOT an abstract idea" and the steps recited
"cannot, by definition, be performed in the 'human mind"' (App.
Br. 13);
(2) "[ n Jo court has found subject matter directed to data compression
techniques to be abstract" (id. at 14 );
(3) Digitech is inapposite because (i) "the court in Digitech held that
the device process was merely[] 'a collection of intangible color
and spatial information"' and "never held that processes for data
compression were abstract ideas" and (ii) "Digitech does not
stand for the broad proposition that organization and
manipulation of data through mathematical correlation is patent
ineligible - because that is 'the essence of software' and software
(i.e., the new use of a machine - a computer) is patent eligible
subject matter" (id. at 14--15);
(4) RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed.
Cir. 2017) is also inapposite because RecogniCorp 's claims
relate to "'standard encoding and decoding, an abstract concept
long utilized to transmit information,"' whereas Appellant's
6
Appeal2018-004394
Application 14/684,796
claims relate to an improved compression technology that the
Examiner "has acknowledged that the claims are both novel and
non-obvious (i.e., an advancement) over the prior art techniques
for compression and decompression" (id. at 15); and
(5) "[t]he steps [recited in Appellant's claims] cannot be performed
mentally" because the human mind does not (i) "operate in the
context of 'bits' ( e.g., a binary medium)," (ii) "generate blocks
for input data based on the number of bits required to represent
the input data," and (iii) "'compress' on a block-by-block basis"
(id. at 16-1 7) ( emphasis and capitalization omitted).
According to Appellant, the claims are directed to "an improved
technological process in computer technology (i.e., improved compression
and decompression techniques)" and, like the claims of Enfzsh and Visual
Memory LLC v. Nvidia Corp., 867 F.3d 1253 (Fed. Cir. 2017), Appellant's
"claims are directed to an improvement to computer functionality versus
being directed to an abstract idea." App. Br. 17. In particular, Appellant
argues "the claims are 'directed to' improved data compression techniques
in which the blocks that are compressed are arranged by determining when
two ( or more) pieces of input data can be represented with the same number
of bits and, if they can, then those two pieces of input data are included in
the same block and the blocks are then compressed on a block-by-block
basis" which "improves the amount of storage (or bandwidth) needed for the
original input data." Id. at 19--20.
In response, the Examiner takes the position that (1) like RecogniCorp
"the claims recite a very generic data compression and [Appellant] does not
allege a particularized application of data compression"; (2) "the claimed
invention preempts all uses of the recited abstract idea not only in specific
technologies, but through mathematical correlations"; and (3) in contrast to
7
Appeal2018-004394
Application 14/684,796
Visual Memory, "[t]he current claims does [sic] not meet the technical field
requirement because it merely recites ways [to perform] generic data
compression, wherein generic relates to terms that are not directed to a
specific data type." Ans. 5---6.
We disagree with the Examiner's positions. At the outset, we note the
Federal Circuit has interpreted Alice step 1 as asking "whether the claims are
directed to an improvement to computer functionality versus being directed
to an abstract idea," as recognized by Appellant. App. Br. 17 (quoting
Enfzsh, 822 F.3d at 1335). The Federal Circuit has also "emphasized that the
key question is 'whether the focus of the claims is on the specific asserted
improvement in computer capabilities (i.e., the self-referential table for a
computer database [in Enfzsh])." Visual Memory, 867 F.3d at 1258 (citing
Enfzsh, 822 F.3d at 1335-36).
Contrary to the Examiner's characterization, Appellant's claims do
not recite any "generic data compression." Instead, Appellant's claims seek
to improve the efficiency of data compression on a block basis where data is
divided into a plurality of pieces of frequency domain data and a plurality of
blocks is generated on the basis of the characteristics or properties of pieces
of frequency domain data such that separation positions of the blocks are
variable, or alternatively, such that the number of pieces of frequency
domain data included in each block is variable. Spec. ,r,r 6-9; Abstract.
According to Appellant's Specification, "[t]his [technique] makes it possible
to categorize pieces of data into some types [(i.e., different categories)], and
generate blocks on the basis of the types" and "more suitable for data
compression." Spec. ,r,r 17, 19.
8
Appeal2018-004394
Application 14/684,796
For example, Appellant's claim 21 recites a data compression
apparatus for compressing a plurality of pieces of input data to generate
compressed data, comprising a processing system configured to:
acquire input data that is separated into a plurality of
pieces;
determine that values of two adjacent ones of the
plurality of pieces of input data are representable by the same
required number of bits;
based on the number of bits required to represent values
of the plurality of pieces of input data, generate a plurality of
blocks such that each of the plurality of pieces of input data is
included in any one of the plurality of blocks, where the pieces
of input data for each one of the plurality of blocks is stored
using a number of bits for the corresponding block, wherein the
two adjacent ones of the plurality of pieces of input data are
included in the same one of the plurality of blocks that are
generated based on the determination, where pieces of input
data for at least two of the blocks of the plurality of blocks are
stored using a different number of bits;
compress, on a block basis, the pieces of input data
included in the generated blocks, thereby generating the
compressed data; and
output the compressed data to a memory storage medium.
App. Br. 24 (Claims App'x).
According to Appellant's Specification,
in terms of improvement of the compression ratio, a data
sequence is divided into a plurality of variable blocks, and each
block is compressed. Specifically, if the size of the data
compressed when a block is divided is smaller than the size of
the data compressed when the block is not divided, the block is
divided. Alternatively, in another embodiment, in terms not only
of improvement of the compression ratio, but also of, for
example, improvement of the processing speed, a data sequence
may be divided into a plurality of variable blocks, and the blocks
may be compressed by a predetermined compression method.
That is, the above technique may be used in order to reduce the
9
Appeal2018-004394
Application 14/684,796
processmg load for compressmg or decompressing the data
sequence.
Spec. ,r 100.
As recognized by Appellant, the claimed
techniques herein thus improve "processing speed" ( e.g., the
speed at which a data sequence is processed), reduce the
"processing load for compressing or decompressing" ( e.g.,
decrease the amount of work a processor must undertake to
achieve a result), and decrease the physical storage space
required to store a data sequence because of the "improvement
of the compression ratio." All of these aspects are improvements
in computing technology ... rooted in computing technology,
and thus improve the functioning of a computer.
Reply Br. 3; see Enfzsh, 822 F.3d at 1339 (holding the claimed "specific type
of data structure designed to improve the way a computer stores and
retrieves data in memory" is patent-eligible).
Further, Appellant's claims are not akin or analogous to the claims of
RecogniCorp. In RecogniCorp, the Federal Circuit held that a software-
based method for encoding/ decoding image data is an "abstract idea" in part
because the technological processes for encoding an image and then
decoding image data involved conventional data encoding/decoding
techniques. RecogniCorp, 855 F.3d at 1327. In contrast to RecogniCorp,
Appellant's claims provide a particular technique to improve the efficiency
of data compression "on a block basis."
Lastly, we are not persuaded that Appellant's particular advancement
in data compression/decompression technology on a "block-by-block" basis
can be performed solely in a person's mind. Under the "mental steps"
doctrine, a patent claim that can be performed solely in a person's mind is
considered an "abstract idea" and, as such, is patent-ineligible under§ 101.
10
Appeal2018-004394
Application 14/684,796
For example, in Benson, the Supreme Court held a number-conversion
method using a mathematical algorithm is patent-ineligible under § 101
because the conversion "can be done mentally" and "without a computer."
See Benson, 409 U.S. at 67. These "mental processes----or processes of
human thinking-standing alone are not patentable even if they have
practical application." In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009).
Similarly, in CyberSource, the Federal Circuit held CyberSource 's method
claim for detecting fraud in credit card transactions conducted over the
Internet between consumer and merchant is drawn to an unpatentable
"mental process" because "[ a ]11 of [its] method steps can be performed in the
human mind, or by a human using a pen and paper" and do not require a
computer. CyberSource, 654 F.3d at 1372. However, the Federal Circuit
also held that method claims "for calculating an absolute position of a GPS
receiver and an absolute time of reception of satellite signals" are patent-
eligible under § 101 because "the methods [] could not be performed without
the use of a GPS receiver." SiRF Tech., Inc. v. Int 'l Trade Comm 'n, 601
F.3d 1319, 1331-1332 (Fed. Cir. 2010).
Contrary to the Examiner's characterization, we do not discern how
specific steps of Appellant's advancement in data compression and
decompression technology recited in Appellant's independent claims 21 and
38--43 can be performed solely in a person's mind. As recognized by
Appellant, the human mind does not "generate [variable] blocks for input
data based on the number of bits required to represent the input data"
and "'compress' on a block-by-block basis." App. Br. 16-17. Moreover,
like the claims in SiRF Technology, the steps recited in Appellant's
11
Appeal2018-004394
Application 14/684,796
independent claims 21 and 38--43 require the use of a computer to process
input data in the claimed manner.
For these reasons, we agree with Appellant that claims 21--43 are not
directed to an abstract idea of "compressing data." Because Alice step 1 is
dispositive, we need not reach Alice step 2 (inventive concept). As such, we
do not sustain the Examiner's rejection of claims 21--43 under
35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting claims 21--4 3 under 3 5 U.S. C. § 101.
DECISION
As such, we reverse the Examiner's rejection of claims 21--43 under
35 U.S.C. § 101.
REVERSED
12