Ex Parte AYDIN et al

Patent Trial and Appeal Board

Jun 8, 2018

13563679 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/563,679 07 /31/2012 BurcuAYDIN
145169 7590 06/12/2018
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP (DXC)
379 Lytton Avenue
Palo Alto, CA 94301
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.
36MK-255222 6085
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
svpatents@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BURCU AYDIN and JAMES MARRON
Appeal2017-000099
Application 13/563,679
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134(a) of the
Examiner's Final Rejection of claims 1, 3-7, 9-14, 16, and 21-26, all claims
currently pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Appeal2017-000099
Application 13/563,679
STATEMENT OF THE CASE
Appellants' invention is directed to applying user-provided input
parameters "to a continuum canonical correlation (CCC) analysis of forecast
and response input series to generate a summary of those series." Spec.
i-f 19. Claim 1, reproduced below with the disputed limitations in italics, is
representative of the claimed subject matter:
1. A system comprising:
a processor;
user input instructions executable by the processor to:
receive variation of a value of a parameter
responsive to user input in a graphical user interface
displayed by a display device;
forecast and response summary instructions executable by
the processor to:
generate a summary of a plurality of standardized
forecast data series and a summary of a plurality of
standardized response data series using continuum
canonical correlation that is based on a first value of the
parameter;
update the summaries of the plurality of
standardized forecast and response data series using the
continuum canonical correlation that is based on a second,
different value of the parameter, as varied by the user input
in the graphical user interface, wherein the continuum
canonical correlation controls an amount of variance or
correlation in the summaries of the plurality of
standardized forecast and response data series and the
updated summaries of the plurality of standardized
forecast and response data series, wherein the first value
of the parameter increases the variance in the summaries
of the plurality of standardized forecast and response data
series, and the second, different value of the parameter
increases the correlation in the updated summaries of the
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plurality of standardized forecast and response data
series; and
display instructions executable by the processor to:
cause display of the summaries of the plurality of
standardized forecast and response data series and the
updated summaries of the plurality of standardized
forecast and response data series on the display device.
REJECTIONS
Claims 1, 3-7, 9-14, 16, and 21-26 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Final Act. 5.
Claims 1, 3-7, 9-14, 16, and 21-26 stand rejected under 35 U.S.C.
§ 101 as being directed to non-patent eligible subject matter. Final Act. 6.
Claims 1, 5, 9, 12, 16, 21, 22, 24, and 25 stand rejected under 35
U.S.C. § 103(a)(a) as being unpatentable over Mills et al. (US 2011/0029376
Al; published Feb. 3, 2011) ("Mills"), Crosswhite (US 6,611,726 Bl; issued
Aug. 26, 2003), and Yang (US 2010/0082425 Al; published Apr. 1, 2010).
Final Act. 7-8.
Claims 3, 4, 6, 10, 11, and 13 stand rejected under 35 U.S.C.
§ 103(a)(a) as being unpatentable over Mills, Crosswhite, Yang, and
Acharya et al. (US 2005/0256759 Al; published Nov. 17, 2005)
("Acharya"). Final Act. 15.
Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a)(a) as being
unpatentable over Mills, Crosswhite, Yang, and Ouimet et al. (US
2005/0234718 Al; published Oct. 20, 2005) ("Ouimet"). Final Act. 18.
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Claims 23 and 26 stand rejected under 35 U.S.C. § 103(a)(a) as being
unpatentable over Mills, Crosswhite, Yang, Acharya, and Samardzija et al.
(US 2008/0082299 Al; published Apr. 3, 2008) ("Samardzija"). Final Act.
19.
ANALYSIS
35 US.C. § 112 Rejection
The Examiner finds "the first value of the parameter increases the
variance in the summaries of the plurality of standardized forecast and
response data series, and the second, different value of the parameter
increases the correlation in the updated summaries of the plurality of
standardized forecast and response data series," as recited in claim 1, lacks
written description. Final Act. 5. Specifically, the Examiner finds the
Specification does not describe "an increase in variance and an increase in
correlation based on two different parameter values." Final Act. 5. The
Examiner finds varying a value between 0 and 1 and maximizing variation,
as described in the Specification, is "different from an increase in variance"
and does not support increasing a variation. Ans. 4--5.
Appellants contend the Specification discusses input parameters
varying from 0 to 1, which describe the claimed first and second parameters.
App. Br. 7 (citing Spec. i-f 19). Appellants also point to portions of the
Specification discussing maximizing the variation and maximizing the
correlation as describing the claimed parameters increasing the variance and
correlation, respectively. App. Br. 7 (citing Spec. i-fi-1 34--35). Specifically,
Appellants argue the Specification describes an "example of increasing the
variance," by setting the parameter equal to 1 to maximize variation,
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supporting the claimed first parameter increasing the variance, as well as
similar support for increasing the correlation in the updated summaries.
Reply Br. 4 (citing Spec. i-fi-134--35).
We are persuaded by Appellants' arguments. To satisfy the written
description requirement, a patent specification must describe the claimed
invention in sufficient detail that one skilled in the art can reasonably
conclude that the inventor had possession of the claimed invention. See,
e.g., Moba, B. V. v. Diamond Auto., Inc., 325 F.3d 1306, 1319 (Fed. Cir.
2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
"[T]he test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art,"
where "the specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the invention
claimed." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en bane). The exact level of detail required depends upon "the
nature and scope of the claims and on the complexity and predictability of
the relevant technology." Id. Factors for "evaluating the adequacy of the
disclosure" may include "'the existing knowledge in the particular field, the
extent and content of the prior art, the maturity of the science or technology,
[and] the predictability of the aspect at issue."' Id. (quoting Capon v.
Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005).
As cited by Appellants (App. Br. 7; Reply Br. 4), Paragraph 34 of the
Specification describes when the parameter "is equal to 1, the above formula
... seeks to find vectors wand v to maximize the variation within F* and
R *,"and Paragraph 35 describes when the parameter "is equal to 0, the CCC
formula ... seeks to find vectors w and v to maximize the correlation
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between F* and R *." We agree with Appellants that these passages describe
the parameter increasing the variation (e.g., maximizing the variation when
the parameter is equal to 1) and the parameter increasing the correlation
(e.g., maximizing the correlation when the parameter is equal to 0).
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 112, first
paragraph, rejection of independent claim 1, as well as claims 3-7, 9-14,
16, and 21-26, which were not separately argued.
35 US. C. § 1 OJ Rejection
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially excepted from patent eligibility under 35 U.S.C. § 101.
In the first step, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Examiner determines the claims are directed to "receiving
variations of parameter value, generating summaries of forecast and
response data series, updating those data series using continuum canonical
correlation, and then displaying those summaries," which is an abstract idea
because "[ r ]eceiving input values, performing calculations and providing
summaries to display is merely the manipulation of data for statistical
calculations." Final Act. 6.
Appellants argue the Examiner has oversimplified the claims, and has
not properly addressed the entirety of the claims. Reply Br. 5. Specifically,
Appellants argue that the claims do "not merely manipulate data to change it
from one form to a different form, but rather" the claims "specifically call[]
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for the display of the updated summaries that are produced according to the
inventive subject matter" claimed. App. Br. 9-10.
We are not persuaded by Appellants' arguments and agree with the
Examiner's determination that the claims are directed to receiving input
values, performing calculations with those values, and generating and
displaying summaries of the data. See Final Act. 6. Thus, the claims are
directed to the abstract idea of collecting information (e.g., receiving input
parameter values), analyzing the information (e.g., generating summaries
and updating those summaries using continuum canonical correlation), and
displaying certain results of the collection and analysis (e.g., displaying the
generated and updated summaries). See Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353-1354 (Fed. Cir. 2016) ("collecting information,
analyzing it, and displaying certain results of the collection and analysis" are
"abstract-idea processes" that "gather[] and analyz[ e] information of a
specified content, then display[] the results" without "any particular
assertedly inventive technology for performing those functions."); SAP Am.,
Inc. v. InvestPic LLC, No. 2017-2081, slip op. at 3 (Fed. Cir. May 15, 2018)
("selecting certain information, analyzing it using mathematical techniques,
and reporting or displaying the results" is abstract).
In the second step of Alice, we "consider the elements of each claim
both individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)). 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
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Id. (alteration in original) (quoting Mayo, 566 U.S. at 72-
73).
The Examiner determines the additional elements in the claims (e.g.,
graphical user interface functions, display device) do not provide meaningful
limitations to transform the abstract idea into a patent eligible application of
the abstract idea such that the claims amount to significantly more than the
abstract idea itself. See Final Act. 6-7; Ans. 5. Specifically, the Examiner
determines the additional claim elements utilize generic computer
components (e.g., display) that merely implement the abstract idea of
sharing data results automatically that perform purely generic computer
functions (e.g., sharing data results) that are routine, conventional, and well-
known in the art of computing technology (e.g., statistical analysis). Id.
Appellants argue that claimed additional elements (e.g., a graphic user
interface displayed by a display device using user input instructions and
display instructions) transform the claimed invention into a patent-eligible
application. App. Br. 11. Specifically, Appellants contend claim 1 recites a
system with a processor, user input instructions, forecast and response
summary instructions, and display instructions and is "not a 'mental
calculation and pen to paper actions."' Reply Br. 7; see App. Br. 13 ("claim
1 of the present application combines 'look and feel' elements with other
inventive interactions"). According to Appellants, claim 1 does not merely
perform a mathematical calculation, but rather "recites a specific system that
improves a relevant technology, in this case the technology of updating
summaries of standardized forecast and response data series using a specific
technique." Reply Br. 6. Citing to DDR Holdings, LLC v. Hotels.com, 773
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F.3d 1245 (Fed. Cir. 2014), Appellants also argue "'the claimed solution is
necessarily rooted in computer technology in order to overcome a problem'
specifically arising in the technological field of presenting forecast and
summary data." App. Br. 13-14.
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings and conclusions. See Final Act. 6-7; Ans. 5.
Appellants have not adequately explained how or provided persuasive
evidence to show why the claims add meaningful limits to practicing the
abstract idea. We agree with the Examiner that the claims do not improve
another technology or technical field, or functioning of the computer itself,
and do not have meaningful limitations beyond generally linking use of an
abstract idea to a technological environment. Ans. 5. Rather than reciting
additional elements that amount to "significantly more" than the abstract
idea, the pending claims, at best, add only "engines" (e.g., user input engine,
forecast and response summary engine, display engine) as simply
combinations of programming and hardware to execute the programming,
which "may share a common processor and memory." Spec. i-f 18. These
engines sharing common processor and memory describe generic computers
and functions and do not satisfy the inventive concept. See, e.g., DDR
Holdings, 773 F.3d at 1256 ("[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point." (citation
and internal quotation marks omitted)).
Although the claims describe employing a computer to perform the
Appellants' method (using graphical user interface functions), we agree with
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the Examiner that the recited steps describe a statistical calculation that "is
not restricted to any technology and can be performed with a combination of
mental calculation and pen to paper actions." Ans. 5; see, e.g., CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.").
Furthermore, Appellants' argument that the pending claims are patent
eligible because they are novel and non-obvious (see App. Br. 14) is
likewise not persuasive because it improperly conflates the requirements for
eligible subject matter(§ 101) with the independent requirements of novelty
(§ 102) and obviousness(§ 103(a)). Although the second step in the Alice
framework is termed a search for an "inventive concept," the analysis is not
an evaluation of novelty or non-obviousness. Alice, 134 S. Ct. at 2355. A
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. 66 at 78-79. Further,
"under the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369 (Fed. Cir.
2016).
The claims, when viewed as a whole, perform conventional
processing functions (receiving, analyzing, and displaying data) that courts
have routinely found insignificant to transform an abstract idea into a patent-
eligible invention. As such, the claims amount to nothing significantly more
than an instruction to implement the abstract idea on a generic computer -
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which is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 134 S. Ct. at 2360.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 1, 3-7, 9-14, 16, and 21-26.
35 US.C. § 103(a) Rejections
Issue: Did the Examiner err in finding that the combination of Mills,
Crosswhite, and Yang teaches or suggests "the continuum canonical
correlation controls an amount of variance or correlation in the summaries
of the plurality of standardized forecast and response data series and the
updated summaries of the plurality of standardized forecast and response
data series, wherein the first value of the parameter increases the variance in
the summaries of the plurality of standardized forecast and response data
series, and the second, different value of the parameter increases the
correlation in the updated summaries of the plurality of standardized
forecast and response data series," as recited in independent claim 9?
The Examiner relies on Crosswhite to teach the use of a continuum
canonical correlation to generate forecast or response data series (Final Act.
9 (citing Crosswhite col. 3, 11. 39-67)); Mills to teach the correlation of
forecast and response data series (Final Act. 9-10 (citing Mills i-f 65) ); and
Yang to teach updating of the summaries of standardized forecast and
response series based on different parameter values that increase the
variance and correlation (Final Act. 10 (citing Yang i-fi-135, 41, 49, 60, 121)).
The Examiner finds Yang's forecasting calculations using inputs for
optimization teaches updating the summaries based on different input
parameter values, and Yang's updating and rebalancing projections teaches
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updating the forecasts as the variables are changed or updated. Ans. 6
(citing Yang i-fi-1 60, 35). According to the Examiner, Crosswhite teaches the
use of canonical correlations in statistical analysis, and Yang teaches the
claimed functions performed by canonical correlations. Ans. 7.
Appellants contend Yang's changing optimization is based on
different inputs and operates differently from the claimed continuum
canonical correlation. App. Br. 20. Specifically, Appellants argue Yang
does not teach that the "optimization performed by the optimizer 310
involves a continuum canonical correlation that controls an amount of
variance or correlation in the summaries" of the forecast and response data
series, and specifically that the "first value of the parameter increases the
variance in the summaries" and the "second value of the parameter
increases the correlation in the updated summaries." Reply Br. 9; App. Br.
19-20.
We are persuaded by Appellants' arguments. As Appellants point out
(App. Br. 19-20; Reply Br. 9), Yang describes a system that "repetitively
updates the projections and rebalances the proportions that are used or
planned." Yang i1 3 5. Yang also describes the "optimizer 310 uses the
inputs to run optimization." Yang i160.
We find the Examiner has not provided sufficient findings that Yang
(e.g., optimization using inputs, and projections that are repetitively updated)
teaches or suggests the claimed continuum canonical correlation controlling
variance or correlation in the summaries, and specifically that a first
parameter value causes the variance in the summaries to increase and a
second parameter value causes the correlation in the updated summaries to
mcrease.
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Accordingly, we are constrained on the record before us to reverse the
Examiner's§ 103(a) rejection of independent claim 9, along with the
§ 103(a) rejection of additional independent claims 1and16, which recite
limitations commensurate in scope to the disputed limitation discussed
above, and dependent claims 5, 12, 21, 22, 24, and 25. See App. Br. 20.
Moreover, because the Examiner has not shown that the additional
references cure the foregoing deficiency regarding the rejection of the
independent claims 1, 9, and 16, we will not sustain the obviousness
rejections of dependent claims 3, 4, 6, 7, 10, 11, 13, 14, 23, 26. See App. Br.
21-23.
DECISION
The Examiner's 35 U.S.C. § 112, first paragraph, rejection of claims
1, 3-7, 9-14, 16, and 21-26 is reversed.
The Examiner's 35 U.S.C. § 101 rejection of claims 1, 3-7, 9-14, 16,
and 21-26 is affirmed.
The Examiner's 35 U.S.C. § 103(a) rejections of claims 1, 3-7, 9-14,
16, and 21-26 are reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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