Ex Parte Bhavnani et al

Patent Trials and Appeals Board

Mar 29, 2019

13827632 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/827,632 03/14/2013
126403 7590 04/02/2019
Lewis & Reese, PLLC
11625 Spring Cypress Rd., Suite A
Tomball, TX 77377
FIRST NAMED INVENTOR
Suresh K. Bhavnani
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.
l l 45-0033US 4034
EXAMINER
ZEMAN, MARY K
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
docketing@lewisreese.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SURESH K. BHA VNANI,
KEVIN E. BASSLER, and SHY AM VISWESW ARAN
Appeal2018-002036
Application 13/827,632 1
Technology Center 1600
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1 and 3-13
(Final Act. 2 2). Examiner entered a rejection under 35 U.S.C. § 101. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
1 Appellants identify "[t]he Board of Regents of the University of Texas
System" as the real party in interest (Appellants' May 5, 2017 Appeal Brief
(Br.) 3). Appellants further state that "[t]he University of Houston, the
University of Pittsburgh, and the U.S. Government may also have rights in
the present invention, and may also be real parties in interest" (id.).
2 Examiner's June 8, 2016 Final Office Action.
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Application 13/827,632
Appellants' disclosure "relates to computer-implementable algorithms
for finding significant patterns in large bipartite networks" (Spec. 3 ,r 3).
According to Appellants, a force-directed algorithm is used for generating a
graphical representation of the network (id. ,r 9 (emphasis added)). As
Appellants explain:
(Id.)
As is known,force-directed algorithms are a class of
algorithms for drawing networks that reveal the relationship
between the nodes in an aesthetically pleasing and informative
way. Generally speaking, a force-directed algorithm positions
the nodes (i.e., the subjects and the SNPs) in a two-dimensional
or three-dimensional space by assigning forces to each node
and pulling them closer together if they share relatively many
edges, or pushing them further apart if they do not. This
method is repeated iteratively until the system comes to an
equilibrium state when node positions no longer change from
one iteration to the next. The resulting layout is approximate,
and designed to enable a researcher to quickly comprehend the
overall relationship ( clustered, nested, random, etc.) among the
nodes. . . . Examples of force-directed algorithms that are
useful are the Fruchterman-Reingold and Kamada-Kawai
algorithms.
Appellants' claim 1 is representative and reproduced below:
1. A method for analyzing potential associations in a data set,
compnsmg:
(a) receiving the data set at a computer system, wherein the data
set comprises a plurality of data points each represented by one
of a plurality of conditions, a plurality of potential causes of
those conditions, and selective connections between the
plurality of data points and the plurality of potential causes;
(b) calculating in the computer system for each potential cause
a connection imbalance which quantifies the degree to which
3 Appellants' March 14, 2013 Specification.
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each potential cause is unequally connected to the plurality of
conditions;
( c) calculating in the computer system
(i) a partitioning of the data set which quantifies the degree
to which the data points and potential causes are
clustered into partitions by the selective connections, and
(ii) a partition imbalance in the data set which quantifies the
degree to which the proportion between conditions is
different between the partitions in the data set;
( d) comparing the partitioning and the partition imbalance to
thresholds;
( e) if step ( d) indicates either low partitioning or low partition
imbalance, removing at least one potential cause with the
lowest connection imbalance from the data set, and returning to
step (c);
( f) if step ( d) indicates both high partitioning or high partition
imbalance, processing the data set with a force-directed
algorithm in the computer system to produce a graphical
network; and
(g) displaying the graphical network on an output device
coupled to the computer system.
(Br. 22.)
Claims 1 and 3-13 stand rejected under 35 U.S.C. § 101.
ISSUE
Does the preponderance of evidence of record support Examiner's
finding that Appellants' claimed invention is directed to patent ineligible
subject matter?
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PRINCIPLES OF LAW
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 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 Bankint'l, 573 U.S.
208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step 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 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. Kappas, 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 (Gottschalkv. Benson, 409 U.S. 63, 69 (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.
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252, 267---68 (1853))); and manufacturing flour (Gottschalk, 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
Supreme 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 176; 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 Supreme 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. (citing Gottschalk and Parker); 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 tum 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 ( 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. ( 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.
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The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) ("Revised Guidance"). Under that
guidance, 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
See 84 Fed. Reg. 54--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 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.
See 84 Fed. Reg. 51.
ANALYSIS
Applying the Revised Guidance to the facts on this record, we find
that Appellants' claims are directed to patent-ineligible subject matter. The
Revised Guidance instructs us first to determine whether any judicial
exception to patent eligibility is recited in the claim. The Revised Guidance
identifies three judicially-excepted groupings identified by the courts as
abstract ideas: (1) mathematical concepts, (2) certain methods of organizing
human behavior such as fundamental economic practices, and (3) mental
processes.
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Examiner finds that Appellants' claimed invention is "directed to
methods of analyzing potential associations present in a data set, wherein
information is received, compared through several steps using computer
system elements, including a forced-directed algorithm, and processed into a
graphical network which is then displayed" (Ans. 2; see also id. at 3). Thus,
Examiner finds that Appellants' claimed method encompasses an abstract
idea (id. at 2). We agree with Examiner that claim 1 recites patent ineligible
subject matter. More specifically, Examiner finds that Appellants' claim 1
recites the following limitations: "(b) calculating ... for each potential
cause a connection imbalance ... ," "( c) calculating (i) a partitioning ...
which quantifies the degree to which the data points and potential causes are
clustered into partitions, and (ii) a partition imbalance in the dataset which
quantifies the degree to which the proportion between conditions is different
... ," "(d) comparing the partitioning and the partition imbalance to
thresholds,""( e) removing at least one potential cause ... " of "either low
partitioning or low partition imbalance," and "(f) processing the data set
with a forced-directed algorithm ... to produce a graphical network ... "
(see Br. 22; see also Ans. 3). These limitations simply require manipulating
data mathematically, which, without more, is an abstract idea. Intellectual
Ventures I, 850 F.3d at 1340; see also Digitech Image Techs., LLC. v. Elecs.
For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) ("Without
additional limitations, a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible").
For the reasons discussed above, Appellants' claimed invention is
directed to mathematical concepts and mental processes, which are among
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the groupings identified in the revised Guidance, and thus an abstract idea
(see Final Act. 2 (Examiner finds that Appellants claimed "methods
encompass ... an abstract idea"); see also Ans. 2).
Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. "If a
claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific
purpose, the claimed method is nonstatutory." Parker v. Flook,
437 U.S. 584, 595[] (1978) (internal quotations omitted).
Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014).
Having determined that Appellants' claim 1 is directed to a judicial
exception, the Revised Guidance directs us to next consider whether the
claims integrate the judicial exception into a practical application. On this
record, Appellants' claim 1 comprises the steps of:
(a) receiving [] data set at a computer system, wherein the data
set comprises a plurality of data points each represented by one
of a plurality of conditions, a plurality of potential causes of
those conditions, and selective connections between the
plurality of data points and the plurality of potential causes
and "(g) displaying the graphical network on an output device coupled to
the computer system" (Br. 22). We find, however, that analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and outputting the results of such an analysis or calculation to a
user, i.e. by a display, do not amount to significantly more than the abstract
idea because they are insignificant post-solution activities. See Elec. Power
Grp., 830 F.3d at 1353-54. Similarly, the receiving, or data collection, step
of Appellants' claim, does not amount to significantly more than the abstract
idea because it is an insignificant pre-solution activity. See Mayo 566 U.S.
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at 79 (quoting Flook, 437 U.S. at 590) ("Purely 'conventional or obvious'
"[pre]-solution activity' is nonnally not sufficient to transform an
unpatentable law of nature into a patent-eligible application of such a law").
In addition, the use of a generic computer to perform generic computer
functions that are "well-understood, routine, conventional activities"
previously known in the industry is not enough to transform the abstract idea
into a patent-eligible invention. See Alice, 573 U.S. at 225-26. In sum,
Appellants' claim and Specification relates "to computer-implementable
algorithms for finding significant patterns in large bipartite networks" as
distinguished from a technical improvement for achieving or applying that
result (see Spec. 1; see also Br. 22). Cf Diehr, 450 U.S. at 179 n.5 (the
claims in Diehr recited a method for operating a rubber-molding press
including the step of "opening the press automatically when a said
comparison [ of calculated cure time vs. elapsed time] indicates
equivalence." Thus, the recited mathematical equation had the practical
application of automatically operating a press). Therefore, on this record,
we conclude that the ineligible subject matter in Appellants' claim 1 is not
integrated into a practical application.
Having determined that the judicial exception is not integrated into a
practical application, the Revised Guidance requires us to evaluate the
additional elements individually and in combination to determine whether
they provide an inventive concept, such as a specific limitation beyond the
judicial exception that is not well-understood, routine, conventional in the
field, or simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. See 84 Fed. Reg. 51. In this regard, we note that
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Appellants' contend that their method makes use of a force-directed
algorithm, wherein the
claimed subject matter, as well as providing novel manners of
iteratively reducing the network (using [ connection imbalance
(CI)4]) and determining potential statistical relevance using
both modularity (M)[5J and modular imbalance (MI)[6J, provides
a particularized type of graphical output using force-directed
algorithms that marks a significant improvement in the
detection of biomarkers for disease, or causes of conditions
more generally.
(Br. 1 7.) Thus, Appellants contend:
Information is statistically processed and reduces using a novel
combination of statistical tools (CI, M, MI), and outputs a
graphical network using a force-directed algorithm. This
doesn't merely output processed information to a display; it
outputs information in a unique manner "to enable a researcher
4 Appellants disclose that "[t]he degree of connection imbalance ... can be
computed using Pearson's chi-squared test, which is a well-known statistical
test of association between two or more nominal variables" (Spec. ,r 14 ).
5 Appellants disclose that "[t]he modularity of the network Mis the
maximum modularity of all possible partitionings. . . . However, this is
often not possible because of the large number of possible partitions[,]
therefore, [a]pproximate solutions are ... typically used" (Spec. ,r 34). "One
way to obtain such an approximate solution is to find an approximate
modularity maximizing partitioning through an iterative bisectioning process
that first considers partitioning the set of nodes into two modules, and then
proceeds by iteratively considering further partitioning each module into two
modules, etc." (id. ,r 35). According to Appellants "[t]he initial bisectioning
can be done by first making a guess at the best partitioning and then refining
the guess ... [ t ]his guess at the best bisectioning can be improved using
Kernighan-Lin tuning, such as is described in 'Kernighan-Lin Algorithm"'
(id. ,r,r 35-36).
6 Appellants disclose that "[ m ]odule imbalance can be calculated with
Cramer's V," which "is a measure of association between two nominal
variables, and is calculated using the ... formula ... V=v'(x2/(n1 (k-l )))"
(Spec. ,r 42).
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to quickly comprehend the overall relationship ( clustered,
nested, random, etc.) among the nodes."
(Br. 16 ( citing Spec. ,r 9) ( emphasis added).) In sum, Appellants contend
that they do "not claim 'an abstract idea'," but instead claim the "use of
force-directed graphing techniques in combination with CI, M, and MI
measurements[, which] clearly add significantly more to the improvement of
computerized technology in the analysis of bipartite networks" (Br. 19). We
are not persuaded. As indicated above, each manipulative step of
Appellants' claimed invention was known in the art. Thus, there is no
evidence on this record that these manipulative steps were not well-
understood, routine, conventional activities previously known to the
industry.
Our reviewing court has established that collecting, classifying,
storing, and organizing data, regardless of whether such data manipulations
are limited to a particular technological environment, is an abstract idea and,
without more ( which cannot be provided by generic components or steps
used in their routine and customary ways), is not patent eligible. See, e.g.,
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. 2018) (claims
directed to manipulating data for selective display using routine and
conventional instructions/ programming not patent-eligible); SAP America,
Inc. v. Investpic, LLC, 890 F.3d 1016, 1018 (Fed. Cir. 2018) (claims directed
to "nothing but a series of mathematical calculations based on selected
information and the presentation of the results of those calculations" is
merely an advancement in an abstract idea and patent-ineligible, even
though physical things like databases and processors are claimed); Electric
Power Grp., 830 F.3d at 1350 ("claim[s] [to] systems and methods for
performing real-time performance monitoring of an electric power grid by
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collecting data from multiple data sources, analyzing the data, and
displaying the results" was not patent-eligible even though limited to a
particular technological environment); In re TL! Communications LLC
Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016) (collecting and organizing
data in the form of digital images is abstract and patent ineligible, and using
computer systems in their generic ways do not add an inventive concept);
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
776 F.3d 1343 (Fed. Cir. 2014) (extracting data from documents,
recognizing information therefrom, and storing the information is abstract).
We recognize Appellants' contention that "Research Corp. Tech. v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) is instructive" (Br. 17
(footnote omitted). According to Appellants, similar to Research Corp.,
Appellants' "use of computer systems to correlate patients with disease ( or
causes with conditions) is substantially improved over the use of outputting
data in any mere form" (id. (emphasis omitted)). We are not persuaded.
Notwithstanding Appellants' contention to the contrary, the claims at issue
in Research Corp., focused not on asserted uses to which existing computer
capability could be put, but instead on a specific improvement in the
computer's capability, specifically the production of "higher quality halftone
images while using less processor power and memory space." See Research
Corp., 627 F.35 at 865. We do not find, and Appellants have not identified,
such a technological advance, i.e., "using less processor power and memory
space," in Appellants' claimed invention.
We are also not persuaded by Appellants' contentions regarding DDR
Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014)
(see Br. 18). Notwithstanding Appellants' contentions to the contrary, the
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Court in DDR Holdings determined that the invention was "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks" and that the claimed invention
did not simply use computers to serve a conventional business purpose.
DDR Holdings, 773 F.3d at 1257. Appellants fails to establish an
evidentiary basis on this record to support a finding that their claimed
addresses a similar problem as what was at issue in DDR Holdings (cf Br.
18).
Lastly, we note that "[w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo [Alice] framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Id. Therefore, we are not persuaded by Appellants' contentions
regarding preemption (Br. 18-19).
CONCLUSION
The preponderance of evidence of record supports Examiner's finding
that Appellants' claimed invention is directed to patent ineligible subject
matter. The rejection of claim 1 under 35 U.S.C. § 101 is affirmed. Claims
3-13 are not separately argued and fall with claim 1.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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