Ex Parte Carter et al

Patent Trial and Appeal Board

Mar 26, 2018

13609642 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/609,642 09/11/2012
75916 7590 03/28/2018
IBM AUS IPLAW (GLF)
c/o Garg Law Firm, PLLC
4521 Copper Mountain Lane
Richardson, TX 75082
FIRST NAMED INVENTOR
John Bruce Carter
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.
A US920l20240US1 1646
EXAMINER
NAOREEN, NAZIA
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
dpandya@garglaw.com
uspto@garglaw.com
garglaw@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN BRUCE CARTER, COLIN KIMM DIXON, WESLEY
MICHAEL PELTER, BRENT EDWARD STEPHENS, and JAMES
XENIDIS
Appeal2017-009038
Application 13/609,642
Technology Center 2400
Before THU A. DANG, ERIC S. FRAHM, and JOHNNY A. KUMAR,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1- 20, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2017-009038
Application 13/609,642
STATEMENT OF THE CASE
The Claimed Invention
According to Appellants, the claimed invention relates generally to
"organizing data," and more particularly to "compacting a non-biased results
multi set." Spec. i-f 1. Claims 1, 7, and 15 are independent. Claim 1 is
illustrative of the invention and the subject matter of the appeal, and reads as
follows:
1. A computer implemented method for compacting a
non-biased results multiset, the method comprising:
identifying a set of references and a multiset of
values, wherein the multiset of values comprises a
plurality of sets of values, wherein a first set of values
and a second set of values together occupy an
uncompacted amount of storage space in a computer
usable data storage device, wherein the first set of
values and the second set of values in the plurality of
sets of values each includes a first value, and wherein
a first reference in the set of references refers to the
first set of values and a second reference in the set of
references refers to the second set of values;
performing a first operation to re-arrange, using
a processor and a memory, the values in the first set
of values to form a permuted first set of values;
performing a second operation to re-arrange the
values in the second set of values to form a permuted
second set of values, wherein the first operation and
the second operation cause the first value to be stored
in a data storage location in the first set of values, and
wherein the second set of values reuses the location;
and
reducing a utilization of the uncompacted
storage space in the computer usable data storage
device by compacting the multi set, to form a
compacted multiset, by overlaying the permuted first
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Application 13/609,642
and second sets of values in a portion such that the
permuted first set of values and the permuted second
set of values together occupy a smaller amount of
storage space in the computer usable data storage
device as compared to the uncompacted amount of
storage space occupied in the computer usable data
storage device by the first set of values and the second
set of values.
The Rejection on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter.
ISSUE
The principal issue before us is whether the Examiner erred in finding
that the claimed "computer implemented method for compacting" data
(claim 1) is directed to patent ineligible subject matter.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made, but did not make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are unpersuaded
the Examiner has erred. We adopt as our own the findings and reasons set
forth in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following for highlighting and emphasis.
Rejection Under 35 USC§ 101
Appellants argue the Examiner erred in concluding the claims are
directed to an abstract idea and, therefore, constitute patent ineligible subject
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Application 13/609,642
matter. App. Br. 10-12. 1 However, Appellants merely contend "reduction
of computer usable storage space by data manipulation is neither a human
activity nor a function of generic hardware elements." Id. at 11. In
particular, Appellants contend "[t]he claimed invention reduces the
utilization of the data storage space in a computer usable data storage device
using a novel data manipulation." Id. Appellants further contend "the claim
also includes substantially more than abstract subject matter," and directs
our attention to Enfzsh. Id. at 12, citing Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1339 (Fed. Cir. 2016).
As a preliminary matter, we note Appellants' contention consists of
repeating the claim language (App. Br. 10), and mere conclusory statements
that the claim language "is neither a human activity nor a function of generic
hardware elements," without any factual support. App. Br. 11. Our
reviewing court guides that such mere attorney conclusory statements which
are unsupported by factual evidence are entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984); and Ex parte Belinne, 2009 WL 2477843, at *3A4
(BP AI Aug. 10, 2009) (informative).
Nevertheless, based on the record before us, we are not persuaded of
Examiner error.
Under 35 U.S.C. § 101, the Supreme Court has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
1 Appellants argue all claims as a group for purposes of the ineligible subject
matter rejection, and we choose claim 1 as representative of the group.
37 C.F.R. § 41.37(c)(l)(iv).
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Appeal2017-009038
Application 13/609,642
Bankint'l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice,
reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289,
1300 (2012), "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 is
to "determine whether the claims at issue are directed to one of those patent-
ineligible concepts," such as an abstract idea, as the Examiner concludes in
this case. If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered "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, 132 S. Ct. at 1297).
Here, the Examiner concludes the claims are directed to "an abstract
idea of calculating a compacted set of values by rearranging and permuting a
multiset of values which is an example of organizing human activities and
relationships." Final Act. 2. According to the Examiner,
Abstract ideas identified by the courts by way of example
including certain methods of organizing human activities and
fundamental economic practices. The types of concepts courts
have found to be abstract ideas are shown by cases which are
intended to be illustrative and not limiting, such as: (i)
"comparing new and stored information and using rules to
identify options" Smartgene Inc vs Advanced Biological Labs,
555 Fed. Appx. 950 (Fed. Cir. 2014), (ii) "using categories to
organize, store and transmit information" Cyberfone Sys. V.
CNN Interactive Grp., 558 Fed. Appx. 988 (Fed. Cir. 2014)
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and (iii) "processing information through a clearinghouse"
Dealertrackinc. V. Huber, 674 F. 3d 1315 (Fed. Cir. 2012).
Id.
Thus, the Examiner finds, "[t]he claims are directed to an abstract idea
because they contain data collecting steps along with calculating a
mathematical algorithm to determine a result." Ans. 2. We agree.
In particular, as Appellants point out, the claims are directed to "data
manipulation." App. Br. 11. Our reviewing court has held that abstract
ideas include manipulation of data. Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) (finding "gathering and analyzing
information of a specified content," to be directed to an abstract idea). Here,
the "overlaying" of data to reduce utilization of storage space is similar to
the abstract idea of manipulating information discussed in Elec. Power.
Additional analogous cases where the Federal Circuit has found claims
involving no more than data collection and/or manipulation to be directed to
abstract ideas include Versata Development Group, Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1333 (Fed. Cir. 2015) ("determining a price, using
organizational and product group hierarchies"), and Digitech Image
Technologies, LLC v. Electronics For Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (employing "mathematical algorithms to manipulate
existing information to generate additional information").
Furthermore, abstract ideas have been identified by the courts by way
of example, including fundamental economic practices, certain methods of
organizing human activities, an idea 'of itself,' and mathematical
relationships/formulas. Alice, 134 S. Ct. at 2355-56. Appellants' attention
is also directed to CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
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13 66, 13 71 (Fed. Cir. 2011) (holding that a method for verifying the validity
of a credit card transaction over the Internet to be nonstatutory as an abstract
idea capable of being performed in the human mind or by a human using a
pen and paper). Here, we are unpersuaded that the Examiner erred in
finding "[ d]ata manipulations are methods of organized human activity
which incorporate mathematical algorithms to determine compaction of
data." Final Act. 3.
Thus, we agree with the Examiner that the claims are directed to an
abstract idea under step one of Alice.
As to Alice step two, the Examiner finds, and we agree, Appellants'
"data manipulation is determined using a mathematical algorithm executed
on generic hardware elements." Ans. 2. As the Examiner explains, "[t]he
mathematical algorithm ... is not applied to a computing system in a manner
which would be an improvement to existing data manipulation systems."
Ans. 3. That is, "the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception." Id. at
4.
Although Appellants contend "the claim also includes substantially
more than abstract subject matter," and directs our attention to Enfzsh (App.
Br. 12), we are unpersuaded. Here, the claims do not improve "the way a
computer stores and retrieves data in memory." Enfzsh, 822 F.3d at 1339.
Rather, the claim merely recites the steps of identifying data and performing
re-arrangement and overlaying of data "using a processor and a memory"
(claim 1 ). We agree with the Examiner that "the additional elements in the
claim language are data transmitting steps that don't significantly amount to
more than an abstract idea." Final Act. 3.
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We note that, in the Reply Brief, Appellants provide additional
arguments that the claims are similar to the claims in McRO. Reply Br. 5---6
(citing McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016)). In particular, Appellants contend the claims solve specific
problems by "minimizing a utilization of data storage in computer usable
data storage devices." Id. However, the present claims do not recite a
specific improvement to the way computers operate and Appellants do not
present evidence to establish these claims recite a specific improvement to
the computers. Unlike the claims in McRO, the claims in the present
application fail to recite the technical details that describe the alleged
improvement of the technical process of minimizing the utilization of data
storage.
Thus, on this record, we sustain the ineligible subject matter rejection
of claims 1-20.
DECISION
We affirm the Examiner's rejection of claims 1-20.
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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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