Ex Parte Chen et al

Patent Trial and Appeal Board

Oct 17, 2018

14435394 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/435,394 04/13/2015
27683 7590 10/19/2018
HA YNES AND BOONE, LLP
IP Section
2323 Victory A venue
Suite 700
Dallas, TX 75219
FIRST NAMED INVENTOR
Dingding Chen
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.
7523.468US01 2719
EXAMINER
SIEK, VUTHE
ART UNIT PAPER NUMBER
2851
NOTIFICATION DATE DELIVERY MODE
10/19/2018 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DINGDING CHEN,
CHRISTOPHER MICHAEL JONES,
DAVID L. PERKINS, and LI GAO
Appeal2018-000069
Application 14/435,394
Technology Center 2800
Before GEORGE C. BEST, A VEL YN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-15. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 In this Decision, we refer to the Final Office Action dated October 14,
2016 ("Final Act."), the Appeal Brief filed April 13, 2017 ("Appeal Br."),
the Examiner's Answer dated August 11, 2017 ("Ans."), and the Reply Brief
filed October 3, 2017 ("Reply Br.").
2 Appellant is the Applicant, Halliburton Energy Services, Inc., which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 2.
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Application 14/435,394
The subject matter of the claims on appeal relates to a method for
designing integrated computational elements ("ICE") that utilizes a genetic
algorithm to evolve the thickness of ICE layers using a constrained multi-
objective function. Spec. 1, 11. 5-8. ICE structures are used in optical
computing devices to perform calculations, as opposed to the hardwired
circuits of conventional electronic processors. Id. at 4, 11. 4--5. When
electromagnetic radiation interacts with a substance, unique physical and
chemical information about the substance is encoded in the electromagnetic
radiation that is transmitted through or radiated from the sample. Id. at 11. 5-
8. This information is often referred to as the substance's spectral
"fingerprint." Id. at 11. 8-9. The ICE structure extracts the spectral
fingerprints of multiple characteristics or analytes within a substance and,
using multivariate regression techniques, directly converts that information
into a detectable output regarding the overall properties of the substance. Id.
at 11. 9-12.
Claim 1, reproduced below from the Appeal Briefs Claims Appendix,
is illustrative of the claims on appeal.
1. A method to design an integrated computation element
("ICE") structure, the method comprising:
defining at least one characteristic of a proposed ICE
structure comprising a plurality of ICE layers;
selecting an ICE structure as defined by the at least one
characteristic;
utilizing a genetic algorithm to optimize a thickness of
the plurality of ICE layers, thereby calculating one or more
optimized designs; and
outputting the one or more optimized designs.
Appeal Br. 13 (Claims App.).
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Application 14/435,394
REJECTIONS
The Examiner maintains3 the following rejections on appeal:
Rejection 1: Claims 1-7 and 9-15 under 35 U.S.C. § 101 as directed
to patent ineligible subject matter (Ans. 3); and
Rejection 2: Claims 1, 2, 4--8, and 10-15 under pre-AIA 35 U.S.C.
§ I02(b) as anticipated by Werner et al. (US 2011/0085232 Al, published
April 14, 2011) ("Werner") (Ans. 10).
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections .... ")). After considering the
evidence presented in this Appeal and each of Appellant's arguments, we are
not persuaded that Appellant identifies reversible error except where
otherwise explained below. Thus, where we affirm the Examiner's
3 The Examiner has withdrawn the rejection of claims 1-19 under 35 U.S.C.
§ 101 (Final Act., 2), the rejection of claims 1, 2, 4, and 13 under 35 U.S.C.
§ 112, second paragraph (Final Act., 4), the rejection of claims 1-8 and 10-
15 under pre-AIA 35 U.S.C. § I02(b) as anticipated by Pelizzo
(US 2010/0239822 Al, published September 23, 2010) ("Pelizzo") (Final
Act., 18), and the rejection of claim 9 under pre-AIA 35 U.S.C. § I03(a) as
obvious over Pelizzo or Werner in view of Shakespeare et al.
(US 2012/0010841 Al, published January 12, 2012) ("Shakespeare") (Final
Act., 32). Ans. 2.
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Application 14/435,394
rejection, we do so for the reasons expressed in the Final Office Action and
the Answer. We add the following.
Rejection 1
Appellant argues the claims subject to Rejection 1 as a group. See
Appeal Br. 4--8. We confine our discussion to claim 1, which we select as
representative. 37 C.F.R. § 4I.37(c)(l)(iv).
A two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101 is set forth
in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S.
66, 78-79 (2012), and further explained in Alice Corp. v. CLS Bank
International, 134 S. Ct. 2347 (2014). The first step requires determining
whether the claims at issue are directed to a patent-ineligible concept, such
as an abstract idea. See Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at
7 6-77). The second step requires examining "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, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 72, 79).
We are not persuaded that the Examiner is overgeneralizing the claims
as mere "mathematical procedures, operations and computations based on
data provided" and has not considered the claims as a whole, as Appellant
contends. Appeal Br. 7. Rather, the Examiner properly considered the
elements of claim 1 as a whole under the two-step Alice analysis. Final
Act. 5; Ans. 3---6. The Examiner explains that the claims are directed to an
abstract idea of "optimizing a thickness of the ICE layers or optimizing the
design of [an] ICE structure utilizing a genetic algorithm without additional
elements that are sufficient to amount to significantly more." Final Act. 5.
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Application 14/435,394
The Examiner further explains that claim 1 's steps of defining at least one
characteristic and selecting an ICE structure are mere extra solution activity
of data gathering for the algorithm procedures, operations, and
computations, and the step of outputting the one or more optimized designs
is post solution activity of displaying the results of those mathematical
procedures, operations, and computations, and thus do not amount to
significantly more than the abstract idea. Id.; Ans. 3, 5; see also In re Bilski,
545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd sub nom. Bilski v.
Kappas, 130 S. Ct. 3218 (2010) (characterizing data gathering steps as
insignificant extra-solution activity); Bilski, 130 S. Ct. at 3230 ( quoting
Diamond v. Diehr, 450 U.S. 175, 191-92 (1981) ("the prohibition against
patenting abstract ideas 'cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment' or adding
'insignificant postsolution activity."').
Appellant argues that the claims are patent eligible because the
present claims are directed to improvements in computer-related technology
like those found patent eligible in McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal Br. 4--6. Contrary to
Appellant's contention, the claims here are distinguishable from those the
Federal Circuit determined to be patent eligible in McRO. The claimed
improvement in McRO was in allowing computers to produce "accurate and
realistic lip synchronization and facial expressions in animated characters"
that previously could only be produced by human animators, unlike here,
where the claimed improvement is in a mathematical technique-reducing
the required computing requirement, power, and cost by using a simplified
computational algorithm. Spec. 16, 11. 11-25. On this record, Appellant has
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not sufficiently explained how the claimed method improves computer-
related technology by allowing a computer to perform a function not
previously performable by a computer. See Alice, 134 S.Ct. at 2358-59; see
also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). 4
In fact, Appellant's Specification admits that conventional ICE design
optimization approaches are performed by a computer, albeit in a less
efficient manner. Spec. 1, 1. 29-2, 1. 11, 16, 11. 11-28.
Moreover, Appellant has not adequately explained how the selection
of an ICE design through application of a genetic algorithm (i.e., a
mathematical algorithm) that optimizes the thickness of ICE layers "goes
well beyond a mere mathematical concept." Appeal Br. 7.
Appellant argues that the claims do not seek to preempt or tie up any
judicial exception, and therefore are patent eligible. Appeal Br. 8.
Appellant's argument is not persuasive because although "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). Additionally,
where claims are deemed to recite only patent ineligible subject matter under
the two-step Alice framework, as the Examiner has done here, "preemption
concerns are fully addressed and made moot." Id.
4 The present claims are distinguishable from those found patent eligible in
Enfzsh because they focus on tasks for which computers are invoked merely
as a tool, not on an improvement to computer functionality itself. Enfzsh,
822 F.3d at 1336 ("the plain focus of the claims is on an improvement to
computer functionality itself[, embodied in the self-referential table,] not on
economic or other tasks for which a computer is used in its ordinary
capacity.")
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We have carefully considered Appellant's arguments, but we are not
persuaded of reversible error in the Examiner's§ 101 analysis. Accordingly,
we sustain the rejection of claims 1-7 and 9-15.
Rejection 2
According to Appellant, an ICE structure is a specific type of optical
element that extracts the spectral data of multiple characteristics within a
substance and, using regression techniques, directly converts that
information into a detectable output regarding the overall properties of the
sample. Appeal Br. 9 (citing Spec. 3, 1. 28-5, 1. 25). Appellant argues that
Werner's cited optical element is not an ICE structure as defined by
Appellant, nor would one ordinarily skilled consider it as such because it is
not capable of performing any regression-based analysis. Appeal Br. 1 O; see
also Reply Br. 4 (Spec. 5, 11. 20-25 ( citing US Patent Nos. 6,198,531,
6,529,276, and 7,920,258)).
Appellant's argument is persuasive of reversible error. According to
Appellant's Specification, when electromagnetic radiation interacts with a
substance, unique physical and chemical information about the substance is
encoded in the electromagnetic radiation that is reflected from, transmitted
through, or radiated from the sample. Spec. 4, 1. 5-8. This information is
often referred to as the substance's spectral "fingerprint." Id. at 11. 8-9. An
ICE structure is an optical filter that extracts the information of the spectral
fingerprint of multiple characteristics or analytes within a substance, and
using regression techniques, converts that information into a detectable
output regarding the overall properties of a sample. Id. at 11. 9-12. For
example, if the sample is a gasoline sample, and if the regression embodied
by the ICE structure (filter) is an octane regression vector for that particular
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gasoline type, the intensity of the light output from the filter is directly
related to the octane of the sample. See US 6,198,531 ("US '531 "), issued
March 6, 2001, 7:40-44; see also Spec. 5, 1. 23 (citing US '531). Although
Werner describes an optical element, for example a multi-band optical
element, and teaches that the function of its optical element may be
optimized using a genetic algorithm to obtain desired optical properties
(Werner ,r,r 3-7, 19), on this record the Examiner fails to identify sufficient
factual evidence that Werner's optical element is an ICE structure-an
optical element that extracts spectral data of multiple characteristics within a
sample and uses regression techniques to transform that information into a
detectable output regarding the overall properties of the sample.
The Examiner bears the initial burden of presenting a prima facie case
ofunpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). To
serve as an anticipatory reference, "the reference must disclose each and
every element of the claimed invention." In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009). For the reason discussed above, on this record before us,
we are persuaded that the Examiner has failed to meet the burden to
establish that claims 1, 2, 4--8, and 10-15 are anticipated by Werner.
Accordingly, we do not sustain the rejection of claims 1, 2, 4--8, and 10-15.
DECISION
The rejection of claims 1-7 and 9-15 under 35 U.S.C. § 101 is
affirmed.
The rejection of claims 1, 2, 4--8, and 10-15 under 35 U.S.C. § 102(b)
as anticipated Werner is reversed.
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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 )(1 )(iv).
AFFIRMED-IN-PART
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