Ex Parte Friedlander et al

Patent Trial and Appeal Board

Mar 7, 2018

14078849 (P.T.A.B. Mar. 7, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/078,849 11/13/2013 Robert R. Friedlander END920120007US6 5279
80878 7590 03/09/2018
Brown & Michaels (END)
c/o Brown & Michaels, PC
118 North Tioga Street
Suite 400
Ithaca, NY 14850
EXAMINER
NEGIN, RUSSELL SCOTT
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
03/09/2018 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):
docket@bpmlegal.com
lwood@bpmlegal.com
twood@bpmlegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT R. FRIEDLANDER and JAMES R. KRAEMER1
Appeal 2017-002021
Application 14/078,849
Technology Center 1600
Before RICHARD J. SMITH, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a computer program product for parallelization of
updating (or creating) synthetic events with genetic surprisal data. Claims
11—22 are on appeal as rejected under 35 U.S.C. § 101.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as “International Business
Machines Corporation.” Appeal Br. 1.
2 Appellants state, “[a] notice of appeal [Appeal No. 2016-008135] has been
filed in Application Serial No. 13/870,324 on January 19, 2016 with an
appeal brief filed on February 25, 2016.” Appeal Br. 1.
Appeal 2017-002021
Application 14/078,849
STATEMENT OF THE CASE
The Specification states that the invention “provide[s] an automated
method, apparatus, and computer usable program code for selecting
individuals and their genetic surprisal data for a control cohort through data
parallelization.” Spec. 124.
Claims 11, 16, 17, and 22 are the independent claims. Claim 11 is
representative and is reproduced below:
11. A computer program product for parallelization of updating
synthetic events with genetic surprisal data representing a genetic
sequence of an organism, wherein program instructions are
stored on one or more computer-readable storage devices and are
executed on a computer, the computer program product
comprising:
program instructions, stored on at least one of the one or more
storage devices, to receive a synthetic event and associated
metadata from a user, wherein the metadata comprises at least
one genetic surprisal data attribute;
program instructions, stored on at least one of the one or more
storage devices, to divide the synthetic event into cohort parts
and assign the cohort parts and associated synthetic event
metadata to one of the plurality of computer processing elements
arranged in parallel; and
within each processing element of the plurality of computer
processing elements arranged in parallel, each of the processing
elements assigned the cohort parts and associated synthetic event
metadata each performing the following program instructions,
stored on at least one of the one or more storage devices,
concurrently to:
search data records of patients for genetic surprisal data
and store matches of the data records in a repository;
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Application 14/078,849
generate a cluster comprising a centroid by populating the
cluster based on all of the matches of the data records;
calculate a new centroid for each cluster;
calculate a Euclidean distance in multiple dimensions for
each match of data records to the new centroid for each
cluster;
reassign each match of data to the new centroid of each
cluster based on the shortest calculated Euclidean distance
to the new centroid for each cluster; and
determine at least one cohort part, a control cohort or a
treatment cohort, from the clusters, and based on the
associated metadata from the user and store the at least one
cohort part in a repository;
program instructions, stored on at least one of the one or more
storage devices, to retrieve the cohort parts from the repository
and recombine the cohort parts into updated synthetic events
based on the metadata and store the updated synthetic events in
the repository.
Appeal Br. 22—23 (Claims App’x).
The following rejection is appealed:
Claims 11—22 stand rejected under 35U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Action 3.
DISCUSSION
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the claims and prior art, and conclusions set out in the Final
Action and Answer. Final Action 3—11; Answer 2-4. Only those arguments
made by Appellants in the Appeal Brief and properly presented in the Reply
Brief have been considered in this Decision. Arguments not so presented in
the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015); see also Ex
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Application 14/078,849
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Any
bases for asserting error, whether factual or legal, that are not raised in the
principal brief are waived.”).
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(emphasis added).
“Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)). Claims directed to nothing more than
abstract ideas (such as mathematical algorithms), natural phenomena, and
laws of nature are not eligible for patent protection. Diamond v. Diehr, 450
U.S. 175, 185 (1981); accord MPEP § 2106 (II) (discussing Diehr).
In analyzing patent-eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to “first determine whether the claims at issue
are directed to a patent-ineligible concept.” Alice Corp. Pty. v. CLS Bank
Inti, 134 S. Ct. 2347, 2355 (2014). If the initial threshold is met, we then
move to a second step and “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.” Id. (quoting Mayo, 566 U.S. at 97).
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Application 14/078,849
The Federal Circuit has “recognize [d] that defining the precise
abstract idea of patent claims in many cases is far from a ‘straightforward’
exercise.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150
(Fed. Cir. 2016) (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014)). However, “we continue to ‘treat[ ] analyzing
information by steps people [could] go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.’” Synopsys, 839 F.3d at 1146-47 (quoting
Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) (citations omitted); see also Electric Power Grp., 830 F.3d at 1353
(“collecting information, analyzing it, and displaying certain results of the
collection and analysis” “fall[s] into a familiar class of claims ‘directed to’ a
patent-ineligible concept,” that of the abstract idea). The Federal Circuit has
recognized that “a claim for a new abstract idea is still an abstract idea.”
Synopsys, 839 F.3d at 1151.
The Federal Circuit, in Intellectual Ventures I LLC v. Capital One
Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), where the claims were
held to be directed to a computer programmed to edit XML documents,
“conclude[d] [the claims were]... at their core, directed to the abstract idea
of collecting, displaying, and manipulating data.” Id. at 1339-40. Even
though the patent at issue in Intellectual Ventures I indicated its invention
provided a concrete solution to a particular problem in computer
programming, it “at best, . . . limit[ed] the invention to a technological
environment for which to apply the underlying abstract concept,” which
does “not render an otherwise abstract concept any less abstract.” Id. at
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1340 (citing Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253,
1259 (Fed. Cir. 2016)). Under step two of the Alice analysis, the court in
Intellectual Ventures I held that claims reciting generic computer
components or elements and their functions, e.g., organizing, mapping,
identifying, defining, detecting, and modifying, “merely describe the
functions of the abstract idea itself’ and are not sufficient to supply
significantly more than the abstract idea so as to confer patent-eligibility. Id.
at 1341.
The Federal Circuit has established in several other cases that
collecting, classifying, storing, and organizing data, regardless of whether
such data manipulations are limited to a particular environment, is an
abstract idea and, without more, is not patent eligible. See, e.g., In re TLI
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).
The Examiner determined, pursuant to Alice step one, “claim(s) 11 -22
is/are directed to the abstract ideas of dividing metadata into cohort parts,
search data records, generating clusters, analyzing clusters using centroid
analysis, and updating synthetic events.” Final Action 3. Pursuant to Alice
step two, the Examiner determined, “[t]he claim(s) does/do not include
additional elements that are sufficient to amount to significantly more than
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Application 14/078,849
the judicial exception (i.e. Step 2B of the Guidelines) because executing the
algorithms on a computer is routine and conventional in the prior art.” Id.
The Examiner further explained that “the abstract idea comprises
mathematical relationships of manipulating data,” which the Examiner
determined was “analogous to the fact pattern in the abstract ideas in the
claims of Electric Power Group, LLC. V. Alstom S.A., Alstom Grid, Inc.,
Psymetrix Ltd., Alstom Limited (CAFC 2015-1778).” Final Action 3-A\
Answer 3. The Examiner’s determinations are reasonable and we have
considered Appellants’ arguments and find them unpersuasive.
Appellants argue the claims are not directed to an abstract idea
because they do not fall under one of the four classifications provided by the
USPTO: fundamental economic practice; idea of itself; methods of
organizing human activity; or mathematical relationship s/formulas. Appeal
Br. 10—11. This is not persuasive. The claims are directed to a computer-
based (or network-based) implementation of collecting, organizing, and
comparing/analyzing data (in the form of unexpected genetic code
differences of organisms, i.e. “surprisal data”) (something that could be done
by hand and is merely the act of collecting information). The organization
and analysis involve mathematical relationships, such as populating clusters
based on matches of data records, calculating centroids of the clusters and
Euclidean distances for data matches and centroids. As discussed above,
case law establishes that manipulation of data, such as is required by the
present claims, is an abstract idea.
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Appellants argue the claims recite something “significantly more”
than the abstract idea so as to provide an inventive concept, per an analysis
under Alice step two. Id. at 12. Appellants argue the
claims are all tied to a computer program product or computer
system for parallelization of updating synthetic events with
genetic surprisal data representing a genetic sequence of an
organism or creating synthetic events with genetic surprisal data
representing a genetic sequence of an organism, which in and of
itself recites more than executing an algorithm on a computer.
Id. Appellants also point to the claimed “plurality of computer processing
elements arranged in parallel” and contend they are each programed to
search data records, store matches in data records, generate clusters of data
comprising centroids, calculate new centroids for each cluster, calculate
Euclidian distances, reassign matched data to new centroids, and determine
cohorts, arguing this is also something significantly more that transforms the
claims into patent-eligible subject matter. Id.
As discussed, the steps and concepts identified are merely the
manipulation and organization of data via mathematical algorithms, using
well known, routine, conventional computer/data related means.
Manipulating the data using parallel processing may improve the speed at
which the data is processed, but the claims do not involve an improvement
in computer-functionality. As the case law makes clear, the use of
computers to perform well known data organization and analytics cannot
supply the something more to confer patent-eligibility to an otherwise
ineligible claim. Simply put, “[information as such is an intangible,” and
collecting it and analyzing it by mathematical algorithms without more is
abstract, and storing, searching, or presenting that information with routine
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tools “is abstract as an ancillary part of such collection and analysis.”
Electric Power Grp., 830 F.3d at 1353—54. The claims merely require
selection of information, manipulation of that data for analytical purposes,
using a conventional computer system or network programmed to do so;
such steps do not transform the abstract ideas of the claims into a patent-
eligible invention. See, e.g., id. at 1355.
For the reasons set forth above, we affirm the rejection.
SUMMARY
The rejection of the claims as directed to patent-ineligible subject
matter is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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