Ex Parte Huberman et al

Patent Trial and Appeal Board

Oct 30, 2018

11531652 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/531,652 09/13/2006 Bernardo A. Huberman
56436 7590 11/01/2018
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82224047 1541
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
hpe.ip.mail@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNARDO A. HUBERMAN and FANG WU
Appeal2017-003675 1
Application 11/531,6522
Technology Center 3600
Before NINA L. MEDLOCK, JAMES A. WORTH, and
SCOTT C. MOORE, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection under 35 U.S.C. § 101 of claims 1-25, which constitute all claims
pending in this application. 3
1 Our Decision refers to the Appellants' Appeal Brief (filed Apr. 15, 2016,
"Br."), and the Examiner's Final Office Action (mailed Dec. 14, 2015,
"Final Act.") and Answer (mailed Sept. 8, 2016, "Ans.").
2 According to Appellants, the real party in interest is Hewlett Packard
Enterprise Development LP (HPED), which is a wholly owned affiliate of
Hewlett Packard Enterprise. Br. 3. The general or managing partner of
HPED is Enterprise DC Holdings LLC. Id.
3 This is the second time this application has come before the Board.
Previously, we reversed rejections based on 35 U.S.C. § 112, first paragraph
(written description) and§ 103. Appeal No. 2012-008310 (PTAB Mar. 30,
2015).
Appeal2017-003675
Application 11/531,652
We have jurisdiction under 35 U.S.C. §§ 134 and 6(b).
We AFFIRM.
Introduction
Appellants' application relates to a method, computer-readable
medium, and system for "ordering a set of items, and more specifically to
determining a most valuable ordering for presentation where a restriction
exists limiting output to a subset of the items," e.g., in an internet search.
Spec. ,r 1; see also id. ,r 2.
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A method, comprising:
measuring item state for each item of a plurality of items
corresponding to a result of a search query directed to a search
engme;
tracking rates at which items of the plurality transition
between item states;
maintaining a discount rate which indicates how much
future time to account for in ordering the plurality of items; and
at each of a plurality of discrete times, determining a
respective subset of the items, wherein the determining
comprises ordering the plurality of items based on the item states,
the transition rates, and the discount rate, wherein the ordering
comprises ordering the items based on an optimization that
distinguishes between item state transitions of the items that are
in the subset of the items determined for a preceding one of the
discrete times and item state transitions of the items that are
outside the subset of the items determined for the preceding
discrete time;
wherein the measuring, the tracking, the maintaining, and
the determining are performed by a computer.
Br. 15, Claims App.
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Application 11/531,652
Rejection on Appeal
The Examiner maintains, and Appellants appeal, the following
rejection:
Claims 1-25 under 35 U.S.C. § 101 as being directed to an
abstract idea.
FINDINGS OF FACT
We make the following findings of fact, which we determine are
supported by at least a preponderance of the evidence 4:
FF 1. The Specification discloses that by tracking properties for each
item 111, such as its reputation, history, age, etc., order determination
manager 112 can determine that item 111 is in a "state" 203 defined by
those properties. Spec. ,r 25.
FF2. According to the Specification, it can be assumed within the
context of one embodiment that state 203 of each item 111 changes
according to a Markov process independent of the state 111 of other
items 111, with transition probabilities { P1 ij : i, j E EE} if the item 111
is on top list 211, and { P0ij: i,j E EE} ifit is not. Spec. ,r 27. According
to the Specification, it can also be assumed that item 111 being on top
list 211 encourages more users 101 to select it, and consequently
accelerates its transition from one state 203 to another. Id. Conversely,
when an item transitions away from top list 211, its rate of change slows
down by an amount Ei which is less than one. This dual speed
assumption can be stated as
4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining evidentiary standard for proceedings before the Patent Office).
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Application 11/531,652
where e, E[O,l].
Id.
FF3. The model described above is essentially a dual-speed restless
bandit problem. Spec. ,r 30. The Specification states that dual-speed
restless bandit problems are discussed, for example, in P. Whittle,
Restless bandits: activity allocation in a changing world, J. APPL. PROB.,
25A, pp 287-298 (1988) and K. D. Glazebrook, J. Nifio-Mora and P. S.
Ansell, Index policies for a class of discounted restless bandits, ADV.
APPL. PROB., 34, 754--774 (2002). Id.
FF4. The model described above is restless because changes of state can
also occur when the items are not displayed in top list 211, and dual
speed because those changes do happen at a different speed than those
on top list 211. Spec. ,r 31. The Specification states that Bertsimas and
Nifio-Mora have demonstrated that an optimal solution is available for
the dual-speed restless bandit problem, and that this solution is discussed
in, e.g., J. Nifio-Mora, Restless bandits, partial conservation laws and
indexability, ADV. APPL. PROB., 33, 76-98 (2001), and Glazebrook et
al. Spec. ,r 31.
FF5. According to the Specification, it is possible to attach index 213 to
each item state 203, so that top list 211 is the ordering including those
items 111 with the largest indices 213. Spec. ,r 32.
FF6. According to the Specification, Bertsimas and Nifio-Mora have
shown that a relaxed version of the dual-speed problem is always
indexable (i.e. such indices 213 always exist) and also proposed an
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(1)
Appeal2017-003675
Application 11/531,652
efficient adaptive greedy heuristic to compute these indices 213. Spec.
FF7. The Specification provides a set of linear equations that can be
used to solve for variables. Spec. ,r 34 & eq. (4}-(6).
FF8. The Specification provides a matrix of constants to be used in the
Bertsimas-Nifio-Mora heuristic. Spec. ,r 34 & eq. (7), Table 1.
FF9. The Specification discloses calculating G-index rankings based on
the Bertsimas-Nifio-Mora heuristic. Spec. ,r 41.
ANALYSIS
Claims 1-25
The Examiner determines that claim 1 is directed to ordering items,
i.e., measuring item state, tracking rates, maintaining a discount rate, and
determining a subset of items and ordering the items based on the item
states, transition rates, and the discount rate, which amounts to merely: (i) a
fundamental economic/business practice, (ii) a method of organizing human
activities, and (iii) an idea of itself. Final Act. 2; Ans. 10.
The Examiner further determines that the claimed invention fails to
further improve upon the technology since the claimed invention does not
improve on the general purpose computer of paragraphs 19 and 20 of the
Specification. Final Act. 3. The Examiner determines that when the claim
is viewed as a whole, the additional claim elements of the measuring,
tracking, maintaining, and determining steps 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 id. The Examiner reasons, inter alia, that the
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Application 11/531,652
invention collects information and uses rules to identify options. Ans. 6
(citing, e.g., SmartGene, Inc. v. Advanced Biological Laboratories, SA,
555 F. App'x 950 (Fed. Cir. 2014)). The Examiner further reasons that the
claimed invention resembles other cases in which there were processes of
organizing information, including using mathematical correlations. Id.
(citing Cybeifone Sys., LLC v. CNN Interactive Group, Inc., 558 F. App'x
988 (Fed. Cir. 2014); Content Extraction and Transmission LLC v. Wells
Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014); Digitech Image Technologies,
LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)). The
Examiner also reasons that performing mathematical calculations to
manipulate results is abstract. Id. at 7 ( citing, e.g., Bancorp Services, L.L. C.
v. Sun Life Assur. Co. of Canada (US.), 687 F.3d 1266 (Fed. Cir. 2012)).
Appellants argue that the claimed invention is significantly more than
the abstract idea of ordering, at least in view of the following limitations of
independent claim 1: "measuring item state ... corresponding to a result of
a search query directed to a search engine"; "tracking rates at which items of
the plurality transition between item states"; "maintaining a discount rate
which indicates how much future time to account for in ordering the
plurality of items"; "[ determining a respective subset of the items, wherein
the determining comprises ordering the plurality of items] based on the item
states, the transition rates, and the discount rate, [ wherein the ordering
comprises ordering the items based on an optimization that] distinguishes
between item state transitions of the items that are in the subset of the items
determined for a preceding one of the discrete times and item state
transitions of the items that are outside the subset of the items determined for
the preceding discrete time." See Br. 7-8, 12 (citing 2014 Interim Guidance
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Application 11/531,652
on Patent Subject Matter Eligibility). However, we agree with the Examiner
that the claimed limitations are abstract because they are based on
mathematical calculations used to order items, which constitute an abstract
idea. Ans. 7. Indeed, the claimed invention is based on a concatenation of
mathematical techniques. See FF 1-9.
Appellants' argue, inter alia, that receiving, tracking, maintaining, and
determining data based on other data and programming rules is necessarily
rooted in computer technology to overcome a problem specifically arising
the realm of computer networks (e.g., the web). Br. 10-11 (citing DDR
Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014)). Appellants
characterize the problem in the computing art and the proposed solution as
follows:
In the use of computer network( s) distorting reinforcement
processes can lock a data item for display to a user into a top
ranking and make it hard for other bottom-listed items to surface,
even though the latter can often be more valuable data. However,
the distorting reinforcement process can be overcome by
determining a respective subset of the items at discrete times,
wherein the determining comprises ordering the plurality of
items based on the item states, the transition rates, and the
discount rate. The ordering can comprise ordering the items
based on an optimization that distinguishes between item state
transitions of the items that are in the subset of the items
determined for a preceding one of the discrete times and item
state transitions of the items that are outside the subset of the
items determined for the preceding discrete time. Utilizing these
elements, the problem of distorting reinforcement processes that
lock orderings in computer networks can be overcome to
maximize user value in information rich environments.
Br. 12. We are not persuaded by Appellants' argument. In particular, the
mathematical problem of ordering is not limited to a network
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environment. For example, the Specification explains that the claimed
invention can be used by a journal in deciding which content to display.
The claimed invention here may be contrasted with that in BASCOM,
where the court held that a claimed invention for filtering internet content
was not subject to dismissal under Fed.R.Civ.P. 12(b)(6) based on an
ordered combination of conventional components. BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed Cir.
2016). The claimed invention in BASCOM provided a "specific, discrete
implementation of the abstract idea of filtering content" by associating
individual accounts with their own filtering scheme and elements while
locating the filtering system on an ISP server. Id. at 1344--45, 1350. The
claimed invention in BASCOM provided a concrete, structural solution to a
networking problem by placing a filter on a specified position on network,
which when considered as an ordered combination, which adequately
alleged claims that pass step two of the Alice framework. In contrast, the
claimed invention here uses mathematical formulae that are necessarily
abstract to accomplish the task of ordering. See id. at 1351; Spec. ,r 34 & eq.
(4}-(6).
Appellants argue that the notion of patent eligibility is supported by
the lack of a rejection under § § 102 and 103. Br. 13. However, that is not
sufficient to demonstrate eligible subject matter. See SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) ("We may assume that
the techniques claimed are '[g]roundbreaking, innovative, or even brilliant,'
but that is not enough for eligibility. Nor is it enough for subject-matter
eligibility that claimed techniques be novel and nonobvious in light of prior
art, passing muster under 35 U.S.C. §§ 102 and 103.") (citations omitted).
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Appellants argue that the claims include specific limitations other than
what is well-understood, routine, and conventional in the field. Br. 13. We
agree with the Examiner's findings that paragraphs 19 and 20 of the
Specification make use of a general purpose computer and that the claimed
invention is intended to be implemented on any computer system. See Final
Act. 3. For example, paragraph 20 of the Specification indicates that the
structure of the computer system can be either distributed or centralized, and
can take other forms. Spec. ,r 20. The Specification further explains that
" ... as the term is used herein an order determination manager 112 refers to
a collection of functionalities which can be implemented as software,
hardware, firmware or any combination of these." Id. ,r 21. Further, the
claimed method makes use of mathematical techniques for indexing known
to persons of ordinary skill in the art (and which are themselves
abstract). See FF6; Ans. 7; Spec. ,r 31 ("As is known by those of ordinary
skill in the relevant art, Bertsimas and Nifio-Mora have demonstrated that an
optimal solution is available for the dual-speed restless bandit problem.")
( emphasis added).
In sum, we agree with the Examiner that performing mathematical
calculations to manipulate results is itself abstract. See Ans. 7 ( citing, e.g.,
Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (US.), 687 F.3d
1266 (Fed. Cir. 2012)). In Bancorp, the claims were variously directed to a
method for managing a life insurance policy comprising seven steps and a
"computer readable media [sic]" for performing same. Bancorp, 687 F .3d
at 1277. The court in Bancorp determined that the performance of
computations on a computer was abstract. Id. at 1277-78.
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Accordingly, we sustain the Examiner's rejection of independent
claim 1 under § 101. Appellants' arguments for the patentability of
independent claims 8 and 15 are similar to those for independent claim 1,
and are unpersuasive for similar reasons. Accordingly, we sustain the
Examiner's rejection of independent claims 8 and 15, for similar reasons as
for independent claim 1. Appellants do not argue the patentability of the
dependent claims separately from the independent claims, and we sustain the
rejection of the dependent claims for similar reasons.
DECISION
The Examiner's decision to reject claims 1-25 under 35 U.S.C. § 101
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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