Ex Parte KATAOKA et al

Patent Trials and Appeals Board

Apr 29, 2019

12973017 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/973,017 12/20/2010
21171 7590 05/01/2019
ST AAS & HALSEY LLP
SUITE 700
1201 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Masahiro KATAOKA
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.
1448.1260 1068
EXAMINER
MINA,FATIMAP
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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):
ptomail@s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAHIRO KATAOKA and KEISHIRO TANAKA
Appeal 2018-005611
Application 12/973,017 1
Technology Center 2100
Before JOSEPH L. DIXON, ERIC S. FRAHM, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 19-27, which are all the claims pending and rejected in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Fujitsu Limited as the real party in interest. App. Br. 2.
Appeal 2018-005611
Application 12/973,017
STATEMENT OF THE CASE
Introduction
The present invention relates to "information processing, searching,
compression, and expansion using a Huffman tree." Spec. ,r 2. Claim 19 is
exemplary:
19. A non-transitory computer-readable recording
medium storing therein an information processing program that
causes a computer to execute a process comprising:
extracting a plurality of x-gram character strings from a
plurality of files, where x is a natural number larger than 1;
generating, for each x-gram character string, nxm divided
maps that correspond to nxm combinations of n codes and m
codes, respectively, and represent a presence or an absence of
the nxm combinations in the files,
wherein then codes are obtained by dividing a code
representing a first gram of the x-gram character string into n
parts, and
them codes are obtained by dividing a code representing
a second gram of the x-gram character string into m parts,
where n and m are natural numbers, and at least one of n and m
is larger than 1.
References and Rejections2
Claims 19-27 stand rejected under 35 U.S.C. § 101 because they are
directed to patent-ineligible subject matter. Ans. 3-11.
Claims 19-21 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the collective teachings of Asada et al. (US
2 Throughout this opinion, we refer to the (1) Final Office Action dated May
8, 2017 ("Final Act."); (2) Appeal Brief dated November 2, 2017 ("App.
Br."); (3) Examiner's Answer dated April 2, 2018 ("Ans."); and (4) Reply
Brief dated May 10, 2018 ("Reply Br.").
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Application 12/973,017
5,680,612; Oct. 21, 1997) and Kataoka et al. (US 2008/0098024 Al; Apr.
24, 2008) ("Kataoka"). Final Act. 3--4.
Claims 22-24 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over the collective teachings of Asada, Kataoka, and
Hatakeyama et al. (US 5,469,354; Nov. 21, 1995). Final Act. 5-8.
Claim 25 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over the collective teachings of Asada, Kataoka, and Ogawa
(US 2003/0177116 Al; Sept. 18, 2003). Final Act. 8-10.
Claims 26 and 27 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over the collective teachings of Asada, Kataoka, Ogawa,
and Chang (US 2008/0208821 Al; Aug. 28, 2008). Final Act. 10-11.
ANALYSIS 3
35 u.s.c. § 101
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in this case.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 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
3 Appellants raise additional arguments. Because the identified issues are
dispositive of the appeal, we do not need to reach the additional arguments.
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phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (internal quotation marks
and citation omitted).
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, 67 (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.
252, 267---68 (1854))); and manufacturing flour (Benson, 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
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Application 12/973,017
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; 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 Benson and Flook); 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 ( citation 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.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the
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guidance set forth in the 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) (Step 2A, Prong 1 ); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF p ATENT EXAMINING
PROCEDURE ("MPEP") § 2106.05(a}-(c), (e}-(h)) (9th Ed., Rev.
08.2017, 2018) (Step 2A, Prong 2).
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. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54--56.
Turning to Step 2B of the Guidance, "[t]he second step of the Alice
test is satisfied when the claim limitations 'involve more than performance
of []well-understood, routine, [and] conventional activities previously
known to the industry."' Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed.
Cir. 2018) ( quoting Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) and
Alice, 573 U.S. at 225). "Whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination." Berkheimer, 881 F.3d at 1369.
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In this case, the Examiner determines:
the "computer readable medium", and "a computer to execute
process." are recited at a high level of generality and are recited
as performing generic computer functions routinely used in
computer applications. Generic computer components recited as
performing generic computer functions that are well-
understood, routine and conventional activities amount to no
more than implementing the abstract idea with a computerized
system.
Ans. 5.
However, the Examiner has not provided the evidence required by
Berkheimer to support the above determination. See Berkheimer, 881 F .3d
at 1369. In particular, we agree with Appellants (Reply Br. 1-2)4 that the
Examiner has not provided any of the four categories of information
required by the Memorandum of Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) ("Berkheimer Memorandum"):
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element( s ) ....
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element( s ) ....
4 Because the Examiner entered a new ground of rejection under 35 U.S.C
§ 101 in the Answer, Appellants had good cause to raise arguments based on
Berkheimer in the Reply Brief. See 37 C.F.R. § 4I.41(b)(2).
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4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element( s) ....
Berkheimer Memorandum at 3--4.
Therefore, the Examiner erred with respect to Step 2B of the
Guidance, and we are constrained by the record to reverse the Examiner's
rejection of claims 19-27 on procedural grounds.
35 u.s.c. § 103
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in determining the cited portions of
Asada teach "wherein the n codes are obtained by dividing a code
representing a first gram of the x-gram character string into n parts, and the
m codes are obtained by dividing a code representing a second gram of the
x-gram character string into m parts, where n and mare natural numbers,
and at least one of n and m is larger than 1" as recited in independent claim
19 ( emphases added). See App. Br. 5-8; Reply Br. 7-8.
The Examiner cites Asada's Figure 5 and excerpts from columns 1, 3,
and 5-7 for teaching the disputed claim limitation. See Final Act. 3; Ans.
12-14. We have reviewed the cited Asada portions, and they do not teach or
suggest "wherein the n codes are obtained by dividing a code representing a
first gram of the x-gram character string into n parts, and the m codes are
obtained by dividing a code representing a second gram of the x-gram
character string into m parts, where n and m are natural numbers, and at
least one of n and m is larger than 1" as required by claim 19 ( emphases
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added). In particular, the Examiner's finding that Asada's Figure 5 teaches
"each character code ( each Japanese character) is converted (mapped) to
EUC code which is Oxa5d7 and can be divided into two parts" (Ans. 14) is
unsupported, as the Examiner does not explain why and how Asada's Figure
5 supports that finding.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 19.
Independent claim 25 recites a claim limitation that is substantively
similar to the disputed limitation of claim 19. See claim 25. The Examiner
applies similar findings and conclusions to both claims 19 and 25 with
respect to the disputed limitation. See Final Act. 3, 9; Ans. 12-14.
Therefore, for similar reasons, we reverse the Examiner's rejection of
independent claim 25.
We also reverse the Examiner's rejection of corresponding dependent
claims 20-24, 26, and 27. Although the Examiner cites additional
references for rejecting some dependent claims, the Examiner has not shown
the additional references overcome the deficiency discussed above in the
rejection of claim 19. See Final Act. 5-8; 10-11.
DECISION
We reverse the Examiner's decision rejecting claims 19-27.
REVERSED
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