Ex Parte KOLOVSKI et al

Patent Trials and Appeals Board

Apr 22, 2019

14047318 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/047,318 10/07/2013 Vladimir KOLOVSKI
51444 7590 04/24/2019
Kraguljac Law Group/Oracle
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
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.
2009-102-01-CNT(Ol 79-CNT) 3785
EXAMINER
PULLIAM, CHRISTY ANN R
ART UNIT PAPER NUMBER
2100
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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):
MPusti@KragLaw.com
PTOMail@KragLaw.com
DDay@KragLaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VLADIMIR KOLOVSKI, ZHE WU, and GEORGE EADON
Appeal2018-007144
Application 14/04 7,318
Technology Center 2100
Before JOSEPH L. DIXON, JOHN A. EV ANS, and JAMES W. DEJMEK,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-20. App. Br. 7. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE. 2
1 Appellants state the real party in interest is Oracle International
Corporation. App. Br. 2.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed December 27, 2017, "App. Br."), the Reply
Brief (filed July 2, 2018, "Reply Br."), the Examiner's Answer (mailed
May 2, 2018, "Ans."), the Final Action (mailed July 27, 2017, "Final Act."),
and the Specification (filed October 7, 2013, "Spec.") for their respective
details.
Appeal2018-007144
Application 14/047,318
STATEMENT OF THE CASE
The claims relate to methods, systems, and other embodiments
associated with equivalence reasoning. See Abstract.
Invention
Claims 1, 10, and 17 are independent. An understanding of the
invention can be derived from a reading of claim 1, which is reproduced
below with some formatting added:
1. A non-transitory computer-readable medium storing
instructions that when executed by one or more processors
cause the one or more processors to perform at least:
iteratively inputting, by at least the processor, batches of
equivalence pairs from a semantic model to an operating
memory;
determining, by at least the processor, groups of
equivalent resources from the equivalent pairs;
building, in the operating memory by at least the
processor, cliques for the batches, where each of the cliques
designate a canonical representative resource for one group of
the groups of equivalent resources as determined from the
equivalence pairs, where the building includes replacing each
group of the equivalent resources with the canonical
representative resource in one of the cliques;
appending, by at least the processor, the cliques built for
the batches to a clique map in a remote memory, where the
clique map is a mapping of canonical representative resources
to the cliques for the batches; and
returning the clique map for input to the semantic model.
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Application 14/047,318
Rejection 3
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter without significantly more. Final Act. 2-10.
ANALYSIS
We have reviewed the rejections of claims 1-20 in light of
Appellants' arguments that the Examiner erred. We consider Appellants'
arguments seriatim, as they are presented in the Appeal Brief, pages 8-18.
CLAIMS 1, 10, AND 17: INELIGIBLE SUBJECT MATTER
Appellants argue all claims as a group in view of the limitations of
claim 1 and the commensurate limitations of independent claims 10 and 1 7.
App. Br. 12. Therefore, we decide the appeal of the§ 101 rejections with
reference to illustrative claim 1, and refer to the rejected claims collectively
herein as "the claims." See 37 C.F.R. § 4I.37(c)(l)(iv); In re King, 801 F.2d
1324, 1325 (Fed. Cir. 1986).
35 u.s.c. § 101
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes "' [l]aws of nature,
3 The present Application, filed October 7, 2013, i.e., after March 16, 2013,
claims the priority of Provisional Application US 61/724,877, filed prior to
March 16, 2013. Therefore, the present Application was examined under the
pre-AIA first to invent provisions. Final Act. 2.
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Application 14/047,318
natural phenomena, and abstract ideas'" from the realm of patent-eligible
subject matter, as monopolization of these "basic tools of scientific and
technological work" would stifle the very innovation that the patent system
aims to promote. Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014)
( quoting Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)); see also Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 72-78 (2012); Diamond v. Diehr, 450 U.S. 175, 185
(1981).
Under the mandatory Revised Guidance4, we consider whether
Appellants' claims recite:
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), and
2. additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim, (1) recites a judicial exception, and (2) does not integrate
that exception into a practical application, do we then reach the issue of
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
4 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (January 7, 2019) ("Revised Guidance").
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Application 14/047,318
generality, to the judicial exception.
1. Judicial Exceptions.
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the abstract idea
exception includes the following groupings of subject matter, when recited
as such in a claim limitation(s) (that is, when recited on their own or per se):
(a) mathematical concepts, 5 i.e., mathematical relationships, mathematical
formulas, equations, 6 and mathematical calculations 7 ; (b) certain methods of
organizing human activity-fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
5 Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of hedging ...
reduced to a mathematical formula ... is an unpatentable abstract idea.").
6 Diehr, 450 U.S. at 191 ("A mathematical formula as such is not accorded
the protection of our patent laws"); Parker v. Flook, 437 U.S. 584, 594
(1978) ("[T]he discovery of [a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.").
7 SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(Holding that claims to a "series of mathematical calculations based on
selected information" are directed to abstract ideas.).
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Application 14/047,318
instructions) 8; and ( c) mental processes 9----concepts performed in the human
mind (including observation, evaluation, judgment, opinion). 10
The Examiner finds "[ c ]laim 1 is directed to 'iteratively inputting
batches of equivalence pairs ... [into] memory, determining ... equivalent
pairs, building ... one of the cliques, appending ... or the batches, returning
... to the semantic model' which recite an abstract idea." Final Act. 5
( emphasis omitted). The Examiner finds these steps
describe [an] abstract idea similar to the concepts that have
been identified as abstract by the courts, such as collecting
information, analyzing it, and displaying certain results in
Electric Power Group, where the "iteratively inputting batches
of equivalence pairs" is the collecting information, the
"determining ... groups of equivalent resources ... , the
building ... , and the appending ... " are the analysis, and the
"returning the clique map ... " is the displaying certain results.
Id. ( emphasis omitted).
8 Alice, 573 U.S. at 219-20 (Concluding that use of a third party to mediate
settlement risk is a "'fundamental economic practice"' and, thus, an abstract
idea.); see Revised Guidance 52, 52 n.13 (For a more extensive listing of
"certain methods of organizing human activity" that have been found to be
abstract ideas.).
9 If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind. See Revised Guidance 52 n.14; see Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
("[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.").
10 Mayo, 566 U.S. at 71 ("'[M]ental processes[] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work"' (quoting Gottschalkv. Benson, 409 U.S. 63, 67
(1972)).).
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Appellants contend the Federal Circuit has stated that, under Alice
(Step 2A), the relevant inquiry is whether the claims are directed to an
improvement to computer functionality or to an improvement to another
existing technological process. App. Br. 9 ( citing Enfzsh ). 11 Appellants
argue claim 1 recites elements related to processing batches of equivalence
pairs by iteratively inputting the pairs from a semantic model to an operating
memory; determining groups of equivalent resources from the equivalent
pairs; building, in the operating memory by at least the processor, cliques for
the batches, where each of the cliques designate a canonical representative
resource for one group of the groups of equivalent resources. Id. at 10.
Appellants argue their claims result in an improvement in computer
functioning. Id. ("The clique map is generated and built having a reduced
size of data as compared to the original batches due to replacing groups of
equivalent resources with a canonical representative resource. This reduces
the size of the data structure of the clique map and reduces the size of
memory needed. The clique map is then input to the semantic model, where
the map data structure is a reduced size for more efficient processing by the
semantic model."). Appellants point to their Specification for a discussion
of the prior art problems improved by their claims. Id. ("The present
invention improves the functioning of the computer and improves an
existing technological process of equivalence reasoning and processing
equivalence data pairs. Specification [ 0010-0012] discusses prior
techniques/processes of an inference engine that processes OWL[ 12] subsets,
11 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
12 The Web Ontology Language OWL is a semantic markup language for
publishing and sharing ontologies on the World Wide Web. This document
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Application 14/047,318
and discusses its problems: e.g., 'slow response time' [0010]; 'difficult to
fully materialize owl:sameAs closures' [0011]; 'it takes more than 300 GB
disk space to fully materialize the owl:[s]ameAs closure ... ' [0012].").
The Examiner's Answer quotes from paragraphs 13 and 26 of the
Specification to find "[t]here is no indication in these two paragraphs that
the consolidation of data representation improves the functioning of a
computer or improves any other technology." Ans. 4 ( emphasis added).
The Answer is not responsive to Appellants' arguments which cited
paragraphs 10-12.
Under the mandatory Revised Guidance, we first consider whether
Appellants' claims recite a judicial exception. Revised Guidance 5 3. We
find the claims do not recite, per se, either a mathematical concept or a
method of organizing human activity such as a fundamental economic
practice.
If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still encompassed by the mental processes category
unless the claim cannot practically be performed in the mind. See
Intellectual Ventures, 838 F.3d at 1318 ("[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper."); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d.
contains a structured informal description of the full set of OWL language
constructs and is meant to serve as a reference for OWL users who want to
construct OWL ontologies. OWL Working Group, OWL Web Ontology
Language Reference, W3.0RG (February 10, 2004), available at:
http://www.w3.org/TR/2004/REC-owl-ref-20040210/.
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Application 14/047,318
1314, 1324 (Fed. Cir. 2016) (Holding that computer-implemented method
for "anonymous loan shopping" was an abstract idea because it could be
"performed by humans without a computer."); Versata Dev. Grp. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) ("Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person's mind."); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375, 1372-73 (Fed. Cir. 2011) (Holding that the incidental use
of "computer" or "computer readable medium" does not make a claim
otherwise directed to process that "can be performed in the human mind, or
by a human using a pen and paper" patent eligible.). However, "we find
that, taken together, the processing limitations in the claimed invention are
sufficiently computing-intensive that the claimed invention cannot
practically be performed in the mind." Ex parte Musgrove, Appeal No.
2018-006253, 2019 WL 952025, at *5 (PTAB Jan. 31, 2019); SiRF Tech.,
Inc. v. Int'! Trade Comm'n, 601 F.3d 1319 (Fed. Cir. 2010) (determining, as
a practical matter, the claims could not be performed entirely in a human' s
mind). Claim 1 recites, inter alia, "iteratively inputting, by at least the
processor, batches of equivalence pairs from a semantic model to an
operating memory." We find a human person cannot interact, mentally, with
computer hardware so as to retrieve equivalence pairs from a first memory,
i.e., the "semantic model," and inject the retrieved data into "operating
memory."
Thus, we do not sustain the rejection of claims 1-20 under 35 U.S.C.
§ 101.
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Application 14/047,318
DECISION
We reverse the rejection of claims 1-20 under 35 U.S.C. § 101.
REVERSED 13
13 Because we do not sustain the Examiner's rejection for the reasons
discussed herein, we need not address Appellants' further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (Finding an
administrative agency is at liberty to reach a decision based on "a single
dispositive issue.").
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