Ex Parte Lustig et al

Patent Trial and Appeal Board

Feb 9, 2018

14189976 (P.T.A.B. Feb. 9, 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.
14/189,976 02/25/2014 Irvin Jay Lustig YOR920130842US1 1050
48150 7590 02/09/2018
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
MALZAHN, DAVID H
ART UNIT PAPER NUMBER
2182
MAIL DATE DELIVERY MODE
02/09/2018 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte IRVIN JAY LUSTIG, HELMUT MAUSSER, and
OLEKSANDR ROMANKO
________________

Appeal 2017-007789
Application 14/189,976
Technology Center 2100
________________

Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
AARON W. MOORE, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20. Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. Final Act. 2–4.
We affirm.

Appeal 2017-007789
Application 14/189,976

2
STATEMENT OF THE CASE
Appellants’ invention relates to “the solution of mathematical
programs on a computer.” Spec. ¶ 1. Claim 1 is illustrative and reproduced
below:
1. A method for a quadratic program or quadratically constrained
program stored in a non-transitory computer readable medium, the method
comprising:
receiving input for coefficients of a quadratic problem or a
quadratically constrained problem by a computer for storage in the non-
transitory computer readable medium for computations performed by a
processor;
determining scaling factors by the processor by using the received
input in the quadratic program or quadratically constrained program
configured for optimality conditions by considering symmetric NxN
matrices Q0 and/or Qk in a transformation, where N is an integer and
k=l,...,Mq is an integer for the computations performed by the processor; and
outputting, by the computer, transformed coefficients of column
scaling factor β, row scaling factor α, and right hand side scaling factor γ
from the transformation, where β >0, α >0, and γ>0, to perform the
computations by the processor of the computer.

ANALYSIS
The Examiner finds claims 1–20 are directed to a judicial exception
without significantly more. Final Act. 2–4.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Appeal 2017-007789
Application 14/189,976

3
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“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.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594–95 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611,
mathematical formulas, Flook, 437 U.S. at 594–95, and basic tools of
Appeal 2017-007789
Application 14/189,976

4
scientific and technological work, Benson, 409 U.S. at 67. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diehr, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Benson, 409 U.S. at 69 (citing cases).
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “‘inventive concept”’—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
Appellants contend claims 1–20 are not directed to an abstract idea,
and in the alternative, the claims amount to significantly more than any
recited abstract idea. See App. Br. 5–12.
Regarding “abstract idea,” for example, Appellants argue:
i. “[N]o abstract idea has been articulated on the record that is
both reasonably at risk of preemption and reasonably a fundamental tool of
science or technology.” App. Br. 9. “The Examiner improperly assumes that
the limitations are merely a mathematical algorithm and concludes it is an
abstract idea. Respectfully, the Examiner does not take into account the
processor, computer and computer readable medium that is intertwined with
the method steps in the body of the claim.” App. Br. 10; see also Reply Br.
5–7.
Appeal 2017-007789
Application 14/189,976

5
Regarding “significantly more,” for example, Appellants argue:
ii. “[T]he claim limitations add[] improvement to computer
functionality, which is evidence of ‘significantly more.’” App. Br. 6.
iii. “[T]he limitations are not performed merely on a set of generic
[computers]. Instead, the limitations are intertwined in the computations
performed by the processor.” App. Br. 7. “There is a specific discrete
implementation as shown in the scaling factors being implemented in
processors computations.” App. Br. 7. The claims improve existing
technology. See App. Br. 8–9; see also Reply Br. 1–5.
Regarding Appellants’ arguments (i)–(iii), we do not see any error in
the Examiner’s rejection of claims 1–20 as directed to non-statutory subject
matter.
We hold that claims 1–20 are directed to an abstract idea without
significantly more, and adopt as our own the Examiner’s finding in the Final
Action:
The claims are directed to the abstract idea of scaling
coefficients for a quadratic program or quadratic constrained
program, which is defined by mathematical relationships. The
claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception
because the additional computer elements, which are recited at
a high level of generality, provide conventional computer
functions that do not add meaningful limitations to practicing
the abstract idea.
Final Act. 2; see also Final Act 3 (“The use of generic computer components
to scale coefficients for a quadratic program or quadratic constrained
program does not impose any meaningful limit on the computer
implementation of the abstract idea.”).
Appeal 2017-007789
Application 14/189,976

6
We agree with the Examiner that the claims relate to the basic concept
of scaling of coefficients for a quadratic program or quadratic constrained
program, i.e., information collection and analysis. Unfortunately,
information collection and analysis, including when limited to particular
content, is within the realm of abstract ideas. See, e.g., Elec. Power Grp.
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that
“collecting information, analyzing it, and displaying certain results of the
collection and analysis” are “a familiar class of claims ‘directed to’ a patent-
ineligible concept”). Further, we note the claims primarily involve receiving
data (coefficients) performing calculations (determining scaling factors) and
outputting data based on those calculations (transformed coefficients). Such
claims have been found to be directed to ineligible subject matter. See Flook,
437 U.S. at 595 (“If a claim is directed essentially to a method of
calculating, using a mathematical formula, even if the solution is for a
specific purpose, the claimed method is nonstatutory.”) (internal quotations
omitted); Benson, 409 U.S. at 65 (finding ineligible claims to a “method of
programming a general-purpose digital computer to convert signals from
binary-coded decimal form into pure binary form”); see also Digitech Image
Tech. LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir.
2014) (finding “a process of organizing information through mathematical
correlations and is not tied to a specific structure or machine” to be an
abstract idea).
Turning to the second step of the Alice analysis, because we determine
that independent claim 1 is directed to an abstract idea, the claim must
include an “inventive concept” in order to be patent-eligible, i.e., there must
Appeal 2017-007789
Application 14/189,976

7
be an element or combination of elements that is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
The question is whether the implementation of the abstract idea
involves more than the performance of well-understood, routine, and
conventional activities previously known to the industry. Claim 1 recites
generic computer functions (i.e., receiving input, performing computations,
providing output) that are well-understood, routine, and conventional
activities previously known to the industry. However, nothing in claim 1
purports to improve computer functioning or “effect an improvement in any
other technology or technical field.” Alice, 134 S. Ct. at 2359.
Appellants’ Specification at ¶ 84 discloses
The CPUs 611 are interconnected via a system bus 612 to
a random access memory (RAM) 614, read-only memory
(ROM) 616, input/output (I/O) adapter 618 (for connecting
peripheral devices such as disk units 621 and tape drives 640 to
the bus 612), user interface adapter 622 (for connecting a
keyboard 624, mouse 626, speaker 628, microphone 632,
and/or other user interface device to the bus 612), a
communication adapter 634 for connecting an information
handling system to a data processing network, the Internet, an
Intranet, a personal area network (PAN), etc., and a display
adapter 636 for connecting the bus 612 to a display device 638
and/or printer 639 (e.g., a digital printer or the like).
Spec. ¶84.
There is no indication that the computers used in the invention are
anything other than general purpose computers running conventional
operating systems and being programmed using conventional techniques.
The claims also are not adequately tied to “a particular machine or
apparatus.” Bilski v. Kappos, 561 U.S. at 602. Independent claim 1 requires
Appeal 2017-007789
Application 14/189,976

8
no more than a generic computer to perform generic computer functions that
are well known.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument (i) that the claims are not directed to an abstract idea
because we have determined that the claims are directed to the abstract idea
of scaling of coefficients for a quadratic program or quadratic constrained
program. See Ans. 5 (“the abstract idea is the scaling of coefficients for a
quadratic program or quadratic constrained program”).
We are also not persuaded of error on the part of the Examiner by
Appellants’ arguments (ii) and (iii) that the claim limitations improve
computer functionality because there is no indication that the computers
used in the invention are anything other than general purpose computers.
See Spec. ¶ 84; see also Ans. 4 (“There is nothing in the combination of
these elements that result[s] in a non-conventional and non-generic
arrangement... simply claiming that the abstract idea is performed by a
processor does not necessarily mean that the abstract idea in not preempted...
[the] improvement is the result of the program and not due to the functioning
of the processor.”).
We, therefore, sustain the Examiner’s non-statutory subject matter
rejection of claim 1. We also sustain the Examiner’s non-statutory subject
matter rejections of claims 2–20, which are not separately argued with
particularity.

ORDER
The Examiner’s decision rejecting claims 1–20 is affirmed.
Appeal 2017-007789
Application 14/189,976

9
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED