Ex Parte Ma et al

Patent Trial and Appeal Board

Jul 31, 2017

12136191 (P.T.A.B. Jul. 31, 2017)

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.
12/136,191 06/10/2008 Li Ma CN920070011US1 5141
48915 7590 08/02/2017
CANTOR COLBURN LLP-IBM YORKTOWN
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
BRIER, JEFFERY A
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LI MA, YUE PAN, CHEN WANG,
and ZHEMIN ZHU
Appeal 2017-003755
Application 12/136,191
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1,2, 4—7, 12—18 and 23—33. Claims 3, 8—11, and 19-22
are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-003755
Application 12/136,191
Invention
The disclosed and claimed invention on appeal “relates to graph
coarsening, and more particularly to a system and method for coarsening a
graph so as to discover a community rapidly and accurately.” (Spec. 12).
Representative Claim
1. A method for coarsening a graph, the graph including a
plurality of vertices, the method comprising:
selecting, by a processor of a computer machine, a first
vertex of the plurality of vertices based at least in part on a
random ordering of the of the plurality of vertices; and
performing a coarsening process for the first vertex, the
coarsening process comprising:
determining, by the processor and based at least in part on
a first position of the first vertex in the graph, a plurality of
adjacent vertices having respective positions adjacent to the first
position in the graph;
calculating, by the processor, a respective merge
modularity gain between the first vertex and each of the plurality
of adjacent vertices;
calculating, by the processor, a respective similarity
between the first vertex and each of the plurality of adjacent
vertices;
determining, by the processor, a second vertex of the
plurality of adjacent vertices, the second vertex being associated
with a largest respective merge modularity gain;
determining, by the processor, that the second vertex is
associated with a largest respective similarity; and
2
Appeal 2017-003755
Application 12/136,191
merging, by the processor, the first vertex with the second
vertex to obtain a level of a multilevel coarsened graph set.
Rejections
A. Claims 1, 2, 4—7, 12—18, and 23—33 are rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception.
B. Claims 1, 2, 4—7, 12—18, and 23—33 are rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
C. Claims 13—18 and 31 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter.
Grouping of Claims
Based on Appellants’ arguments (App. Br. 12—22), we decide the
appeal of rejections A and B of claims 1, 2, 4—7, 12—18, and 23—33 on the
basis of representative claim 1. We address rejection C of claims 13—18,
and 31, not argued separately, infra.
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. Regarding rejections A, B and C, we disagree with Appellants’
arguments and we adopt as our own: (1) the findings and legal conclusions
set forth by the Examiner in the Final Office Action (5—24), from which this
appeal is taken, and (2), the corresponding findings, legal conclusions, and
explanations for rejections A, B and C, as set forth in the Answer (20-25), in
response to Appellants’ arguments. (App. Br. 11—22). We highlight and
address specific findings and arguments for emphasis in our analysis below.
3
Appeal 2017-003755
Application 12/136,191
Rejection A under §101 of Claims 1,2, 4—7, 12—18, and 23—33
Issue 1: Under § 101, did the Examiner err in concluding claim 1 is
directed to patent-ineligible subject matter?1
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
The Supreme Court, however, has long interpreted § 101 to include an
implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas
are not patentable.” See, e.g., Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S.
Ct. 2347, 2354 (2014) (quoting Assoc., for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal quotation marks
omitted)). In Alice, the Supreme Court set forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)).
The first step in our analysis is to determine whether the claims at
issue are directed to a patent-ineligible concept, such as an abstract idea. See
Alice, 134 S. Ct. at 2355.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether [there
are] additional elements [that] ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).
1 We consider the claims as a whole and give the claim limitations the
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
4
Appeal 2017-003755
Application 12/136,191
In other words, the second step is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294).
Alice — Step One
Here, regarding the judicially created “abstract idea” exception {Alice,
Step One), Appellants argue Enfish v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016) (hereinafter ''Enfish”) “is instructive” and contend, inter alia:
[T]he present claims are directed to an improvement to computer
functionality similar to the claims in Enfish, which are
distinguished by the CAFC from the claims in Digitech. In
finding the claims in Enfish to be directed to an improvement to
computer functionality, the CAFC noted "the self-referential
table recited in the claims on appeal is a specific type of data
structure designed to improve the way stores and retrieves data
in memory." See Enfish at page 18. Similarly, the present claims
are directed to a coarsening process that produces a specific type
of data structure - a multilevel coarsened graph set that makes
the process for refinement into high quality communities faster,
thereby reducing the computational resources required to
perform such refinement as compared to conventional
community detection algorithms. . . .
[T]he present specification's teachings that the presently claimed
coarsening process produces a multilevel coarsened graph set
that can be refined more quickly into high quality communities
than conventional community detection algorithms bolsters the
conclusion that the present claims are directed to an
improvement to computer technology.
(App. Br. 17-18.)
We find Appellants’ arguments unpersuasive. (App. Br. 15—22; Reply
Br. 8—15). We conclude claim 1 is directed to a generic processor
5
Appeal 2017-003755
Application 12/136,191
performing mathematical calculations on certain data. We note the Supreme
Court in Alice cautions that merely limiting the use of an abstract idea “to a
particular technological environment” or implementing the abstract idea on a
“wholly generic computer” is not sufficient as an additional feature to
provide “practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.” Alice, 134 S. Ct. at 2358
(internal quotation marks and citations omitted).
Here, we conclude Appellants’ claim 1 is distinguishable from the
type of claim considered by the court in Enfish, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016), because Appellants’ claim 1 does not recite a
“self-referential table for a computer database,” as claimed in Enfish, 822
F.3d at 1336. We further conclude claim 1 is not “directed to an
improvement in the functioning of a computer,” as was found by the court
regarding the subject claim in Enfish, 822 F.3d at 1338 (emphasis added).
On the contrary, we conclude claim 1 is directed to an abstract idea
because the claimed processor uses mathematical algorithms to manipulate
data (perform calculations) to generate additional information (e.g., generate
a multilevel coarsened graph set). See Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344, 1350—51 (Fed. Cir. 2014)
(holding that “a process of organizing information through mathematical
correlations . . . not tied to a specific structure or machine” is an abstract
idea). See also Enfish (fundamental economic and conventional business
practices are often found to be abstract ideas, even if performed on a
computer. See, e.g., OIP Techs., Inc. v. Amazon.com Inc., 788 F.3d 1359
1362-63.)
6
Appeal 2017-003755
Application 12/136,191
For at least these reasons, we conclude representative claim 1 is
directed to an abstract idea. (Alice — Step One).
Alice — Step Two
Proceeding to step two of the Alice test articulated by the Supreme
Court, we further “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.” Alice,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297).
Regarding step two of the Alice analysis, Appellants contend, inter
alia:
[T]he mathematical operations for generating the multilevel
coarsened graph set are similarly tied to the processor's ability to
perform improved community detection using the multilevel
coarsened graph set. . . . [T]he meaningful limitations in the
present claims that tie the multilevel coarsen graph set to
improved community detection are sufficient to find the present
claims patent-eligible.
(App. Br. 20.)
However, we conclude the nature of Appellants’ claims is not
transformed into a patent-eligible application of the abstract idea presented,
because these claims do nothing more than simply instruct the practitioner to
implement an abstract idea of mathematical calculations using a generic
processor.
Instead, we conclude Appellants’ claims are broadly directed to
abstract general concepts of calculating numerical functions on certain data
in the context of coarsening a graph set. See Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). “[MJerely selecting
information, by content or source, for collection [and] analysis . . . does
7
Appeal 2017-003755
Application 12/136,191
nothing significant to differentiate a process from ordinary mental processes
■ ■ ■ ■” (Id-)-
We conclude Appellants’ representative claim 1 is directed to a
patent-ineligible abstract concept, and does not recite something
“significantly more” under the second step of the Alice analysis.
Accordingly, for the reasons discussed above, we sustain the Examiner's
rejection A under 35 U.S.C. § 101 of representative claim 1, and grouped
claims 2, 4—7, 12—18, and 23—33, as being directed to patent-ineligible
subject matter in light of Alice and its progeny. See Grouping of Claims,
supra.
Rejection B under § 112, first paragraph, written description,
of Claims 1, 2, 4—7, 12—18, and 23—33
Issue 2: Under § 112, first paragraph, did the Examiner err in finding
representative claim 1 fails to comply with the written description
requirement?
Appellants contend, inter alia:
[T]he present claims are claiming a scenario in which the same
vertex does have the biggest merge modularity gain and the
biggest similarity, that is, a scenario in which the criteria of step
535 is met. The specification obviously contemplates the
claimed scenario.
App. Br. 5 (emphasis added).
We are not persuaded by Appellants’ contentions because a
Specification which merely renders obvious the claimed invention is not
sufficient to satisfy the written description requirement. Our reviewing court
guides the written description “must clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed.” Ariad
8
Appeal 2017-003755
Application 12/136,191
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (citation and quotations omitted). The test is whether the disclosure
“conveys to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” Id. “[Ajctual ‘possession’ or
reduction to practice outside of the specification is not enough. Rather,. . .
it is the specification itself that must demonstrate possession.” Id. at 1352;
see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306-07
(Fed. Cir. 2008) (emphasis added) (explaining that § 112,11 “requires that
the written description actually or inherently disclose the claim element”).
[I]t is ‘not a question of whether one skilled in the art might be
able to construct the patentee’s device from the teachings of the
disclosure. . . . Rather, it is a question whether the application
necessarily discloses that particular device.’ ... A description
which renders obvious the invention for which an earlier
filing date is sought is not sufficient.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)) (emphasis
added).
Applying this reasoning here, we find Appellants’ statement “[t]he
specification obviously contemplates the claimed scenario” is insufficient.
App. Br. 5 (emphasis added). Therefore, on this record, we are not
persuaded the Examiner erred. Accordingly, we sustain the Examiner’s
rejection B of representative claim 1, and grouped claims 2, 4—7, 12—18, and
23—33, under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement. See Grouping of Claims, supra.
9
Appeal 2017-003755
Application 12/136,191
Rejection C under § 112, second paragraph of Claims 13—18 and 31
Issue 3: Under § 112, second paragraph, did the Examiner err in
concluding claims 13—18 and 31 are indefinite?
Appellants contend:
Appellant respectfully submits that the 35 U.S.C. § 112, second
paragraph, rejection of claims 13-18 and 31 represents clear legal
and factual for at least the same reasons as those discussed
above with respect to the § 112, first paragraph, rejection.
App. Br. 15 (emphasis added).
We find Appellants advance no substantive, separate arguments
regarding claims 13—18 and 31, rejected under Rejection C. App. Br. 15.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Therefore, we sustain rejection C of claims 13—18 and 31.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
10
Appeal 2017-003755
Application 12/136,191
DECISION
We affirm the Examiner’s rejection A of claims 1, 2, 4—7, 12—18, and
23-33 under 35 U.S.C. § 101.
We affirm the Examiner’s rejection B of claims 1, 2, 4—7, 12—18, and
23—33 under 35 U.S.C. § 112, first paragraph.
We affirm the Examiner’s rejection C of claims 13—18 and 31 under
35 U.S.C. § 112, second paragraph.
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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
11