Ex Parte Starhill

Patent Trial and Appeal Board

Aug 5, 2016

12645851 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/645,851 12/23/2009
76269 7590 08/09/2016
LAW OFFICE OF IDO TUCHMAN (AUS)
PO Box 765
Cardiff, CA 11415
FIRST NAMED INVENTOR
Philip M. Starhill
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.
AUS920090173US 1 9045
EXAMINER
YU,HENRYW
ART UNIT PAPER NUMBER
2181
NOTIFICATION DATE DELIVERY MODE
08/09/2016 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):
pair@tuchmanlaw.com
PTOL-90A (Rev. 04/07)
u-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PHILIP M. STARHILL
Appeal2014-008316
Application 12/645,851
Technology Center 2100
Before ROBERT E. NAPPI, CARLA M. KRIVAK, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection.
1 The real party in interest is identified as International Business Machines
Corporation. (App. Br. 2.)
Appeal2014-008316
Application 12/645,851
Claimed Subject Matter
The claimed invention relates to a method, system and computer
program product that improve multiplication of a vector by a product of
elementary matrices. (Title; Abstract.) Claim 1, reproduced below, is
illustrative:
1. A system comprising:
at least one computer processor; and
a controller configured to cause the computer processor to
determine which intermediate resultants of a matrix vector
product between an input vector and a plurality of elementary
matrices can be performed in parallel.
Rejection2
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as obvious over
Bonebakker et al. (US 7,631,171 B2; iss. Dec. 8, 2009) ("Bonebakker") and
Karmarkar et al. (US 5,107,452; iss. Apr. 21, 1992) ("Karmarkar"). (Final
Act. 4--12.)
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments the Examiner erred (App. Br. 4--15; Reply Br. 1-10). We are
unpersuaded by Appellant's contentions as to claims 1---6, 8-13, and 15-19.
2 We note Appellant's Reply Brief contends that the Examiner's Answer
presents new grounds of rejection of the claims under 35 U.S.C. § 102(e) as
anticipated by each ofBonebakker and Karmarkar. (Reply Br. 2.) We do
not find the Answer presents such new rejections. In the context of the
Answer, which maintains the 35 U.S.C. § 103(a) rejection from the Final
Action (Ans. 4), we understand the references to§ 102(e) to merely indicate
the subsection under which Bonebakker and Karmarkar qualify as prior art.
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Application 12/645,851
For these claims, we adopt as our own the findings and reasons set forth by
the Examiner in the Action from which this appeal is taken and in the
Answer (see Ans. 13-15). 3
As to claims 7, 14, and 20, we agree with Appellant's contention the
Examiner has not shown the combination of Bonebakker and Karmarkar
teaches an integer array NEXT of length NUM_MATRICES contains the
index of a next matrix from the plurality of matrices with a non-identity cell
in the column whose index is equal to the ROWS[i] as required by each of
these claims.
We highlight and address specific arguments and findings for
emphasis as follows.
Claims 1-6, 8-13, and 15-19
Appellant argues Bonebakker and Karmarkar fail to teach or suggest a
controller configured to cause the computer processor to determine which
intermediate resultants of a matrix vector product between an input vector
and a plurality of elementary matrices can be performed in parallel, as
recited in claim 1. (App. Br. 4--13; Reply Br. 3---6.) According to Appellant,
Bonebakker describes threads and instructions, but one of ordinary skill
"would not interpret an instruction/thread to be equivalent to the claimed
'matrix vector product between an input vector and a plurality of elementary
matrices"' recited in claim 1. (App. Br. 8, 9.) Appellant contends
Bonebakker "does not contemplate analysis of a matrix vector product
between an input vector and multiple matrices." (App. Br. 7 .)
3 Throughout this opinion we refer to the Supplemental Examiner's Answer
mailed June 25, 2014.
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Application I2/645,85 I
We are not persuaded by Appellant's arguments. At the outset, we
note the Examiner relies on Bonebakker for a matrix vector product between
an input vector and a matrix, and on Karmarkar for a matrix being a plurality
of elementary matrices as claimed. (Final Act. 4, 5 (citing Bonebakker col.
I, 11. 46-48; Karmarkar col. I6, 11. I3-I4).) We agree with the Examiner's
findings that Bonebakker's instruction teaches a matrix vector product
between an input vector and a matrix. (Ans. I4 (citing Bonebakker Fig.
IA).) Bonebakker's Figures IA and IB and their description at column 3,
lines I-20 disclose a "single vector instruction" that is "a vector matrix
multiplication operation" between an input vector and a matrix. (See
Bonebakker col. 3, 11. IO-I3, Figs. IA-IB.) Additionally, we agree with the
Examiner that it would have been obvious to use Karmarkar' s elementary
matrices as Bonebakker' s matrix in the vector product to improve matrix
multiplication speed and efficiency-a concern shared by Karmarkar
(Karmarkar col. 5, 11. 20-30) and Bonebakker (Bonebakker Fig. IA). (Ans.
I4; Final Act. 5.) Thus, the combination of Bonebakker and Karmarkar
teaches and suggests the claimed matrix vector product between an input
vector and a plurality of elementary matrices as recited in claim I. (Final
Act. 5.)
Appellant additionally argues Bonebakker does not determine which
intermediate resultants of a matrix vector product can be performed in
parallel, as required by claim 1. (App. Br. 5-I I; Reply Br. 3-5.) Appellant
recognizes Bonebakker splits a vector instruction across threads that execute
in parallel, but contends Bonebakker makes no mention or suggestion of
determining which intermediate resultants can be performed in parallel.
(App. Br. 6, 7, IO, 11; Reply Br. 4, 5.)
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Application 12/645,851
The Examiner finds "since data is part of the instruction/thread,
[Bonebakker' s] executing the instruction/thread in parallel also mean[ s] that
the data is processed in parallel." (Ans. 14; Final Act. 3, 4 (citing
Bonebakker col. 1, 11. 46-50, col. 4, 11. 24--34, col. 4, 11. 62----67, col. 5, 11. 1-
3).) The Examiner also finds, and we agree, that "ascertaining . .. data
dependency through executed instructions is known in the art when it comes
to hazard avoidance in instruction pipelining." (Ans. 15 (emphasis added);
see also Bonebakker col. 3, 11. 27-30 ("when operations (such as the
multiply in matrix multiplication) are independent, the lack of data hazards
and branches allow deep pipelining.").) The Examiner concludes
Bonebakker's mapping a vector operation across parallel threads teaches and
suggests determining which intermediate resultants of the vector operation
can be performed in parallel, as required by claim 1. (Ans. 14, 15; Final
Act. 3, 4.) We agree with the Examiner's reasonable findings, as
Bonebakker discloses at column 3, lines 15-20 and Figures lA-lB a
specific example of a compiler determining which intermediate resultants-
from multiplying, summing, and loading matrix vector entries and calculated
intermediate values----of a matrix vector product F=AxB can be performed in
parallel. (Final Act. 5; see Bonebakker col. 3, 11. 15-20.)
Appellant further contends the Examiner's combination of
Bonebakker and Karmarkar is improper because the combination lacks
rational underpinning. (App. Br. 12, 13.) Appellant acknowledges
Karmarkar is concerned with matrix multiplication, but contends
"Bonebakker makes no mention of matrix multiplication" and therefore one
of ordinary skill would not combine the references. (App. Br. 13.) We are
not persuaded by Appellant's arguments for the reasons discussed supra
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Application 12/645,851
with respect to Bonebakker's Figures IA-IB, which teach a matrix
multiplication operation. (See also Bonebakker col. 3, 11. 10-12.) We find
the Examiner has provided articulated reasoning with a rational
underpinning and we agree with the Examiner that one of ordinary skill in
the art would combine Bonebakker with Karmarkar to achieve a faster and
more efficient matrix multiplication. (Final Act. 5.)
Accordingly, Appellant's arguments directed to the Examiner's
rejection of claim 1 have not persuaded us of error in the Examiner's
rejection, and we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Bonebakker and Karmarkar. For the same reasons, we sustain
the rejection of independent claims 8 and 15 argued for the same reasons as
claim 1, and dependent claims 2-6, 9-13, and 16-19, which Appellant does
not argue separately (App. Br. 4, 13.)
Claims 7, 14, and 20
Claim 14 depends from claim 8 (via claims 9-11) and recites, in part,
an integer array NEXT of length NUM_MATRICES contains the index of a
next matrix from the plurality of matrices with a non-identity cell in the
column whose index is equal to the ROWS[i], where integer array ROWS of
length NUM_MATRICES contains an elementary row number for each of
the elementary matrices. Claim 7, which depends from claim 1, and claim
20, which depends from claim 15, recite similar limitations. The Examiner
finds Karmarkar's matrix representations via i- andj-Lists teach an integer
array NEXT as claimed. (Ans. 15 (citing Karmarkar col. 16, 11. 15--43);
Final Act. 8 (citing Karmarkar col. 12, 11. 6-21 & 26-51).)
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Appellant argues Karmarkar discloses the i-List specifies a matrix's
row position of each entry and the j-List specifies column boundaries in the
i-List, but Karmarkar does not teach an integer array NEXT containing the
index of a next matrix as recited in claim 14. (App. Br. 14.) We concur
with Appellant the Examiner has not shown that Karmarkar's i- andj-Lists
teach or suggest the claimed array NEXT. The cited portions of Karmarkar
describe i- and j-Lists that specify positions of a matrix's non-zero entries to
represent that matrix, but do not determine an array NEXT that requires an
index of a next matrix having a non-identity cell column that corresponds to
a row of a previous matrix as required by claim 14. (See Karmarkar col. 12,
11. 6-21, col. 16, 11. 27--43; Spec. i-fi-127, 38 and 42--45, Fig. 2.)4
Absent sufficient findings that Karmarkar or Bonebakker teaches an
integer array NEXT that contains the index of a next matrix from a plurality
of matrices with a non-identity cell in the column whose index is equal to
the ROWS[i], on the record before us, we do not sustain the Examiner's
rejection of claims 7, 14, and 20 under 35 U.S.C. § 103(a) as obvious over
Bonebakker and Karmarkar.
4 Appellant's Specification at Figure 2 illustrates an example of a plurality of
three matrices, matrix 3 being "the leftmost matrix." (See Spec. i1 45, Fig.
2.) Paragraphs 38 and 42--45 in the Specification further describe how an
exemplary integer array NEXT is generated by determining the index of a
next matrix after matrix 1-in the group of three matrices-for which a non-
identity cell is present in the column of index 2, index 2 being equal to the
array value at ROWS[l] for matrix 1, and the array value at ROWS[l] being
the elementary row number in matrix 1. (See Spec. i1i138 and 42--45, Figure
2.) Thus, the claimed integer array NEXT requires an index of a next matrix
having a non-identity cell column that corresponds to a row of a previous
matrix.
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Appeal2014-008316
Application 12/645,851
NEW GROU-ND OF REJECTION OF CLAIMS 1-20
UNDER 35 U.S.C. § 101
Pursuant to our authority under 3 7 C.F .R. § 41.50(b ), we enter a new
ground of rejection under 35 U.S.C. § 101 of independent claims 1-20 as
directed to non-statutory subject matter for the following reasons.
The Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'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)). The "abstract ideas" category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S. Ct. at 2355 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
Following the Alice decision, the United States Patent and Trademark Office
published guidance on § 101, including "2014 Interim Guidance on Patent
Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), "July 2015
Update on Subject Matter Eligibility," 80 Fed. Reg. 45429 (July 30, 2015),
and "May 2016 Subject Matter Eligibility Update," 81 Fed. Reg. 27381
(May 6, 2016), which supplement the "Preliminary Examination Instructions
in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS
Bank International, et al.," Memorandum to the Examining Corps,
June 25, 2014.
In Alice, the Supreme Court reiterated the framework set out in Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012),
for "distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. at 2355. After determining that a claim
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nominally falls within one of the statutory categories of machine,
manufacture, process, or composition of matter, the first step in the analysis
is to "determine whether the claims at issue are directed to one of those
patent-ineligible concepts." Id. For example, abstract ideas include, but are
not limited to, fundamental economic practices, methods of organizing
human activities, an idea of itself, and, mathematical formulas or
relationships. Id. at 2355-57.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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). 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. (alteration in original) (quoting Mayo, 132 S. Ct. at
1294). The prohibition against patenting an abstract idea "'cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant post-solution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted). A claim
reciting an abstract idea also does not become eligible "merely by adding the
words 'apply it."' Bancorp Servs., LLC v. Sun Life Assurance Co. of Can.
(US.), 687 F.3d 1266, 1276 (Fed. Cir. 2012).
In applying the framework set out in Alice, and as the first step of the
analysis, we find Appellant's independent claim 8 is directed to a patent-
ineligible abstract concept of manipulating data to determine mathematical
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characteristics of the data. All the steps of Appellant's claim 8, including,
for example: i) receiving an input vector; and ii) determining which
intermediate resultants of a matrix vector product between the input vector
and a plurality of elementary matrices can be performed in parallel, are
abstract mathematical concepts that could be performed in the human mind,
or by a human using a pen and paper, without need of any computer or other
machine. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372-73 (Fed. Cir. 2011) ("[A] method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101."); Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("[p]henomena of
nature ... , mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work."
(emphasis added)). Additionally, mental processes remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper. CyberSource, 654 F.3d at 1375 ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.").
Because we find claim 8 to be directed to an abstract idea, we must
determine whether the claim as a whole-including all elements or
combination of elements-is directed to significantly more than the abstract
idea itself, i.e., to a patent-eligible application of the abstract idea. See Alice,
134 S. Ct. at 2355. Interpreted in the context of the Specification, the claim
involves data processing of receiving data (an input vector) and analyzing
data to determine if certain intermediate resultants can be performed in
parallel. In particular, Appellant's Specification describes that determining
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Application 12/645,851
if intermediate resultants can be performed in parallel is done by analyzing
data such as matrices' rows and columns. (See Spec. i-fi-143--45.) It is
possible to perform the method recited in Appellant's claim 8 mentally, or
with pen and paper. See CyberSource, 654 F.3d at 1375 (holding a method
for verifying the validity of a credit card transaction over the Internet non-
statutory as an abstract idea capable of being performed in the human mind
or by a human using a pen and paper); Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333-34 (Fed. Cir. 2012) ("Simply adding a 'computer aided'
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible."). Thus, as confirmed by
Appellant's Specification, the "receiving" and "determining" steps of claim
8 simply involve mathematically manipulating information to generate
additional information, which are not patent-eligible steps.
The only element of claim 8 that is not a purely mental or algorithmic
step is the "at least one computer processor" that performs the determining
step. We find, however, that this limitation does not ensure that the claim
amounts to significantly more than the patent-ineligible concept. No
particular type of a computer processor is recited in claim 8, thus the
limitation requires no more than a computer processor performing its basic
function. Claim 8 merely does with a computer what could be done
manually-analyzing a matrix vector product to determine characteristics of
its intermediate resultants---except for the specific nature, complexity, or
volume of the information processed. The mere implementation of an
abstract idea via generic computer functions is not sufficient to render a
claim patentable. See Alice, 134 S. Ct. at 2358 (citing Mayo, 132 S. Ct. at
1301 ).
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Weighing these factors, we conclude claim 8 does not amount to
significantly more than the recited abstract idea, and it is not patent-eligible
under 35 U.S.C. § 101. Accordingly, we further reject claim 8 on this basis.
Turning to dependent claims 9--14, which depend from claim 8, we
find these claims do not add anything significantly more to the patent-
ineligib le concept recited in independent claim 8. Dependent claims 9-11,
13, and 14 specify further processing or calculations on certain specified
data or previously calculated data (e.g., determining in claim 9, calculating
in claims 10 and 11, deferring calculation in claim 13, and generating data
arrays in claim 14), which are again abstract mathematical concepts that
could be performed in the human mind, or by a human using a pen and
paper, and thus fall under our analysis of claim 8, supra. The only elements
of dependent claims 9--14 that are not purely mental or algorithmic steps are
the "plurality of computer processors" that perform the calculating and
deferring steps of claims 10, 11, and 13, the "plurality of computer
processors [that] are packages in at least one multi core integrated circuit" in
claim 12, and the "computer processor P(j), where P(j) is one of the plurality
of computer processors" for which a stored integer is solely accessible in
claim 14. These limitations do not ensure that the claims amount to
significantly more than the patent-ineligible concept, because the limitations
require no more than computer processors performing their basic function.
The additional elements involving computer processors in claims 9--14 are
well-understood, routine, and conventional limitations, adding nothing that
is not already present when the elements are taken individually.
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For these reasons as well as those stated with respect to claim 8, we
also reject dependent claims 9-14 as ineligible subject matter under 35
U.S.C. § 101.
Independent claim 1 is similar to claim 8, but recites a computer
processor and controller configured to perform the steps. Independent claim
15 is similar to claim 8, but recites computer readable program code
configured to perform the claimed functions. Claims 1 and 15 also merely
perform with a computer what could be done manually-analyzing a matrix
vector product to determine characteristics of its intermediate resultants-
except for the specific nature, complexity, or volume of the information
processed. The mere implementation of an abstract idea via generic
computer systems or code is not sufficient to render a claim patentable. See
Alice, 134 S. Ct. at 2358 (citing Mayo, 132 S. Ct. at 1301). For this reason
as well as those stated with respect to claim 8, we also reject claims 1 and
15. Dependent claims 2-7 and 16-20 similarly correspond to one of claims
9-14. We reject claims 2-7 and 16-20 for the same reasons given above for
claims 9-14.
DECISION
The Examiner's decision rejecting claims 1-6, 8-13, and 15-19 is
affirmed. The Examiner's decision rejecting claims 7, 14, and 20 is
reversed.
We also enter a new ground of rejection of claims 1-20 under
35 U.S.C. § 101 pursuant to our authority under 37 C.F.R. § 41.50(b).
Section 41.50(b) provides "[a] new ground of rejection pursuant to this
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paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART;
37 C.F.R. § 41.50(b)
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