Ex Parte Wegbreit et al

Patent Trial and Appeal Board

Mar 29, 2018

12287315 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/287,315 10/08/2008
80641 7590 03/29/2018
Gard & Kaslow LLP
4 Main Street, Suite 20
Los Altos, CA 94022
FIRST NAMED INVENTOR
Eliot Leonard Wegbreit
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.
PA1006US 8159
EXAMINER
WERNER, BRIAN P
ART UNIT PAPER NUMBER
2665
MAILDATE DELIVERY MODE
03/29/2018 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 ELIOT LEONARD WEGBREIT and GREGORY D. HAGER
Appeal2017-007321
Application 12/287 ,315 1
Technology Center 2600
Before CARL W. WHITEHEAD JR., HUNG H. BUI, and
AMBER L. HAGY, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-19, 23, and 34--40,2 which are all the
claims pending in this appeal. Claims 20-22 and 24--33 have been
withdrawn due a Restriction Requirement. We have jurisdiction under
35 U.S.C. § 6(b).
WeAFFIRM. 3
1 According to Appellants, the real party of interest is Strider Labs, Inc.
2 Claims 2-12, 14, 17, and 19 have been conditionally allowed if rewritten
in independent form including all limitations of base claim 1 and any
intervening claims. Final Act. 13.
3 Our Decision refers to Appellants' Reply Brief filed April 10, 2017
("Reply Br.") and Appeal Brief filed January 4, 2017 ("App. Br.");
Examiner's Answer mailed February 8, 2017 ("Ans."); Final Office Action
mailed May 6, 2016 ("Final Act."); and original Specification filed October
8, 2008 ("Spec.").
Appeal2017-007321
Application 12/287,315
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention relates to constructing a 3D scene model from
an image of a scene. Spec. i-f 1; Abstract.
Claims 1, 23, and 34--40 are independent. Claim 1 is illustrative of
the claimed subject matter, as reproduced below:
1. A method for computing a 3D scene model
comprising 3D object models and representing a scene, based
upon a prior 3D scene model, the method comprising the steps
of:
(a) acquiring, by a camera, an image of the scene;
(b) initializing, by a processor, the 3D scene model to the
prior 3D scene model; and
( c) modifying the 3D scene model to be consistent with the
image, by:
(i) comparing, by the processor, data of the
image with objects of the 3D scene model, resulting in
associated data and unassociated data;
(ii) using, by the processor, the unassociated
data to compute new 3D object models that are not in the
prior 3D scene model and adding the new 3D object
models to the 3D scene model; and
(iii) using, by the processor, the associated data
to detect 3D object models in the prior 3D scene model
that are absent and removing the absent 3D object models
from the 3D scene model.
App. Br. 31 (Claims Appx.).
Examiner's Rejection
Claims 1-19, 23, and 34--40 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter,
i.e., an abstract idea. Final Act. 3-11.
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Application 12/287,315
ANALYSIS
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). 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 Bank Int 'l,
134 S. Ct. 2347, 2354 (2014). 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)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas [or mental processes4] from those that claim patent-eligible
applications of those concepts." Id. at 2355 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79 (2012)). The first step in
the analysis is to "determine whether the claims at issue are directed to [one
of those] patent-ineligible concept[s]." Id. If not, the inquiry ends. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). 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, 566 U.S. at 78-79). In other words, the second step is to
4 See Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("Phenomena of nature,
though just discovered, mental processes, and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific and technological
work."). (Emphasis added).
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"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, 566 U.S. at 72-73).
In rejecting independent claims 1, 23, and 34--40, and dependent
claims 2-19, under 35 U.S.C. § 101, the Examiner finds the claims are
directed to an abstract idea of 3D modeling of an image involving
modification of a 3D scene model based on an image obtained from a scene.
Final Act. 3. The Examiner also finds:
[ t ]he Amendment filed on 04/19/1016 adds nothing more than
generic or insignificant structures. For example, the amendment
to independent claim 1 adds a "camera" to the image acquiring
steps, and implementation by a "processor" to the remaining
process steps (a) - (c) ...
The "camera" limitation of claim 1 is direct to "insignificant
extrasolution activity" (refer to the third bullet above) in the form
of data gathering, and is not enough to convert otherwise
ineligible subject matter to something eligible. Simply
appending routine structure, "a camera", to routine data
gathering is not "significantly more" ...
The "processor" limitation of claim 1 is "no more than a generic
computer to perform generic computer functions" (refer to the
second bullet above). Simply reciting an otherwise abstract
mental determination as being generically performed on a
generic computer is not "significantly more". There is nothing
that would improve the functioning of the computer itself, or that
would improve another technology or technical field. The
computer is not a special purpose machine, having special or
unique hardware in any form. The recited computer is generic,
and general purpose, and not "significantly more" (Alice Corp.,
134 S. Ct. at 2359 (using a computer to obtain data, adjust
account balances, and issue automated instructions); Mayo, 132
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S. Ct. at 1300 (telling a doctor to measure metabolite levels in
the blood using any known process).
Final Act. 4--6.
As to the first step of the Alice inquiry, Appellants contend the
pending claims (which Appellants argue collectively) are not directed to an
abstract idea or a mental process that can be performed in the human mind
or by a human using a pen and paper; instead, Appellants argue these claims
"are sophisticated calculations that require computer or processor
assistance" or "are performed by such elements as a processor, a Z-buffer
and a camera." App. Br. 18; see also Reply Br. 5.
We are not persuaded by Appellants' arguments. Contrary to
Appellants' arguments, independent claims 1, 23, and 34--40 are directed to
a patent-ineligible abstract concept of 3D modeling of an image involving
making modification of a 3D scene model based on an image obtained from
a scene. All the steps of Appellants' claims 1, 23, and 34--40, including, for
example: "(i) comparing ... data of the image with 3D object models of the
3D scene model, resulting in associated data and unassociated data;"
"(ii) using ... the unassociated data to compute new 3D object models that
are not in the prior 3D scene model and adding the new 3D object models to
the 3D scene model;" and "(iii) using ... the associated data to detect 3D
object models in the prior 3D scene model that are absent and removing the
absent 3D object models from the 3D scene model," are 3D abstractions of
an image or an abstract concept that could be performed in the human mind,
or by a human using a pen and paper. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1972 (Fed. Cir. 2011). "[M]ental processes-
or processes of human thinking-standing alone are not patentable even if
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they have practical application." In re Comiskey, 554 F.3d 967, 979 (Fed.
Cir. 2009); see also Gottschalk, 409 U.S. at 67 ("Phenomena of nature ... ,
mental processes, and abstract intellectual concepts are not patentable, as
they are 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.").
Likewise, attaching the claimed "mental process" to a computer or
processor, as Appellants argue (App. Br. 18; Reply Br. 5), does not
transform the claimed "mental process" into a patent-eligible subject matter
under 35 U.S.C. § 101 unless the computer or processor is required. See
SiRF Tech., Inc. v. Int'! Trade Comm'n, 601F.3d1319, 1331 (Fed. Cir.
2010). Appellants have not presented any argument or evidence that the
claimed "mental process" must be performed by a computer or processor, as
per SiRF Tech.
Appellants further advance several patent-eligibility arguments based
on (1) Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016);
(2) McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016); and (3) Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed.
Cir. 2017). App. Br. 24--27; Reply Br. 13-19. For example, Appellants
argue "[a]s in Enfzsh, in the present claims general-purpose computer
components are not added to fundamental 3 D scene practice, or even a
known one, but rather are directed to a specific implementation of a solution
of a problem in computing a 3D scene." App. Br. 24. Similarly, Appellants
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argue, like McRO, the present claims "improve the existing technological
process of constructing 3D scene models, such that the performance of a
function previously performable by a computer is an 'improvement in
computer-related technology."' App. Br. 26; Reply Br. 13-14. Likewise,
Appellants argue, like Thales, "claims in the present application recite the
use of conventional equipment in a non-conventional, new and non-obvious
way." Reply Br. 17-19.
We are unpersuaded. Appellants' claims 1, 23, and 34--40, when
considered in light of Appellants' Specification, are directed to the abstract
idea of 3D modeling of an image involving (1) mental processes under
CyberSource, 654 F.3d at 1375, and/or (2) data manipulation or organization
through mathematical correlations, which is similar to the computing
formula discussed in Parker v. Flook, 437 U.S. 584 (1978), and the
Arrhenius formula inDiamondv. Diehr, 450 U.S. 175 (1981).
Information as such is intangible, and data analysis and algorithms are
abstract ideas. See, e.g., Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 451
n.12 (2007); Alice, 134 S. Ct. at 2355; Flook, 437 U.S. at 589, 594--95
("Reasoning that an algorithm, or mathematical formula, is like a law of
nature, Benson applied the established rule that a law of nature cannot be the
subject of a patent."); Gottschalk, 409 U.S. at 71-72. Similarly, information
collection and analysis, including when limited to particular content, is
within the realm of abstract ideas. See, e.g., Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs.,
LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014);
CyberSource, 654 F.3d at 1370. That is, "[w]ithout additional limitations, a
process that employs mathematical algorithms to manipulate existing
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information to generate additional information is not patent eligible."
Digitech, 758 F.3d at 1349-51 ("Data in its ethereal, non-physical form is
simply information that does not fall under any of the categories of eligible
subject matter under section 101. ").
In fact, none of the steps recited in claims 1, 23, and 34--40 requires,
and nowhere in Appellants' Specification is there any description or
explanation or evidence as to how 3D scene modeling and data manipulation
steps are intended to provide, any of: ( 1) "a specific improvement to the
way computers operate," as explained in Enfish, 822 F.3d at 1336; (2) "a
process specifically designed to achieve an improved technological result in
conventional industry practice," as explained in McRO, 837 F.3d at 1315; or
(3) "a non-conventional manner to reduce errors in measuring the relative
position and orientation of a moving object on a moving reference frame," as
explained in Thales, 850 F.3d at 1349. Likewise, Appellants do not present
evidence to establish that claims 1, 23, and 34--40 recite a specific
technological improvement to computers. See Enfzsh, 822 F.3d at 1336.
As to the second step of the Alice inquiry, Appellants contend claims
1, 23, and 34--40 describe "an improvement to another technology or
technical field, i.e., other less reliable ways of constructing a 3D scene
model, and adds specific limitations other than what is well-understood,
routine and conventional in the field." App. Br. 19.
We disagree with Appellants and adopt the Examiner's findings on
pages 2-9 of the Answer. We find the additional limitations, taken
individually and as a whole in the ordered combination, do not add
significantly more to the abstract idea of 3D scene modeling and data
organization through mathematical relationships or transform the abstract
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idea into a patent-eligible application. Alice, 134 S. Ct. at 2357.
Particularly, claims 1, 23, and 34--40 recite well-understood, routine, and
conventional elements (i.e., processor, buffer, and camera) that enable the
creation of a 3D scene model using a "generic computer to perform generic
computer functions" that are well-understood, routine, and conventional.
Final Act. 5-6; see also Ans. 4--7.
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." See Alice, 134 S. Ct. at 2359 (concluding claims
"simply instruct[ing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer" not patent eligible).
Likewise, "the use of generic computer elements like a microprocessor or
user interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, LLC, v. Hotels.com,
L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)); see also Accenture Global
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed.
Cir. 2013) (claims reciting "generalized software components arranged to
implement an abstract concept [of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer" are not patent eligible); Dealertrack, 674 F.3d at 1333-34
("Simply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible.").
As recognized by the Federal Circuit in Ultramercial Inc. v. Hulu,
LLC, 772 F.3d 709, 714 (Fed. Cir. 2014) (quoting Bilski v. Kappas, 561 U.S.
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at 594), the "machine-or-transformation" test can provide a "'useful clue' in
the second step of the Alice framework." However, Appellants' claims 1,
23, and 34--40 are not sufficiently tied to any machine. Nor do any of the
recited steps of Appellants' claims 1, 23, and 34--40 transform "a particular
article into a different state or thing." In re Bilski, 545 F.3d 943, 954 (Fed.
Cir. 2008), aff'd, Bilski v. Kappas, 561 U.S. 593 (2010). According to In re
Bilski, the transformation (1) must involve an underlying article from one
state to a different state or thing, and (2) must be central to the purpose of
Appellants' claimed process. Id.
Appellants argue, like Arrhythmia Research Tech., Inc. v. Corazonix
Corp., 958 F.2d 1053, 1059 (Fed. Cir. 1992), claims 1, 23, and 34--40
"transform[] a particular signal, i.e., image data, to create different signal
that can be visually interpreted, i.e., 3D scene model with 3D object models
contained within it that represent objects in the real world." App. Br. 28;
Reply Br. 8. We do not agree. As correctly recognized by the Examiner, the
claimed "image data" is not "'transformed' in to a different state, but is
rather matched, processed, and organized, without any application of the
data." Ans. 8.
Because Appellants' independent claims 1, 23, and 34--40 are directed
to a patent-ineligible abstract concept and do not recite something
"significantly more" under the second prong of the Alice analysis, we sustain
the Examiner's rejection of those claims under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter in light of Alice and its progeny.
We also sustain on the same grounds the rejection of dependent claims 2-19,
which are argued collectively with the independent claims.
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CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-19, 23, and 34--40
under 35 U.S.C. § 101.
DECISION
As such, we AFFIRM the Examiner's final rejection of claims 1-19,
23, and 34--40 under 35 U.S.C. § 101.
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
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