Hironori Takuechi et al.

Patent Trials and Appeals Board

Jul 1, 2020

11947114 - (D) (P.T.A.B. Jul. 1, 2020)

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.
11/947,114 11/29/2007 Hironori Takuechi JP920060068US1 1333
67232 7590 07/01/2020
CANTOR COLBURN LLP - IBM ARC DIVISION
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
ELKASSABGI, ZAHRA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIRONORI TAKUECHI and
DAISUKE TAKUMA
____________

Appeal 2019-005997
Application 11/947,114
Technology Center 3600
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5–13, 15, and 18–20. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corporation. (Appeal Br. 3).
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Application 11/947,114

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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to trend analysis (Spec.,
para. 1). Claim 9, reproduced below with the italics added, is representative
of the subject matter on appeal.

9. A method for evaluating a trend analysis system, comprising
the steps of:
performing, using a first device with a first device computer
processor:
extracting relationships, and knowledge among attributes
of data pieces in a data set, wherein the knowledge indicates
presence or absence of trends among the attributes of the data
pieces in the data set;
performing, using a second device with a second device
computer processor:
importing the relationships, and knowledge among
attributes of data pieces in a data set from the first device via a
communications interface;
setting allowable ranges for false positives and false
negatives for said relationships;
computing an accuracy for the trend analysis system as a
function of said errors that fall within said allowable ranges;
performing a tuning of parameters of the trend analysis
system based on said computed accuracy, for the trend analysis
system, based on whether the increasing or decreasing would
increase or decrease the accuracy of the trend analysis system,
wherein the trend analysis system modifies a confidence
coefficient based on response to a change in a measured value
of the accuracy, and uses the modified confidence coefficient to
obtain new trend data, new relationship data, and new
knowledge data from the data set;
wherein, when a decrease of the confidence coefficient
results in a corresponding increase of the accuracy, the
confidence coefficient is further decreased;
wherein, when an increase of the confidence coefficient
results in a corresponding increase of the accuracy, the
confidence coefficient is further increased;
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terminating said parameter tuning when said computed
accuracy satisfies a dynamically created termination condition;
and
transmitting the computed accuracy for the trend
analysis system to the external communication device via the
communication interface.

THE REJECTION
The following rejections is before us for review:
Claims 1, 3, 5–13, 15, and 18–20 are rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 9 is improper because
the claim is not directed to an abstract idea (Appeal Br. 16, 17, 21). The
Appellant argues further that the claim is integrated into a practical
application (Appeal Br. 17–20, 21–23).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 4–6; Ans. 4–9).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“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.”); see also 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 . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we first look to whether the claim recites:
(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, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
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monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also 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 look to 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 generality, to the judicial exception.
See Guidance.
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Specification at paragraph 1 states that the invention “relates to
trend analysis.” Here, the Examiner has determined that the claim sets forth
a mental process (Ans. 4). We substantially agree with the Examiner. We
determine that claim 9 sets forth the subject matter in italics above which is
drawn to: [1] “extracting relationships, and knowledge . . . in a data set,
wherein the knowledge indicates presence or absence of trends”;
[2] “importing the relationships, and knowledge among attributes of data
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pieces in a data set”; [3] “setting allowable ranges for false positives and
false negatives for said relationships”; [4] “computing an accuracy for the
trend analysis system as a function of said errors”; [5] “performing a tuning
of parameters of the trend analysis system based on said computed
accuracy”; [6] “wherein, when a decrease of the confidence coefficient
results in a corresponding increase of the accuracy, the confidence
coefficient is further decreased”; [7] “wherein, when an increase of the
confidence coefficient results in a corresponding increase of the accuracy,
the confidence coefficient is further increased”; [8] “terminating said
parameter tuning when said computed accuracy satisfies a dynamically
created termination condition; and [8] “transmitting the computed accuracy
for the trend analysis system to the external communication device” which
describes the concept of a mathematical concept or mental process, i.e. a
judicial exception. In Bilski, a mathematical formula for hedging was held
to be an abstract concept. Bilski v. Kappos, 560 U.S. at 599. In Flook, a
formula for computing an alarm limit was held to be a mathematical
algorithm or formula. Parker v. Flook, 437 U.S. at 585.
We next determine whether the claim recites additional elements that
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Guidance references the MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Here, the claim does not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claim imposes a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort to monopolize the judicial exception.
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For example, in the claim, the additional elements beyond the abstract
idea are the recited first and second device computer processors,
communications interface, and external communication device. The claimed
limitations of computer components “do not purport to improve the
functioning of the computer itself,” do not improve the technology of the
technical field, and do not require a “particular machine.” Rather, they are
performed using generic computer components. Further, the claim as a
whole fails to effect any particular transformation of an article to a different
state. The recited steps in the claim fail to provide meaningful limitations to
limit the judicial exception. In this case, the claim merely uses the claimed
computer elements as a tool to perform the abstract idea.
The Appellant, at page 19 of the Appeal Brief, has also cited to
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016) but the claims in that case are distinguished from this case in being
directed to rules for lip sync and facial expression animation.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Guidance which references MPEP §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
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Considering the claim both individually and as an ordered combination fails
to add subject matter beyond the judicial exception that is not well-
understood, routine, and conventional in the field. Rather the claim uses
well-understood, routine, and conventional activities previously known in
the art and they are recited at a high level of generality. The Specification at
paragraphs 40–47 for example describes using conventional computer
components such as a CPU, memory, controller, disk drive, GUI, and
software in a conventional manner. The claim specifically includes
recitations for computers to implement the method but these computer
components are all used in a manner that is well-understood, routine, and
conventional in the field. Here, the claimed generic computer components
which are used to implement the claimed method are well understood,
routine, or conventional in the field. Here, the claim has not been shown to
be “significantly more” than the abstract idea.
For these above reasons, the rejection of claim 9 is sustained. The
Appellant has provided the same arguments for the remaining claims drawn
to similar subject matter and the rejection of these claims is sustained for the
same reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 3, 5–13, 15, and 18–20 under 35 U.S.C. § 101.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5–13,
15, 18–20
101 Eligibility 1, 3, 5–13,
15, 18–20

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

AFFIRMED