International Business Machines Corporation

Patent Trials and Appeals Board

Jan 27, 2021

2019005226 (P.T.A.B. Jan. 27, 2021)

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.
15/414,124 01/24/2017 Damir Anthony Jamsek CA920160063US1 7627
48150 7590 01/27/2021
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
CALDWELL, ANDREW T
ART UNIT PAPER NUMBER
2182
MAIL DATE DELIVERY MODE
01/27/2021 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 DAMIR ANTHONY JAMSEK and MAYSAM MIR AHMADI
Appeal 2019-005226
Application 15/414,124
Technology Center 2100
Before JENNIFER L. McKEOWN, LINZY T. McCARTNEY, and
MICHAEL T. CYGAN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 1, 2, 5–10, 13–17, 20, 21, and 24–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as International Business
Machines Corporation. Appeal Brief 1, filed May 9, 2019 (Appeal Br.).
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Application 15/414,124

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BACKGROUND
This patent application concerns “a linear system solving method,” in
particular a method “for solving dense/sparse linear systems.” Specification
¶ 1, January 24, 2017 (Spec.). Claim 1 illustrates the claimed subject matter:
l. A computer-implemented linear system solving method,
the method comprising:
calculating a matrix factorization for a matrix in a pair of
matrices, in a form of a lower, a diagonal, and an upper (LDU)
decomposition;
first solving a first expression for a first value calculated
from using the first expression using a substitution module based
on the LDU decomposition to create a first result;
dividing the first result by values stored in the diagonal of
the matrix to obtain a second result;
second solving a second expression for a second value
calculated from using the second expression where a processing
of the diagonal is skipped by using the second result; and
determining a solution set for the pair of matrices in the
linear system using the second expression,
wherein the calculating proceeds to calculate a second
matrix factorization for a second matrix while the first solving,
the dividing, and the second solving are working with the matrix,
and
wherein the first solving and the second solving are
performed using a same substitution module.
Appeal Br. 13.
REJECTION
Claims 35 U.S.C. § References/Basis
1, 2, 5–10, 13–17,
20, 21, 24–26 101 Eligibility
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DISCUSSION
We have reviewed the Examiner’s rejection and Appellant’s
arguments, and Appellant has not persuaded us that the Examiner erred. As
consistent with the discussion below, we adopt the Examiner’s reasoning,
findings, and conclusions on pages 2–4 of the Final Office Action mailed
January 17, 2019 (Final Act.), the continuation sheet of the Advisory Action
mailed February 5, 2019 (Advisory Act.), and pages 3–5 of the Examiner’s
Answer mailed June 12, 2019 (Ans.).
I
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. That framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] 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, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “an element or
combination of elements that is ‘sufficient to ensure that the patent in
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The United States Patent and Trademark Office has issued guidance
about this framework. Under Office guidance, to determine whether a claim
is directed to an abstract idea, we evaluate (1) whether the claim recites
subject matter that either falls into one of three identified categories of
abstract ideas or is a “tentative abstract idea,” and if so, (2) whether the
additional elements of the claim integrate the abstract idea into a practical
application. Manual of Patent Examining Procedure § 2106.04 (9th ed. latest
rev. June 2020) (MPEP). If the claim is directed to an abstract idea, as noted
above, we then consider whether the claim has an inventive concept. MPEP
§ 2106.05. When doing so, Office guidance explains that we should evaluate
“whether any additional element or combination of elements are other than
what is well-understood, routine, conventional activity in the field, or simply
append well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality.” MPEP § 2106.05(II).
With this framework in mind, we turn to the Examiner’s rejection of
claims 1, 2, 5–10, 13–17, 20, 21, and 24–26 under § 101. Appellant argues
these claims together, so as permitted by 37 C.F.R. § 41.37(c)(1)(iv), we
decide the appeal for this ground of rejection based on claim 1.
II
Office guidance identifies three categories of abstract ideas: certain
methods of organizing human activity, mental processes, and mathematical
concepts. MPEP § 2106.04(a). The Examiner determined that claim 1 recites
subject matter that falls into the category of mathematical concepts because
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“[a]ll the steps of claim 1 call for a mathematical computation to be
performed.” Final Act. 2. The Examiner then determined the claim 1 recites
one additional element—a “substitution module”—and that this element
does not integrate the recited mathematical concepts into a practical
application because the element is a “[g]eneric computer component[]” that
“perform[s] generic computer functions.” Final Act. 3; see also Ans. 3–4.
Finally, the Examiner determined that claim 1 lacks an inventive concept
because the additional element is a “generic element[]” that is “clearly well-
understood, routine, and conventional.” Ans. 4; see also Final Act. 3.
Appellant does not dispute that claim 1 recites mathematical concepts,
nor does Appellant explicitly challenge the Examiner’s determination that
the identified additional element is a generic component. Instead, Appellant
asserts that “the Examiner failed to consider . . . whether” claim 1
“integrates the recited . . . [abstract idea] into a practical application.”
Appeal Br. 9 (emphasis omitted). According to Appellant, claim 1 integrates
the abstract idea into a practical application because the claimed method
allegedly provides improvements such as “solving . . . dense or sparse
matrices with virtually no overhead” and using a decomposition method that
“that is better suited for stream processing,” among other things. Appeal Br.
10 (emphasis omitted). Appellant also contends that the last two steps in
claim 1 “clearly define the solving of the linear system in a particular
manner that improves the relevant technology.” Appeal Br. 10.
Appellant has not persuaded us that the Examiner erred. Contrary to
Appellant’s assertion, the Examiner considered whether claim 1 integrates
the recited abstract idea into a practical application. As the Examiner
explained in the Advisory Action, the Examiner addressed this issue as part
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of the “significantly more” analysis in the Final Office Action. Advisory
Act., continuation sheet. And in the Answer, the Examiner again addressed
whether claim 1 integrates the abstract idea into a practical application. Ans.
3–5. We thus disagree that the Examiner failed to perform this part of the
§ 101 analysis.
As for Appellant’s argument that method recited in claim 1 integrates
the abstract idea into a practical application because the method allegedly
provides certain improvements, even if the claimed method provides the
improvements that Appellant points to, claim 1 still would not be patent
eligible. The method recited in claim 1 at best performs a particular
mathematical operation (solving a linear system) faster and more efficiently
than prior methods. See Appeal Br. 13; see also Appeal Br. 11 (arguing that
the claimed method provides “a significant speed increase and overhead
reduction in solving linear systems” (emphasis omitted)). “[T]hat is not
enough for eligibility,” even assuming that the claimed method is
“[g]roundbreaking, innovative, or even brilliant” and “novel and
nonobvious.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed.
Cir. 2018) (second alteration in original). This is because “[n]o matter how
much of an advance in the [mathematics] field” the claimed method
represents, “the advance lies entirely in the realm of abstract ideas” and thus
“is ineligible for patenting.” SAP Am., Inc., 898 F.3d at 1163.
In any event, Appellant’s arguments about the alleged improvements
largely rest on an unclaimed element. Appellant repeatedly argues that an
AHT-MAC architecture provides some of the alleged improvements. See,
e.g., Appeal Br. 10–11. And the written description suggests that the alleged
improvements flow at least in part from the AHT-MAC architecture. See,
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e.g., Spec. ¶ 39. But claim 1 does not recite an AHT-MAC architecture. See
Appeal Br. 13. Improvements provided by disclosed but unclaimed elements
do not make a claim patent eligible. See, e.g., Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (rejecting the
suggestion that “the discovery of cffDNA in plasma or serum” provides an
inventive concept when that discovery “is not the invention claimed by the
. . . patent”); Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967 F.3d 1285,
1293 (Fed. Cir. 2020) (“[W]e have repeatedly held that features that are not
claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice analysis.”).
Appellant also contends that the Examiner erred because, in
Appellant’s view, the last two steps in claim 1 “clearly include features that
are not well-understood, routine, or conventional in the field and definitively
include an inventive concept at least because these limitations are not taught
in any prior art.” Appeal Br. 11 (emphasis omitted). Appellant also contends
that the claim 1 is patent eligible because it “does not [preempt] the alleged
abstract idea.” Reply Brief 4, filed June 25, 2019 (emphasis omitted).
Appellant again fails to persuade us that the Examiner erred. The
Examiner determined—and Appellant does not explicitly dispute—that the
functions recited in the final two steps of claim 1 form part of the identified
abstract idea. See Final Act. 2–3; Ans. 3. The Examiner was not required to
find that parts of the identified abstract ideas were well understood, routine,
and conventional. See, e.g., Bridge & Post, Inc. v. Verizon Commc’ns, Inc.,
778 F. App’x 882, 892 (Fed. Cir. 2019) (“At Alice step two we assess
‘whether the claim limitations other than the invention’s use of the ineligible
concept to which it was directed were well-understood, routine, and
conventional.’” (quoting BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
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1290 (Fed. Cir. 2018))); BSG Tech, 899 F.3d at 1290 (“[T]he relevant
inquiry is not whether the claimed invention as a whole is unconventional or
non-routine. . . . It has been clear since Alice that a claimed invention’s use
of the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” (first emphasis added)). As for Appellant’s preemption argument,
even assuming that claim 1 does not preempt all ways of performing the
abstract idea, the absence of complete preemption does not demonstrate
patent eligibility.” Ariosa Diagnostics, Inc., 788 F.3d at 1379.
For at least the above reasons, Appellant has not persuaded us that the
Examiner erred. We thus sustain the Examiner’s rejection of representative
claim 1 under § 101.
CONCLUSION
Claims
Rejected 35 U.S.C. § Rejection/Basis Affirmed Reversed
1, 2, 5–10,
13–17, 20,
21, 24–26
101 Eligibility
1, 2, 5–10,
13–17, 20,
21, 24–26

No period for taking any 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