Megiddo, Nimrod

Patent Trials and Appeals Board

Sep 16, 2020

2019000408 (P.T.A.B. Sep. 16, 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.
14/454,020 08/07/2014 Nimrod Megiddo ARC920130142US1 9478
67232 7590 09/16/2020
CANTOR COLBURN LLP - IBM ARC DIVISION
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
CHANG, LI WU
ART UNIT PAPER NUMBER
2124
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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 NIMROD MEGIDDO
Appeal 2019-000408
Application 14/454,020
Technology Center 2100
Before IRVIN E. BRANCH, STACEY G. WHITE, and
MICHAEL M. BARRY, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3–11, and 13–20. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

1 We refer to the Specification, filed August 7, 2014 (“Spec.”); Final Office
Action, mailed March 7, 2018 (“Final Act.”); Appeal Brief, filed June 25,
2018 (“Appeal Br.”); Examiner’s Answer, mailed October 2, 2018 (“Ans.”);
and Reply Brief, filed October 18, 2018 (“Reply Br.”).

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
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2
CLAIMED SUBJECT MATTER
The claims are directed to “support vector machines, and more
specifically, to optimize the computations for support vector machines.”
Spec. ¶ 1. Claim 1, reproduced below with bracketed letters added to
identify the steps, is illustrative of the claimed subject matter:

1. A method to improve machine learning of a computer where
the machine learning executes on a support vector machine of the computer,
the method comprising:

[a] building, by the computer, a classifier of the-support vector
machine to solve a support vector machine optimization problem on table J,
defined as the join of two tables T1 and T2 in databases without joining the
tables T1 and T2 in which data of one of the two tables provides attributes of
individuals that have to be classified and data of the other of the two
tables is an external source of various attributes relevant to classification of
the individuals, wherein the table T1 has m rows (piT, uiT), i = 1, ... , m, and
the table T2 has n rows (qiT, viT), j = 1, ... , n, wherein piT, uiT are attributes of
table T1, wherein qjT, vjT are attributes of the table T2, wherein building the
classifier to join the tables T1 and T2 is without requiring a size
requirement of a product of the tables T1 and T2, wherein building the
classifier comprises:

[b] loading a primal optimization problem over the join of the
tables T1 and T2, wherein the join is a combination of the tables T1 and T2;

[c] determining, by the computer having a memory, a modified
optimization problem from the primal optimization problem;

[d] reducing penalty variables in the modified optimization
problem by replacing the penalty variables in a form of ξij for each (i,j) ∈ IJ
with the penalty variables in a form of ξij = ηi + ζj, wherein the penalty
variables are associated with a vector such that that
ηi + ζj corresponds to m+n of the tables T1 and T2 instead of m·n, thereby not
requiring the size requirement of the product of the tables T1 and T2;

[e] determining a compact form of the modified optimization
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problem in which the compact form comprises the penalty variables in the
form of ξij = ηi + ζj; and

[f] determining, to improve machine learning, a result for the
support vector machine optimization problem on the table J for the join of
two tables T1 and T2 without joining the tables T1 and T2 by solving the
compact form of the modified optimization problem;

[g] wherein the compact form comprises:

[h] minimize w,b,η,ζ, 𝜎𝜎,𝜏𝜏 12 ⃦ wp
2⃦ + 1
2
⃦2 wu ⃦2 + 12 ⃦wQ ⃦
2 + C ·
∑ 𝑚𝑚
𝑖𝑖=1
,J(i) · ηi + C ·∑ 𝑛𝑛𝑗𝑗=1,1(j)· ζj.

subject to yipiT wp - yib + ξi - 𝜎𝜎k ≥ 0 (i ∈ Ik, k = 1, ... ℓ)
qJT wQ - 𝜏𝜏k≥ 0 (j ∈ Jk, k = 1, ... ℓ)
𝜎𝜎k +zkT wu +𝜏𝜏k ≥ 1 (for k= 1, ... ℓ such that Jk ≠ ∅)
𝜎𝜎k + zkT wu ≥ 1 (for k= 1, ... ℓ such that Jk = ∅)
ξi ≥ 0 (i = 1, ..., m);

[i] wherein the compact form includes auxiliary variables 𝜎𝜎i, ..., 𝜎𝜎ℓ
and 𝜏𝜏k for k = 1, ... ℓ such that Jk ≠ ∅.

REJECTION
Claims 1, 3–11, and 13–20 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. Final Act. 3–5.
ANALYSIS
Legal Background
“Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018). The Supreme Court has set forth a two-part test for § 101
to determine whether the subject matter of a claim is patentable:
(1) “whether the claims at issue are directed to” “laws of nature, natural
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phenomena, and abstract ideas” and (2) “whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
In 2019, the U.S. Patent & Trademark Office (“USPTO”) issued
revised guidance explaining the Office’s approach to applying the Supreme
Court’s framework. USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that
Guidance, we use the following steps to determine whether a claim recites
the following items:
USPTO
Step Does the claim recite ___? MPEP §
1 A process, machine, manufacture, or composition of matter 2106.03
2A,
Prong 1
A judicial exception, such as a law of nature or any
of the following groupings of abstract ideas:
1) Mathematical concepts, such as
mathematical formulas;
2) Certain methods of organizing human
activity, such as a fundamental economic
practice; or
3) Mental processes, such as an observation or
evaluation performed in the human mind
2106.04
2A,
Prong 2
Any additional limitations that integrate the judicial
exception into a practical application
2106.05(a)–
(c), (e)–(h)
2B
Any additional limitations beyond the judicial
exception that, alone or in combination, were not
“well-understood, routine, conventional”
2106.05(d)
See Guidance, 84 Fed. Reg. at 52, 55, 56; see also USPTO, October 2019
Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf.
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Representative Claim
Appellant argues independent claims 1 and 11 together as a group
based on claim 1 and makes no substantive separate arguments for the
dependent claims. See Appeal Br. 5–9; see also Reply Br. 6 (arguing “the
101 rejection of claim 1 and its dependent claims 3–10 is in error and should
be reversed. By analogy, the 101 rejection of claim 11 and its dependent
claims 13–20 is in error and should be reversed.”). We therefore treat claim
1 as representative. 37 C.F.R. § 41.37(c)(1)(iv); see also Berkheimer v. HP
Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018) (“Courts may treat a claim as
representative in certain situations, such as if the patentee does not present
any meaningful argument for the distinctive significance of any claim
limitations not found in the representative claim.”).
There is no dispute with respect to USPTO Step 1, because plainly
method claim 1 is in § 101’s statutory “process” category, and so our
eligibility analysis begins with Step 2A, Prong 1.
USPTO Step 2A, Prong 1
Independent claim 1 recites “[a] method to improve machine learning
of a computer where the machine learning executes on a support vector
machine of the computer.” The Examiner, having listed all the claim
limitations (limitations [a]–[i] above), characterizes the claim as “a
mathematical process for building a Support Vector Machine classifier with
data from two tables.” Ans. 3. The Examiner further determines that “[t]he
process of building a SVM classifier by solving an optimization problem
with data from two tables through replacing penalty variables and
determining a compact form is similar to the concept of generating an
algorithm for binary conversion through a sequence of operations, including
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shifting, masking, adding and shifting.” Id. at 4 (citing Gottschalk v.
Benson, 409 U.S. 63 (1972)). The Examiner also determines “receiving data
from tables is similar to the concept of collecting information[;] operations
replacing variables, determining a form and solving the form are similar to
the concept of analyzing or manipulating collected information to detect[;]
and the operation determining a result is similar to the concept of notifying a
user the result.” Id. (citing FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089 (Fed. Cir. 2016)). The Examiner determines “[t]he claim
include[s] limitations that provide detailed descriptions of the attributes of
the two tables and the representation of the compact form[, which] fall
within the realm of mathematical concepts and do not change the nature of
the mathematical process.” Id. We agree with the Examiner that claim 1
(see limitations [a]–[i]) recites “a mathematical process for building a
Support Vector Machine classifier with data from two tables,” i.e., an
abstract idea in the category of a “mathematical concept.” See Guidance, 84
Fed. Reg. at 52.
USPTO Step 2A, Prong 2
Having determined that claim 1 recites a judicial exception, our
analysis under the Guidance turns now to determining whether there are
“additional elements that integrate the [judicial] exception into a practical
application.” See Guidance, 84 Fed. Reg. at 54–55 (citing MPEP
§ 2106.05(a)–(c), (e)–(h)).
Under the Guidance, limitations that are indicative of “integration into
a practical application” include:
1. Improvements to the functioning of a computer, or to any other
technology or technical field — see MPEP § 2106.05(a);
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2. Applying the judicial exception with, or by use of, a particular
machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article to
a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception — see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of “integration into a
practical application” include:
1. Adding the words “apply it” (or an equivalent) with the judicial
exception, or merely including instructions to implement an
abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea — see MPEP § 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP 2106.05(h).
See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
Here, beyond the limitations that describe the abstract idea, claim 1
recites “a computer,” “support vector machine of the computer,”
“databases,” and “a memory” of the computer. These extra elements,
considered alone and in combination, are insufficient to integrate the abstract
idea into a practical application. See, e.g., Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“We have repeatedly held that
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such invocations of computers and networks that are not even arguably
inventive are insufficient to pass the test of an inventive concept in the
application of an abstract idea.” (internal quotation omitted)); buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”).
There is no improvement to “the functioning of the computer itself” or
“any other technology or technical field.” See MPEP § 2106.05(a) (quoting
Alice, 573 U.S. at 225). Neither do these computer limitations qualify as
applying the judicial exception with “a particular machine,” because the
“computer,” “support vector machine of the computer,” “databases,” and
“memory” of the computer provide conventional functions and require no
more than general purpose computer equipment. See MPEP § 2106.05(b);
see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir.
2014); In re TLI Commc’ns LLC Patent Litigation, 823 F.3d 607, 613 (Fed.
Cir. 2016) (explaining that mere recitation of concrete or tangible
components is not an inventive concept).
Appellant’s arguments similarly do not persuade us that claim 1
effects a transformation of any recited articles, which are simply used for
their ordinary purposes, or that claim 1 includes any other meaningful
(technological) limitations, i.e., limitations beyond simply “linking the use”
of the abstract idea to generic technology. See MPEP § 2106.05 (c), (e)–(f);
see also id. at (g)–(h) (use of well-known limitations beyond the judicially
excepted matter constitutes “insignificant extra-solution activity” (g) and
claim limitations “merely indicating a field of use or technological
environment in which to apply a judicial exception do not amount to
significantly more” (h)).
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Specifically, regarding Appellant’s arguments, Appellant makes no
assertion to have invented the computer having memory, the databases, or
the support vector machine of the computer. Consistent with precedent from
our reviewing court, additional elements “that are not even arguably
inventive are insufficient to pass the test of an inventive concept in the
application of an abstract idea.” Elec. Power Grp., 830 F.3d at 1355
(internal quotation omitted). Hence, we agree with the Examiner’s
determination that “Claim 1 simply implements a mathematical optimization
procedure on a generic computer (e.g., [0011] or [0012], any type of
computer systems)[, and even w]hen limitations are taken together as an
ordered combination, the claim is merely applying instruction[s] and using a
generic computer.” Ans. 8.
Appellant argues “machine learning is inherently computer (i.e.,
machine) related, and consequently, a technical problem in machine learning
is inherently computer related. Therefore, an improvement to machine
learning is inherently an improvement to the computer itself, and machine
learning cannot be detached from the machine itself.” Appeal Br. 6–7
(citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014)) (emphasis omitted). Appellant contends that the Specification
“disclose[s] how to obtain a result needed for machine learning without
explicitly joining the two tables, thereby solving the problem. This solution
also improves the functioning of the computer itself by concurrently
reducing memory usage in paragraph [0054] of Applicant’s Specification, as
discussed in Applicant’s Appeal Brief for evidencing ‘significantly more.’”
Reply Br. 5. Appellant further argues with reference to Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), that “[a]lthough claim 1 is
a software improvement to machine learning of a computer, claim 1 makes
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non-abstract improvements to computer technology, and consequently,
‘building . . . a classifier . . . without requiring a size requirement of a
product of the tables T1 and T2’ is significantly more.” Appeal Br. 8; see
also id. at 7–9.
We are not persuaded by this argument, however. Our reviewing
court has held that embedding an abstract idea (e.g., “building a classifier,”
which is part of the recited mathematical process) in technology (e.g., a
“computer”), is merely an attempt to limit the use of the abstract idea to a
particular technological environment, which “does not transform an
otherwise abstract idea into patent-eligible subject matter.” Ultramercial v.
Hulu, 772 F.3d at 716; see also Alice, 573 U.S. at 212 (“[M]erely requiring
generic computer implementation fails to transform th[e] abstract idea into a
patent-eligible invention.”)
Claim 1 recites that the classifier is “of the support vector machine,”
but the support vector machine does not build the classifier (“building, by
the computer, a classifier of the support vector machine”) and the support
vector machine is not otherwise invoked in the claim. Moreover, the recited
classifier is built “to solve a support vector machine optimization problem”
and “to improve machine learning,” but the claim does not recite actually
using the classifier for this purpose. Although the claim recites the intended
use of improving machine learning, other than the routine technology
elements used for their routine purposes, the remaining claim limitations
merely perform an abstract mathematical process, and do not deploy the
result to any end. Thus, the claim amounts to using a computer for a math
process for an intended––but unclaimed––use.
Thus, we determine the recited judicial exception is not integrated into
a practical application, and the Examiner did not err in determining claim 1
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is directed to the recited abstract idea. Accordingly, we proceed to Guidance
Step 2B.
USPTO Step 2B
The additional limitations identified above were well-understood,
routine, and conventional. See Spec. ¶¶ 11–19. “[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 573 U.S. at 222–23. Here, improving
machine learning to solve a support vector machine optimization problem
merely implicates purely conventional activities that are the ‘most basic
functions of a computer.’” Intellectual Ventures I LLC v. Erie Indem. Co.,
850 F.3d 1315, 1331 (Fed. Cir. 2017) (quoting Alice, 573 U.S. at 225); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“the claims do not go beyond requiring the collection, analysis, and
display of available information in a particular field, stating those functions
in general terms, without limiting them to technical means for performing
the functions that are arguably an advance over conventional computer and
network technology”). The Examiner correctly notes that the Specification
similarly treats such components as generic. Ans. 4–5 (citing Spec. ¶¶ 11–
12 (“the computer 100 may include one or more processors 110, computer
readable storage memory 120”)); see also Spec. ¶ 13 (“The processor 1510
can be virtually any custom made or commercially available processor”).
Therefore, the claims do not recite significantly more than the abstract
idea(s) to which they are directed.
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Conclusion
Appellant therefore fails to persuade us of Examiner error in the
Examiner’s determination that the claims are directed to patent-ineligible
subject matter without significantly more.
Accordingly, we sustain the Examiner’s rejection of claims 1, 3–11,
and 13–20.
SUMMARY DECISION
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1, 3–11, 13–20 101 Eligibility 1, 3–11, 13–20

TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).
AFFIRMED