Avi Steiner et al.

Patent Trials and Appeals Board

Sep 19, 2019

14736772 - (D) (P.T.A.B. Sep. 19, 2019)

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.
14/736,772 06/11/2015 Avi STEINER 5887-419 1080
144016 7590 09/19/2019
Sheridan Ross P.C.
1560 Broadway, Suite 1200
Denver, CO 80202
EXAMINER
CHUNG, PHUNG M
ART UNIT PAPER NUMBER
2111
NOTIFICATION DATE DELIVERY MODE
09/19/2019 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):
e-docket@sheridanross.com
mellsworth@sheridanross.com
spansini@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AVI STEINER and HANAN WEINGARTEN
____________________

Appeal 2018-006397
Application 14/736,772
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm-in-part.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
Avago Technologies General IP (Singapore) Pte. Ltd. as the real party in
interest. App. Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
multi-dimensional decoding. Spec. ¶ 3.
Claim 1 is exemplary of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method for multi-dimensional decoding, the method
comprising:
receiving, at a decoder circuit, a multi-dimensional
encoded codeword that comprises a payload and a redundancy
section; wherein the payload comprises data and an error
detection process signature;
applying, with the decoder circuit, during a multi-
dimensional decoding process of the multi-dimensional encoded
codeword, a hypothesis to a content of the payload;
applying to the hypothesis, with the decoder circuit, an
error detection process to provide an indication about a validity
of the hypothesis; and
enabling the decoder circuit to proceed with the multi-
dimensional decoding process and find a second hypothesis to be
error detection process validated when the hypothesis is invalid
based on the application of the hypothesis to the error detection
process.

The Examiner’s Rejections2
1. Claims 1–20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–4.

2 The Examiner had also rejected claims 1–20 under 35 U.S.C. § 112(b) as
being indefinite. Final Act. 4–5. The Examiner has withdrawn this
rejection. Ans. 2.
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2. Claims 1, 19, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Steiner et al. (US 9,397,706 B1; July 19, 2016 (filed
Oct. 9, 2013)) (“Steiner ’706”) and Steiner et al. (US 2012/0005560 A1;
Jan. 5, 2012) (“Steiner ’560”). Final Act. 7–8.

ANALYSIS3
Rejection under 35 U.S.C. § 101
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. App. Br. 6–13; Reply Br. 2–
5. In particular, Appellant asserts that RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322 (Fed. Cir. 2017), as relied on by the Examiner, does not
conclude that all applications related to encoding and decoding of data are
patent ineligible, but that the court did not find the claims at issue in that
case to be patent eligible.4 Reply Br. 2–4. Additionally, Appellant argues

3 Throughout this Decision, we have considered the Appeal Brief, filed
November 21, 2017 (“App. Br.”); the Reply Brief, filed June 5, 2018
(“Reply Br.”); the Examiner’s Answer, mailed April 5, 2018 (“Ans.”); and
the Final Office Action, mailed June 21, 2017 (“Final Act.”), from which
this Appeal is taken.
4 To the extent that Appellant believes the Examiner set forth an
undesignated new ground of rejection in the Answer (see Reply Br. 2), that
is a petitionable matter not properly before the Board. See 37 C.F.R.
§ 41.40(a) (“Any request to seek review of the primary examiner's failure to
designate a rejection as a new ground of rejection in an examiner’s answer
must be by way of a petition to the Director.”); see also Manual of Patent
Examining Procedure (“MPEP”) § 706.01 (9th ed. Rev. 08.2017, Jan. 2018)
(“[T]he Board will not hear or decide issues pertaining to objections and
formal matters which are not properly before the Board.”); see also MPEP
§ 1201 (“The Board will not ordinarily hear a question that should be
decided by the Director on petition . . . .”).
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that applying a hypothesis to a payload, as recited in the pending claims, is
not similar to the collection and analysis of information the Federal Circuit
concluded to be patent ineligible in Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016). Reply Br. 4. Moreover, Appellant argues
the claims recite an improvement in computer-related technology, i.e., the
way in which data is retrieved/decoded from computer memory. App.
Br. 9–13 (citing Spec. ¶¶ 112, 131; Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016); and BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014). In addition, the Office recently published
revised guidance for evaluating subject matter eligibility under 35 U.S.C.
§ 101, specifically with respect to applying the Alice framework. USPTO,
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Office Guidance”). If a claim falls within one of the
statutory categories of patent eligibility (i.e., a process, machine,
manufacture, or composition of matter) then the first inquiry is whether the
claim is directed to one of the judicially recognized exceptions (i.e., a law of
nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217.
As part of this inquiry, we must “look at the ‘focus of the claimed advance
over the prior art’ to determine if the claim’s ‘character as a whole’ is
directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). Per Office
Guidance, this first inquiry has two prongs of analysis (i) does the claim
recite a judicial exception (e.g., an abstract idea); and (ii) if so, is the judicial
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exception integrated into a practical application. 84 Fed. Reg. at 54. Under
the Office Guidance, if the judicial exception is integrated into a practical
application, see infra, the claim is patent eligible under § 101. 84 Fed. Reg.
at 54–55. If the claims are not directed to an abstract idea, the inquiry ends.
See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016). However, if the claim is directed to a judicial exception
(i.e., recites a judicial exception and does not integrate the exception into a
practical application), the next step is to determine whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. See Alice, 573 U.S. at 217; see also 84 Fed. Reg. at 56.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
abstract ideas similar to encoding and decoding and collecting and analyzing
information. Ans. 3. In particular, the Examiner determines the claimed
“decoding process and find a second hypothesis to be error detection process
validated when the hypothesis is invalid based on the application of the
hypothesis to the error detection process” is similar to the decoding process
at issue in RecogniCorp and that “receiving a multi-dimensional encoded
codeword that comprises a playload [(sic: payload)] and a redundancy
section, wherein the payload comprises data and an error detection process
signature” and “applying a hypothesis to a content of the payload, and
applying to the hypothesis an error detection process to provide an indication
about a validity of the hypothesis” are merely collecting and analyzing
information, as in Electric Power. Ans. 3–4. Moreover, the Examiner finds
“the claims are not directed to an improvement in computer-related
technology, they are not directed to a specific improvement to the way
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computers operate and they are not directed to improve an existing
technology process.” Ans. 4. In addition, the Examiner finds the claims do
not recite significantly more than the abstract ideas. Final Act. 2–3.
As an initial matter, we do not understand the court’s conclusion in
RecogniCorp to hold that all claims directed to any type of encoding and
decoding are abstract ideas, such as a mathematical concept. Rather, the
court concluded the pending claims “reflect[] standard encoding and
decoding.” RecogniCorp, 855 F.3d at 1326 (emphasis added). Further, the
court explained, “RecogniCorp has not alleged a particularized application
of encoding and decoding.” RecogniCorp, 855 F.3d at 1328.
In addition, we do not understand the court’s conclusion in Electric
Power to hold that any collection and analysis of information is an abstract
idea and therefore, patent ineligible. Instead, the court noted the “focus” of
the pending claims was “on collecting information, analyzing it, and
displaying certain results of the collection and analysis.” Electric Power,
830 F.3d at 1353. Further, the court noted the advance the claims purport to
make is merely a process of gathering and analyzing information rather than
any inventive technology for performing the functions of collection and
analysis. Electric Power, 830 F.3d at 1354.
Here, although the claims generally relate to a decoding method, we
conclude, more specifically, the claims are directed to testing a hypothesis
(and possibly testing a second hypothesis) on the payload content of a multi-
dimensional encoded codeword during a multi-dimensional decoding
process. The testing of the hypothesis comprises the application of an error
detection process to provide an indication of the validity of the hypothesis.
As described in the Specification, the use of multi-dimensional codes is
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widespread, however, “[i]n multi-dimensional codes which are obtained
from small component codes, the decoding status of each component code
has a limited reliability.” Spec. ¶¶ 50–51. To increase the decoding success
status reliability, an error detection signature is added to the data. Spec.
¶ 51. According to the Specification, use of an error detection signature
(e.g., a Cyclic Redundancy Check (CRC) signature) for the data may
provide for a successful decoding process despite errors in a redundancy
portion of the encoded codeword. Spec. ¶¶ 54, 99, and 114.
Thus, Appellant’s disclosed (and claimed) decoders do not reflect
standard decoding. Cf. RecogniCorp, 855 F.3d at 1326. Accordingly, we
conclude Appellant’s claims are not directed to an abstract idea of merely
any type of decoding, but rather the patent-eligible concept of multi-
dimensional decoding by applying an error detection process to a hypothesis
of payload content.
Further, as the court discussed in Enfish, claims that improve an
existing technology might not succumb to the abstract idea exception of
patent eligibility. Enfish, 822 F.3d at 1335. In Enfish, the court framed the
first step of the Alice inquiry as whether the focus of the claims is on a
specific asserted improvement in computer capabilities or, instead on an
abstract idea that merely uses a computer as a tool for carrying out the
abstract idea. Enfish, 822 F.3d at 1335–36. As discussed above, the claimed
testing a hypothesis (and possibly testing a second hypothesis) on the
payload content of a multi-dimensional encoded codeword during a multi-
dimensional decoding process improves the way data is retrieved/decoded
from computer memory. See Spec. ¶¶ 112, 131.
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Moreover, analysis under the Office Guidance does not alter our
conclusion. The Examiner finds the claims are directed to an abstract idea.
See Final Act. 2–3; Ans. 3. In particular, the Examiner finds the claims are
directed to encoding and decoding, which are mathematical concepts (i.e., a
mathematical relationship between the encoded data and decoded data); and,
therefore an abstract idea. Ans. 3; see also 84 Fed. Reg. at 52; RecogniCorp,
855 F.3d at 1326–27 (concluding the pending claims were “directed to the
abstract idea of encoding and decoding”).5
Claim 1 is reproduced below and includes the following claim
limitation(s) that recite encoding and decoding, emphasized in italics:
1. A method for multi-dimensional decoding, the method
comprising:
receiving, at a decoder circuit, a multi-dimensional
encoded codeword that comprises a payload and a redundancy
section; wherein the payload comprises data and an error
detection process signature;
applying, with the decoder circuit, during a multi-
dimensional decoding process of the multi-dimensional encoded
codeword, a hypothesis to a content of the payload;
applying to the hypothesis, with the decoder circuit, an
error detection process to provide an indication about a validity
of the hypothesis; and
enabling the decoder circuit to proceed with the multi-
dimensional decoding process and find a second hypothesis to be
error detection process validated when the hypothesis is invalid
based on the application of the hypothesis to the error detection
process.

5 Although the Examiner also concludes the claims are directed to collecting
and analyzing information, which is a mental process and therefore, an
abstract idea (see Ans. 3), we confine our discussion here to the Examiner’s
conclusion that the claim is directed to encoding and decoding.
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More particularly, the decoding process comprises decoding the
content payload of an encoded codeword (i.e., the claimed step of applying a
hypothesis to a content of the payload).
Although the Examiner finds the claims recite an abstract idea, “an
invention is not rendered ineligible for patent simply because it involves an
abstract concept.” Alice, 573 U.S. at 217. Accordingly, we next determine
whether the claim integrates the judicial exception into a practical
application. See 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also MPEP § 2106.05(a)–(c),
(e)–(h).
Here, we find the additional limitations integrate the concept of
standard encoding into a practical application. In particular, we find the
claim does not merely decode the content payload of an encoded codeword,
but rather, tests the validity the hypothesis by applying it to an error
detection process. If the results of the test indicates the hypothesis is not
valid, a second hypothesis is used in the decoding process. As discussed
above, and as described in the Specification, the use of multiple error
detection signatures (e.g., CRCs) may be used to reduce the false correction
probability; enable partial decoding of a codeword; and support short read
requests. See Spec. ¶ 112; see also MPEP § 2106.05(a) (“An indication that
the claimed invention provides an improvement can include a discussion in
the specification that identifies a technical problem and explains the details
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of an unconventional technical solution expressed in the claim, or identifies
technical improvements realized by the claim over the prior art.”).
For the reasons discussed supra, we conclude that independent claim
1 is patent eligible under 35 U.S.C. § 101. For similar reasons, dependent
claim 2–18 are also patent eligible under 35 U.S.C. § 101. Additionally, for
similar reasons, we also conclude that independent claims 19 and 20, which
recite commensurate limitations, are also directed to patent eligible subject
matter. Accordingly, we do not sustain the Examiner’s rejection of claims
1–20 under 35 U.S.C. § 101.

Rejection under 35 U.S.C. § 103
In rejecting independent claims 1, 19, and 20, the Examiner relies on
the combined teachings of Steiner ’706 and Steiner ’560. Final Act. 7–8. In
particular, the Examiner finds Steiner ’706 teaches a multi-dimensional
decoding of multi-dimensional encoded codeword comprising a payload and
redundancy section, wherein the payload comprises data and an error
detection process signature. Final Act. 7 (citing Steiner ’706, col. 1, ll. 33–
45, Abstract). In addition, the Examiner finds Steiner ’706 teaches applying
a hypothesis to a content of the payload during the multi-dimensional
decoding process. Final Act. 7 (citing Steiner ’706, col. 5, ll. 50–51).
Appellant does not challenge these findings.
Further, the Examiner finds Steiner ’560 teaches applying an error
detection process on the hypothesis to provide an indication about the
validity of the hypothesis and proceeding (enabling to proceed) with the
multi-dimensional decoding process with a second hypothesis to which the
error detection process may be applied to validate the second hypothesis if
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the initial hypothesis is invalid (as determined by the error detection
process). Final Act. 7–8 (citing Steiner ’560 ¶ 44, Abstract); Ans. 6.
Appellant disputes the Examiner’s finding that Steiner ’560 teaches
(either inherently or explicitly) applying an error detection process to
provide an indication about a validity of a hypothesis. App. Br. 16–18;
Reply Br. 6. Similarly, Appellant disputes the Examiner’s finding that
Steiner ’560 teaches “enabling the decoder circuit to proceed with the
multidimensional decoding process and find a second hypothesis to be error
detection process validated when the hypothesis is invalid based on the
application of the hypothesis to the error detection process.”6 App. Br. 18.
As relied on by the Examiner, Steiner ’560 teaches “decoding a set of
bits using a plurality of hypotheses . . . .” Additionally, Steiner ’560
discloses:
A current hypothesis may be decoded for correcting the set of
bits, wherein the current hypothesis defines different bit states
and associated reliability metrics for the set of bits. If decoding

6 We note that the last limitation of claim 1 is a conditional limitation.
Conditional steps employed in a method claim need not be found in the prior
art if, under the broadest reasonable construction, the method need not
invoke the steps. Ex parte Schulhauser, No. 2013-007847, 2016 WL
6277792, at *3–6 (PTAB April 28, 2016) (concluding the broadest
reasonable interpretation of a claim encompassed situations in which
conditional method steps “need not be reached”) (precedential). Because the
broadest reasonable interpretation of the claim does not require performing
the conditional method steps at issue, the Examiner does not need to present
evidence of obviousness for these steps. See Schulhauser, 2016 WL
6277792, at *4 (“The Examiner did not need to present evidence of the
obviousness of the remaining method steps of claim 1 that are not required
to be performed under a broadest reasonable interpretation of the claim.”).
Because independent claims 19 and 20, however, are not method claims,
Schulhauser is inapposite, and the prior art must teach or suggest all of the
recited limitations.
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the current hypothesis is not successful, a subsequently ordered
hypothesis may be decoded, wherein the hypotheses are ordered
such that their associated reliability metric is a monotonically
non-decreasing sequence. Decoding may proceed iteratively
until the current hypothesis is successful.
Steiner ’560 ¶ 6. Further, Steiner ’560 discloses use of a CRC “to validate
the integrity of data.” Steiner ’560 ¶ 44. “To verify the decoded input data,
the associated decoded CRC data may be compared to the original signature
of the input bits.” Steiner ’560 ¶ 44.
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991); see also In re Keller, 642 F.2d
413, 425 (CCPA 1981).
Contrary to Appellant’s assertions, Steiner ’560 teaches or reasonably
suggests applying an error detection process (i.e., a CRC, similar to the
method disclosed in the instant Specification, see Spec. ¶ 46) to a hypothesis
to a content of the payload during the multi-dimensional decoding process,
as taught by Steiner ’706. Moreover, Steiner ’560 in combination with
Steiner ’706, teaches if a current hypothesis is not successful (i.e., invalid),
applying an error detection process to a subsequently ordered hypothesis
(i.e., a second hypothesis) to a content of the payload during the multi-
dimensional decoding process.
Appellant also argues the Examiner fails to provide a rational
underpinning to support the conclusion of obviousness.7 App. Br. 18–19;
see also Reply Br. 6–7.

7 To the extent that Appellant believes the Examiner’s rationale to combine
the references, as set forth in the Answer amounts to an undesignated new
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The Examiner explains that an ordinarily skilled artisan would have
been motivated to combine the teachings from Steiner ’706 and Steiner ’560
to improve decode efficiency by generating, evaluating, and storing
hypotheses for all possible combinations of potential error corrections.
Ans. 12 (citing Steiner ’560 ¶ 43).
The U.S. Supreme Court has held the relevant inquiry in an
obviousness analysis is whether the Examiner has set forth “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Appellant does not persuasively rebut this rationale and, thus, we find
the Examiner has set forth the requisite reasoning with rational underpinning
to support the conclusion of obviousness.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claims 1, 19, and
20 under 35 U.S.C. § 103.

DECISION
Claims Rejected Basis Affirmed Reversed
1–20 35 U.S.C. § 101 1–20
1, 19, and 20 35 U.S.C. § 103 1, 19, and 20

ground of rejection (see Reply Br. 6–7), that is a petitionable matter not
properly before the Board. See 37 C.F.R. § 41.40(a).
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Claims Rejected Basis Affirmed Reversed
Overall Outcome 1, 19, and 20 2–18

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.
§ 41.50(f).

AFFIRMED-IN-PART