dSPACE digital signal processing and control engineering GmbH

Patent Trials and Appeals Board

Jan 1, 2021

2019003942 (P.T.A.B. Jan. 1, 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.
14/593,709 01/09/2015 Frank MERTENS 1012/0158PUS1 5594
60601 7590 01/01/2021
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
GUILL, RUSSELL L
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
01/01/2021 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):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK MERTENS, DIRK BERNECK,
MARTIN KRONMUELLER, SEBASTIAN SCHULTE,
HENRIK SUNDER, and FRANK SCHUETTE

Appeal 2019-003942
Application 14/593,709
Technology Center 2100

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT and
IRVIN E. BRANCH, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“DSPACE Digital Signal Processing and Control Engineering GMBH.”
Appeal Br. 2.
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STATEMENT OF THE CASE
Appellant’s Invention
According to Appellant, “[t]he present invention relates to a
computer-implemented method for assigning at least one signal of a
symbol-based program to at least one I/O functionality of a target hardware
unit, wherein a modeling tool has the symbol-based program with the signal
that is to be assigned, and the signal to be assigned of the symbol-based
program and the at least one I/O functionality of the target hardware unit are
specified in a configuration tool.” Spec. ¶ 2. Claim 1, reproduced below, is
illustrative of argued subject matter.
1. A computer-implemented method for assigning at least
one signal of a symbol-based program to at least one I/O
functionality of a target hardware unit, the method comprising:
providing a modeling tool that has the symbol-based program
with the at least one signal that is to be assigned, the at least one
signal of the symbol-based program and the at least one I/O
functionality of the target hardware unit being specified in a
configuration tool, the symbol-based program representing a
control unit, a system to be controlled, or an environment
model, the modeling tool being an emulation environment for
the control unit, the system to be controlled, or the environment
model;
providing the configuration tool for specifying and linking the
at least one I/O functionality and the target hardware unit to the
symbol-based program;
using the modeling tool, a specific I/O functionality of the
at least one I/O functionality of the target hardware unit is
assigned in the symbol-based program to one of the at least one
signal;
automatically generating a signal assignment information item
in the modeling tool from this assignment within the
symbol-based program;
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automatically transmitting the signal assignment information
item from the modeling tool to the configuration tool to link the
specific I/O functionality to the symbol based program in the
configuration tool; and
switching control of the assignment of the at least one signal to
be assigned of the symbol-based program to the I/O of the
target hardware unit according to the signal assignment
information item from the modeling tool to the configuration
tool,
wherein the at least one I/O functionality of the target hardware
unit is represented by a graphical access point in the modeling
tool or by a code portion of the symbol based program of the
modeling tool.
Appeal Br., Claims Appendix.
Rejections
Claims 16–19 stand rejected under 35 U.S.C. § 101 as being directed
to a patent-ineligible subject matter. Final Act. 17–19.
Claims 1, 6, 7, 8, 9, 13, 14, 15, 16, and 18 stand rejected under
35 U.S.C. § 103 as obvious over Himmler (Andreas Himmler,
“Hardware-in-the-Loop Technology Enabling Flexible Testing Processes,”
2013, 51st AIAA Aerospace Sciences Meeting, pages 1–8)2 and
ConfigDesk2011 (“Configuration Desk,” 2011, Dspace Magazine, February
2011, pages 34–37). Final Act. 19–36.
Claims 2, 4, 5, 10, 11, 12, 17, 19, and 20 stand rejected under
35 U.S.C. § 103 as obvious over Himmler, ConfigDesk2011, and Thomas
(Annemarie Thomas, “dSPACE DS1103 Control Workstation Tutorial and

2 A copy of Himmler is also available at “https://www.dspace.com/shared/
data/pdf/2013/2013_aiaa_asm_dspace_himmler.pdf” (accessed Dec. 1,
2020).
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DC Motor Speed Control,” 2009, http://ee.bradley.edu/projects/proj2009/
dscntrl/Tutorial.pdf, 60 pages). Final Act. 36–46.
Claim 3 stands rejected under 35 U.S.C. § 103 as obvious over
Himmler, ConfigDesk2011, and Kawaguchi (US 7,559,468 B2; July 14,
2009). Final Act. 46–51.
OPINION
§ 101 Rejection of Claims 16–19
We are unpersuaded the Examiner erred in rejecting claims 16–19
under § 101.
An invention is patent-eligible if providing “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof.” 35 U.S.C. § 101. The Examiner determines
the claimed modeling tool (claims 16 and 17) and configuration tool
(claims 18 and 19) do not require such subject matter, but can rather be
“pure” software (Ans. 5–6), i.e., “that do[es] not [embody] a physical or
tangible form” (id. at 6 (quoting Manual of Patent Examining Procedure
(MPEP) § 2016.03)) such as hardware (id. at 5–6). Appellant contends the
analysis should continue to the abstract-idea analysis established by Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) and Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). Appeal Br. 9–12;
Reply Br. 4.
We are unpersuaded of Examiner error. Contrary to Appellant’s
arguments, a § 101 analysis ceases if the at-issue claim can be read on
something not described by § 101—i.e., read on something that is not a
“process, machine, manufacture, or composition of matter” (35 U.S.C.
§ 101). See In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007) (“If a
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claim covers material not found in any of the four statutory categories,
that claim falls outside the plainly expressed scope of § 101 even if the
subject matter is otherwise new and useful.”). If the claim can only be read
on something described by § 101, then the analysis further considers
whether the claim is directed to one of the judicially-determined “important
implicit exception[s]” of § 101—i.e., directed to a law of nature, natural
phenomenon, or abstract idea. Alice, 573 U.S. at 216; Mayo, 566 U.S. at 70.
The Manual of Patent Examining Procedure (MPEP) summarizes the
above analysis as follows:
[A] claimed invention must be eligible for patenting. As
explained in MPEP § 2106, there are two criteria for
determining subject matter eligibility: (a) first, a claimed
invention must fall within one of the four statutory categories
of invention, i.e., process, machine, manufacture, or
composition of matter; and (b) second, a claimed invention
must be directed to patent-eligible subject matter and not a
judicial exception (unless the claim as a whole includes
additional limitations amounting to significantly more than the
exception).
MPEP § 2104 at 2100–10 (emphases added); see also Reply Br. 4
(addressing MPEP § 2106.04(a).I). As the above emphases reflect,
patent-eligibility requires statutory compliance (the above prong “a”) and
judicial compliance (the above prong “b”); they are different criteria and
each must be met. The Examiner determines the claims cover “pure”
software (i.e., cover software per se) and thereby lack statutory compliance.
No further determination is needed to conclude the claims are
patent-ineligible.
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Appellant also contends claims 16 and 18 recite tangible elements that
confer statutory compliance. Appeal Br. 10–12. Specifically, Appellant
contends:
[A]t least two elements of claim 16, the symbol-based program
and the I/O functionality as a graphical access point, are
displayed. In addition, the claim recites a process for
generating an information item that can then control the
configuration of I/O functionality in the configuration tool. . .
[and consequent] linking of signals to I/O functionality in the
configuration tool without manual intervention in that tool.
[These features] should . . . be considered concrete and
tangible[.]
Appeal Br. 10–11; see also Reply Br. 3–4. Appellant similarly contends:
While claim 18 does not recite that the I/O functionalities are
represented by graphical access points, the configuration tool
side of the system is the tool that generates the links and
configuration which maps physical ports and signals.
Therefore, this [claim 18] side of [Appellant’s] system is even
more tied to physical results.
Appeal Br. 12.
We are unpersuaded of Examiner error. Patent-eligibility is dictated
by what a claim covers, i.e., protects. See Nuijten, 500 F.3d at 1355 (“The
presence of acts recited in the claim does not transform a claim covering a
thing—the signal itself—into one covering the process by which that thing
was made.”). The claims cover the recited modeling tool (claims 16 and 17)
and configuration tool (claims 18 and 19)—not things controlled, instituted,
impacted, etc., by the tools. Each of the tools can be, in and of itself, merely
data in an intangible form. See Spec. ¶¶ 8 (“The modeling tool 6 runs on a
computer 91.”), 12 (“The configuration tool 7 likewise runs on a computer
91.”). Such subject matter lacks statutory compliance. See Digitech Image
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Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir.
2014) (“Data in its ethereal, non-physical form is simply information[,
which] does not fall under any of the categories of eligible subject matter
under section 101.” (citing Nuijten, 500 F.3d at 1351)).
For the foregoing reasons, we sustain the Examiner’s decision to
reject claims 16–19 under § 101.
§ 103 Rejections
We are unpersuaded the Examiner erred in rejecting claims 16–19
under § 103. We address the claims, below, as grouped by Appellant.
1. Independent claim 1 and depending claims 7–8
The arguments for claims 1–8 are directed to only claim 1.
Appeal Br. 14–17. Appellant contends Himmler and ConfigDesk2011 do
not teach or suggest the following claim limitation: “using the modeling
tool, a specific I/O functionality . . . of the target hardware unit is assigned in
the symbol-based program to one . . . signal.” Appeal Br. 14–15.
Specifically, Appellant contends that the Examiner cites Himmler’s model
port of the “Simulink® model” as teaching the claimed assignment in the
symbol-based program and errs inasmuch “no hardware-specific information
is placed [by the model port] in the Simulink model . . . [e.g.,] input and
output ports are placed into the model to carry any type of signal.” Id. at 14.
We are unpersuaded of error because, contrary to Appellant’s
argument, the claim limitation does not recite that the modeling tool places
hardware-specific information (e.g., an identification of a hardware type) in
the symbol-based program. The claim limitation recites that the modeling
tool assigns, in the symbol-based program, a specific I/O functionality “of”
(not necessarily describing) a target hardware unit to a signal. Appellant
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does not present a sufficient reason to understand the assignment as placing
hardware-specific information in the symbol-based program.
We therefore agree with the Examiner’s determination that Himmler’s
HIL simulator and Simulink model respectively teach the claimed modeling
tool and symbol-based program. Ans. 15–18 (citing Himmler Fig. 5
(Simulink model interface and included model port block)); Final Act. 20.
That is, we accept that Himmler’s HIL simulator (claimed modeling tool)
includes the Simulink model (claimed symbol-based program) and, via an
inserted model port block, links specific I/O functions of a target hardware
units (e.g., a pulse-width modulation (PWM) output) to a signal of the
Simulink model (e.g., a signal channel). Id. We also accept that the model
port block constitutes a link that is “in” the Simulink model and “assigns” a
specific I/O functionality (e.g., output) of a hardware unit (e.g., PWM) to
one signal (e.g., a channel). Id.
In the Reply Brief, Appellant further contends that the claim
limitation’s recitation of “target hardware” (in “specific I/O functionality . . .
of the target hardware unit is assigned”) conveys the alleged placement of
hardware-specific information in the symbol-based program. Reply Br. 5.
Specifically, Appellant contends:
[The Examiner’s] interpretation of the claim is unreasonably
broad as the claim requires that the specific I/O functionality
[to] be functionality of target hardware[—]not abstract external
devices. This feature is important because the mapping of I/O
functionality can change dramatically with different target
hardware, so the generic external devices of Himmler are
insufficient to create such a mapping for target hardware.
Id. (original emphasis). The Final Action presents the Examiner’s above
finding that Himmler’s model port block assigns a “specific I/O
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functionality . . . of the target hardware unit” as claimed (Final Act. 23),
Appellant’s at-hand “target hardware” argument was not made in the
Appeal Brief and therefore the “target hardware” argument lacks a good
cause for being raised by the Reply Brief and will not be considered on the
merits. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer, . . . will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.”).
Appellant also contends Himmler and ConfigDesk2011 do not teach
or suggest the following claim 1 limitation: “automatically generating a
signal assignment information item in the modeling tool from [the]
assignment within the symbol-based program; automatically transmitting the
signal assignment information item from the modeling tool to the
configuration tool to link the specific I/O functionality to the symbol-based
program in the configuration tool.” Appeal Br. 4–5. Specifically, Appellant
contends the Examiner cites Himmler’s “interface description” as teaching
the claimed signal assignment information item and errs inasmuch the
interface description lists I/O signals but not assignment information
that assigns an I/O functionality to a signal. Id. at 15.
We are unpersuaded of Examiner error because, contrary to
Appellant’s argument, the claim limitation does not recite that the signal
assignment information item represents the above-addressed (for the first
argument) assignment of an I/O functionality to a signal. The
claim limitation recites that the signal assignment information item is
generated from the assignment and links, “in” the configuration tool (per the
transfer), the specific I/O functionality to the symbol-based program.
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Appellant presents no reason to understand the signal assignment
information item as representing the above-addressed assignment of an I/O
functionality to a signal.
We therefore accept the Examiner’s determination that Himmler’s
interface description teaches the claimed signal assignment information
item. Ans. 19–20; see also Himmler 6. That is, we accept that the interface
description includes the model port blocks of Simulink model and is
transferred to the ConfigurationDesk® tool (claimed configuration tool). Id.
at 19. We also accept that the transferred model port blocks are part of the
Simulink model (claimed symbol-based program) and thus link a specific
I/O functionality (e.g., PWM output) to the Simulink model. Id. The
transfer of the interface description thereby provides, in the
ConfigurationDesk® tool, a link between a specific I/O functionality and the
Simulink model (by providing a description of the model port blocks
inserted into the Simulink model). Id.
Appellant also contends Himmler and ConfigDesk2011 do not teach
or suggest the following claim limitation: “switching control of the
assignment . . . according to the signal assignment information item.”
Appeal Br. 16. Specifically, Appellant contends the Examiner cites
ConfigDesk 2011 as teaching the claim limitation and errs inasmuch that,
though ConfigDesk 2011 teaches a linking of devices to I/O functionalities
and signals, “[n]owhere does [it] teach that any linking is based on a
received assignment item, . . . the linking is automatic, or that any
assignment is begun at the modeling side and then switched to the
configuration side.” Id. Appellant further contends “[t]he mere existence of
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linking in ConfigDesk 2011 cannot teach the [claimed] method of linking
using assignment information items.” Id.
We are unpersuaded of Examiner error because, contrary to
Appellant’s argument, the claim limitation does not recite that the claimed
linking (i.e., the assignment of a specific I/O functionality to a signal) is
either automated3 or based on the signal assignment information item. The
claim limitation recites control of the assignment (i.e., not the assignment
itself) is switched according to the signal assignment information item.4
Appellant does not present a sufficient reason to understand the claimed
linking as being either automated or based on the signal assignment
information item.
We therefore agree with the Examiner’s determination that Himmler’s
insertion of model port blocks into a Simulink model constitutes a
developer’s opportunity to create—and thus control—a link between a
specific I/O functionality of a hardware unit (e.g., a PWM channel) and a
signal of the model (e.g., a signal channel). Ans. 25–26; see also supra 9–10
(discussion of Himmler). Once Himmler transfers the description of the
inserted model port blocks to the ConfigurationDesk, the developer can
modify—and thus control—the link via the ConfigurationDesk. Id. at 25–
26. Thus, Himmler’s transfer of the description switches control of the link

3“[I]t is not ‘invention’ to broadly provide a mechanical or automatic means
to replace manual activity which has accomplished the same result.” In re
Venner, 262 F.2d 91, 95 (CCPA 1958).
4 Further, though claim 1 recites the item as being automatically generated,
claim 1 does not recite the item as instituting or even representing the
assignment. Claim 1 recites the item as, per its transfer, linking the specific
I/O functionality to the symbol based program.
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(claimed assignment) from the Simulink model (claimed symbol-based
program) to the ConfigurationDesk (claimed configuration tool). Id.
Appellant also contends Himmler and ConfigDesk2011 do not teach
or suggest the following claim limitation: “wherein the . . . I/O functionality
. . . is represented by a graphical access point in the modeling tool.”
Appeal Br. 16–17. Specifically, Appellant contends the Examiner cites
Himmler’s Simulink model as teaching the claim limitation and errs
inasmuch the model’s “inputs merely receive signals or generate constants[;
they] do not represent []I/O functionality of the target hardware.” Id.
We are unpersuaded of Examiner error because, contrary to
Appellant’s argument, the claim limitation does not recite the graphical
access point as identifying (e.g., stating) the I/O functionality. Claim
1 recites the graphical access point as representing the I/O functionality.
Appellant does not present a sufficient reason to understand the
claim limitation as placing an identification of the I/O functionality in the
graphical access point.
We therefore agree with the Examiner’s determination that the
displayed data links of the Simulink model are graphical access points in the
model and represent I/O functionality of hardware supplying the model.
Ans. 28; see also Himmler 6 (examples of I/O functions including a PWM
output). We add that, even assuming (arguendo) the claim limitation recites
the graphical access point as identifying the I/O functionality, the displayed
data links of the Simulink model visually differentiate inputs and output—
thereby identifying an I/O functionality (input or output).
For the foregoing reasons, we sustain the Examiner’s decision to
reject claims 1–8 under § 103.
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2. Independent claim 9 and depending claims 10–15 and 20
The arguments for claims 9–15 and 20 are directed to claim 9 are
redundant of the unpersuasive arguments for claim 1. Appeal Br. 17–18.
We therefore are unpersuaded of Examiner error.
Accordingly, we sustain the Examiner’s decision to reject claims 9–15
and 20 under § 103.
3. Independent claim 16 and depending claim 17
The arguments for claims 16 and 17 are directed to claim 16 are
redundant of those addressed for claim 1. Appeal Br. 18–19. We therefore
are unpersuaded of Examiner error.
We add that the only distinction (between the arguments for claim 16
and claim 1) is Appellant’s contention that claim 16’s signal assignment
information item is differently recited (than in claim 1) inasmuch it
expressly “contains linking of the signal to be assigned of the symbol-based
program to a specific I/O functionality . . . of the target hardware unit”
(id. at 18) and “forms a basis for linking of the signal . . . to the specific I/O
functionality . . . in a configuration tool” (id. at 19). This distinction is
inconsequential because claim 16, like claim 1, does not recite the signal
assignment information item as identifying (e.g., stating) the signal, specific
I/O functionality, or target hardware unit. Claim 16 recites the item as
containing a link between the signal and specific I/O functionality. As
discussed, Himmler’s transferred description of the model port blocks (i.e.,
the interface description transferred from the Simulink model to the
ConfigurationDesk model) describes such a link. See supra 9–10
(discussing the model port blocks and transferred description thereof).
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For the foregoing reasons, we sustain the Examiner’s decision to
reject claims 16 and 17 under § 103.
4. Independent claim 18 and depending claim 19
The arguments for claims 18 and 19 are directed to claim 18 and are
redundant of those for claim 1. Appeal Br. 20–21. We therefore are
unpersuaded of Examiner error for the reasons stated above.
Accordingly, we sustain the Examiner’s decision to reject claims 18
and 19 under § 103.
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–20.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. Basis Affirmed Reversed
16–19 § 101 Eligibility 16–19
1, 6, 7, 8, 9, 13,
14, 15, 16, 18 § 103
Himmler,
ConfigDesk2011
1, 6, 7, 8,
9, 13, 14,
15, 16, 18

2, 4, 5, 10, 11, 12,
17, 19, 20 § 103
Himmler,
ConfigDesk2011,
Thomas
2, 4, 5, 10,
11, 12, 17,
19, 20

3 § 103
Himmler,
ConfigDesk2011,
Kawaguchi
3
Overall
Outcome 1–20

AFFIRMED