Ex Parte Beals et al

Patent Trial and Appeal Board

Oct 26, 2017

13486340 (P.T.A.B. Oct. 26, 2017)

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.
13/486,340 06/01/2012 Mark J. Beals RTN-810PUS/11-2143-US-NP 3254
33164 7590 10/30/2017
RAYTHEON COMPANY
C/O DALY, CROWLEY, MOFFORD & DURKEE, LLP
354A TURNPIKE STREET
SUITE 301A
CANTON, MA 02021
EXAMINER
BRAINARD, TIMOTHY A
ART UNIT PAPER NUMBER
3648
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
docketing@dc-m.com
amk@dc-m.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK J. BEALS, EDGAR J. MARTINEZ, JACOB KIM,
AJAY SUBRAMANIAN, WILLIAM F. SKALENDA,
ROBERT W. ALM, and LEE A. MCMILLAN
Appeal 2017-000041
Application 13/486,340
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark J. Beals et al. (Appellants) appeal under 35 U.S.C. § 134 from
the rejection of claims 1—20 under 35 U.S.C. § 101, as being directed to non-
statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-000041
Application 13/486,340
CLAIMED SUBJECT MATTER
Claims 1,10, and 18 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A machine implemented method to analyze a phased array
radar system design, the phased array radar system including a
phased array antenna having multiple transmit and receive signal
paths with each of the transmit and receive signal paths provided
from a plurality of individual components, the method
comprising:
generating a component model for each of the plurality of
individual components of the phased array antenna;
generating a multi-dimensional lookup table (LUT)
having entries corresponding to a number of system states of
interest of the phased array antenna with each dimension of the
multi-dimensional LUT corresponding to a different operational
parameter of the phased array antenna swept across a
predetermined range of values;
synthesizing a single-channel model of phased array
antenna performance for the system design using beamforming
techniques, wherein the single channel model is based upon the
plurality of component models; and
analyzing a single-channel of the phased array radar
system design using the single-channel model of phased array
antenna performance.
DISCUSSION
Claims 1—17
Appellants present the same arguments for both independent claims 1
and 10. See Br. 4—12. Appellants rely on arguments presented for claims 1
and 10, and, therefore, do not present separate arguments directed to
dependent claims 2—9 and 11—17. Id. at 14. We, thus, regard claims 1—17 to
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be argued as a group. We take claim 1 as illustrative of this group, and
claims 2—17 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that claim 1 is directed to non-statutory
subject matter based on a judicial exception without adding significantly
more to the judicial exception. Non-Final Act. 2. More specifically, the
Examiner determines that claim 1 is directed to an abstract idea of
generating a component model, generating a multi-dimensional lookup table,
and synthesizing a single-channel model. Id. The Examiner explains that
the idea in claim 1 is similar to the basic concept of manipulating
information using mathematical relationships, which has been determined to
be an abstract idea. Id. at 3. The Examiner further determines that
Appellants’ claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception because the recited
elements such as a memory and a processor are merely generic parts of a
machine. Id. According to the Examiner: (1) providing memories that store
parametric model data in the form of a multi-dimensional look up table is
merely insignificant pre-solution activity, (2) providing a list of phased array
components to a user and receiving parametric data from a user are merely
insignificant steps that are used to input data into a mathematical algorithm,
and (3) rendering a result of an analysis is merely insignificant post-solution
activity. Id. at 3^4.
Appellants contend that claim 1 is not directed to an abstract idea—
that claim 1 is not similar to the basic concept of manipulating information
using mathematical relationships. Br. 5—6 (citing Digitech Image Tech.,
LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)). Appellants
argue that in contrast to the claim in Digitech, claim 1 does not recite a
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generic technique for combining or manipulating data using mathematical
relationships. Id. at 6. Appellants contend that claim 1 more specifically
requires synthesizing a plurality of component models into a single-channel
model using beamforming techniques and, therefore, does not merely
organize or manipulate information through mathematical correlations or
relationships. Id.
Appellants also argue that claim 1 does not recite any mathematical
operations or formulas, in contrast to the claims in Benson1 and Flook.2 Id.
at 6—8. Appellants contend that claim 1 does not involve any direct
calculation or optimization, but instead is directed to single-channel analysis
of a multiple-channel system design by reciting a series of steps that are
tightly coupled to various physical components of a phased array radar
system. Id. at 9.
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS BankInt'l., 134 S.Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S Ct. 1289, 1294 (2012).
According to the Supreme Court’s framework, we must first determine
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). Id. If so, we must secondly
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine
1 Gottschalk v. Benson, 409 U.S. 63 (1972).
2 Parker v. Flook, 437 U.S. 584 (1978).
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whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (internal citation omitted). The Supreme
Court characterizes the second step of the analysis as “a search for an
‘inventive concept’ — i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Id. (internal citation
omitted).
Claim 1 is directed to a machine implemented method of analyzing a
phased array radar system design comprising the steps of generating a
component model, generating a multi-dimensional lookup table having
entries corresponding to states of interest of a phased array antenna with
each dimension corresponding to a parameter, synthesizing a single-channel
model, and analyzing a single-channel of the phased array radar system
design. Br. 16 (Claims App.). Thus, claim 1 requires collecting and
analyzing data (a parameter) via the use of a “machine,” which are generic
steps in a method of modeling and designing. In other words, claim 1 is
directed to a set of rules performed by a computer (i.e., a mathematical
algorithm or a software).
Our reviewing court instructs us that “[s]oftware can make non­
abstract improvements to computer technology just as hardware
improvements can, and sometimes the improvements can be accomplished
through either route.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). We are further instructed that we must determine if “the
claims are directed to an improvement to computer functionality versus
being directed to an abstract idea, even at the first step of the Alice analysis.”
Id. Thus, software can be patentable where it improves a computer’s
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functionality. Here, however, the limitations at issue are not directed to an
improvement of a computer’s functionality. There is no limitation recited in
claim 1 to suggest that, once a model is synthesized and used for analyzing a
system design, the machine that implements the claimed steps will be
improved in function. Instead, like the claims in Electric Power Group,
claim 1 is a purported advance in uses for existing computer capabilities, not
new or improved computer capabilities. See Electric Power Group, LLC v.
Alstom S.A, 830 F.3d 1350, 1354 (Fed. Cir. 2016) (emphasis added); see
also id. at 1353—54 (explaining that an invention directed to the collection,
manipulation, and display of data is an abstract process). See also Ans. 4
(“synthesizing a single channel model of phased array captures information
and data about the channel and is not done using the phased array antenna”).
Accordingly, claim 1 is directed to an abstract idea.
In regard to Appellants’ attempt to differentiate claim 1 from the
claims at issue in Digitech, Benson, and Flook, we agree with the Examiner
that while no specific mathematical formula is given for each of the recited
steps, the steps are merely a series of mathematical and logic programing
steps implemented on a generically recited machine, and they do not
improve the function of the machine or the operation of a phased array radar.
See Ans. 2—3. The process claim in Digitech did not recite expressly
mathematical formulae or equations. It claimed, in prose, generating two
data sets by taking existing information, such as measured chromatic stimuli,
spatial stimuli, and device response characteristic functions, and organizing
the information into a new form called a device profile. Digitech, 758 F.3d
at 1350-51. The method claim was determined to be an abstract idea
“because it describes a process of organizing information through
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mathematical correlations and is not tied to a specific structure or machine.”
Id. at 1350. The absence of expressly recited mathematical formulae or
equations in the claim carried no significance in determining whether the
claims as a whole were directed to the abstract idea. See also Alice, 134 S.
Ct. at 2356—57 (noting that no special significance was given to the fact that
one of the claims in Bilski reduced hedging to a mathematical formula).
Accordingly, because claim 1 is drawn to a method comprising
collecting and analyzing data and is not directed to an improvement of a
computer’s functionality, claim 1 is directed to the abstract idea of
manipulating information using mathematical relationships by way of a set
of rules performed by a computer. Thus, in accordance with the first step of
the Alice framework, the Examiner correctly finds that claim 1 is directed to
an abstract idea.
Appellants next argue that even if claim 1 is directed toward an
abstract idea, the combination of elements recited is sufficient to ensure that
the claim amounts to significantly more than an abstract idea. Br. 9.
Appellants contend that the Examiner fails to explain why certain additional
claimed elements do not amount to significantly more than an abstract idea
because the Examiner did not discuss the steps of “synthesizing a single­
channel model of phased array antenna performance for the system design
using beamforming techniques” and “analyzing a single-channel of the
phased array radar system design using the single-channel model.” Id. at 10.
Appellants argue that claim 1 provides improvements in the field of
radar engineering because the claimed structures and techniques allow
designers to determine how a radar design will perform under realistic
operating conditions. Id. at 10-11. Appellants also argue that the recited
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steps are not routine and conventional but instead provide an inventive
solution to a specific technological problem, making the claim “significantly
more” than an abstract idea. Id. at 11. According to Appellants, the
claimed invention solves a specific technological problem by synthesizing a
single channel model using beamforming techniques. Id. at 11—12.
Appellants argue that the claimed invention solves the problem of analyzing
phased radar systems in a novel manner by using beamforming techniques.
Id. at 12. Appellants further contend that claim 1 does not merely “generally
link” an abstract idea to a technical field because the claim is limited to the
field of phased array radar engineering. Id.
Claims must include additional features that are significantly beyond
“well-understood, routine, conventional activity” or a simple “instruction]
. . . to implement [or apply] the abstract idea [on a computer].”
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(quoting Mayo, 566 U.S. at 79); Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). Although claim 1 sets
forth specific data to be collected (by generating a component data for each
of the plurality of individual components of the phased array antenna; by
generating a multi-dimensional lookup table from the states of interest of the
phased array system and operational parameters of the phased array antenna;
and by synthesizing a single-channel of phased array antenna performance
for the system design), and indicates that an algorithm is to be used to
manipulate the collected data (the machine implemented method comprising
the recited steps of collecting and analyzing the data and synthesizing a
model), the Examiner’s determination that claim 1 does not specify how the
data is used directly on an array antenna to improve the functioning of the
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array antenna itself is correct. See Ans. 3^4; see also Br. 16 (Claims App.).
As such, claim 1 at most requires only “mathematical algorithms to
manipulate existing information to generate additional information.”
Digitech, 758 F.3d at 1351. Thus, the limitations of claim 1 do not
transform the abstract idea embodied in the claim. Rather, it simply
implements the idea.
Although claim 1 requires using beamforming to synthesize a single­
channel model and analyzing a single channel of the phased array radar
system design using the single-channel model of phased array antenna
performance, as noted by the Examiner, these steps are either merely
insignificant pre-solution activity, insignificant steps used to input data into
a mathematical algorithm, or insignificant post-solution activity. See Non-
Final Act. 3^4; see also Flook, 437 U.S. at 590 (“The notion that post­
solution activity, no matter how conventional or obvious in itself, can
transform an unpatentable principle into a patentable process exalts form
over substance”); cf. Mayo, 132 S. Ct. at 1298 (“Purely ‘conventional or
obvious’ ‘[pre]-solution activity’ is normally not sufficient to transform an
unpatentable law of nature into a patent-eligible application of such a law”).
Providing an analysis, without more, is more appropriately characterized as
an insignificant “post-solution activity” that does not support the invention
having an inventive concept. See Flook, 437 U.S. at 590. Like the Flook
claims, claim 1 does not recite either unconventional physical elements or a
functional relationship between abstract and physical elements. See Non-
Final Act. 3^4; see also Ans. 4.
Concerning Appellants’ contention that the claimed invention solves
the problem of analyzing phased radar systems in a novel manner by using
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beamforming techniques (Br. 12), even assuming that claim 1 is “a novel
and nonobvious modification,” as the Supreme Court has stated, “[t]he
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diamond
v. Diehr, 450 U.S. 175, 188—89 (1981). Thus, we are not apprised of error
based on this argument.
To the extent that Appellants are arguing that the claims do not
preempt because they are limited to the field of phased array radar
engineering (Br. 12), this argument is unpersuasive. In Electric Power
Group, the court noted that a field-of-use restriction, “limiting the claims to
the particular technological environment of power-grid monitoring,” is
insufficient. Electric Power Group, 830 F.3d at 1354. Further, “[wjhile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed Cir. 2015).
Accordingly, claim 1, when considered “both individually and ‘as an
ordered combination,’” amounts to nothing more than an attempt to patent
the abstract idea embodied in the steps of the claim. See Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 78). Thus, the limitations of claim 1 fail to
transform the nature of the claim into patent-eligible subject matter. See id.
(citing Mayo, 566 U.S. at 78). See also Ans. 3.
For these reasons, we sustain the Examiner’s decision rejecting claims
1, and claims 2—17 which fall therewith, as being directed to non-statutory
subject matter.
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Claims 18—20
Appellants do not present separate arguments directed to dependent
claims 19 and 20. Br. 13—14. We, thus, regard claims 18—20 to be argued as
a group. We take claim 18 as representative of this group, and claims 19 and
20 stand or fall with claim 18.
The Examiner’s rejection of claim 18 is substantially the same as the
rejection of claim 1. See Non-Final Act. 2-4, Ans. 2—5.
Appellants contend that claim 18 is directed to patent-eligible subject
matter for the same reasons as discussed for claim 1. Br. 13. Accordingly,
Appellants’ contention in regard to claim 18 is unconvincing for the reasons
discussed supra.
Appellants further contend that, in regard to claim 18, the recitation of
“a Communications System Engineering Tool (COMSET)” is sufficient to
ensure that the claim amounts to significantly more than an abstract idea. Id.
(citing DDR Holdings, LLC v. Hotels.com, L.P., 733 F.3d 1245, 1249 (Fed.
Cir. 2014)). Appellants contend that by expressly including COMSET, the
claimed invention is necessarily rooted in computer technology. According
to Appellants, claim 18 further improves upon the COMSET analysis tool by
adding the capability of analyzing a phased array radar design using the
particular sequence of steps recited in the claim. Id.
As discussed supra, the inclusion of additional features that are not
significantly beyond “well-understood, routine, conventional activity” or a
simple “instruction to implement or apply the abstract idea on a computer,”
does not render the claim patent eligible. See Ultramercial, 772 F.3d at 715.
As the Examiner explains, “while a COMSET is a specific type of
computer[,] it is still generically recited and only performs the data
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gathering, and mathematical and logic steps recited in the claim.” Ans. 5.
Thus, recitation of COMSET in claim 18 merely relates to the use of a
machine or an algorithm for data collection and processing, i.e., a “well-
understood, routine, conventional activity” that does not amount to
significantly more than the abstract idea of manipulating information using
mathematical relationships.
Accordingly, claim 18, when considered “both individually and ‘as an
ordered combination’” {Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at
78)), amounts to nothing more than an attempt to patent the abstract idea
embodied in the functional limitations of the claim. The limitations of claim
18 fail to transform the nature of the claim into patent-eligible subject
matter.
For these reasons, we sustain the Examiner’s decision rejecting claim
18, and claims 19 and 20 which fall therewith, as being directed to non-
statutory subject matter.
DECISION
The Examiner’s rejection of claims 1—20 is AFFIRMED.
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)(l)(iv).
AFFIRMED
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