Ex Parte BerghofDownload PDFPatent Trial and Appeal BoardMay 15, 201814007111 (P.T.A.B. May. 15, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/007,111 09/24/2013 27572 7590 05/17/2018 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 828 BLOOMFIELD HILLS, MI 48303 FIRST NAMED INVENTOR Frank Berghof 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 7971-000041-US-NP 7776 EXAMINER BLOSS, STEPHANIE E ART UNIT PAPER NUMBER 2864 NOTIFICATION DATE DELIVERY MODE 05/1712018 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): troymailroom@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK BERGHOF Appeal2017-007081 Application 14/007, 111 1 Technology Center 2800 Before KAREN M. HASTINGS, N. WHITNEY WILSON, and BRIAND. RANGE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant requests our review under 35 U.S.C. § 134 of the Final Rejection of claims 1-20 under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 A VL Test Systems is identified as the real party in interest. Appeal Br. 3. 2 The Examiner withdrew the § 103 rejections that were made in the Final Action (Ans. 2). Appeal2017-007081 Application 14/007, 111 THE INVENTION Claim 17, 3 reproduced below, is illustrative of the subject matter on appeal. A method of determining an inverse convolution function for use in correcting a response of an emissions measurement instrument having an inherent transient response, the method compnsmg: storing in memory an idealized convolution function, the idealized convolution function being in the time domain and representing the transient response of the instrument; providing the idealized convolution function to a processor; transforming the idealized convolution function from the time domain to the frequency domain using the processor; dividing a regularizing filter function by the transformed idealized convolution function using the processor, the result of the division being the inverse convolution function in the frequency domain; and transforming the inverse convolution function from the frequency domain to the time domain using the processor. Appeal Br. 21 (Claims Appendix). Independent claim 1 is directed to a "method of correcting a response of an emissions measurement instrument" using an inverse convolution function similar to that of claim 17 (Appeal Br. 17, Claims Appendix). 3 While the Examiner addresses a proposed amendment for claims 1 and 17 in the Amendment After Final, filed 10/05/2016, that proposed amendment is not before us (Ans. 3; Reply Br. 7 (Appellant recognizes that the claims do not recite the proposed amendment)). 2 Appeal2017-007081 Application 14/007, 111 Appellant argues claims 1-20 as a group, and does not separately argue any claim (Appeal Br. 7-13). Accordingly, we have selected independent claim 17 as representative. ANALYSIS The rejection under 35 US.C. § 101 as being directed to non-statutory subject matter. Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014 ), identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101. According to Alice step one, "[ w ]e must first determine whether the claims at issue are directed to a patent-ineligible concept," such as an abstract idea. Alice, 134 S. Ct. at 2355. In that regard, the Examiner determined that the claims are directed to mathematical relationships and conversions of the convolution function and concluded that the subject matter of the claims is directed to the judicial exception of abstract ideas. Final Act. 2--4. The Appellant challenges the Examiner's articulation of what the claims are directed to, but the challenge is unfounded. See Appeal Br. 6-8. For example, the fact that the claims are drafted to correct a response of an emissions measurement instrument having an inherent transient response is not dispositive. The question is what the claims are "directed to." [T]he "directed to" inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether "their character as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 3 Appeal2017-007081 Application 14/007, 111 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into "the focus of the claimed advance over the prior art"). Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). "The 'abstract idea' step of the inquiry calls upon us to 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 Texas v. DIRECTTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). "In determining the eligibility of respondents' claimed process for patent protection under § 101, their claims must be considered as a whole." Diamond v. Diehr, 450 U.S. 175, 188 (1981). As set out in the Background section of Appellant's Specification, it was known to perform a process called deconvolution to reverse, or correct, the effects of convolution. The claims are directed to transforming an idealized convolution function from a time domain to a frequency domain and generating an inverse convolution function by dividing a regularizing filter function by the transformed idealized convolution function. Accordingly, the claims as a whole, in light of the Specification, are directed to generating a mathematical function, which is consistent with the Examiner's position (Final Act. 2--4). There appears to be no dispute that establishing the inverse convolution function is an abstract idea (Reply Br. 3, admitting "[ w ]hile convolution is a mathematical process" and Appeal Br. 10, admitting that "even ifthe claims were directed to an abstract idea, claims 1 and 1 7 contain limitations that amount to significantly more"). 4 Appeal2017-007081 Application 14/007, 111 Step two is "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."' Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). In this regard, the Examiner determined that, generically linking the use of a judicial exception to a particular technological environment or field of use is insufficient because there are no additional elements that would "amount to significantly more than the judicial exception since all steps are only directed to mathematical determinations or transformations" (Final Action 3--4) and finally that "providing a response or any signal to a processor and using a processor in a mathematical process is routine and conventional, especially when claimed at this high level of generality" (Final Action 4; see also Ans. 2-3). The claims employ conventional devices (emissions measurement instrument, processor in claim 1 and emissions measurement instrument, processor and memory in claim 1 7) for performing their common functions. The Specification supports the view that said processors, memory, and instruments are conventional. Appellant admits that the elements in claims 1 and 17 refer to the controller disclosed in the Specification (Appeal Br. 10 disclosing "claims 1 and 17 improve the way that a controller (e.g., a processor and memory)"). The Specification discloses that the controller "may be any type of known computer" and is "configured to perform each of the calculations in the steps" (see, e.g., Spec. i-f 16). Cf Alice, 134 S. Ct. 2358 (citation omitted). "[T]he mere recitation of a generic computer cannot 5 Appeal2017-007081 Application 14/007, 111 transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea 'while adding the words "apply it'' is not enough for patent eligibility." Id. In addition, the Specification recites that "[t]he disclosed method can further be used to deconvolute data from any measurement instrument for which a convolution curve can be determined" (Spec. ii 18). The Appellant further argues that the present invention is not simply the application of a mathematical relationship because "the methods of claims 1 and 17 improve the way that a controller (e.g., a processor and memory) records the response of an emissions measurement instrument to a sample of exhaust gas" (Appeal Br. 10), similar to the claims in Enfzsh which were held to improve computer functionality (id). A preponderance of the evidence supports the Examiner's position that Appellant's mere assertion that the claims generically improve measurement instrument or controller operation is not meaningful, as "transforming the inverse convolution function from the frequency domain to the time domain using the processor" as recited in the final line of claim 17 does not specifically explain the use of the derived result/indicia to improve the machine functionality (e.g., Final Action 4; Ans. 2-3). Indeed, the Specification explains that the step of converting the inverse convolution function into the time domain is "by way of an inverse Fourier transformation" (Spec. ii 35). Notably the claims end with this mathematical calculation and do not recite any use or transmission/output of the converted inverse convolution function after the calculation is performed. This supports the Examiner's determination that Appellant's claimed improvement is actually simply 6 Appeal2017-007081 Application 14/007, 111 using memory and a processor to "perform the mathematical determination of the claimed convolution" because the claims do not recite "an improvement to a computer" (Ans. 2). In addition, the Appellant also argues that the present invention is not simply mathematical determinations because the method "is directed to a method of improving the accuracy of an emissions measurement instrument by mitigating the effect of the instrument's transient response on the recorded response (i.e., the emissions measurement that is stored in memory)" (Reply Br. 3), similar to the claims in Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), which were held to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame (id. at 1348--49). However, the claims in Thales differed from Appellant's claims in that they comprised "the unconventional utilization of inertial sensors" (id. at. 1349) operating in a "non-conventional manner" (id. at 1349--1350), whereas Appellant's claims comprise conventional processors, memory, and measurement equipment. Therefore, the claims in Thales were found to be patent eligible because the claims recited an "unconventional configuration of sensors" (id. at 1349), or non-generic machines, being used in an unconventional manner, while, as correctly pointed out by the Examiner, Appellant's claims comprise generic computer systems (Ans. 2-3). Finally, Appellant argues that the claims comprise significantly more than the abstract idea because "the Examiner acknowledges that the cited art does not disclose an inverse convolution function that represents the transient response of the instrument" (Reply Br. 4; see also Appeal Br. 11- 7 Appeal2017-007081 Application 14/007, 111 13 & Reply Br. 6, 8). However, a finding of novelty or nonobviousness does not necessarily lead to the conclusion that subject matter is patentable eligible. "Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry." Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). The question in step two of the Alice framework is not whether an additional feature (i.e., the calculation) is novel but whether the implementation of the abstract idea involves "more than [the] performance of 'well-understood, routine, [and] conventional activities previously known to the industry."' Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359) based upon whether "[t]aking the claim elements separately, the function performed by the computer at each step of the process is '[p ]urely conventional."' Alice, 134 S. Ct. at2359 (citing Mayo, 566 U.S. at 66). Cf Alice, 134 S. Ct. at 2359 ("Considered 'as an ordered combination,' the computer components of petitioner's method 'ad[d] nothing ... that is not already present when the steps are considered separately.") In Appellant's claims, the memory performs the generic functionality of storing and providing the mathematical function to the processor, while the processor performs the generic functionality of performing mathematical computations with the mathematical function. Regardless of whether the mathematical function itself is novel, the functionality performed by the processor is generic. As such, the novelty of the claims does not comprise significantly more than the abstract idea because Appellant's Specification and claims support a view that the memory and processor act merely as a platform or 8 Appeal2017-007081 Application 14/007, 111 conduit for the data-manipulating abstract idea. Cf In re TL! Communications LLC Patent Litigation, 823 F.3d 607, 612 (Fed. Cir. 2016). For the foregoing reasons, the Appellant has not shown error in the Examiner's Alice step two determination that the claims do not include an element or combination of elements sufficient to ensure that in practice they amount to significantly more than to be upon the ineligible concept itself. The remaining arguments have been carefully considered but are unpersuasive as to error in the rejection. The rejection of claims 1-20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is sustained. DECISION The decision of the Examiner to reject 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)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation