Ex Parte Berghof

Patent Trial and Appeal Board

May 15, 2018

14007111 (P.T.A.B. May. 15, 2018)

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)).
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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,
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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").
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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
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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
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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-
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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
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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
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