Ex Parte Dhanekula et al

Patent Trial and Appeal Board

Jan 23, 2018

13213883 (P.T.A.B. Jan. 23, 2018)

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.
13/213,883 08/19/2011 Ramakrishna C. Dhanekula R00334NP 9105
129668 7590 01/25/2018
Invoke / Oracle
c/o CPA Global
900 Second Avenue South, Suite 600
Minneapolis, MN 55402
EXAMINER
BLOSS, STEPHANIE E
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
01/25/2018 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 @ InvokeIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMAKRISHNA C. DHANEKULA,
KENNY C. GROSS, and DAVID KEITH MCELFRESH
Appeal 2017-003960
Application 13/213,883
Technology Center 2800
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In this decision, we refer to the Specification filed August 19, 2011
(“Spec.”), the Final Office Action mailed October 1, 2015 (“Final Act.”), the
Appeal Brief filed September 20, 2016 (“Br.”), and the Examiner’s Answer
mailed November 4, 2016 (“Ans.”).
2 Appellants identify the real party in interest as Oracle International
Corporation. Br. 2.
Appeal 2017-003960
Application 13/213,883
The subject matter on appeal relates to a method for testing
functionality of multi-core processors and similar integrated circuits.
Spec. 11. Claim 1, reproduced below from the Claims Appendix of the
Appeal Brief, is illustrative of the claims on appeal.
1. A method, performed by a controller, of testing a
multi-core processor comprising:
executing a specified set of instructions using the multi­
core processor;
measuring electromagnetic energy radiated from the
multi-core processor while executing the specified set of
instructions;
determining, by the controller, a test node corresponding
to radiated power at each of a plurality of predetermined
frequencies of the radiated electromagnetic energy; and
comparing, by the controller, the test node to each of a
plurality of reference nodes with each reference node
corresponding to a known number of operating cores of a
reference multi-core processor executing the specified set of
instructions to determine a number of functional cores in the
multi-core processor.
Br. 8 (Claims App’x.).
DISCUSSION
The Examiner maintains the rejection of claims 1—20 under
35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more. Final Act. 2—A.
In traversing the Examiner’s rejection, Appellants argue claims 1—20
as a group. See generally, Appeal Br. 3—6. Accordingly, we focus our
discussion on representative claim 1 in deciding this appeal. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Appeal 2017-003960
Application 13/213,883
We have reviewed the ground of rejection set forth by the Examiner,
Appellants’ arguments, and the Examiner’s response. On this record, we are
unpersuaded that the Examiner erred reversibly in determining that the
claims do not comply with 35 U.S.C. § 101 for the reasons set forth by the
Examiner in the Final Office Action and the Examiner’s Answer. We add
the following.
35 U.S.C. § 101 defines the scope of patent-eligible subject matter as
“any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include an exception:
“[ljaws of nature, natural phenomena, and abstract ideas” are not patentable.
See, e.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014) (“U/z'ce”) (internal quotation and citation omitted). A two-step
framework for determining whether claimed subject matter is judicially-
excepted from patent eligibility under § 101 is set forth in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78—79 (2012)
(“Afoyo”), and further explained in Alice. The first step requires determining
whether the claims at issue are directed to a patent-ineligible concept, such
as an abstract idea. See Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at
76—77). The second step requires examining “the elements of the claim to
determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 72, 79). Claims
directed to, or reciting, systems are also ineligible under § 101 if the
hardware recited by the claims add nothing significantly more than the
underlying abstract idea. Alice, 134 S. Ct. at 2360.
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Appeal 2017-003960
Application 13/213,883
In this appeal, the Examiner determines that claim 1 is directed to a
method of testing that measures electromagnetic energy and compares the
measurement to a test node to determine a number of functional cores in a
multi-core processor, which is an abstract idea. Final Act. 2. The Examiner
finds that claim 1 does not include additional elements that are sufficient to
amount to significantly more than the judicial exception “because the
claimed execution of instructions to measure electromagnetic energy is
simply a form of routine data gathering, since this is the way a sensor works,
and . . . would be routine in any computer implementation, and routinely
used by those of ordinary skill in the art in order to apply the correlation.”
Id.
Appellants argue that “[t]he rejection does not identity any of the
recognized abstract ideas such as being a fundamental economic practice, an
idea of itself, a method of organizing activity, or a mathematical
relationship/formula.” Br. 5.
Appellants’ argument is not persuasive of reversible error. In the
Answer, the Examiner persuasively explains why the claims are directed to a
patent-ineligible concept. Ans. 3. Specifically, the Examiner determines
that the claims as a whole are directed to “a comparing of new and stored
information to identify options” “which is an example of ‘an idea of itself,’
which is one of the four categories of abstract ideas specifically designated
by the courts[, for example, in Classen Immunotherapies Inc. v. Biogen
IDEC, 659 F.3d 1057 (Fed. Cir. 2011) and SmartGene Inc. v. Advanced
Biological Labs. SA, 555 Fed. Appx. 950 (Fed. Cir. 2014),] and included in
the guidance provided by the office in July of 2015.” Ans. 3; USPTO’s
July 2015 Update: Subject Matter Eligibility, 5 (available at
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Appeal 2017-003960
Application 13/213,883
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf) (hereinafter “July 2015 Update”)). Appellants did not file a
Reply Brief, and thus, do not dispute the Examiner’s determination set forth
in the Answer.
Appellants argue that even if the claims are directed to an abstract
idea, “the claims taken as a whole clearly include elements that amount to
‘significantly more’ than the abstract idea of data gathering.” Br. 5.
Appellants’ argument is not persuasive of reversible error. The
Examiner finds that “the only limitations provided in any claims that are not
an example of comparing to identify options are required [routine] data
gathering steps in order to perform the comparison.” Ans. 3; Final Act. 2, 4.
Appellants, in response, simply reference the language of claims 1, 10, 14,
and 16 (Br. 5—6), and then summarily conclude that “[t]he representative
limitations identified . . . when taken as a whole in the context of the claims
amount to ‘significantly more’ than the identified idea of ‘data gathering’
and do not fit into any of the categories of abstract ideas as recognized by
the courts.” Br. 6. Appellants, however, provide no persuasive explanation
to support the conclusion that the combination of elements recited in claim 1
amounts to “significantly more” than the abstract idea identified by the
Examiner.
Appellants argue that “[e]ven assuming arguendo that the claims
recite [an] abstract idea of ‘data gathering,’ the claims still do not tie up that
abstract idea and pre-empt others from using it.” Br. 4.
Appellants’ pre-emption argument does not alter our view that claim 1
is properly rejected under § 101. Our reviewing court has expressly rejected
similar contentions regarding preemption, stating that a patentee’s “attempt
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Application 13/213,883
to limit the breadth of the claims by showing alternative uses . . . outside of
the scope of the claims does not change the conclusion that the claims are
directed to patent ineligible subject matter.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The court explained
that, “[wjhile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility. . . .
Where a patent’s claims are deemed only to disclose patent ineligible subject
matter under the Mayo framework . . . preemption concerns are fully
addressed and made moot.” Id. In the present case, as discussed above, we
are not persuaded of error in the Examiner’s finding that Appellants’ claim 1
is limited to patented ineligible subject matter under the Mayo framework.
Thus, the fact that alternatives outside the claims are not preempted does not
demonstrate patent eligibility.
DECISION
For the above reasons, the 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).
AFFIRMED
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