Ex Parte Gautron et al

Patent Trial and Appeal Board

Nov 8, 2018

14875813 (P.T.A.B. Nov. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/875,813 10/06/2015
102469 7590 11/13/2018
PARKER JUSTISS, P.C./Nvidia
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
FIRST NAMED INVENTOR
Pascal Gautron
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.
15-BR-0042-US02 9736
EXAMINER
TSENG, CHARLES
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
11/13/2018 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PASCAL GAUTRON, DIETGER VAN ANTWERPEN,
CARSTEN WAECHTER, and MATTHIAS RAAB
Appeal2018-004650
Application 14/875,813
Technology Center 2600
Before JUSTIN BUSCH, BETH Z. SHAW, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-20, which represent all the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellants' invention is directed to calculating an adjusted shading
normal vector. See Spec. ,r,r 4---6, Claims App 'x.
1 Throughout this Decision we have considered the Appeal Brief filed
January 25, 2018 ("App. Br."), the Reply Brief filed March 23, 2018
("Reply Br."), the Examiner's Answer mailed February 14, 2018 ("Ans."),
and the Final Rejection mailed October 10, 2017 ("Final Act.").
Appeal2018-004650
Application 14/875,813
Claim 1 is illustrative of the claims at issue and is reproduced below:
1. A method of adjusting a shading normal vector for
a computer graphics rendering program, comprising:
calculating a normalized shading normal vector pointing outwards
from an origin point on a tessellated surface modeling a target surface to be
rendered;
calculating a normalized outgoing reflection vector projecting from
the origin point for an incoming view vector directed towards the origin
point and reflecting relative to the normalized shading normal vector;
calculating a correction vector such that when the correction vector is
added to the normalized outgoing reflection vector a resulting vector sum is
yielded that is equal to a maximum reflection vector, wherein the maximum
reflection vector is on or above the tessellated surface;
calculating a normalized maximum reflection vector by normalizing a
vector sum of the correction vector plus the maximum reflection vector; and
calculating a normalized adjusted shading normal vector by
normalizing a vector difference of the normalized maximum reflection
vector minus the incoming view vector.
REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter. Final Act. 2-7.
CONTENTIONS AND ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced. For at least the reasons discussed below, we agree with and adopt
the Examiner's findings and conclusions in the Final Action and Answer.
The Examiner determines the pending claims are directed to an
abstract idea of mathematical relationships, identified as a series of
calculations for calculating various vectors and mathematically manipulating
the vectors through mathematical formulas to obtain a normalized adjusted
normal vector for a tessellated surface. Final Act 6; Ans. 2, 3. The
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Application 14/875,813
Examiner also determines additional elements recited in these claims do not
amount to significantly more than the abstract idea itself. Final Act. 6, 7;
Ans. 4, 5. According to the Examiner, the claims require no more than
implementing the abstract idea on a generic computer rendering
environment. Final Act. 4; Ans. 5.
Appellants present several arguments against the 35 U.S.C. § 101
rejection. App. Br. 2-11; Reply Br. 2-5. Appellants contend the claims are
not directed to an abstract idea and that the claims amount to significantly
more than an abstract idea. Id.
Appellants' arguments are unpersuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellants' arguments
supported by a preponderance of evidence. Ans. 2-5; see also Final Act. 2-
7. As such, we agree with and adopt the Examiner's findings and
explanations provided therein. Id.
The Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 598-99 (2013)). The
"'abstract ideas' category embodies 'the longstanding rule that '[a]n idea of
itself, is not patentable."' Alice, 134 S. Ct. at 2354--55 (quoting Gottschalk
v. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-78 (2012)). The first step in the analysis is to
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Application 14/875,813
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts," such as an abstract idea. Id.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination'" to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 77-80). In other words, the
second step is to "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. (alteration in original) ( quoting Mayo, 566 U.S. at 72-
73). The prohibition against patenting an abstract idea "cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
Appellants argue the claims as a group. See App. Br. 7-11. After
undertaking the first step of the Alice inquiry, we agree with the Examiner
that Appellants' claims are directed to an abstract idea, as explained by the
Examiner. Final Act. 6. All the steps recited in Appellants' claims (i.e.,
"calculating a normalized shading vector, ... calculating a normalized
outgoing reflection vector, ... calculating a correction vector, ...
calculating a normalized maximum reflection vector ... and calculating a
normalized adjusted shading normal vector"), are abstract processes of
calculating various vectors. Cf Digitech Image Techs., LLC v. Elecs. for
Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (finding an abstract
idea because claims describe a process of organizing information through
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Application 14/875,813
mathematical correlations and are not tied to a specific structure or
machine).
Appellants contend that the Examiner erred in rejecting the claims
under 35 U.S.C. § 101 because the claims do not merely recite abstract
mathematical relationships and formulas "but rather [are directed] to a much
more concrete idea of minimizing artifacts in computer rendered images by
carrying out the sequence of calculations recited in these claims." App. Br.
7, 8.
We disagree. Instead, we agree with the Examiner's determination
that calculating a series of vectors is a mathematical relationship. Contrary
to Appellants' position, we conclude that the claim solves a mathematical
problem. We agree with the Examiner that Appellants have not pointed to
any language within the claim that describes an application for minimizing
visual artifacts in computer rendered images or any technological
improvement. Ans. 3, 4.
The second step of the Alice inquiry indicates that the limitations in
Appellants' claims do not add anything "significantly more" to transform
them into a patent-eligible application of the abstract concept of calculating
a series of vectors. Final Act. 6; Ans. 4, 5; see also Alice, 134 S. Ct. at 2357.
We agree with the Examiner that the computer limitations of claim 1 do not
add anything "significantly more" than the abstract idea. Ans. 4. As
recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice, 134 S. Ct. at 2358; see id. at 2359 (concluding
claims "simply instruct[ing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer" are not patent eligible).
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In the Reply Brief, Appellants cite Aatrix Software, Inc. v. Green
Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018), as supporting
Appellants' alleged "innovation of the computer graphics rendering
program," which Appellants argue "is made clear by the computer rendering
program's calculation of a normalized adjusted shading normal vector."
Reply Br. 2. Appellants do not persuasively explain why Aatrix is similar to
the present case. In Aatrix, the Federal Circuit vacated the district court's
dismissal under Rule 12(b )( 6) and reversed the district court's denial
of Aatrix's motion for leave to file a second amended complaint. Aatrix,
882 F.3d at 1130. Aatrix was vacated and reversed based on allegations as .....,
to facts and the proper construction of the claims-rnatters that are not at
issue here. Id. Moreover, the rejected claims are unlike the claims of Aatrix
because the rejected claims merely recite a series of calculations, whereas
the claims in Aatrix recited various other limitations such as a form file, a
data file, and a form view program operating on the form file and data file.
As the Examiner concludes, and we agree, the rejected claims fail to impose
any meaningful limits on the mathematical calculations and fail to describe
any particular technological application for the mathematical calculations.
Ans. 5.
With regard to Appellants' argument that the pending claims are
patent eligible because there are no pending obviousness or novelty
rejections of the claims (see App. Br. 9), Appellants improperly conflate the
requirements for eligible subject matter ( § 101) with the independent
requirements of novelty(§ 102) and non-obviousness(§ 103). "The
'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
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within the§ 101 categories of possibly patentable subject matter." Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981); see also Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (stating that, "under the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility.").
We have also carefully considered Appellants' arguments regarding
preemption. See App. Br. 10, 11. However, although "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). Where claims are
deemed to recite only patent-ineligible subject matter under the two-step
Alice analysis, as they are here, ''preemption concerns are fully addressed
and made moot." Id.
Because Appellants' claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection of these
claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
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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