Ex Parte Kim et alDownload PDFBoard of Patent Appeals and InterferencesFeb 26, 201011923919 (B.P.A.I. Feb. 26, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JONGHAE KIM, SUNGJAE LEE, JEAN-OLIVIER PLOUCHART, and SCOTT KEITH SPRINGER ____________ Appeal 2009-010673 Application 11/923,919 Technology Center 2800 ____________ Decided: February 26, 2010 ____________ Before MAHSHID D. SAADAT, KARL D. EASTHOM, and CARL W. WHITEHEAD, JR., Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-010673 Application 11/923,919 2 Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-10. See Br. 1. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm-in-part. STATEMENT OF THE CASE Appellants invented a design structure embodied on a computer readable storage medium being usable for designing, manufacturing, and testing a fast field effect transistor.1 Claim 1, which further illustrates the invention, follows: 1. A design structure comprising design data embodied on a computer readable storage medium, said design data being useable for designing, manufacturing, and/or testing an integrated circuit, said design data describing that a fast field effect transistor comprises: a source, a drain, a channel between said source and drain, a gate electrode over said channel, one or more source contacts to said source and one or more drain contacts to said drain, each of said one or more source contacts spaced a first distance from said gate electrode and each of said one or more drain contacts spaced a second distance from said gate electrode; and wherein said first and second distances, and a power cut-off frequency of said fast field effect transistor are greater than respective first and second distances and a power cut-off frequency of an otherwise identical reference field effect transistor. The Rejections Claims 1-10 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter (Ans. 3-4). Claims 1-10 stand rejected under 35 U.S.C. § 102(b), as being unpatentable over “that which was well known in the art” (Ans. 4-5). 1 See generally App. Br. 2. Appeal 2009-010673 Application 11/923,919 3 Rather than repeat the arguments of Appellants or the Examiner, we refer to the Appeal Brief (filed December 8, 2008), the Reply Brief (filed April 6, 2009), and the Answer (mailed February 10, 2009) for their respective details. In this decision, we have considered only those arguments actually made by Appellants. Arguments which Appellants could have made but did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008). 35 U.S.C. § 101 rejection ISSUE Do claims 1-10 contain statutory subject matter because the claims contain non-functional descriptive material that, absent a functional interrelationship with a computer, does not constitute a statutory process? PRINCIPLES OF LAW Computer related non-statutory subject matter Under § 101, there are four categories of subject matter that are eligible for patent protection: (1) processes; (2) machines; (3) manufactures; and (4) compositions of matter. 35 U.S.C. § 101. While the scope of patentable subject matter encompassed by § 101 is “extremely broad” and intended to “‘include anything under the sun that is made by man,’” it is by no means unlimited. In re Comiskey, 554 F.3d 967, 977 (Fed. Cir. 2009) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). For example, laws of nature, abstract ideas, and natural phenomena are excluded from patent protection. Diamond v. Diehr, 450 U.S. 175, 185 (1981). Appeal 2009-010673 Application 11/923,919 4 “‘[F]unctional descriptive material’ consists of data structures and computer programs which impart functionality when employed as a computer component.” MANUAL OF PATENT EXAMINING PROCEDURE § 2106.01 (rev. 6, Sept. 2007) (“MPEP”) (emphasis added). Functional and non-functional descriptive material, however, are both nonstatutory when claimed as descriptive material per se. Id.; see also In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994). “When functional descriptive material is recorded on some computer- readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized.” MPEP § 2106.01 (emphasis added). Compare In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994) with Warmerdam, 33 F.3d at 1361. It is this distinction between (1) the functional descriptive material per se and (2) recording such functional descriptive material on a computer- readable medium that is critical to patentability under § 101. As functional descriptive material, this distinction applies both to computer programs and data structures. As the MPEP explains: Data structures not claimed as embodied in computer- readable media are descriptive material per se and are not statutory because they are not capable of causing functional change in the computer. See, e.g., Warmerdam, 33 F.3d at 1361 . . . (claim to a data structure per se held nonstatutory). Such claimed data structures do not define any structural and functional interrelationships between the data structure and other claimed aspects of the invention which permit the data structure’s functionality to be realized. In contrast, a claimed computer-readable medium encoded with a data structure defines structural and functional interrelationships between the Appeal 2009-010673 Application 11/923,919 5 data structure and the computer software and hardware components which permit the data structure’s functionality to be realized, and is thus statutory. Similarly, computer programs claimed as computer listings per se, i.e., the descriptions or expressions of the programs, are not physical “things.” They are neither computer components nor statutory processes, as they are not “acts” being performed. MPEP § 2106.01(I). ANALYSIS Claim 1 Claim 1 recites, “[a] design structure comprising design data embodied on a computer readable storage medium.” The Examiner interprets such a recitation in the preamble of claim 1 as “‘a design structure embodied on a machine readable medium’ because the design structure comprises only data” (Ans. 5-6). Appellants argue that claim 1 is not directed to “‘a design structure embodied on a machine readable medium’ as the Examiner alleges, but rather to ‘[a] design structure’” (App. Br. 5 (emphasis added); Reply Br. 2). The Examiner further maintains that claim 1 recites non-functional descriptive material and therefore is not statutory regardless of whether or not the material is recorded on some computer- readable medium (Ans. 6). At the outset, we do not find Appellants’ argument in regards to the preamble to be persuasive. Appellants try to limit the preamble to a design structure only, but claim 1 is not so limited. More specifically, it is the design data embodied on a computer readable storage medium that is further recited in the body of the claim as describing a fast field effect transistor. Appeal 2009-010673 Application 11/923,919 6 Further, Appellants have not pointed to any teaching from their Specification that would support their position. Therefore, the Examiner’s interpretation of claim 1 is reasonable in light of the broad recitation of design structure. We turn our attention to Appellants’ challenge to the Examiner’s position that the “design structure comprising design data embodied on a computer readable storage medium” recited in claim 1 does not recite statutory subject matter under § 101. For the following reasons, we disagree with Appellants. Appellants assert: The data of Appellants[’] claim 1 represents physical structures and relationships between the structures, to wit “a source, a drain, a channel between said source and drain, a gate electrode over said channel, one or more source contacts to said source and one or more drain contacts to said drain, each of said one or more source contacts spaced a first distance from said gate electrode and each of said one or more drain contacts spaced a second distance from said gate electrode.” Appellants contend that it is inherent that the data itself must have the same relationships as recited for the “fast field effect transistor.” Therefore the data, when embodied on a computer readable storage media, imparts those relationships to the medium (e.g., in the patterns of magnetized regions, depressions or other physical changes to the storage medium). (App. Br. 6). We do not find Appellants’ inherency arguments to be persuasive because, even though the design structure comprises design data that is embodied on a computer readable storage medium, the design structure is not capable of causing functional change in a computer because the design data is merely a compilation and/or an arrangement of data. See MPEP § 2106.01(I). We will sustain the Examiner’s rejection of independent claim 1 Appeal 2009-010673 Application 11/923,919 7 as well as dependent claims 2-6, 8, and 9 since they were not separately argued. Claim 10 Appellants argue that “the design data is recited as being processable [sic] ‘in a computer aided design system’” and therefore imparts functionality (App. Br. 10). We disagree with Appellants; claim 10 recites “design data comprising elements that when processed in a computer-aided design system generate a machine-executable representation of a fast field effect transistor.” The design data embodied on a computer readable medium is merely a compilation and/or arrangement of data and fails to impart functionality. It is actually the computer-aided design system that causes a functional change in the system by generating the representation of the fast field effect transistor, not the design data. We will sustain the Examiner’s rejection of claim 10. Claim 7 Appellants argue that claim 7 requires “said design data comprises a netlist” and points out that netlists are well known data structures used in the design process of integrated circuits (App. Br. 9). According to Appellant, the recited netlist data structure imparts a logical relationship between elements of the transistor (Reply Br. 11 (citing an online definition of netlist)). Absent evidence to the contrary, we find Appellants’ arguments to be persuasive. We will not sustain the Examiner’s rejection of claim 7. Appeal 2009-010673 Application 11/923,919 8 35 U.S.C. § 102(b) rejection Appellants argue that the Examiner has failed to provide evidence to support the Examiner’s allegations that the claimed invention is not patentable (App. Br. 12). It is the Examiner’s position that in rejecting claim 1, examples of information contained in computer aided design processes that were well known to artisans and commensurate with the scope of claim 1 were provided (Ans. 10). We find Appellants’ arguments persuasive. The examples that the Examiner provided are merely allegations that are not supported by any evidence. We will not sustain the Examiner’s rejection of claims 1-10. CONCLUSIONS Claims 1-6 and 8-10 do not contain statutory subject matter because the claims contain non-functional descriptive material that, absent a functional interrelationship with a computer, does not constitute a statutory process. Claim 7 contains statutory subject matter because the recited netlist data structure imparts a logical relationship between elements of the transistor. The 35 U.S.C. § 102(b) rejection fails to anticipate claims 1-10 because of lack of evidence. ORDER We will sustain the Examiner’s decision rejecting claims 1-6 and 8- 10. We will not sustain the Examiner’s decision rejecting claim 7. Appeal 2009-010673 Application 11/923,919 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART babc SCHMEISER, OLSEN & WATTS 22 CENTURY HILL DRIVE SUITE 302 LATHAM, NY 12110 Copy with citationCopy as parenthetical citation