Ex Parte Kim et al

Board of Patent Appeals and Interferences

Feb 26, 2010

11923919 (B.P.A.I. Feb. 26, 2010)

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
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Decided: February 26, 2010
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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

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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

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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).
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“‘[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

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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.
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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
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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

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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

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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

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