Ex Parte Li et al

Patent Trials and Appeals Board

Jun 14, 2019

11581218 - (D) (P.T.A.B. Jun. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/581,218 10/13/2006
15055 7590 06/18/2019
Patterson & Sheridan, L.L.P.
Qualcomm
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
Junyi Li
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.
060637B5 5829
EXAMINER
SHAHEED, KHALID W
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
06/18/2019 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):
qualcomm@pattersonsheridan.com
P AIR_eOfficeAction@pattersonsheridan.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNYI LI, ARNAB DAS and
PABLO ALEJANDRO ANIGSTEIN
Appeal2018-002924
Application 11/581,218 1
Technology Center 2600
Before RAMA G. ELLURU, JAMES B. ARPIN, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 16-22, 24, 26-32, 58---63, 65, 67-74, 85-114. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Qualcomm Incorporated as the real party-in-interest.
App. Br. 3.
2 Claims 23, 25, 33-57, 64, 66, and 75-84 have been cancelled. App. Br.
14--20 (Claims App.).
Appeal2018-002924
Application 11/581,218
BACKGROUND
THE INVENTION
The Specification explains that "[ d]ifferent wireless terminals using
the same base station attachment point often have different reporting needs
and priorities." Spec. ,r 5. For example, a wireless terminal that is
stationary, having minimal obstructions between itself and the base station,
and communicating only small amounts of data infrequently may have very
different control information reporting needs than a wireless terminal that is
moving, and experiencing rapidly changing channel conditions while
needing to communicate large amounts of data frequently. Id. For this
reason, using a universal single control information reporting format would
result in inefficiencies in many cases. Id. Thus, flexibility is required with
regard to control information reporting formats. Id. ,r 6.
Appellants' invention, therefore, relates to "selection of alter[ n ]ative
control information reporting formats." Id., Abstract. A reporting format is
selected as a function of at least: "an application being executed, device
capability information, channel condition information, system loading
information, and user quality of service information." Id.
Exemplary independent claim 16 is reproduced below.
16. A communications device, comprising:
a report format selection module for selecting a reporting
format, said reporting format being one of a plurality of different
supported reporting formats, each reporting format comprising a
custom content and structure, said reporting format indicating a
reporting schedule indicating which reports are to be generated
and a sequencing of reporting and a set of report definitions,
wherein the report format selection module includes an input for
receiving device capability information including information
regarding a number of antennas, and wherein the report format
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selection module selects the reporting format as a function of the
device capability information;
a report generation module for generating a sequence of
reports in accordance with the reporting schedule indicated by
the selected reporting format and at least one definition in the set
of report definitions; and
a transmitter for transmitting said generated sequence of
reports.
REJECTION
Claims 16-22, 24, 26-32, 58---63, 65, 67-74, and 85-114 stand
rejected under 35 U.S.C. § 101 Final Act. 5-10.
DISCUSSION
Legal Principles
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
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risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that "[a] claim drawn to subject matter otherwise statutory does
not become nonstatutory simply because it uses a mathematical formula."
Diehr, 450 U.S. at 187; see also id. at 191 ("We view respondents' claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula."). Having said that, the Court
also indicated that a claim "seeking patent protection for that formula in the
abstract ... is not accorded the protection of our patent laws, ... and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment." Id. ( citing Benson and
Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a
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law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine 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, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The Office recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
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( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
Guidance Step 2A - Whether the Claims are
Directed to a Judicial Exception
The Examiner finds the claims are "directed to and abstract idea or an
idea of itself, for organizing human activities. Wherein further the activity
here is the re-ordering/rearranging/sequencing 'report format' information."
Final Act. 5. The Examiner analyzes the limitations of claim 16, and finds
that each one is directed either to organizing human activity or involves
steps that can be performed in the human mind "using cognitive skills."
Ans. 4--9. For example, the Examiner breaks down the claim into six steps
and summarizes them as follows:
Steps ( 1 }-( 6), describe a theoretical manner of:
( 1) selecting a reporting format
(2) sequencing of reporting and a set of report definitions
(3) receiving device capability information
( 4) select(ing) the reporting format as a function of the device
capability information
( 5) generating a sequence of reports in accordance with the
reporting schedule
( 6) transmitting said generated sequence of reports
Id. at 4--5.
The Examiner finds sequencing of reporting is merely processing and
organizing information. Ans. 5. Similarly, the Examiner finds selecting a
reporting format as a function of "device capability information" is merely a
mental step "because a person using cognitive skills could recognize a
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function/relationship between the two elements." Id. Finally, the Examiner
finds that transmitting a particular sequence of reports, "is a generic
computer communication function." Id. at 7.
Appellants argue that "selecting a reporting format based on device
capability information including a number of antennas is not merely 'a
mental process that 'can be performed in the human mind, or by a human
using a pen and paper.'"' App. Br. 10-11. Appellants contend that "the
claims are instead directed to technical approaches that provide a solution to
inefficiencies caused by using a single universal reporting format. For
example, by selecting device specific reporting formats as a function of the
device capability information including the number of antennas, a base
station reduces inefficiencies caused due to using a single universal
reporting format for all devices." Id. at 11.
(a) First Prong of Step 2A
Under the first prong of step 2A of the Guidance, we determine if the
claims recite an abstract idea. Claim 16 recites "a report format selection
module for selecting a reporting format." The reporting format comprises a
"custom content and structure" and indicates "a reporting schedule ... and a
sequencing of reporting." The selection module "receiv[ es] device
capability information including information regarding a number of
antennas" and "selects the reporting format as a function of the device
capability information." The claim further recites "a report generation
module for generating a sequence of reports in accordance with the reporting
schedule." Finally the claim recites "a transmitter for transmitting said
generated sequence of reports." We agree with the Examiner that, under the
broadest reasonable interpretation of the claim, these steps recite mental
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processes. For example, the steps of receiving device capability information
and selecting the reporting format as a function of that device capability ( e.g.
number of antennas) are steps that involve evaluation and judgment and thus
may be performed mentally. Accordingly, we conclude the claims recite
mental processes and therefore an abstract idea.
(b) Second Prong of Step 2A
Next we determine whether the claims recite a practical application of
the recited judicial exception. At this prong, we determine whether , for
example, (i) any additional elements of the claims reflects an improvement
in the functioning of a computer or to another technological field, (ii) an
application of the judicial exception with, or by use of, a particular machine,
(iii) a transformation or reduction of a particular article to a different state or
thing (iv) or a use of the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP § 2106.0S(a}-(c), (e}-(h).
With focus on the limitations that do not define the mental process,
we note that the steps of "a report generation module for generating a
sequence of reports in accordance with the reporting schedule" and "a
transmitter for transmitting said generated sequence of reports" do not
improve the function of a computer or to another technical field. Instead,
generating a sequence of reports in accordance with the reporting schedule
and transmitting the sequence of reports recite steps involving insignificant
extra-solution activity that merely makes use of computer technology.
Appellants argue the claims are directed to "technical approaches that
provide a solution to inefficiencies caused by using a single universal
reporting format. For example, by selecting device specific reporting
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formats as a function of the device capability information including the
number of antennas, a base station reduces inefficiencies caused due to using
a single universal reporting format for all devices." App. Br. 11. We
disagree.
Appellants' argument that selecting an appropriate reporting format
"reduces inefficiencies" is incommensurate with the scope of the claim,
which does not include limitations requiring a reduction of inefficiency.
Instead, the limitation upon which Appellants focus, that of selecting device
specific reporting formats as a function of the device capability, is one that,
as explained above, may be performed mentally. Thus, this step is part of
the identified abstract idea and does not comprise "additional elements"
which can integrate the identified judicial exception into a practical
application. See Guidance 84 Fed. Reg. at 54--55.
Guidance Step 2B - Whether the Claims
Provide an Inventive Concept
Appellants argue "the claims recite an unconventional solution that is
rooted in wireless communication technology. For example, selecting
device specific reporting formats based on device capability information
solves a problem that is unique to wireless communication technology ( e.g.,
inefficiencies caused due to using a universal reporting format for all
devices)." App. Br. 12. Again, we disagree.
As explained above, the claims do not require that the selection of a
specific reporting format reduce inefficiencies. Selecting a reporting format
based on device capabilities, without more, merely recites a step that may be
performed mentally. Similar to the second prong of step 2A, in our analysis
under step 2B, we look to see if the claims add limitations beyond the
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judicial exception that are not "well-understood, routine, conventional" in
the field (see MPEP § 2106.05(d)). The "selecting" limitation is part of the
recited abstract idea rather than a technical solution to a technical problem
that amounts to significantly more than the mental steps.
The Examiner finds that the remaining limitations, such as those of
the "report generation module" and of the "transmitter," are generic
functions of a generic computer. See Ans. 5. We agree with the Examiner.
The Specification indicates that the report generation module is implemented
in a wireless terminal. Spec. ,r 42, Fig. 3. The wireless terminal is described
in the Specification as a conventional mobile communication device. See id.
,r,r 42--49. Similarly, the base station with which the mobile wireless
terminal communicates, also is described as a conventional base station. Id.
,r,r 3 5--41. The transmitter module included in these devices is described as a
standard OFDM transmitter. Id. ,r,r 37, 49. The wireless terminal and the
transmitter operate in their well-understood, routine, and conventional
manner in implementing the claimed steps.
Moreover, once the reporting format has been selected, the generation
of the selected sequence of reports in accordance with the reporting format,
and their subsequent transmission, involves insignificant extra-solution
activity that merely makes use of computer technology. Thus, under step 2B
of the Guidance, we conclude that the claims do not recite an inventive
concept that is significantly more than the recited abstract mental processes.
DECISION
The Examiner's rejection of claims 16-22, 24, 26-32, 58---63, 65, 67-
74, 85-114 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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