Ex Parte Mangano

Patent Trial and Appeal Board

Mar 28, 2018

14313273 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/313,273 06/24/2014
38106 7590 03/30/2018
Seed IP Law Group LLP/ST (EP ORIGINATING)
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092
Daniele Mangano
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.
12-CT-0669 (851863.453) 8656
EXAMINER
NGO, CHUONG D
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIELE MANGANO
Appeal2017-008743 1
Application 14/313,273
Technology Center 2100
Before ERIC B. CHEN, ADAM J. PYONIN, and MICHAEL J. ENGLE,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-28.2 See Reply Br. 9. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 STMicroelectronics S.r. l. is identified as the real party in interest. App.
Br. 2.
2 Claim 29 is pending but not subject to a rejection. See App. Br. 51; Ans. 2.
4; Reply Br. 8.
Appeal2017-008743
Application 14/313,273
STATEMENT OF THE CASE
Introduction
The Application is directed to a method and system for "performing
mathematical operations such as division or multiplication, e.g., in
Integrated Circuit (IC) products." Spec. 1:7-8. Claims 1, 12, 21, and 25 are
independent. Claim 1 is reproduced below for reference (with additional
formatting):
1. A method, comprising: performing, using one or more
configured processing devices including a memory, a
mathematical operation on an operand digital signal with an
operator by,
shifting bits of the operand digital signal by a first number
of bit positions, the first number of bit positions corresponding
to a largest power-of-two value less than the operator, generating
a first approximate result;
shifting bits of the operand digital signal by a second
number of bit positions, the second number of bit positions
corresponding to a smallest power-of-two value greater than the
operator, generating a second approximate result; and
generating an output digital signal indicative of a result of
the mathematical operation based on the first and second
approximate results.
The Examiner's Rejection3
Claims 1-28 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2.
3 The Examiner has withdrawn the rejection of claims 27-29 as being
indefinite pursuant to 35 U.S.C. § 112(b ). See Ans. 4.
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Application 14/313,273
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make are deemed waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). We are not persuaded of Examiner error; we adopt the
Examiner's findings and conclusions as our own to the extent consistent
with our analysis, and we add the following for emphasis.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include an implicit
exception: laws of nature, natural phenomena, and abstract ideas are not
patentable. See, e.g., Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354
(2014). The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," e.g., to an
abstract idea. Alice, 134 S. Ct. at 2355. If the claims are directed to a
patent-ineligible concept, the inquiry proceeds to the second step, where the
elements of the claims are considered "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."
Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
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Application 14/313,273
I. Independent Claims
Appellant argues the Examiner's rejection is in error, because "claims
1-28 are not directed to an abstract idea, and, in any event, the Examiner has
failed to show the claims do not recite significantly more than any such
abstract idea." App. Br. 31. Appellant does not separately argue
independent claims 1, 12, 21, and 25. See App. Br. 39. We select claim 1 as
representative, pursuant to our authority under 37 C.F.R. § 41.37(c)(l)(iv).
We address Appellant's argument with respect to each step of the Alice
analysis, below.
a. Alice Step 1
Appellant argues "the allegation by the Office that the claims merely
recite an abstract idea is a gross simplification of the claimed subject matter,
and fails to address the actual language recited by the claims." App. Br. 33.
Appellant states that "[i]nstead, while the subject matter of the pending
claims involve using mathematical relationships, a particular process which
includes particular rules is recited" and thus the claims recite statutory
subject matter. App. Br. 33
We are not persuaded the Examiner erred. Claim 1 recites a method
of performing a mathematical operation by shifting bits and generating an
output signal. The Examiner is correct in determining "the claimed
invention is directed to a calculation to compute a result of a mathematical
operation such as multiplication and division using a generic computer."
Ans. 5. Thus, claim 1 is directed to mathematical formulas or calculations,
similar to claims found abstract by the Supreme Court:
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Application 14/313,273
In Benson, for example, this Court rejected as ineligible patent
claims involving an algorithm for converting binary-coded
decimal numerals into pure binary form, holding that the claimed
patent was "in practical effect ... a patent on the algorithm itself."
409 U.S., at 71-72, 93 S.Ct. 253. And in Parker v. Flook, 437
U.S. 584, 594--595, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978), we
held that a mathematical formula for computing "alarm limits"
in a catalytic conversion process was also a patent-ineligible
abstract idea.
Alice, 134 S. Ct. at 2355. We determine Appellant's claim 1 is abstract,
"just like the algorithms at issue in Benson and Flook." Id. at 2356. 4
Additionally, we note claim 1 recites a set of calculations that can be
performed by a mental process or a person using a pen and paper. See, e.g.,
Spec. 10-11 (describing a method of shifting the bit signals). The law is
clear that "a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101." CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011).
Appellant's arguments focus on the claimed recitations of "a
particular process" and "particular rules." See, e.g., App. Br. 33. As
discussed above, we determine these claimed steps and rules are part of an
abstract algorithm. Further, we disagree with Appellant's contention that the
recited processes and rules improve a technical process and thus "the
pending claims recite statutory subject matter in a manner analogous to the
4 That claim 1 recites an algorithm and is thus directed to an abstract concept
is also consistent with Federal Circuit decisions. See, e.g., Digitech Image
Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014) ("Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible."); see also Coffelt v. NVIDIA Corp., 680
F. App'x 1010 (Fed. Cir. 2017) (unpublished) (an abstract mathematical
algorithm for calculating and comparing regions in space).
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Application 14/313,273
claims at issue in Enfish and McRO." App. Br. 35. In Enfzsh, "the plain
focus of the claims is on an improvement to the computer functionality
itself." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
2016). In McRO, the claims "focused on a specific asserted improvement in
computer animation." McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016). In contrast, we do not find a claimed
focus on a specific technical improvement here. Appellant lists various
purported advantages of the claimed invention, but does not explain how any
of the advantages relate to the claim limitations. See App. Br. 34. Further,
the provided support for these advantages is a citation to the Specification
(see id.); however, the Specification merely provides a list of possible
benefits without explaining whether any specific benefit applies to the
claims at issue. See Spec. 3 ("One or more embodiments may offer one or
more of the following advantages.") (emphases added). Accordingly,
Appellant does not provide sufficient evidence or technical reasoning to
persuade us the Examiner erred in determining the claimed invention "is not
an improvement to a technology or technical field, or an improvement in the
functioning of the computer itself." Ans. 5.
Accordingly, we agree with the Examiner that claim 1 is directed to
an abstract idea. See Ans. 2-3.
b. Alice Step 2
Appellant argues "the claims clearly recite significantly more than any
[] abstract idea, and are thus statutory subject matter for at least that reason."
App. Br. 36. Appellant contends that, "in a manner analogous to Bascom,
Appellant's automated operations enable processing circuitry to perform
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mathematic operations more efficiently, as discussed above and in the
specification." Id. (citing Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350-51 (Fed. Cir. 2016)).
We are not persuaded the claims recite significantly more. As
explained above with respect to the first step of the Alice analysis, there is
insufficient evidence on the record before us to persuasively show the claims
improve an existing technological process. Further, claim 1 is not a
technology based solution; rather the claim recites an algorithm that may be
performed by a mental process or generic computing equipment. See Spec.
9 ("one or more embodiments may apply to any type of processor), 20-21
(describing various computer program products capable of performing the
disclosed embodiments). That the claimed process may be performed more
efficiently by a computer does not "'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 78); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a
microprocessor or user interface do not alone transform an otherwise
abstract idea into patent-eligible subject matter."). Thus, Appellant does not
persuade us claim 1 recites elements that transform the nature of the claim
into a patent-eligible application.
c. Preemption
Appellant further argues "[i]n the present case, the claims do not
cover any and all processes for automated performance of a mathematical
operation on an operand digital signal." App. Br. 38. According to
Appellant, although the "claimed invention provides certain advantages over
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such known methods for automated performance of mathematical
operations, Appellant's claims do not preempt the use of such methods." Id.
We recognize as a threshold matter that the Supreme Court has
described "the concern that drives this exclusionary principle [to statutory
patentability] as one of pre-emption." Alice, 134 S. Ct. at 2354. Here, we
are not persuaded the claims do not preempt the claimed approach in all
fields: claim 1 recites a three step algorithm performed by a generic
processing device. In any event, characterizing preemption as a driving
concern for patent eligibility is not the same as characterizing preemption as
the sole test for patent eligibility. As our reviewing court has explained:
"questions on preemption are inherent in and resolved by the § 101
analysis," and, 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); cf OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.").
Accordingly, we are not persuaded the Examiner erred in concluding
independent claim 1 is not directed to patentable subject matter. See Ans. 5.
II. Claims 2-9, 13-19, 22-24, and 26-28.
Appellant presents no arguments regarding dependent claim 13. See
App. Br. 39-45. Thus, we find dependent claim 13 to be unpatentable under
35 U.S.C. § 101 for the same reasons as independent claim 12, from which it
depends.
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Appellant argues the remaining dependent claims "are, at a minimum,
directed to significantly more than the alleged abstract idea." App. Br. 40,
41, 42, 43. Appellant contends dependent claims 2-9, 14--19, and 22-24
"provide additional rules and/or additional details to the rules of [the
independent claims], and provide further evidence that the claims do not
merely invoke a generic process and machinery." App. Br. 40, 41, 42.
Appellant contends dependent claims 26-28 recite "specific elements that,
together with the other respective limitations of claims 26-28, implement or
otherwise facilitate the performance of the particular processes and
particular rules discussed above." App. Br. 43.
We are not persuaded the Examiner erred. Appellant restates the
limitations of dependent claims 2-9, 14--19, and 22-24, but does not
otherwise explain how these limitations are meaningfully different from the
independent claims for purposes of the Alice analysis. Rather, we conclude
these claims are directed to the same abstract idea, without reciting
significantly more, as their parent independent claims discussed above.
Appellant refers to the elements recited by dependent claims 26-28;
however we do not find these elements transform the nature of the claims
into patent-eligible applications. See Alice, 134 S. Ct. at 2355; see also
Spec. 18 ("a exemplary (barrel) shifter 14 which may be any known
component used to perform [the specified] operations").
Accordingly, we are not persuaded the Examiner erred in rejecting
dependent claims 2-9, 14--19, 22-24, and 26-28 under 35 U.S.C. § 101. Cf
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed.
Cir. 2015) ("additional limitations of these dependent claims do not add an
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inventive concept, for they represent merely generic data collection steps or
siting the ineligible concept in a particular technological environment").
DECISION
The Examiner's decision rejecting claims 1-28 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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