Ex Parte Shen et alDownload PDFPatent Trial and Appeal BoardAug 22, 201814194484 (P.T.A.B. Aug. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/194,484 02/28/2014 142408 7590 08/24/2018 HAYNES AND BOONE, LLP (70047) IP Section 2323 Victory A venue Suite 700 Dallas, TX 75219 FIRST NAMED INVENTOR Yinan Shen 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. 70047.287_82057 4912 EXAMINER BOWERS, BRANDON ART UNIT PAPER NUMBER 2851 NOTIFICATION DATE DELIVERY MODE 08/24/2018 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): ipdocketing@haynesboone.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YINAN SHEN and JUN ZHAO Appeal 2018-001117 Application 14/194,484 1 Technology Center 2800 Before KAREN M. HASTINGS, WESLEY B. DERRICK, and DEBRA L. DENNETT, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant requests our review under 35 U.S.C. § 134(a) of the final rejection of claims 1-202 under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellant is the Applicant, Lattice Semiconductor Corp., who is also identified as the real party in interest. Appeal Br. 3. 2 References are to the Non-Final Rejection, mailed 10/20/2016 ("Non- Final"), the Appeal Brief, received 4/21/2017 ("Appeal Br."), the Examiner's Answer, mailed 9/13/2017 ("Ans.") and the Reply Brief, received 11/13/2017 ("Reply Br."). Appeal 2018-001117 Application 14/194,484 THE INVENTION Appellant claims steps for adjusting positions of a plurality of components in a layout of logic groups of a programmable logic device (PLD) based on a timing analysis of assigned positions and routed connections (independent claims 1, 11, and 20). Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method comprising: receiving in a processor, a design identifying operations to be performed by a programmable logic device (PLD), with logic blocks in pre-determined physical locations of the PLD; packing, in the processor, each of a plurality of components of the PLD into a respective one of a plurality of logic groups; determining, in the processor, a layout comprising assigned positions of the plurality of logic groups of the PLD configured to perform the operations; routing connections between the plurality of components; performing, in the processor, a timing analysis on the layout comprising both the assigned positions of the plurality of logic groups and the routed connections; selectively adjusting, in the processor, assigned positions of the plurality of components in the determined layout by repacking at least one of the plurality of components into another logic group of the plurality of logic groups using the timing analysis; generating an adjusted layout comprising the adjusted assigned positions of the plurality of components of the PLD, for configuring the PLD to perform the operations; and storing the adjusted layout for configuring the PLD to perform the operations. 2 Appeal 2018-001117 Application 14/194,484 Appeal Br. 20 (Claims Appendix). Appellant argues the claims as a group (Appeal Br. generally). Thus, all claims stand or fall together. ANALYSIS Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014 ), identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101. According to Alice step one, "[ w ]e must first determine whether the claims at issue are directed to a patent-ineligible concept," such as an abstract idea. Alice, 134 S. Ct. at 2355. In that regard, the Examiner concluded that the subject matter of the claims is directed to the judicial exception of abstract ideas because the claims "are at heart a computer program which is a mathematical relationship/formula for performing the steps." (Non-Final 3). The Appellant challenges the Examiner's articulation of what the claims are directed to, but the challenge is unfounded. See Appeal Br. 10- 13. For example, the fact that the claims are drafted to "specific technical operations that are performed to determine the layout of assigned positions of components" (App. Br. 12) is not dispositive. The question is what the claims are "directed to." [T]he "directed to" inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether "their character as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016) 3 Appeal 2018-001117 Application 14/194,484 (inquiring into "the focus of the claimed advance over the prior art"). Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). "The 'abstract idea' step of the inquiry calls upon us to look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). "In determining the eligibility of respondents' claimed process for patent protection under § 101, their claims must be considered as a whole." Diamond v. Diehr, 450 U.S. 175, 188 (1981). Appellant argues that their claims are not directed to an abstract idea because they are analogous to the claims in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), however Appellant's arguments are unpersuasive. Specifically, Appellant argues that similar to the Federal Circuit's analysis in McRO, Appellant's claims focus on a specific way to improve the relevant technology field (e.g., PLD component layout) and use a combined order of specific operations ( e.g., packing components, determining a layout, routing connections, performing a timing analysis, adjusting assigned positions by repacking) to render information used and applied to create desired results ( e.g., generating an adjusted layout and storing the adjusted layout) for appropriate configuring of the PLD (Appeal Br., para. bridging 14--15). The Examiner finds that Appellant's claims are distinguished from McRO in that [t]he combination of 'rules' of McR[OJ in view of the claims as a whole actually produces "lip synchronization and facial expression control of said animated characters", realizing the functionality of rules being applied so that 4 Appeal 2018-001117 Application 14/194,484 actual, visual "lip synchronization and facial expression control of the animated characters" are produced as claimed while the steps of Appellant's claim "are used to adjust the layout of PLD components, eventually resulting in a final adjusted layout that is stored in memory and not the actual PLD programmed with the adjusted layout that is realized in the real world" (Ans. 6). We note that the court in McRO found that claim 1 was patent eligible because it incorporated the specific features of the rules into the claim by requiring "that the rules be rendered in a specific way: as a relationship between sub-sequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing (as represented by the morph weight set)". McRO, 837 F.3d at 1315. This was evident because the claims explicitly disclosed "obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence" (Id. at 1307---08). In contrast, Appellant's claims are fundamentally different from those in McRO because they do not disclose rules or policies. Moreover, the claims here, unlike the claims at issue in McRO, do not recite the application of the recited calculations to effect a real-world result. Consequently, a preponderance of the evidence supports the Examiner's conclusion that Appellant's claims are not analogous to McRO. Accordingly, the claims as a whole, in light of the Specification, are directed to performing mathematical functions, which is consistent with the Examiner's position (see Ans. 3-5 in which the Examiner explains how each limitation is directed to an abstract idea). Step two is "a search for an 'inventive concept'-i.e., an element or combination of elements that is 'sufficient to ensure that the patent in 5 Appeal 2018-001117 Application 14/194,484 practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). Appellant argues that their claims are directed to significantly more because the claims "improve the technical field of generating chip designs for PLDs that facilitate meeting signal timing preferences" (Appeal Br. 17) and "result in measur[ e ]able real world improvements to PLD chip layout design technology" (Appeal Br. 18). In response, the Examiner determined that, generically linking the use of a judicial exception to a particular technological environment or field of use (i.e., chip design) is insufficient because the claims do not include additional elements that constitute significantly more than the abstract idea itself where the claims recite "generating data (a layout) from other data ( design identifying operations)," but do not recite manufacturing or configuring an actual PLD (Ans. 9). The value or usefulness is not dispositive of patent eligibility. Parker v. Flook, 437 U.S. 584, 594--95 (1978) ( cited with approval in Alice, 134 S. Ct. 2347) (Determining claims to "a new and presumably better method for calculating alarm limit values," which were of undisputed usefulness, to be directed to nonstatutory subject matter.). Rather, "[ w ]ithout additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible." Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 1351 (Fed. Cir. 2014). In addition, claims do not become patent eligible simply because they disclose a specific solution to a particular problem (Alice, 134 S. Ct. at 2358 6 Appeal 2018-001117 Application 14/194,484 ("patenting abstract ideas cannot be circumvented by attempting to limit the use of [the idea] to a particular technological environment")). The Specification does not support Appellant's argument that the claims comprise additional elements that constitute significantly more than the abstract idea of using mathematical equations to perform a timing analysis for adjusting positions of the logic groups. The claims employ conventional devices (processor, memory, system) for performing their common functions and mathematical steps. This supports the Examiner's position that "[ e ]verything occurring in the steps can be performed absent the PLD using a description of the PLD" (Ans. 6). As such, the Specification does not disclose the mathematical steps as being tied to any special or non-generic hardware. Cf Alice, 134 S. Ct. at 2358 (citation omitted). "[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea "while adding the words 'apply it' is not enough for patent eligibility." Id. The fact that claim 1 ends by disclosing generating an adjusted layout through a mathematical expression without disclosing that the adjusted layout is used to configure/adjust physical locations of the PLD causes the final paragraph of the claims to be tantamount to a generic statement of applying it by simply stating that the result of the mathematical calculations is "applied" towards generating an adjusted layout. Finally, Appellant argues that the claims comprise significantly more than the abstract idea because "Appellant's claims have overcome all previous rejections under 35 U.S.C. §§ 102 and 103, and no prior art rejections remain" (Appeal Br. 16). However, a finding of novelty or 7 Appeal 2018-001117 Application 14/194,484 nonobviousness does not necessarily lead to the conclusion that subject matter is patentable eligible. "Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). The question in step two of the Alice framework is not whether an additional feature (i.e., the calculation) is novel but whether the implementation of the abstract idea involves "more than [the] performance of 'well-understood, routine, [and] conventional activities previously known to the industry."' Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2017) (quoting Alice, 134 S. Ct. at 2359) based upon whether "[t]aking the claim elements separately, the function performed by the computer at each step of the process is '[p ]urely conventional."' Alice at 2359 ( citing Mayo, 566 U.S. at 80). Cf Alice at 2359 ("Considered 'as an ordered combination,' the computer components of petitioner's method ad[d] nothing ... that is not already present when the steps are considered separately.") In Appellant's claim 1, the processor serves as the platform in which the following generic functionality is performed: packing components, routing connections, performing a timing analysis, and generating, adjusting and storing a layout. Regardless of whether the mathematical functions for performing the steps of claim 1 are themselves novel, the functionality performed by the processor is generic. As such, the novelty of the claims does not comprise significantly more than the abstract idea because Appellant's Specification and claims support a view that the processor acts merely as a platform or conduit for the data- 8 Appeal 2018-001117 Application 14/194,484 manipulating abstract idea. Cf In re TL! Communications LLC Patent Litigation, 823 F.3d 607, 612 (Fed. Cir. 2016). For the foregoing reasons, the Appellant has not shown error in the Examiner's Alice step two determination that the claims do not include an element or combination of elements sufficient to ensure that in practice they amount to significantly more than to be upon the ineligible concept itself. The remaining arguments3 have been carefully considered but are unpersuasive as to error in the rejection. The rejection of claims 1-20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is sustained. DECISION The decision of the Examiner to reject claims 1-20 is affirmed. 3 To the extent Appellant presents new arguments in the Reply Brief, we decline to consider them. Any argument not presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."); compare also Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for the first time in the Reply Brief is considered waived); see also 3 7 C.F.R. § 41.41(b)(2) (2013). Nevertheless, Appellant's arguments about McRO as supporting a finding that their claims are eligible under step two of the Alice analysis are misplaced because McRO did not address the second step of the Alice analysis since they determined that the claims were not directed towards an abstract idea under the first step of the Alice analysis. McRO, 837 F.3d at 1316. 9 Appeal 2018-001117 Application 14/194,484 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 10 Copy with citationCopy as parenthetical citation