Ex Parte Shen et al

Patent Trial and Appeal Board

Aug 22, 2018

14194484 (P.T.A.B. Aug. 22, 2018)

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.
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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)
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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
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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
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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
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("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
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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-
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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.
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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)(l )(iv).
AFFIRMED
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