Ex Parte Steele et al

Patent Trials and Appeals Board

Mar 1, 2019

15156100 - (D) (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/156, 100 05/16/2016
58467 7590
MHKKG/Oracle (Sun)
P.O. BOX 398
AUSTIN, TX 78767
03/05/2019
FIRST NAMED INVENTOR
Guy L. Steele JR.
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.
6000-65401 6005
EXAMINER
OLSON, ALEX G
ART UNIT PAPER NUMBER
2137
NOTIFICATION DATE DELIVERY MODE
03/05/2019 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):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUY L. STEELE JR. and DAVID R. CHASE
Appeal2018-005363 1
Application 15/156, 100
Technology Center 2100
Before CAROLYN D. THOMAS, JAMES B. ARPIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) from final rejections of
claims 1---6, 14--18, and 21-29, which are all of the pending claims. Final
1 In this Decision, we refer to Appellants' Appeal Brief ("App. Br."), filed
November 6, 2017, and Reply Brief ("Reply Br."), filed April 27, 2018; the
Final Office Action ("Final Act."), mailed April 6, 2017; the Examiner's
Answer ("Ans."), mailed February 27, 2018; and the Specification ("Spec."),
filed May 16, 2016. Rather than repeat the Examiner's findings and
determinations and Appellants' contentions in their entirety, we refer to
these documents.
2 Appellants indicate the real party in interest is Oracle International
Corporation. App. Br. 2.
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Application 15/156, 100
Act. 2-13. 3 Claims 7-13, 19, and 20 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
"This disclosure relates generally to computing devices that
implement lookup tables, and more particularly to systems and methods for
implementing low latency lookup tables using hardware circuitry to compute
hash functions that perform multiplication with sparse bit matrices." Spec.
,r 1. The Specification further explains that:
In some embodiments, the hash function sub-circuits may
be constructed using odd-parity circuits that accept as inputs
subsets of the bits of the bit vectors representing the key values
( e.g., six, eleven, or twelve bits of an input key). The sparse bit
matrices may be chosen or generated according to a sparseness
constraint, such as a constraint specifying that there are at least
twice as many 0-bits per row as I-bits or that there is an upper
bound on the number of I-bits per row ( e.g., a constraint that
there are no more than six, eleven, or twelve I-bits in each row).
The use of sparse bit matrices in the hash function sub-circuits
may allow the lookup circuit to perform lookup operations with
very low latency. The hash function sub-circuits may be
implemented and/or configured in a memory, using fixed
combinatorial logic, using programmable combinatorial logic, or
3 The Examiner indicates that"[ c ]laims 1-6, 14-18 and 21-29 would be
allowable if rewritten or amended to overcome the rejection(s) under 35
U.S.C. [§] 101 set forth in this Office action." Final Act. 13.
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using a combination of these and/or other technologies, m
different embodiments.
Id. ,r 10 ( emphasis added).
Claims 1, 15, and 18 are independent. Claims 2---6 and 14 depend
directly from claim 1, claims 16, 1 7, and 21-24 depend directly or indirectly
from claim 15, and claims 25-29 depend directly from claim 18. App. Br.
35-39 (Claims App.). Claim 1, reproduced below, is illustrative.
1. A circuit configured to perform a table lookup operation,
compnsmg:
an input configured to receive a representation of a key
value;
one or more hash function sub-circuits coupled to the
input; and
at least one memory;
wherein the representation of the key value comprises a
bit vector;
wherein each of the hash function sub-circuits comprises
a representation of a sparse bit matrix; and
wherein each of the hash function sub-circuits is
configured to:
apply a respective hash function to the key value to
produce a respective hash value; wherein the respective
hash values identifies a respective location in the at least
one memory; and
wherein to apply the respective hash function to
the key value, the hash function sub-circuit is configured
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to add a constant bit vector to a result of a multiplication
of the bit vector with the sparse bit matrix; and
wherein the at least one memory is configured to:
output a respective data value from each of the
locations in the at least one memory identified by the
received hash values.
Id. at 35 (Claims App.).
DISCUSSION
I. Rejection
Claims 1---6, 14--18, and 21-29 stand rejected as unpatentable under
35 U.S.C. § 101 as directed to patent ineligible subject matter. Final Act. 2-
13. We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential). Arguments not made are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv). Unless otherwise indicated, we adopt the Examiner's
findings in the Answer as our own and add any additional findings of fact
appearing below for emphasis. We address these rejections below.
II. Patent Ineligible Claims
A. Section 101
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).
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In determining whether a claim falls within an excluded category, we
are guided by the 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
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 183 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 176; see also id. at 191 ("We view respondents' claims as
nothing more than a process for molding rubber products and not as an
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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
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, in which "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.
B. Office Patent Eligibility Guidance
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). 4 Under that guidance, we first look to whether the
claim recites:
4 This guidance supersedes previous guidance memoranda. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51 ("All
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(1) Step 2A - Prong One: 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) Step 2A-Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP5
§ 2106.05(a}-(c), (e}-(h)). 6
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54--55 ("Revised Step 2A").
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
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
US PTO personnel are, as a matter of internal agency management, expected
to follow the guidance.").
5 All Manual of Patent Examining Procedure ("MPEP") citations herein are
to MPEP, Rev. 08.2017, January 2018.
6 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. at 55 n.25, 27-32.
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See id. at 56 ("Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.").
C. Statutory Categories
As an initial matter, the pending claims must be directed to at least
one of the four recognized statutory categories, namely, apparatus, process,
article of manufacture, or composition of matter. MPEP § 2106(1). Here,
independent claims 1, 15, and 18, are directed to circuits, i.e., apparatus;
methods, i.e., processes; and computer-readable media, i.e., articles of
manufacture, respectively. Thus, the pending claims are directed to
recognized statutory categories. See Accenture Global Servs. GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013) ("Although
CLS Bank issued as a plurality opinion, in that case a majority of the court
held that system claims that closely track method claims and are grounded
by the same meaningful limitations will generally rise and fall together"
( citation omitted).).
D. Two-Step Alice/Mayo Analysis
1. Step 2A - Prong One
Applying the first step of the Alice/Mayo analysis, the Examiner
concludes the pending claims are directed to an abstract idea, "[t]he abstract
idea being mere addition and multiplication of vectors and matrices. The
claims merely recite a mathematical operation ([hash] function) to add a
constant bit vector to a result of a multiplication of the bit vector with the
sparse bit matrix." Final Act. 3; Ans. 4 ("The formula is : [ constant bit
vector]+ ([the bit vector]* [the sparse bit matrix])."); see App. Br. 35
(Claims App.); Spec. ,r,r 55 (Equation 1), 133, 134. Further, the Examiner
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finds that this abstract idea is similar to abstract ideas previously identified
in Benson, Flook, and Intellectual Ventures I LLC v. Erie Indemnity Co., 850
F.3d 1315 (Fed. Cir. 2017) ("Erie"). Final Act. 4; see, e.g., Ans. 3-5.
Appellants disagree.
Appellants contend that, at best, the Examiner has identified two types
of abstract ideas by identifying "mathematical relationships/formula," such
as those allegedly identified by the Court in Benson and Flook and "an idea
'of itself,"' as that identified by the U.S. Court of Appeals for the Federal
Circuit ("the Federal Circuit") in Erie. App. Br. 7. The Examiner finds that
"[t]he application of a hash (a type of numerical calculation operation) to
another number (a bit vector representing the key) is not meaningfully
distinct from the mathematical operations in Benson." Ans. 3; see Reply
Br. 2-3. Appellants contend that, "[t]he claims of Benson do not perform
any form of operations that modify the underlying number. Benson merely
expresses the same underlying number in a different form." App. Br. 10. In
Benson, the Court determined that "[ t ]he patent sought is on a method of
programming a general-purpose digital computer to convert signals from
binary-coded decimal form into pure binary form." Benson, 409 U.S. at 65
(emphasis added). As the Examiner asserts, both Benson's claims and the
pending claims "start with a number and end with a new form of the number,
through mathematical manipulations." Ans. 3. We agree with the
Examiner.
With regard to Flook, Appellants contend that, unlike the pending
claims,
the Supreme Court found that claims of Flook are directed to
performing a mathematical formula and performing a post-
solution activity with the results (i.e., the updated alarm limit) of
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the mathematical formula. . . . Specifically, unlike Flook, the
present claims do not include a formula or algorithm ( e.g.,
Bl=Bo(l.0-F)+PVL(F) in Flook). [Appellants] submit[s] that
the claimed structure, when read as a whole and in light of the
Specification, is a novel and useful structure, consistent with the
reasoning of [Mackay Radio & Telegraph Co. v. Radio Corp. of
Am., 306 U.S. 86 (1939)] and Flook.
App. Br. 12. The Examiner finds, however, that
[pending] claim 1 performs a mathematical formula (the addition
of a constant bit vector to a result of a multiplication of the bit
vector with the sparse bit matrix). The formula is : [ constant bit
vector]+( [the bit vector]* [the sparse bit matrix]). Also [Flook]
specifically defines algorithm as a procedure for solving a given
type of mathematical problem ([437 U.S.] at 600). The
mathematical problem [here] being an addition to a product of a
vector.
Ans. 4; see Final Act. 4. We agree that, like Flook, the pending claims recite
a mathematical formula and the performance of insignificant, post-solution
activity with the results of the mathematical formula, i.e., "output[ting] a
respective data value from each of the locations in the at least one memory
identified by the received hash values." App. Br. 35 (Claims App.); see
Mayo, 566 U.S. at 79 (describing necessary data gathering and outputting.);
MPEP § 2106.05(g).
The Court's decision in MacKay Radio does not alter this
determination. In MacKay Radio, the Court determined that:
While a scientific truth, or the mathematical expression of
it, is not patentable invention, a novel and useful structure created
with the aid of knowledge of scientific truth may be. But we do
not stop to solve the problem whether it was more than the skill
of the art to combine the teaching of Abraham with that of
Lindenblad and others who had pointed out that the arrangement
of the wires at an angle enhanced directional radio activity along
their bisector. We assume, without deciding the point, that this
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advance was invention even though it was achieved by the logical
application of a known scientific law to a familiar type of
antenna. But it is apparent that if this assumption is correct the
invention was a narrow one, consisting of a structure conforming
to the teachings of the Abraham formula as to angle and wire
length relative to wave length, and is to be strictly construed with
regard both to prior art and to alleged infringing devices.
MacKay Radio, 306 U.S. at 94 ( emphasis added). Thus, in MacKay Radio,
the Court assumed, without deciding, that the structure created by the
inventors and based on a mathematical expression was an invention, but, as
discussed below, the Examiner found - and we agree - that the structure
recited in the pending claims does not amount to significantly more than the
abstract idea.
With regard to Erie, Appellants acknowledge that the Federal Circuit
"found that the claims were directed to the abstract idea of 'creating an index
and using that index to search for and retrieve data' and that 'the claimed
creation of an index used to search and retrieve information stored in a
database is similarly abstract."' App. Br. 13 (quoting Erie, 850 F.3d at
1327). The claims in Erie recite "combining the first set of XML tags into a
key; using the key to search the database to locate records including the first
set of XML tags; and delivering the records" (Id.; Erie, 850 F.3d at 1327),
but Appellants contend that
the [pending] claims are directed to hash function sub-circuits
configured to apply a respective hash function to a key value to
produce a respective hash value such that a memory is configured
to output a respective data value from each of the locations in the
at least one memory identified by the received hash values. Hash
values for locations in a memory are different from XML tags
for a database. Further, hash values are distinguishable from a
card catalog system in that a hash function is not performed on a
particular book or subject in order to determine its location.
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App. Br. 14; see Reply Br. 5.
The Examiner disagrees and finds that:
Erie is used for the abstract idea of generating an index and using
that index to retrieve data. The hash values are used for the
identification of a location and then outputting a value for the
identified location. Doing so is not different from generating an
index and using the index for the means of searching and
retrieving data.
Ans. 4. We agree with Examiner.
Both Erie's claims and the pending claims recite the mathematical
modification of values for use in locating stored information. It is not
correct that only ideas that previously have been identified as abstract now
may be found to be abstract. Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
1369, 1376 (Fed. Cir. 2016) ("[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature ( or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility."); see Elec. Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) ("The focus of the
asserted claims ... is on collecting information, analyzing it, and displaying
certain results of the collection and analysis. We need not define the outer
limits of 'abstract idea,' or at this stage exclude the possibility that any
particular inventive means are to be found somewhere in the claims, to
conclude that these claims focus on an abstract idea-and hence require
stage-two analysis under§ 101.").
Finally, citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016), Appellants contend that:
The court found that the claims of Enfzsh had a "plain focus ...
on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its
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ordinary capacity." The court found the claims were "not
directed to an abstract idea within the meaning of Alice. Rather,
they are directed to a specific improvement to the way computers
operate, embodied in the self-referential table."
App. Br. 16 (quoting Enfzsh, 822 F.3d at 1336); see Reply Br. 7-8. Further,
Appellants contend that:
Here, the claims are directed to "computing devices that
implement lookup tables, and more particularly to systems and
methods for implementing low latency lookup tables using
hardware circuitry to compute hash functions that perform
multiplication with sparse bit matrices." See Specification,
,r [0001]. "The use of sparse bit matrices in the hash function
sub-circuits may allow the lookup circuit to perform lookup
operations with very low latency." See Specification, ,r [0010].
Appellant[ s] submit[] that lowering latency improves
functionality of the computer by reducing the amount of
processing time required to perform its functions.
Reply Br. 8 ( emphasis added).
The Examiner finds that the pending claims are more focused on the
mathematical computations than on any improvement in the functioning to a
computer. Ans. 5. Initially, we note that the pending claims do not recite
improvements to computer functionality generally or to look-up latency
specifically. See, e.g., App. Br. 35 (Claims App.). Further, the Specification
discloses known methods that may reduce look-up latency and do not
involve the recited mathematical operations (see Spec. ,r,r 3 ("Such
approaches typically assume fixed key sizes and a static/fixed set of tables
with fixed-size entries, and they typically emphasize high lookup rates over
low latency for individual lookups" ( emphases added).), 4 ("While TCAMs
offer low access latencies, their memory capacity is generally lower than the
capacities offered by standard SRAMs of equal chip size" ( emphasis
added).)) and describes low latency that may be achievable by disclosed
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embodiments, including those involving the recited mathematical operations
(see id. ,r,r 8, 10, 37, 38, 44, 49, 57, 62, 86, 98, 109, 119, 138, 143, 161).
Thus, we are not persuaded that the pending claims, like those in Enfish, are
clearly directed to improvements in computer technology, rather than to an
abstract idea. Cf Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880
F.3d 1356, 1363 (Fed. Cir. 2018) ("This language [of the Specification]
clearly indicates that the claims are directed to an improvement in the
functioning of computers, particularly those with small screens."). Thus, we
determine that the Examiner links the identified abstract idea to abstract
ideas previously identified by the courts and persuasively argues that the
pending claims 7 are directed to
Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at
52; see Final Act. 3; see also Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding that claims to a
"process of organizing information through mathematical correlations" are
directed to an abstract idea.).
7 Dependent claims 4, 22, and 27 recite performing the computations of the
independent claims "in parallel" (Br. 31-32); claim 6 describes performing
the computations of claim 1 using one or more "odd parity circuits" (id. at
32-33); and claims 14, 24, and 29 recite selecting the hash values with a
selection sub-circuit (id. at 33). We are persuaded that these limitations
either describe how the mathematical operations are performed or relate to
the insignificant post-solution activity, described above. Ans. 9-10. Thus,
these dependent claims also are directed to the identified abstract idea. See
Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359
(Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive concept' cannot be
the abstract idea itself').
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2. Step 2A - Prong Two
Applying the second step of the Alice/Mayo analysis, the Examiner
concludes, "[t]he claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because claims 1, 15, and 18 and their dependent claims merely describe
retrieving a value from a memory location, which is a generic computer
function." Final Act. 3. Further, the Specification explains that the recited
circuits may include "a general-purpose [Field Programmable Gate Array
(FPGA)]-based lookup table circuit (LUT)" (see Spec. ,r,r 21, 99, Fig. 7) and
that, generally, the embodiments recited in the pending claims may include
generic hardware and/ or software operating in ways it was designed to
function (see id. ,r,r 187-195). In particular, the Examiner finds
[ t ]he circuits and sub-circuits do not amount to significantly
more . . . than the judicial exception because the additional
elements when considered both individually and as an ordered
combination do not amount to significantly more than the
abstract idea[.] The use of generic computer components
(circuits) do not impose any meaningful limit on the computer
implementation of the abstract idea.
Final Act. 5; see Spec. ,r,r 188 ( describing generic computer 1800 of
Fig. 18), 189 (describing generic computer-readable storage media), 192
( describing known languages for encoding program instructions); see also
Spec. ,r 196 ( describing the scope of the disclosure).
Neither the claims nor the Specification states that any of the
described embodiments necessarily invokes particular hardware or software
or, as discussed above, results in improvements in computer technology or
functions. See, e.g., Spec. ,r,r 10, 196. Thus, the claims rely on hardware,
including general purpose FPGAs, and known software languages and
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techniques, and these do not provide meaningful limitations beyond
generally linking the use of the identified abstract idea to a particular
technological environment. See MPEP § 2106.05(h).
In view of Appellants' Specification, and consistent with the
Examiner's determinations, we conclude the pending claims do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
( v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a}-(c), (e}-(h). Thus, we conclude that the pending
claims do not integrate the judicial exception into a practical application.
3. Step 2B
Further, as noted above, applying second step of the Alice/Mayo
analysis, the Examiner concludes, "[t]he claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because claims 1, 15, and 18 and their dependent claims merely
describe retrieving a value from a memory location, which is a generic
computer function." Final Act. 3; see Advisory Action (mailed Aug. 11,
2017) 2. In addition, the Examiner concludes that the pending claims recite
"a look up table, hash function sub-circuitry, and at least one memory. The
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look up table, hash function sub-circuitry, and at least one memory are
generic computer components." E.g., Ans. 4.
Appellants contend that the limitations recited in the pending claims
are not merely attempting to limit the mathematical algorithm to a particular
technological environment, but, instead, the recitations of the pending claims
are "more than the alleged 'use of generic computer components (circuits)'
because the claimed subject matter is directed to new and novel hardware
components that perform the tasks described in the present application."
App. Br. 15. We do not find where the Specification asserts that any of the
recited components is new or novel. On the contrary, the Specification
makes clear that the components and techniques recited in the pending
claims are well-understood, routine, and conventional. Spec. ,r,r 21, 99, 115,
187-196; see Reply Br. 6-7 (citing Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018)).
Appellants further contend that, like Bascom Global Internet Services,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), "[t]he
inventive concept inquiry requires more than recognizing that each claim
element, by itself, was known in the art. As is the case here, an inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces." See Reply Br. 6. As noted above, however,
the independent claims recite the combination of only a few generic
components in known or generic ways. See Ans. 4. For example, the
independent claims recite a circuit, method, or computer-readable media
comprising some combination of a look up table or circuit, hash function
sub-circuitry, and at least one memory. App. Br. 35-38 (Claims App.). The
Examiner finds that the combinations of these components are conventional
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Application 15/156, 100
and generic (Ans. 9), and Appellants do not show that the recited
combinations of these few components are in any way nonconventional or
non-generic (App. Br. 30-31 ). See Alice, 573 U.S. at 222 ("In holding that
the process was patent ineligible, we rejected the argument that
'implement[ing] a principle in some specific fashion' will 'automatically
fal[l] within the patentable subject matter of§ 101 "' (alterations in original)
(quoting Flook, 437 U.S. at 593).).
Finally, the Examiner's determination that, but for the rejections
under 35 U.S.C. § 101, the pending claims would be allowable, does not
alter our determination that the pending claims fail to recite significantly
more than the abstract idea. Final Act. 14. Even though the § 101 inquiry
and the § 102 and § 103 inquiries might sometimes overlap, a novel and
nonobvious claim directed to an abstract idea may, nonetheless, be patent-
ineligible. See Mayo, 566 U.S. at 89 (rejecting the suggestion that Sections
102, 103, and 112 might perform the appropriate screening function and
noting that in Mayo such an approach "would make the 'law of nature'
exception ... a dead letter"). "[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature ( or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility." Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see Diehr, 450 U.S. at 188-
89.
On this record, we agree with the Examiner that the pending claims
are directed to an abstract idea and fail to recite "significantly more" than the
identified abstract idea. Therefore, we are not persuaded that the Examiner
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Application 15/156, 100
erred in determining that the pending claims are patent ineligible, and we
sustain those rejections.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-6, 14--18, and 21-
29 under 35 U.S.C. § 101, as directed to patent-ineligible subject
matter.
(2) Claims 1---6, 14--18, and 21-29 are not patentable.
DECISION
We affirm the Examiner's rejections of claims 1---6, 14--18, and 21-29.
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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