Ex Parte Stelle

Patent Trial and Appeal Board

Jun 22, 2017

11742184 (P.T.A.B. Jun. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/742,184 04/30/2007 Raleigh Benton Stelle IV 6573-200685 4404
23643 7590 06/26/2017
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
SALCE, JASON P
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALEIGH BENTON STELLE IV
Appeal 2017-004002
Application 11/742,184
Technology Center 2400
Before JEAN R. HOMERE, CATHERINE SHIANG, and
KIMBERLY McGRAW, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1—12, which constitute all claims pending in
the application.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as Trilithic, Inc. App. Br. 2.
In an earlier appeal (2013-008664) dated September 25, 2015, we reversed
the Examiner’s prior art rejection of claims 1—3 and 7—9. Dec. 5.
Appeal 2017-004002
Application 11/742,184
Appellant’s Invention
Appellant’s invention is directed to a method for determining the
location of a leakage signal from a CATV network. Spec. 1:9-10. Possible
leakage values associated with the leakage signal are measured at various
locations, and recorded in a leakage database. Then, leakage values selected
from the database are combined with a set of locus points associated with the
signal strength to thereby establish relationships between the leakage signal,
its strength, and the location thereof. The established relationships are
iteratively used to help solve subsequent loci of common points therewith
such that the intersection thereof forms a common surface. Id. at 1:16—25,
Fig. 3.
Independent claim 1 is illustrative and reads as follows:
1. A method of determining the location of a leakage
signal from a network, the method including measuring
at various times and locations leakage believed to be
associated with the leakage signal,
constructing a data base of leakages and associated
locations,
selecting from the data base a number of leakage
values, and, on at least one machine programmed for this
purpose,
multiplying the selected leakage signal values
times a
first locus of points on which a leakage signal associated
with a respective signal strength may be assumed to
reside to develop a number of relationships among
leakage signal strength, leakage and location,
solving a first pair of these relationships among
leakage signal strength, leakage and location for a second
locus of common points to the first pair,
2
Appeal 2017-004002
Application 11/742,184
solving a second pair of these relationships among
leakage signal strength, leakage and location for a third
locus of common points to the second pair,
projecting the second and third loci onto a common
surface, and determining the intersection of the second
and third loci on the common surface.
Rejection on Appeal
Appellant requests review of the Examiner’s rejection of claims 1—12
under 35U.S.C. § 101 as being directed to nonstatutory subject matter.
ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 7—11, and the Reply Brief, pages 2—6.2 We are
unpersuaded by Appellant’s contentions. Except as otherwise indicated
hereinbelow, we adopt as our own the findings and reasons set forth in the
Non-Final Action, and the Examiner’s Answer in response to Appellant’s
Appeal Brief. Non-Final Act. 3—10, Ans. 2—6. However, we highlight and
address specific arguments and findings for emphasis as follows.
Appellant argues the Examiner erred in concluding that claims 1—12
are directed to a mathematical operation. App. Br. 7—8. In particular,
Appellant states the following:
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed July 5, 2016), the Reply Brief (filed January
9, 2017), and the Answer (mailed November 9, 2016) (“Ans.”) for the
respective details. 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 in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
3
Appeal 2017-004002
Application 11/742,184
[T]he Examiner has overly-generalized the claim language
in an effort to transform claims clearly directed to patent-eligible
methods for determining the location or amplitude of a leakage
CATV signal into patent-ineligible claims directed to a
mathematical operation.
Although claims 1, 3, 7, and 9 recite mathematical
operations (e.g., "multiplying the selected leakage signal values
times a first locus of points ... "), the claims do not seek to pre­
empt the use of any particular mathematical equation. Instead,
the claims are directed to a technical solution to a technical
problem (i.e., determining a leakage signal from a network) and
recite a number of specific steps to achieve that concrete, real-
world objective. In that way, the claims are similar to those
found patentable by the Supreme Court in Diamond v. Diehr,
which were directed to a process that employed a mathematical
equation but did "not seek to pre-empt the use of that equation.
Rather, [the patentee sought] only to foreclose from others the
use of that equation in conjunction with all of the other steps in
their claimed process." 450 U.S. 175, 187 (1981) (emphasis
added). In this case, Appellant seeks to only foreclose others
from performing all of the specific steps recited in the claims to
determine the location or amplitude of a leakage signal from a
CATV network.
Appeal Br. 7—8.
Further, Appellant contends that even if the claims are directed to an
abstract idea, they amount as a whole to significantly more than the abstract
idea. Id. at 9. According to Appellant, measuring various times the location
leakage is an essential step in the claim, thereby removing the claim “from
the realm of an abstract idea, and places it squarely within the realm of
patent eligible subject matter.” Id. at 10. Consequently, Appellant submits
that because the claimed invention is narrowly drawn to a machine
specifically programmed to determine the location of a leakage signal
4
Appeal 2017-004002
Application 11/742,184
generated by a network, it is directed to patent eligible subject matter. Id. at
10; Reply Br. 3—5. These arguments are not persuasive.
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. Alice Corp. PtyLtd. v. CLS Bank Inti, 124 S. Ct2347, 2354 (2014).
In the first step, we determine whether the claims are directed to one or more
judicial exceptions (i.e., law of nature, natural phenomenon, and abstract
ideas). Id. (citations omitted) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012))(“Afoyo”). In the
second step, we “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(citing Mayo, 132 S. Ct. at 1297—98). In other words, the second step is to
“search for an ‘inventive concept’ — i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.
(citing Mayo, 132 S. Ct. at 1294).
We agree with the Examiner that under step 1 of the Alice analysis,
claim 1 is directed to the abstract idea of determining the location of leakage
signal from a network. Ans. 3. In particular, we agree with the Examiner
that the essential claim steps of measuring locations leakage and
constructing a database encompass human activities, such as a technician
using a leakage meter/detector to measure leakages at different locations
along the cable, as well as to manually record the measured leakage values
in on a piece of paper. Id. Further, although it is conceivable that a
computer can be utilized to automate such functions, the claim is not so
5
Appeal 2017-004002
Application 11/742,184
limiting. As correctly noted by the Examiner, the recited machine is merely
utilized to perform a mathematical operation on the measured leakage
values. Id. Because the recited steps of measuring the leak and recording
them in a database are tantamount to the abstract concepts of recording
collected data, the claim method of determining locations leakage is directed
to a mere judicial exception. See, e.g., Elec. Power Grp. LLC v. Alstom, 830
F.3d 1350 (Fed. Cir. 2016) (characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of collecting and analyzing
information, without more, as matters within the realm of abstract ideas);
Content Extraction & Transmission v. Wells Fargo Bank, 776 F.3d 1343
(Fed. Cir. 2014) (characterizing collecting data, recognizing certain data
within the collected data set, and storing the recognized data in memory as
drawn to an abstract idea). Appellant’s preemption argument does not
change our analysis. “Where a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework . . . preemption
concerns are fully addressed and made moot.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While complete
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.”)
With regard to step 2 of the Alice analysis, we do not agree with
Appellant that the cited steps add any meaningful limitations beyond
generally linking the abstract idea to the particular technological
environment of determining the location of a leakage signal in a network.3
3 Considerations for determining whether a claim with additional elements
amounts to "significantly more" than the judicial exception itself include
6
Appeal 2017-004002
Application 11/742,184
Independent claim 1 recites the functions measuring location leakage,
constructing a data base of leakages, and using a machine programmed to
perform mathematical operations on leakage values selected from the
database to determine projected locations of common points on the common
surface. However, “relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701 (2015) (citing Alice, 134 S. Ct. at 2359 (“use of
a computer to create electronic records, track multiple transactions, and issue
simultaneous instructions” does not render the claim patent eligible)). When
viewed as a whole, claim 1 is nothing more than performing conventional
processing functions that courts have routinely found insignificant to
transform an abstract idea into a patent-eligible invention. As such, claim 1
amounts to nothing significantly more than an instruction to implement the
abstract idea on a generic computer — which is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2358—
2360.
Accordingly, we sustain the Examiner’s non-statutory subject matter
rejection of claim 1, as well as claims 2—12 for the foregoing reasons.
improvements to another technology or technical field (Alice, 134 S. Ct. at
2359 (citing Diamond v. Diehr, 450 U.S. 175, 177—78 (1981 )); adding a
specific limitation other than what is well-understood, routine
and conventional in the field, or adding unconventional steps that confine
the claim to a particular useful application (Mayo, 132 S. Ct. at 1299, 1302);
or other meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment (Alice, 134 S.
Ct. at 2360).
7
Appeal 2017-004002
Application 11/742,184
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1-12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1) (iv).
AFFIRMED
8