Ex Parte Zhang

Board of Patent Appeals and Interferences

May 15, 2008

10400321 (B.P.A.I. May. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUMIN ZHANG
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Appeal 2007-2520
Application 10/400,321
Technology Center 2100
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Decided: May 15, 2008
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Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
ALLEN R. MACDONALD, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-18, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part, and enter a new ground of rejection as permitted by
37 C.F.R. § 41.50(b).
Appeal 2007-2520
Application 10/400,321

Appellant’s invention is directed to a system and method for decoding
noise-corrupted Reed-Solomon (RS) codes. (Spec. ¶ [0001].) RS codes are
defined by code length, message length, the number of symbol errors that
can be corrected, and “h,” which relates to the roots of the polynomial used
to generate the RS code. RS codes having an “h” of one are referred to as
“narrow-sense” RS codes, while codes having “h” values equal to zero or
greater than one are called “non-narrow-sense” RS codes. (Id., ¶ ¶ [0003]-
[0004].)
Claims 1 and 7 are illustrative.

1. A system for partially decoding a noise-corrupted Reed-Solomon
code, comprising:

a syndrome sequence generator that computes a syndrome sequence
Sh, S1+h …S2t-1+h from said noise-corrupted Reed-Solomon code; and

an error locator and magnitude polynomial generator that iteratively
determines both said error locator polynomial and said error magnitude
polynomial from said syndrome sequence.

7. A method of partially decoding a noise-corrupted Reed-Solomon
code, comprising:

computing a syndrome sequence Sh, S1+h …S2t-1+h from said noise-
corrupted Reed-Solomon code; and

iteratively determining both said error locator polynomial and said
error magnitude polynomial from said syndrome sequence.

The Examiner relies on the following references as evidence of
unpatentability.
Litwin US 6,920,600 B2 Jun 19, 2005
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Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Litwin.

Section 103 Rejection
For the purposes of our review of the § 103 rejection, we will interpret
claims 1 through 12 as if directed to statutory subject matter. However, we
enter a new ground of rejection, infra, against those claims.
The Examiner applies Litwin to show prima facie obviousness of the
subject matter of instant claim 1. (Ans. 3-4.)
Appellant does not dispute that Litwin describes a syndrome sequence
generator, associated with an error locator and magnitude polynomial
generator that iteratively determines both the error locator polynomial and
the error magnitude polynomial from the syndrome sequence. Appellant
argues, however, that Litwin describes generating a syndrome sequence for
h=1; i.e., for narrow-sense RS codes. Appellant’s system, on the other hand,
is deemed to generate a syndrome sequence that is applicable to both narrow
and non-narrow-sense RS codes. (App. Br. 6-7.) According to Appellant,
the present invention “accommodates” non-narrow-sense RS codes. (Reply
Br. 2.)
As the Examiner indicates, however, instant claim 1 is not limited to a
syndrome sequence for narrow-sense RS codes. The claim, by its terms,
covers the case of h=1. When h=1, the syndrome sequence set out in claim
1 appears to reduce to the sequence described by Litwin at the bottom of
column 6 -- i.e., S1, S2, S3 . . . S(2t). Our reading of instant claim 1 seems
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to be confirmed by depending claim 2, which limits the “h” of claim 1 to be
zero or greater than one.
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1742 (2007). We sustain the rejection of claim 1.
Instant claim 2 is, as we have noted, specific in excluding the case of
h=1. The Examiner, however, finds that the artisan would have understood
that the syndrome sequence as described in Litwin is derived from the prior
art deterministic equation, which is the same regardless of how it is
represented. As support for the view, the Examiner refers to text in a book
that Appellant purports to incorporate by reference into the Specification (¶
[0016]). (Ans. 4-5.)
Appellant does not address the Examiner’s reliance on the material
purported to be part of the Specification. However, Appellant submits that
the invention relates to a “significant modification” with respect to prior art
algorithms so as to accommodate narrow-sense RS codes. (Reply Br. 2.)
Appellant refers to paragraph [0022] of the Specification, which indicates
that direct application of the Berlekamp-Massey algorithm to certain non-
narrow-sense RS codes “simply fails,” while with Euclid’s algorithm the
decoder will be able to correct up to seven symbol errors instead of the
designed eight symbol errors.
The relevant question, however, is not how well the Litwin system
might decode a non-narrow-sense RS code; nor, for that matter, is the
question whether Litwin expressly or inherently describes such a decoding
system. The rejection is not for anticipation. Appellant’s position does not
persuade us that the objective reach of claim 2 fails to extend to subject
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matter that one skilled in the art would have considered obvious. Being not
persuaded of error in the case for prima facie obviousness, we sustain the
rejection of claim 2.
With respect to claim 3, Appellant does not dispute that Litwin
teaches use of Euclid’s algorithm, but contends that Litwin does not teach a
“modified” Euclid’s algorithm as recited in the claim. (App. Br. 8.)
According to Appellant, Euclid’s narrow-sense algorithms cannot be applied
directly to non-narrow-sense codes without a modification. (Id.).
Claim 3, however, depends directly from claim 1. The claim is not
limited to non-narrow-sense codes, but also covers narrow-sense codes
(h=1). Claim 3 does not limit, to any extent, how the algorithm may be
“modified.” Appellant has not shown that the claim somehow might
distinguish over the system described by Litwin. We sustain the rejection of
claim 3.
Claim 5, as does claim 3, depends directly from claim 1. Appellant
does not dispute that Litwin teaches the use of Berlekamp-Massey
algorithm. The “modified” modifier in the claim, similar to that in claim 3,
has not been shown as relating to a limitation that distinguishes over the
prior art.
Appellant adds, for claim 5, that Litwin teaches calculating the error
locator polynomial and the error magnitude polynomial, but “concurrently”
rather than in separate steps. Appellant relies on column 2, lines 16 through
22 of Litwin in support of the argument. (App. Br. 10.)
The “concurrence” in the identified portion of the reference, however,
refers to determining the error locations and the error magnitudes on a
second codeword concurrent with calculating the value corresponding to the
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number of codeword errors on data corresponding to a first codeword.
Moreover, Appellant’s position does not speak to the remainder of the
reference. See, for example, Figure 7, depicting separate blocks for error
location and error magnitude. See, for example, Figure 8, which indicates
separate steps for error location and error magnitude, regardless of whether
there is concurrent processing of codewords (with intra-block handshaking)
or not (without intra-block handshaking).
We are thus not persuaded of error in the rejection of claim 5. We
sustain the rejection.
We do not, however, sustain the Examiner’s rejection of claims 4 and
6. Each claim specifies a “Key Equation” that is different from that
disclosed by Litwin (col. 7, ll. 49-64; Eq. 1). Even in the case where h is
taken as 1, Litwin’s equation appears to differ from the claimed equation in
a “[1+S(x)]” term, as opposed to the claimed “S(x).” The Examiner has not
provided any persuasive reasoning as to why the subject matter of claim 4
and claim 6 would have been obvious to the artisan.
Consistent with Appellant’s arguments and headings in the Appeal
Brief, claims 7 and 13 fall with claim 1. Claims 8 and 14 fall with claim 2.
Claims 9 and 15 fall with claim 3. Claims 10 and 16 stand with claim 4.
Claims 11 and 17 fall with claim 5. Claims 12 and 18 stand with claim 6.
See 37 C.F.R. § 41.37(c)(1)(vii).

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New Ground of Rejection
We reject claims 1-12 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
Instant claim 7 recites a “method” comprising two steps. The claim, if
statutory, falls within the statutory class of “process.”
“A process is . . . an act, or a series of acts, performed upon the
subject matter to be transformed and reduced to a different state or thing.”
Cochrane v. Deener, 94 U.S. 780, 788 (1877). “‘Transformation and
reduction of an article “to a different state or thing” is the clue to the
patentability of a process claim that does not include particular machines.’”
Diamond v. Diehr, 450 U.S. 175, 184 (1981) (quoting Gottschalk v. Benson,
409 U.S. 63, 70 (1972)).
There are cases suggesting that the lack of transformation is not
determinative with respect to whether a claimed process is statutory. Those
cases, however, involved inventions that at least used machines to transform
data. For example, our reviewing court in AT&T Corp. v. Excel
Communications, Inc., 172 F.3d 1352, 1357 (Fed. Cir. 1999), set forth
(citing In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994) (en banc)) that a
§ 101 inquiry is directed to the determination of whether the claimed subject
matter as a whole is a disembodied mathematical concept representing
nothing more than a “law of nature” or an “abstract idea,” or if the
mathematical concept has been reduced to some practical application
rendering it “useful.” A claimed process that produces a useful, concrete,
tangible result without pre-empting other uses of the mathematical principle
falls within the scope of § 101. AT&T Corp. at 1358. The process held to
be statutory in AT&T Corp., however, required the use of switches and
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computers. See, e.g., id. at 1358 (AT&T's claimed process used “switching
and recording mechanisms” to create a “signal” useful for billing purposes).
The “process” of instant claim 7 does not require any transformation
and reduction of an article “to a different state or thing.” Nor is the
“process” tied to a particular machine that transforms data in such a way to
produce a useful, concrete, and tangible result. Under a broad but
reasonable interpretation of claim 7, the subject matter of the claim requires
at most human thought and paperwork.
Claim 7 does not recite any particular way of implementing the steps.
Claim 7 does not require any machine or apparatus to perform the steps.
Claim 7 does not recite any electrical, chemical, or mechanical acts or
results, which are typical in traditional process claims. Claim 7 does not call
for any physical transformation of an article to a different state or thing, nor
does it require any transformation of data or signals. Claim 7 represents
mere abstraction; i.e., a disembodied mathematical concept representing
nothing more than an “abstract idea,” which has not been reduced to some
practical application that renders it “useful.” As the Supreme Court has
made clear, “[a]n idea of itself is not patentable.” In re Warmerdam, 33
F.3d 1354, 1360 (quoting Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20
Wall.) 498, 507, 22 L.Ed. 410 (1874)).
Although claim 1 is nominally drawn to a “system,” for reasons
related to our discussion of claim 7 we conclude that the system of claim 1
does not apply its abstract idea to produce a useful, concrete, and tangible
result.
The “generators” of the system of claim 1 are depicted as boxes
comprising “system” 100 in Figure 1. The Specification [¶ 0037] teaches
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that the “system” may be embodied in digital logic, or may be implemented
with a digital signal processor (DSP). Instant claim 1 is not limited,
however, to any tangible embodiment. The claim may be read, under a
broad but reasonable interpretation, as reciting logic in the abstract, such as a
computer program that is not tied to a particular machine -- computer
software per se or a computer listing per se. See Manual of Patent
Examining Procedure § 2106.01, heading I (8th ed., Rev. 6, Sept. 2007)
(“USPTO personnel should treat a claim for a computer program, without
the computer-readable medium needed to realize the computer program’s
functionality, as nonstatutory functional descriptive material.”).
We conclude that instant claim 1 is not limited to a statutory class
(e.g., machine or manufacture), and thus not directed to statutory subject
matter.
We also reject dependent claims 2-6 and 8-12, as the claims add
nothing to limit the subject matter to a statutory class. “The four categories
[of § 101] together describe the exclusive reach of patentable subject matter.
If a claim covers material not found in any of the four statutory categories,
that claim falls outside the plainly expressed scope of § 101 even if the
subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346,
1354 (Fed. Cir. 2007).

CONCLUSION
The rejection of claims 1-18 under 35 U.S.C. § 103(a) as being
unpatentable over Litwin is affirmed with respect to claims 1-3, 5, 7-9, 11,
13-15, and 17 but reversed with respect to claims 4, 6, 10, 12, 16, and 18.
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In a new ground of rejection, we reject claims 1-12 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
With respect to the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1)
provides that “Appellant may file a single request for rehearing within two
months from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
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prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART -- 37 C.F.R. § 41.50(b)

ce

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