14840774 - (D) (P.T.A.B. Aug. 21, 2019)

Gabor Drasny et al.

Patent Trials and Appeals BoardAug 21, 2019

14840774 - (D) (P.T.A.B. Aug. 21, 2019)

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. 14/840,774 08/31/2015 Gabor Drasny AUS920130425US2 9245 70426 7590 08/21/2019 IBM AUSTIN IPLAW (DL) DeLizio Law C/O DELIZIO LAW, PLLC 15201 MASON ROAD, SUITE 1000-312 CYPRESS, TX 77433 EXAMINER SIEK, VUTHE ART UNIT PAPER NUMBER 2851 NOTIFICATION DATE DELIVERY MODE 08/21/2019 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): USPTO2@DELIZIOLAW.COM USPTO@DELIZIOLAW.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GABOR DRASNY and GAVIN B. MEIL ____________________ Appeal 2018-009198 Application 14/840,774 Technology Center 2800 ____________________ Before LINDA M. GAUDETTE, DONNA M. PRAISS, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL1 1 The record on appeal includes the Specification filed August 31, 2015 (“Spec.”), the Examiner’s Final Office Action of November 6, 2017 (“Final Act.”), Appeal Brief of April 6, 2018 (“Appeal Br.”), the Examiner’s Answer of July 26, 2018 (“Ans.”), and Reply Brief of September 26, 2018 (“Reply Br.”). Appeal 2018-009198 Application 14/840,774 2 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of claims 1–8. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method for evaluating, by a compact multiwave based circuit design evaluator operating via one or more processors, a circuit design having a compact representation of waveforms without simulating individual waveforms, the method comprising: receiving, by the one or more processors and the compact multiwave based circuit design evaluator, a register transfer level circuit design; determining, by the one or more processors and the compact multiwave based circuit design evaluator, two or more input sequences of signal transition representations associated with a first input net of an indicated component in the register transfer level circuit design, wherein the two or more input sequences of signal transition representations are associated with a mode element, each signal transition representation represents a nondeterministic transition from a previous signal state to a set of one or more possible signal states, and the mode element indicates a selection between two or more output sequences of signal transition representations; and 2 “International Business Machines Corporation” is identified in the Appeal Brief as the real party in interest. Appeal Br. 2. Appeal 2018-009198 Application 14/840,774 3 determining, based on the indicated component and the mode element, the two or more output sequences of signal transition representations derived from the two or more input sequences of signal transition representations. Claims Appendix (Appeal Br. 21). RELATED APPLICATIONS AND APPEALS Appellants identify a related appeal filed March 7, 2018, for Application No. 14/547,953 (“the ’953 Application”). Appeal Br. 2. An Issue Notification for the ’953 Application dated May 29, 2019 indicates U.S. Patent No. 10,325,040 issued June 18, 2019. We additionally note that an appeal was filed for related Application No. 14/547,820 (Appeal No. 2018-008337) (“the ’820 Application”) in which the Examiner’s rejection under 35 U.S.C. § 101 was reversed. Ex parte Drasny, Appeal No. 2018-008337 (PTAB July 22, 2019). The pending application at issue in this appeal shares with the ’820 Application a common ancestor U.S. Provisional Patent Application No. 61/912,345. Compare Spec. ¶ 1 (“This application is a Continuation of and claims the priority benefit of a U.S. Patent Application, Serial Number 14/547,953, . . . filed on November 19, 2014, . . . which claims priority from a U.S. Provisional Patent Application, Serial Number 61/912,345, . . . filed on December 5, 2013 . . . .”), with the ’820 Application filed November 19, 2014, ¶ 1 (“This application claims priority from a U.S. Provisional Patent Application, Serial Number 61/912,345, . . . filed on December 5, 2013 . . . .”). Appeal 2018-009198 Application 14/840,774 4 REJECTION Claims 1–8 are rejected under 35 U.S.C. § 101. Final Act. 2. OPINION The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).3 Under the Guidance, we first look to whether the claim recites: (1) 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) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)- (c), (e)-(h)). 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. See Guidance. In applying prong (1) of the Guidance, to the claims on appeal, we agree with the Examiner that independent claim 1 recites an abstract idea by 3 Neither the Examiner nor Appellants had benefit of this Guidance when advocating their respective positions concerning subject matter eligibility. Appeal 2018-009198 Application 14/840,774 5 way of a mathematical model or a mathematical correlation. See Final Act. 2; see also Ans. 4. As the Examiner points out, the recited steps such as the steps “determining . . . two or more input sequences of signal transition representations . . .” and “determining, based on the indicated component and the mode element, the two or more output sequences of signal transition representations derived from the two or more input sequences of signal transition representations” are mathematical operations and mathematical algorithms involving mathematical models or correlations. Final Act. 3. Accordingly, claim 1 recites one or more mathematical concepts which are abstract ideas under the Guidance. However, our assessment of Guidance prong (2), reveals that the independent claim integrates the above abstract idea into a practical application. Appellants state that an application of claim 1 “may efficiently evaluate a circuit design with a compact representation of numerous waveforms without simulating the individual waveforms.” Appeal Br. 11. Appellants aptly state that claim 1 “provide[s] a technical solution to the technical problem of optimizing computer-related circuit design verification” which “avoid[s] [expending] additional computer resources for waveform simulation and circuit design evaluation[.]” Id. (emphases removed). As a result, claim 1 does not attempt to monopolize the mathematical concepts at issue here but rather provides an “electronic design automation (EDA) tool to identify potential defects in a register transfer level (RTL) design on a system on a chip.” Spec. ¶ 2. Appeal 2018-009198 Application 14/840,774 6 More specifically, claim 1 defines a specific application to eliminate the simulation of individual wave forms when evaluating (e.g., identifying defects in) a circuit design. To summarize, there is a meaningful limit on the mathematical concepts, that is, the mathematical concepts are integrated into a practical application for optimizing the evaluation of a circuit design which eliminates the simulation of individual waveforms. For this reason, we do not sustain the Examiner’s rejection of claims 1–8 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. DECISION The Examiner’s decision is reversed. REVERSED