IMAGINATION TECHNOLOGIES LIMITED

Patent Trials and Appeals Board

Oct 30, 2020

13673872 - (R) (P.T.A.B. Oct. 30, 2020)

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.
13/673,872 11/09/2012 Simon Fenney 2645-0150US01 1069
125968 7590 10/30/2020
Potomac Law Group PLLC (IMGTEC)
8229 Boone Boulevard Suite 430
Vienna, VA 22182
EXAMINER
NGO, CHUONG D
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SIMON FENNEY
____________

Appeal 2019-002030
Application 13/673,872
Technology Center 2100
____________

Before JOHN A. JEFFERY, JUSTIN BUSCH, and GREGG I.
ANDERSON, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant requests rehearing of our decision dated August 13, 2020
(“Dec.”), where we affirmed the Examiner’s decision to reject claims 1–3,
5–11, 13, and 14 as ineligible under 35 U.S.C. § 101, but reversed the
Examiner’s prior art rejections. Request for Rehearing filed Oct. 13, 2020
(“Req. Reh’g”). In the Request, Appellant contends that we misapprehended
or overlooked certain arguments raised in connection with the Examiner’s
ineligibility rejection, including the contention that the recited method of
claim 1 is not directed to a mathematical function, nor does the recited
method prevent anyone from using any mathematical function or algorithm.
Req. Reh’g 1–2. Appellant also contends that our determination that the
recited limitations calling for (1) “receiving, in a processor, a mathematical
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function, for which a representation is to be created,” (2) “producing, in a
processor, a plurality of spline control points”; and (3) “storing said spline
control points in said non-transitory computer readable storage medium” is
directed to a mental process is erroneous because we omitted the recited
processor and computer readable storage medium from the limitations in our
analysis. See Req. Reh’g 3–4. Appellant adds that we also erred by failing
to mention the other claims’ additional recited limitations, such as those in
claims 2 and 7. Req. Reh’g 5.
These contentions are unavailing. First, despite Appellant’s
assertions, our decision is consistent with the USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance1 that, in Prong One of Revised Step 2A,
instructs that in determining whether a claim recites an abstract idea, the
following steps must be performed: (1) identify the specific limitations in the
claim that recite an abstract idea, and (2) determine whether the identified
limitations fall within the enumerated subject matter groupings of abstract
ideas, namely (a) mathematical concepts; (b) certain methods of organizing
human activity; and (c) mental processes. See Guidance, 84 Fed. Reg. at
52–54. Our decision on pages 7 to 15 did just that by (1) identifying the
specific limitations that recite an abstract idea, and (2) determining that the
identified limitations fell within the enumerated subject matter groupings of
abstract ideas. Not only were these limitations identified clearly and

1 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“Guidance”); see also October 2019 Update: Subject
Matter Eligibility, https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.

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unambiguously in connection with this determination, we explained in detail
why they fell within respective categories of abstract ideas, along with
supporting case law citations relevant to that determination. See Dec. 7–15.
Rather than repeat that detailed analysis here, we incorporate it in this
decision, along with all other aspects of our earlier opinion. See 37 C.F.R.
§ 41.52(a) (noting that the Board’s decision on the request for rehearing
incorporates the earlier opinion reflecting its decision except for those
portions specifically withdrawn).
As we indicated on pages 9 and 10 of our earlier decision, we
determined that, when the recited limitations are read as a whole, the
claimed invention is directed to the abstract idea of producing and storing
spline control points that are used to evaluate a mathematical function for an
input value within an interval of plural intervals. In reaching this
determination, we noted that, apart from the recited “non-transitory computer
readable storage medium” and “processor,” the claimed steps recite
(1) mathematical concepts because they include mathematical relationships,
mathematical formulas or equations, and mathematical calculations, and
(2) mental steps because the recited mathematical steps could be done entirely
mentally or using pen and paper. Dec. 10.
Our emphasis underscores that we did not ignore the recited processor
and computer readable storage medium, but rather acknowledged that these
elements were not part of the recited abstract idea, namely additional elements
beyond the abstract idea. See Dec. 11–12 (noting that the recited “non-
transitory computer readable storage medium” and “processor” are the only
elements beyond the recited abstract idea); see also id. 15 (identifying the
recited processor and storage medium as additional elements). We further
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explained in detail why these additional elements, namely the processor and
storage medium, considered individually and in combination, do not
(1) integrate the abstract idea into a practical application, and (2) provide an
inventive concept that adds significantly more than the abstract idea when
reading claim 1 as a whole. See Dec. 12–17.
Our approach comports fully with the USPTO Eligibility Guidance
and applicable legal precedent. See BSG Tech LLC v. Buyseasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
Alice “only assessed whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine and conventional”) (emphasis added); see also Guidance, 84 Fed.
Reg. at 56 (instructing that additional recited elements should be evaluated
in Alice/Mayo step two to determine whether they (1) add specific
limitations that are not well-understood, routine, and conventional in the
field, or (2) simply append well-understood, routine, and conventional
activities previously known to the industry (citing MPEP § 2106.05(d)));
Dec. 16 (citing this authority). Therefore, to the extent that Appellant
contends that we somehow misapprehended or overlooked the recited
processor and computer readable storage medium and their functionality in
connection with the claimed invention, we disagree.
We also find unavailing Appellant’s contention that we erred in our
ineligibility determination by failing to mention other claims’ additional
recited limitations, such as those in claims 2 and 7. Req. Reh’g 5. In the
Appeal Brief, however, Appellant only argued claims 1 and 10 with
particularity in connection with the eligibility rejection. See Appeal Br. 9–
13. Although Appellant did not designate each of these separately-argued
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claims with the requisite subheadings in the Appeal Brief—a regulatory
requirement2—we nonetheless treated claims 1 and 10 separately in our
ineligibility analysis, and grouped the remaining claims that were not argued
separately with particularity accordingly. Compare Dec. 7, 15 (presenting
italicized subheadings indicating that claims 1–3, 5–9, 13, and 14 are
grouped together in connection with the ineligibility analysis) with Dec. 18,
26 (same for claims 10 and 11).
To be sure, Appellant nominally refers to independent claim 7 by
indicating that the same eligibility analysis articulated with respect to claim
1 applies to claim 7. See Appeal Br. 7. On the same page of the Appeal
Brief, Appellant also briefly refers to claim 7 by contending that “neither
claim 1, nor claim 7, nor claim 10 sets forth any mathematical function at
all.” Id. (emphasis added).
To the extent Appellant contends that these nominal references to
claim 7 constitute separate arguments for patentability of this claim, we
disagree. Although claim 7 was argued nominally via these brief references,
it was not argued with particularity, and, therefore, was grouped with
independent claim 1. See Dec. 17 (noting that claims 2, 3, 5–9, 13, and 14
were not argued separately with particularity). Appellant’s eligibility
arguments regarding claim 7’s particular limitations, including a
computation device comprising lookup tables and a circuit (Req. Reh’g 5),

2 See 37 C.F.R. § 41.37(c)(1)(iv) (“Under each heading identifying the
ground of rejection being contested, any claim(s) argued separately or as a
subgroup shall be argued under a separate subheading that identifies the
claim(s) by number.”) (emphasis added); see also Manual of Patent
Examining Procedure (MPEP) § 1205.02 (9th ed. Rev. 10.2019, June 2020)
(explaining this rule).
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were not made in the Appeal Brief and, therefore, are waived as untimely.
We reach a similar conclusion regarding the eligibility of the dependent
claims that were likewise not argued separately with particularity in the
Appeal Brief and grouped accordingly in our decision. See Dec. 7, 18.
In short, Appellant’s new arguments regarding claim 7 and the
dependent claims (Req. Reh’g 5) run counter to the rules governing
rehearing requests to the Board that prohibit new arguments in those
requests unless the new arguments (1) are based on a recent relevant Board
or Federal Court decision upon showing good cause; (2) respond to a new
ground of rejection; or (3) contend that Board’s decision contains an
undesignated new ground of rejection. See 37 C.F.R. §§ 41.52(a)(1),
41.79(b)(1). None of those exceptions apply here. Because Appellant’s new
arguments raised in the rehearing request were not raised previously on
appeal, we decline to consider these untimely arguments here in the first
instance on rehearing. See 37 C.F.R. §§ 41.52(a)(1), 41.79(b)(1).
On this record, we are not persuaded that we misapprehended or
overlooked the points raised in the rehearing request regarding our decision
affirming the Examiner’s ineligibility rejection of claims 1–3, 5–11, 13, and
14. Therefore, we deny Appellant’s request to rehear our decision in that
respect.

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CONCLUSION
Outcome of Decision on Rehearing:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Denied Granted
1–3, 5–11,
13, 14
101 Eligibility 1–3, 5–11,
13, 14

7, 10, 14 102(b) Lewis 7, 10, 14
1–3, 8, 9, 11,
13
103 Lewis 1–3, 8, 9,
11, 13

1, 3, 5, 6 103 Carpenter 1, 3, 5, 6
2, 7–11, 13,
14
103 Carpenter, Lewis 2, 7–11,
13, 14

Overall
Outcome
1–3, 5–11,
13, 14

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–11,
13, 14
101 Eligibility 1–3, 5–11,
13, 14

7, 10, 14 102(b) Lewis 7, 10, 14
1–3, 8, 9, 11,
13
103 Lewis 1–3, 8, 9,
11, 13
1, 3, 5, 6 103 Carpenter 1, 3, 5, 6
2, 7–11, 13,
14
103 Carpenter, Lewis 2, 7–11,
13, 14
Overall
Outcome
1–3, 5–11,
13, 14

DENIED