PTC Inc.

Patent Trials and Appeals Board

Jan 4, 2022

2020004098 (P.T.A.B. Jan. 4, 2022)

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. 14/298,627 06/06/2014 Michael A. REITMAN PTC-05US01 5363 91414 7590 01/04/2022 Patent GC LLC c/o Clarivate 3133 W. Frye Road, Suite 400 Chandler, AZ 85226 EXAMINER SAXENA, AKASH ART UNIT PAPER NUMBER 2147 NOTIFICATION DATE DELIVERY MODE 01/04/2022 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): admin@patentgc.com docketing@patentgc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL A. REITMAN, LEONID RYVCHIN, MOSHE JACOB BAUM, IVAN BALTAGA, and SERGEY GURIN Appeal 2020-004098 Application 14/298,627 Technology Center 2100 Before JOSEPH L. DIXON, DAVID M. KOHUT, and JON M. JURGOVAN, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 9-13, 15, and 21-34.2,3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as PTC Inc. Appeal Br. 1. 2 Throughout this Decision we refer to the Specification (“Spec.”) filed June 6, 2014 (“Spec.”), the Final Rejection mailed June 21, 2018 (“Final Act.”), the Appeal Brief filed January 22, 2019 (“Appeal Br.”), the Supplemental Appeal Brief filed September 12, 2019 (“Supp. Appeal Br.”), the Examiner’s Answer mailed March 12, 2020 (“Ans.”), and the Reply Brief filed May 12, 2020 (“Reply Br.”). 3 Claims 1-8, 14, and 16-20 have been cancelled. See Final Act. 1. Appeal 2020-004098 Application 14/298,627 2 INVENTION The present invention relates to methods “for incremental exploration of design changes in large computer-aided design models.” Spec., Title (capitalization altered). The methods use checkpoints created when the user changes components of a model, the checkpoints storing “changed components in the model that have been changed since a previous checkpoint, and a reference (e.g., a pointer) to the previous checkpoint.” Abstract. The checkpoints enable “reverting the model to [a] saved state . . . [by] retrieving a base model associated with an entry checkpoint, and retrieving a series of one or more checkpoints between the entry checkpoint and the checkpoint associated with the saved state,” where the “series of checkpoints may include a set of one or more changed component models,” and the “changed component models may be applied to the base model to revert the model to the saved state.” Spec. 5:8-13. Claim 9 is representative of the invention and is reproduced below. 9. A method performed by a computer including a processor and memory, the method comprising, the computer: receiving a request to revert a current state of a computer-aided design assembly model stored in the memory to a previous state, wherein the model comprises a plurality of components each of which components represents a part of the design assembly; retrieving a saved checkpoint representing the previous state, the checkpoint comprising a reference to a prior checkpoint representing a prior state of the model preceding the previous state; displaying in a user interface a checkpoint tree of user- created checkpoints including the saved checkpoint and the prior checkpoint, wherein the request is received in response to a user selection of the saved checkpoint in the checkpoint tree; Appeal 2020-004098 Application 14/298,627 3 creating a list of changed components including one or more components in the previous state of the model that were changed relative to the prior state; comparing the list of changed components to the plurality of components in the current state of the model to identify a component that has a different version in the current state than in the previous state; and reverting the model to the previous state by at least replacing the version of the identified component in the current state of the model with the version from the previous state of the model. Supp. Appeal Br. 1 (Claims App.). REJECTION4 Claims 9-13, 15, and 21-345 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 9-13; Ans. 4- 10. 4 Claims 9-13, 15, 21, and 23-25 were rejected under 35 U.S.C. § 112(b), as being indefinite. See Final Act. 6 (listing claims 9-13, 15, and 21 as rejected under § 112(b)), 8 (rejecting claims 23-25 under § 112(b)). However, this rejection was withdrawn in the Examiner’s Answer, and is no longer pending on appeal. See Ans. 3. More particularly, the Answer states “[t]he rejection of claims 9-13, 15 and 21 under 35 USC 112 second is withdrawn.” Ans. 3. Although the § 112(b) rejection of claims 23-25 is not specifically mentioned in the Answer as being withdrawn, we understand the Examiner’s Answer intended to include the § 112(b) rejection of claims 23- 25 under “WITHDRAWN REJECTIONS,” because the Answer notes the § 101 rejection is the only “ground(s) of rejection [that] are applicable to the appealed claims.” See Ans. 3-4. 5 Although the listing of the rejection references only claims 9-13, 15, and 21 (see Final Act. 9), claims 22-34 are also rejected under § 101. See Final Act. 2 (claims 23-34 rejected under § 101), 10 (claim 23 rejected under § 101); Ans. 4 (claims 24-34 rejected under § 101), 6 (claim 22 rejected Appeal 2020-004098 Application 14/298,627 4 OPINION Rejection under 35 U.S.C. § 101 Patent eligibility under § 101 is a question of law that may contain underlying issues of fact. “We review the [Examiner’s] ultimate conclusion on patent eligibility de novo.” Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)); see also SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.”); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). Accordingly, we review the Examiner’s § 101 determinations concerning patent eligibility under this standard. 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 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. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice, 573 U.S. 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 under § 101), 7 (claim 23 rejected under § 101). Appeal 2020-004098 Application 14/298,627 5 the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 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 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “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. Appeal 2020-004098 Application 14/298,627 6 USPTO Guidance In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“Guidance”).6 Under the Guidance, we first look to whether the claim recites: (1) (see Guidance at 54, Step 2A-Prong 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) (see Guidance at 54-55, Step 2A-Prong 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 at 56, Step 2B. 6 The Office issued a further memorandum on October 17, 2019 (“October 2019 Memorandum”) clarifying guidance of the January 2019 Memorandum in response to received public comments. See https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update. pdf. Moreover, “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Guidance at 51; see also October 2019 Memorandum at 1. The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) now incorporates the Guidance and the subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2020-004098 Application 14/298,627 7 Analysis At the outset, we determine that the claims are directed to statutory categories. See Guidance at 53. In particular, claims 9-13, 15, and 21-34 are directed to methods. See Supp. Appeal Br. 1-6 (Claims App.). Thus, the pending claims are directed to a recognized statutory category of § 101. We next turn to Step 2A, Prong 1, of the Guidance to determine whether the claims recite a judicial exception. See Guidance at 54. Step 2A, Prong 1: “recites a judicial exception” The Examiner determines that claims 9-13, 15, and 21-34 are not patent eligible as they are directed to a judicial exception without reciting significantly more. Ans. 4-5, 11, 13-14; see also Final Act. 9-10. More particularly, the Examiner determines the claims recite the steps . . . of creating a list, comparing the list and reverting the model to the previous state (where [] model is generically recited without any specific structure, observation, of methodology of reverting) . . . evaluated under 2019 PEG (Patent Eligibility Guidance) as a mental process relating to the concept of managing a list, performed by human mind that includes the creating a list of components (Observation), comparing a list (Evaluation) and then reverting the model (Judgement/opinion). . . . the claims were rejected as being directed to analyzing information by steps people go through in their mind without more which is essentially mental processes within the abstract idea category. Ans. 4-5, 11; see also Final Act. 10. Appellant contends independent claims 9 and 23 do not recite, and are not directed to an abstract idea (such as a mental process) because In steps (4)-(6) [(creating, comparing, and reverting)] of claim 9, the CAD model is analyzed in various states in which it exists Appeal 2020-004098 Application 14/298,627 8 in time, and the model is reverted to a previous state by replacing certain components of the model based on a comparison. . . . The explicitly recited feature of manipulation of the CAD model in computer memory . . . could not be performed as a mental process either in practice or in theory. While the step (4) [(creating)] does involve the creation of a list, it specifically recites that the list be of components of a CAD model. Such a list could not be created or managed wholly as a mental process since a CAD model necessarily can only exist in a computer memory. Step (5) [(comparing)] involves comparing the list of components to components in a current state of a model, which again cannot be performed without the CAD model itself. The Answer also suggests that the “reverting the model” in step (6) amounts to “Judgement/opinion”, but this makes no sense with respect to the manipulation of a CAD model that is stored in a computer memory. . . . The Answer also takes the position that the claim terms “replacing the version of the determined component of the model in the memory with the version from the second state” [in claim 23] merely represent “providing opinion . . . in terms of what to revert with a very verbose language using the states, versions, changed components and checkpoints and does not convey anything about the components or the basis of how to actually revert”. Appellant disagrees. The “replacing . . .” claim terms result in an actual change to a CAD model, which is manifested as a visual design change that is shown to and viewed by a user of a CAD application. This cannot be dismissed as merely “providing opinion”. Reply Br. 3, 10-11; see also Appeal Br. 14-16. We are persuaded by Appellant’s arguments. Claims 9 and 23 recite computer-implemented methods for displaying and comparing states and components of “a computer-aided design assembly model stored in the memory . . . each of [the model’s] components represent[ing] a part of the design assembly,” and then “reverting the model to [a] previous state” by replacing component versions of the model in the memory with versions Appeal 2020-004098 Application 14/298,627 9 from a previous state of the model. See Supp. Appeal Br. 1 (claim 9), 3 (claim 23). We characterize these claims as describing techniques for modifying, versioning, and visualizing computer-aided design (CAD) assembly models. Here, we are unable to agree that the Examiner has adequately found the concept of claims 9 and 23 to be similar to other concepts found to be abstract ideas by our reviewing courts (e.g., data collection and analysis, see Final Act. 9, or mental processes and manual actions, see Ans. 4-5, 11, 13-14). Appellant’s claimed methods perform automatic versioning and updating of CAD models, and are not performable in the human mind (as the Examiner asserts) because the methods require (i) accessing, comparing, and interchanging software components that represent portions of a design assembly, and (ii) updating packages of components that form a state of a computer-aided design assembly model. See Reply Br. 3-5, 10-11; Appeal Br. 14-16. For example, steps of claims 9 and 23-including “retrieving a saved checkpoint representing the previous state [of a computer-aided design assembly model stored in the memory],” “reverting the [computer-aided design assembly] model to the previous state by at least replacing the version of the identified component [representing a part of the design assembly] in the current state of the model with the version from the previous state of the model,” and “replacing the version of the determined component [representing a part of the design assembly] of the [computer-aided design assembly] model in the memory with the version from the second state [of the model as saved in the memory]”-exist exclusively in the realm of computers and cannot practicably be performed in the human mind or with pen and paper, and thus do not amount to a mental process. Reply Br. 3-5, 7-8, 10-13, 15. Claims Appeal 2020-004098 Application 14/298,627 10 9 and 23 also do not merely recite “data collection . . . and analysis” or “organizing information through mathematical correlations” (as the Examiner asserts, see Final Act. 9-10, Ans. 11); rather, claims 9 and 23 relate to methods for modifying and visualizing CAD models. Reply Br. 3- 5, 10-13; Appeal Br. 15-16. Accordingly, we agree with Appellant that the Examiner has not adequately found the concept of claims 9 and 23 to be an abstract idea. Step 2A, Prong 2: “integrates a judicial exception into a practical application” The Examiner determines that claims 9 and 23 do not recite additional elements that integrate the judicial exception into a practical application. Ans. 6, 9, 13-15. In particular, the Examiner determines [the claims] are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim 9 is directed to abstract construct of a checkpoint and it[s] manipulation and not specifically limited to CAD design domain. Further in the claim 9 the computer is merely invoked as tools. . . . nothing in the claim elements precludes the steps from practically being performed in the human mind. None of the steps improve the functioning of the computer, as in Enfish. . . . At best [the claimed invention] represents a mental process with no improvements to the functioning of a computer, or to any other technology or technical field. Ans. 13-14 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). Appellant argues claims 9 and 23 are patent-eligible as “directed to an improvement to computer-related technology” enabling a user of a CAD system to “quickly browse through different versions of a CAD model Appeal 2020-004098 Application 14/298,627 11 represented by different checkpoints,” “activate different checkpoints in a checkpoint hierarchy for a CAD design assembly,” “switch between checkpoints in a CAD model much more quickly than would be possible without the technology,” and “quickly and efficiently display different versions of a component-based CAD assembly model.” Reply Br. 4-5, 12- 13; see also Appeal Br. 14-16. As such, Appellant argues claims 9 and 23 recite limitations that “specifically limit the claim[s] to a practical application” effecting “an improvement to computer-related technology.” Reply Br. 12, 14, 16; see also Appeal Br. 14-15. We are persuaded by Appellant’s arguments that the claims integrate an abstract idea into a practical application. See Appeal Br. 14-17; Reply Br. 4-7, 12-14, 16-17. Particularly, we agree with Appellant that claims 9 and 23 integrate an abstract idea into a practical application of “providing the user the ability to quickly and efficiently display different versions of a component-based CAD assembly model” and “navigat[ing] between different versions of a CAD model in a version checkpoint tree . . . to switch between checkpoints in [the] CAD model.” Reply Br. 4-5, 12-13; see also Appeal Br. 14-15. As Appellant explains, claim 9, on the whole, relates to the practical application of providing the user the ability to quickly and efficiently display different versions of a component-based CAD assembly model. . . . claim 23 . . . relates to a user being able to quickly navigate between different versions of a CAD model in a version checkpoint tree. . . . Claim 23, by replacing components in memory that are different between selected checkpoints, avoids significant lag or delay that would otherwise be experienced by a user were a complete model read from disk and loaded into memory each time a new checkpoint is selected. Claim 23, as does claim 9, sets out a method that is specifically directed to an Appeal 2020-004098 Application 14/298,627 12 improvement to computer-related technology. . . . [Claims 9 and 23] provide the ability for a user to switch between checkpoints in a CAD model much more quickly than would be possible without the technology. . . . [T]he claimed process specially avoids the need to load a complete model from memory each time a user activates a new checkpoint. . . . [and] enables that only the changed components between a currently activated checkpoint and the newly selected checkpoint need be loaded and replaced in memory. In many cases, the changed components represent a very small portion of the overall number of components in a model, and this can result in [] very significant computational and data access savings. Reply Br. 4-5, 12-13, 16 (citing Spec. 14:22-15:12); see also Appeal Br. 14-16. Appellant’s arguments are supported by the Specification, which explains the advantages of programmatically assembling or restoring indexed design components to capture variations or versions of a CAD model, without loading and regenerating the entire model in the memory and “without the need to resort to manually saving the entire assembly of components into a new file for each variation/version to be evaluated.” See Spec. 2:14-3:9, 9:8-12, 14:22-15:17, 23:20-24:2, 25:3-12. Thus, Appellant’s claims 9 and 23 integrate a design assembly technique into a process rooted in computer technology. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257-58 (Fed. Cir. 2014) (holding patent-eligible a claim that “address[es] a business challenge (retaining website visitors)” by enabling visitors “to purchase products from the third- party merchant without actually entering that merchant’s website,” thus providing a “claimed solution . . . necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks”). In addition, claims 9 and 23 focus on a specific solution to a Appeal 2020-004098 Application 14/298,627 13 technical problem (i.e., keeping track of incremental design changes to a CAD model, and rolling back undesirable model changes, see Spec. 2:14- 3:9, 9:1-12, 15:1-4). Claims 9 and 23 reflect an improvement in computer software functionality by reciting specific steps that accomplish a result (reverting a CAD assembly model to a previous state, and replacing, in the memory, versions of only some model components with corresponding versions from other states of the model), akin to the patent-eligible claims in Finjan. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018) (claims directed to an improved software virus scanner are patent eligible). Such complex programmed functionality for reverting a CAD assembly model to a previous state, and replacing, in memory, versions of only some model components with corresponding versions from other states of the model, cannot practicably be performed in the human mind or with pen and paper. See Data Engine Techs., LLC v. Google LLC, 906 F.3d 999, 1009 (Fed. Cir. 2018) (holding claims were patent-eligible because they required “a specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers”). The Examiner’s determination that claims 9 and 23 do not provide a practical application (within the meaning of the Guidance) does not adequately address the features recited in the claims. See Ans. 13-14. For example, the Examiner summarily dismisses features recited in the claims by stating that the claimed “computer is merely invoked as tools” with “no improvements to the functioning of [the] computer, or to any other technology or technical field.” See id. The Examiner then restates, “nothing in the claim elements precludes the steps from practically being performed in the human mind. . . . [a]t best this represents a mental process.” Id. The Appeal 2020-004098 Application 14/298,627 14 Examiner’s “mental steps” analysis is not well-founded because the claimed versioning and visualization of CAD assembly models cannot be practically performed in the human mind. See SiRF Tech., 601 F.3d at 1319. In SiRF Technology, the claims included limitations to, inter alia, “calculating an absolute position of a GPS receiver,” “computing absolute position,” and updating an “estimate of position of the GPS receiver.” SiRF Tech., 601 F.3d at 1332. In the abstract, “calculating,” “computing,” and “estimating” are mental processes. However, the Federal Circuit found: We are not dealing with a situation in which there is a method that can be performed without a machine. Contrary to appellants’ contention, there is no evidence here that the calculations here can be performed entirely in the human mind. Here, as described, the use of a GPS receiver is essential to the operation of the claimed methods. SiRF Tech., 601 F.3d at 1333. Because claims 9 and 23 integrate a judicial exception into a practical application, we find claims 9 and 23, and their dependent claims 10-13, 15, 21, 22, and 24-34, are not directed to a judicial exception (abstract idea), rather, they are directed to patent-eligible subject matter under § 101. Accordingly, we do not address Step 2B of the Guidance (corresponding to step two of the Alice/Mayo test). For these reasons, we do not sustain the Examiner’s rejection of claims 9-13, 15, and 21-34 as directed to non-statutory subject matter under § 101. CONCLUSION The Examiner’s decision rejecting claims 9-13, 15, and 21-34 under Appeal 2020-004098 Application 14/298,627 15 35 U.S.C. § 101 is REVERSED. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 9-13, 15, 21-34 101 Eligibility 9-13, 15, 21-34 REVERSED