Ex Parte Howard et alDownload PDFPatent Trial and Appeal BoardDec 13, 201311158586 (P.T.A.B. Dec. 13, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEVEN J. HOWARD, JOHN W. KETCHUM, MARK S. WALLACE, PETER MONSEN, and JAY RODNEY WALTON ____________ Appeal 2011-007092 Application 11/158,586 Technology Center 2600 ____________ Before MAHSHID D. SAADAT, JEAN R. HOMERE, and JOHNNY A. KUMAR, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007092 Application 11/158,586 2 Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1, 3-8, 10, 11, 13, 27, 29-32, 34, 35, and 37.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Introduction Appellants’ invention relates to techniques for computing the weights for a spatial filter matrix efficiently by avoiding direct computation of matrix inversion (see Spec. ¶ [0006] – [0007]). Claims 1 and 8, which are representative of the issues on appeal, read as follows: 1. An apparatus comprising: a first processor operative to derive a channel response matrix; and a second processor operative to derive a first matrix iteratively based on the channel response matrix and to derive a spatial filter matrix based on the first matrix and the channel response matrix, wherein the second processor indirectly calculates a matrix inversion by deriving the first matrix iteratively, and wherein the second processor is operative to initialize the first matrix to an identity matrix. 8. A method of deriving a spatial filter matrix by a wireless communications apparatus, comprising: deriving a first matrix iteratively based on a channel response matrix, wherein a matrix inversion is indirectly calculated by deriving the first matrix iteratively, and wherein the first matrix is initialized to an identity matrix; and 1 Claims 2, 9, 12, 14-26, 28, 33, and 36 have been cancelled (Br. 5). Appeal 2011-007092 Application 11/158,586 3 deriving the spatial filter matrix based on the first matrix and the channel response matrix. The Examiner’s Rejections Claims 8, 10, 32, and 34 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. (See Ans. 4-5). Claims 1, 3-8, 10, 11, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hassibi (An Efficient Square-Root Algorithm for BLAST, Mathematics of Communications, January 27, 2000) and Kadous (US 2003/0165189 A1). (See Ans. 6-8). Claims 27, 30-32, and 35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hassibi, Kadous, and “Covariance Matrix” (accessed at http://www.tau.ac.il/cc/pages/docs/sas8/stat/chap46/sect32.htm, 1999). (See Ans. 8-9). Claims 29, 34, and 37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hassibi, Kadous, “Covariance Matrix,” and Shoaff (A Parallel Algorithm for the Singular Value Decomposition of Rectangular Matrices, Proceedings of the Third SIAM Conference on Parallel Processing for Scientific Computing, Los Angeles, California, Dec. 1-4, 1987). (See Ans. 10). Issues on Appeal Did the Examiner err in rejecting claims 8, 10, 32, and 34 under 35 U.S.C. § 101 as being directed to non-statutory subject matter? Did the Examiner err in rejecting claims 1, 3-8, 10, 11, and 13 as being unpatentable under 35 U.S.C. § 103(a) over Hassibi and Kadous, or additionally in view of other references, because the combination of Hassibi and Kadous fails to disclose all the recited limitations of claim 1? Appeal 2011-007092 Application 11/158,586 4 ANALYSIS Rejection under 35 U.S.C. § 101 With respect to the 35 U.S.C. § 101 rejection, Appellants contend that claims 8, 10, 32, and 34 are directed to statutory subject matter (Br. 10). Appellants specifically assert that these claims recite a method performed by “‘a wireless communications apparatus’” (id.). Appellants conclude that reciting a wireless apparatus in the preamble ties the claims to a particular apparatus and renders them statutory (id.). We agree with the Examiner that the claimed method is ineligible for patent protection because the broad scope of the claims extends to any method of deriving a spatial filter matrix, even unpatentable mental processes using manual calculations. “[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011). To satisfy the machine prong of the machine-or- transformation test, “the machine ‘must play a significant part in permitting the claimed method to be performed.’” Id. at 1375 (quoting SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010)). Appellants’ arguments have not persuaded us that the functions recited in claims 8, 10, 32, and 34 are tied to any particular machines within the body of the claim in order to satisfy the machine prong of this test. Therefore, we sustain the 35 U.S.C. § 101 rejection of claims 8, 10, 32, and 34 as being directed to non-statutory subject matter. Rejections under 35 U.S.C. § 103 With respect to claim 1, Appellants’ arguments are focused on the teachings of Hassibi and the propriety of the proposed combination of Appeal 2011-007092 Application 11/158,586 5 Hassibi with Kadous (Br. 11-12). In particular, Appellants contend that the potential negative effects of costly multiplications and divisions of Hassibi should not be ignored (Br. 12). Appellants conclude that a potential drawback with respect to a scalar division in Hassibi teaches away from utilizing the “Ricatti equation” (id.). We observe that the Examiner has identified the relevant portions of each reference and has properly concluded that the proposed combination would result in an operable method. The Examiner has specifically provided sufficient explanation with corresponding citations to various portions of the references for teaching or suggesting the disputed feature (Ans. 11-12), which remains unrebutted by Appellants in a Reply Brief. Additionally, we disagree with Appellants (Br. 12) and find that the discussion of the drawbacks of squaring quantities in Hassibi relates to aspects of the process that may merely constitute a trade-off rather than a basis for teaching away from the combination. In fact, as found by the Examiner (Ans. 11), Hassibi discloses the function of initializing, whereas the way the starting matrix is initialized, such as to an identity matrix, would have been obvious to one of ordinary skill in the art as a known routine computation. Indeed, the Supreme Court has indicated that: [It is error to] assum[e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem. . . . Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation omitted). We find the Examiner’s articulated rationale to be sufficient to justify this Appeal 2011-007092 Application 11/158,586 6 combination. In other words, we find that the proposed substitution would merely require the ordinarily skilled artisan to use common sense to appreciate the benefits of manipulating the channel response matrix according to the algorithm of Hassibi. Therefore, we sustain the 35 U.S.C. § 103(a) rejection of claims 1, 3-8, 10, 11, and 13, and of claims 27, 29-32, 34, 35, and 37, which are argued based on the same reasons stated for claim 1 (Br. 14-16). CONCLUSIONS 1. The Examiner did not err in rejecting claims 8, 10, 32, and 34 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 3. The Examiner did not err in rejecting claims 1, 3-8, 10, 11, 13, 27, 29-32, 34, 35, and 37 under 35 U.S.C. § 103(a) as being unpatentable over Hassibi in view of various combinations with Kadous, “Covariance Matrix,” and Shoaff. DECISION The decision of the Examiner rejecting claims 1, 3-8, 10, 11, 13, 27, 29-32, 34, 35, and 37 is affirmed. 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 msc Copy with citationCopy as parenthetical citation