Ex Parte Lehtinen

Patent Trial and Appeal Board

Jul 7, 2016

12448870 (P.T.A.B. Jul. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/448,870 11123/2009 Markku Sakari Lehtinen
32116 7590 07111/2016
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BER060 l 6P00330US 7330
EXAMINER
MCKIE, GINA M
ART UNIT PAPER NUMBER
2631
NOTIFICATION DATE DELIVERY MODE
07/11/2016 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):
docketing@woodphillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKKU SAKARI LEHTINEN1
Appeal2015-003474
Application 12/448,870
Technology Center 2600
Before ALLEN R. MACDONALD, JASON V. MORGAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-18.2 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
1 Appellant states the real party in interest is Inverpolis Oy. App. Br. 1.
2 With the Reply Brief, Appellant filed an amendment cancelling claims 5, 7,
9, 12, 14, and 16, and rewriting claims 2, 6, 8, 10, 11, 13, 15, and 17 in
independent form. Amendment 12 (Oct. 1, 2014). However, the Examiner
has not yet admitted that amendment. Thus, we address all pending claims.
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Application 12/448,870
Technology
The application relates to codes for signal transmission. Abstract. In
particular, the invention uses finite sequences to approximate certain infinite
sequences. Spec. 13-14. Claim 1 is representative and reproduced below:
1. An electronic device configured to output a finite sequence of
elements, which finite sequence of elements constitutes a
code that with a predefined numerical accuracy is equal to an
infinite sequence of elements that has the characteristic that
the modulus of the Fourier transform of said infinite sequence
of elements is equal to 1.
Rejections
Claims 1--4 stand rejected under 35 U.S.C. § 112, first paragraph, for
lack of enablement. Non-Final Act. 3 (Oct. 31, 2013).
Claims 1-18 stand rejected under 35 U.S.C. § 112, second paragraph,
for being indefinite. Id. at 4.
Claims 1--4, 9-11, and 16-18 stand rejected under 35 U.S.C. § 101 for
not being directed to patent eligible subject matter. 3 Id. at 5---6.
ISSUES
1. Did the Examiner err in concluding claims 1--4, 9-11, and 16-
18 were directed to an unpatentable abstract idea under 35 U.S.C. § 101?
3 The Examiner on multiple occasions mentions "Claims 1-18" as having
§ 101 issues. E.g., Non-Final Act. p.5, 11.8-9 & 13. Yet the Examiner
explicitly states "Claims 1--4, 9-11, and 16-18 are rejected under 35 U.S.C.
101" and "Claims 1-4, 9-11and16-18 preempt." Non-Final Act. 5; Ans. 6.
Accordingly, we treat only the narrower list as being rejected and on appeal.
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2. Did the Examiner err in concluding claims 1--4 lacked
enablement of their full claim scope?
3. Did the Examiner err in finding the phrase "which finite
sequence of elements constitutes a code that with a predefined numerical
accuracy is equal to an infinite sequence of elements that has the
characteristic that the modulus of the Fourier transform of said infinite
sequence of elements is equal to 1" renders claims 1-18 indefinite?
ANALYSIS
§ 101: Claims 1--4, 9-11, and 16--18
The Examiner concludes claims 1--4, 9-11, and 16-18 are "directed to
an abstract idea" and "preempt the mathematical concept of a finite sequence
of elements that meets the recited condition." Non-Final Act. 5. Appellant
responds that "[ c ]laim 1 recites an electronic device" so "the invention
defined by claim 1 is tangibly applied to an electronic device so that it is no
longer abstract." Ans. 11.
We agree with the Examiner that "[t]he nominal recitation of an
electronic device does not undo the preemption." Ans. 6. As the Supreme
Court has said, "simply implementing a mathematical principle on a physical
machine, namely a computer, [i]s not a patentable application of that
principle." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1301 (2012). That is particularly true when, as here, "the computer
implementation [i]s purely conventional" because "the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
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patent-eligible invention." Alice Corp. Pty. v. CLS Bank Int'!, 134 S. Ct.
2347, 2358 (2014). Thus, we are not persuaded of error for claim 1.
Claims 9 and 18 are unpatentable for the same reason. These claims
recite a "method for producing a code" and "computer program product for
producing a code," which like claim 1 's "electronic device" do no more than
apply the algorithm to a generic computer. See App. Br. 13-15. But the
Supreme Court has said that the "transformation into a patent-eligible
application requires more than simply stating the abstract idea while adding
the words 'apply it."' Alice, 134 S. Ct. at 2357 (quotation omitted).
Claims 3, 4, and 16 limit the electronic device to a "communication
device" or a "remote sensing device," yet the Supreme Court has instructed
that "limiting the use of an abstract idea to a particular technological
environment" cannot transform a patent-ineligible abstract idea into a patent-
eligible invention. Alice, 134 S. Ct. at 2358 (quotation omitted).
Finally, Appellant contends claims 2, 10, 11, and 17 recite an
"application of a mathematical formula" or "a particular practical application
which is self-evident." App. Br. 11, 13, 15. Again, we are not persuaded.
The Supreme Court has "endorsed a bright-line prohibition against patenting
laws of nature, mathematical formulas and the like" regardless of "whether
or not the principles they embody are sufficiently narrow." Mayo, 132 S. Ct.
at 1303; see also Gottschalkv. Benson, 409 U.S. 63, 72 (1972) ("the patent
would wholly pre-empt the mathematical formula and in practical effect
would be a patent on the algorithm itself'). Thus, "if a claim is directed
essentially to a method of calculating, using a mathematical formula, even if
the solution is for a specific purpose, the claimed method is nonstatutory."
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Parker v. Flook, 437 U.S. 584, 595 (1978) (quoting Jn re Richman, 563 F.2d
1026, 1030 (CCPA 1977)). The issue in Parker v. Flook was that "putting
the formula to the side, there was no 'inventive concept' in the claimed
application of the formula." Mayo, 132 S. Ct. at 1299. Appellant has not
persuaded us that the same is not true here: "the formula itself [i]s an
abstract idea, and the computer implementation [i]s purely conventional."
Alice, 134 S. Ct. at 2358 (citation omitted). Even if the algorithm had great
value (Reply Br. 2; App. Br. 14), "[g]roundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry." Ass 'n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
Accordingly, we sustain the Examiner's rejection of claims 1--4, 9-11,
and 16-18 under 35 U.S.C. § 101.
§ 101: New Ground on Claims 5--8and12-15
This appeal is from a rejection mailed prior to the Supreme Court's
decision in Alice Corp. v. CLS Bank International. In a new ground of
rejection in light of Alice and using our authority under 37 C.F.R.
§ 41.50(b), we further reject claims 5-8 and 12-15 under 35 U.S.C. § 101.
Under Alice, the first step is to determine whether the claims are
directed to a patent-ineligible concept such as an abstract idea. 134 S. Ct. at
2355. Like the Examiner did for the other claims, we conclude claims 5-8
and 12-15 are directed to an abstract idea, namely using a finite sequence to
approximate certain infinite sequences. Thus, the first step of Alice is met.
Given an abstract idea, the second step asks what else is in the claims
"to determine whether the additional elements transform the nature of the
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claim into a patent-eligible application." Id. at 2355 (quotation omitted).
The Supreme Court characterizes this as "a search for an 'inventive concept'
... to ensure that the patent in practice amounts to significantly more than a
patent upon the ineligible concept itself." Id. (quotation omitted).
Here, independent claim 5 recites a "communication device" with a
"transmitter" and "receiver" that uses the finite sequence "to implement
coded communications." Yet a transmitter, receiver, and communication
device are all "purely conventional" components and "the mere recitation of
a generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Alice, 134 S. Ct. at 2358. Similarly, limiting the
claim to the specific purpose of coded communications also does not render
the claim patentable because the Supreme Court has held that a method of
calculating is nonstatutory "even if the solution is for a specific purpose."
Parker v. Flook, 437 U.S. at 595 (quoting Richman, 563 F.2d at 1030).
Thus, we conclude claim 5 is unpatentable under Alice.
Independent claim 7 is directed to a "remote sensing device" with a
"transmitter" that is "adapted to transmit a coded transmission signal." As
with claim 5, these are conventional components that do not transform the
nature of the claim into a patent-eligible material. Independent claims 12
and 14, which recite "transmitting an encoded message" and "receiving and
decoding an encoded message," are unpatentable for the same reasons.
Dependent claims 6, 8, 13, and 15 recite substantially similar
limitations involving specific mathematical formulae and depend from the
four independent claims discussed above. As discussed above, the Supreme
Court has "endorsed a bright-line prohibition against patenting laws of
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nature, mathematical formulas and the like" regardless of "whether or not
the principles they embody are sufficiently narrow." Mayo, 132 S. Ct. at
1303. Thus, just as in Parker v. Flook, the problem with the dependent
claims here is that "putting the formula to the side, there [i]s no 'inventive
concept' in the claimed application of the formula." Id. at 1299.
Accordingly, we reject claims 5-8 and 12-15 under 35 U.S.C. § 101.
Enablement: Claims 1--4
"To be enabling, the specification of a patent must teach those skilled
in the art how to make and use the full scope of the claimed invention
without 'undue experimentation."' ALZA Corp. v. Andrx Pharm., LLC, 603
F.3d 935, 940 (Fed. Cir. 2010) (quotation omitted). The Examiner rejects
claims 1--4 for lack of enablement because "[i]n order for the spec to enable
the full scope of the claim it would need to disclose enough so that one
skilled in the art could derive every possible finite sequence of elements that
meets the condition without undue experimentation." Ans. 3. Appellant
contends that "[ m ]aking and using the entire scope of the claimed invention
is different from deriving every possible finite sequence of elements" and
that claim 1 is enabled by "Figs. 4, 5 and 6" and "page 14, line 36 through
page 17, line 36," although "[t]he description of Fig. 4 alone is sufficient to
enable one skilled in the art to make and use the invention." App. Br. 5---6.
Appellant's argument, however, does not sufficiently address the
Examiner's rejection. Figure 4 and the text describing it identifies at a very
high level generic components in a computer system, such as "a processor,"
"memory," and "optionally a user interface." Spec. p.14, 1.36-p.15, 1.34.
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Merely saying that memory stores "programs for calculating perfect codes
from starting point codes" or "previously calculated" codes (id.) does
nothing to explain how those programs work or the level of experimentation
required for a person of ordinary skill in the art to have calculated other
perfect codes or finite sequences to approximate them.
Figures 5 and 6 and the text describing them similarly do not add
anything beyond generic components such as a "transceiver" and "antenna"
for a communications device or radar system (id. at p.15, 1.36 - p.17, 1.36),
none of which addresses the Examiner's concern about the full scope of the
finite sequence limitation. Thus, even assuming the Specification did enable
a specific embodiment with the specific codes disclosed in the Specification,
Appellant has not sufficiently shown error in the Examiner's conclusion that
the Specification did not enable the full scope of claim 1.
We also agree with the Examiner that dependent claims 2--4 "are not
enabled because they depend from claim 1 which is not enabled" (Ans. 3)
and that Appellant has not sufficiently shown the full claim scope is enabled
for these dependent claims. See App. Br. 6-7. Claims 3 and 4 do not further
limit the finite sequence, and Appellant again has not sufficiently addressed
the level of experimentation needed for a person of ordinary skill in the art
to use the full scope of the mathematical formula set forth in claim 2.
Accordingly, we sustain the Examiner's rejection of claims 1--4 under
35 U.S.C. § 112, first paragraph for lack of enablement.4
4 Based upon the limited record before us and the factors set forth in In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), it is likely that claims 5-18 also
lack enablement for similar reasons. However, claims 5-18 have already
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Indefiniteness: Claims 1-18
All of the independent claims (1, 5, 7, 12, 14, 16, and 18) recite
"which finite sequence of elements constitutes a code that with a predefined
numerical accuracy is equal to an infinite sequence of elements that has the
characteristic that the modulus of the Fourier transform of said infinite
sequence of elements is equal to 1." Appellant describes setting the
"predefined numerical accuracy" as a relatively low number ("for example,
0. 001, or perhaps 0. 000000001 ") such that "there is no larger mistake than
what the predefined numerical accuracy dictated." App. Br. 8-9. Put
another way, "[t]he finite sequence is equal to the corresponding infinite
[sequence] up to the numerical accuracy that was predefined." Id.
The Examiner concludes the claims are indefinite because "[ w ]hen the
predefined numerical accuracy is chosen large enough, it covers practically
any device that produces any kind of finite-length sequence." Ans. 4.
However, the Examiner confuses breadth with indefiniteness. The
Examiner is correct that by setting the predefined numerical accuracy to
infinity, any finite sequence is within infinity of any infinite sequence. Such
vast breadth may well be relevant to enablement or anticipation, but
"breadth is not indefiniteness." SmithKline Beecham Corp. v. Apotex Corp.,
403 F.3d 1331, 1341 (Fed. Cir. 2005) (quotation omitted). "Merely claiming
broadly does not render a claim insolubly ambiguous, nor does it prevent the
public from understanding the scope of the patent." Ultimax Cement Mfg.
Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. Cir. 2009).
been rejected under § 101, so we leave it to the Examiner to do a factor-by-
factor analysis for enablement if Appellant resolves the § 101 issues.
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Here, there is no ambiguity because a person of ordinary skill would
understand, just as the Examiner did, that the claims as written are broad and
do not place a numerical limit on the "predefined numerical accuracy." The
Specification further confirms this breadth: "The numerical accuracy that is
considered does not need to be a power of ten or a power of two, but any
convenient numerical accuracy can be used." Spec. p.19, ll.25-26.
Thus, we reverse the rejection of claims 1-18 for indefiniteness.
DECISION
For the reasons above, we affirm the Examiner's rejection of claims
1--4, 9-11, and 16-18 under 35 U.S.C. § 101 and the rejection of claims 1--4
under 35 U.S.C. § 112, first paragraph.
We reverse the Examiner's rejection of claims 1-18 under 35 U.S.C.
§ 112, second paragraph.
In a new ground of rejection, we reject claims 5-8 and 12-15 under
35 U.S.C. § 101.5
TIME TO RESPOND
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board."
In addition to affirming the Examiner's rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
5 The Examiner also is encouraged to address the Amendment dated October
1, 2014, including Appellant's cancellation of claims 5, 7, 9, 12, 14, and 16.
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§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[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 Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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
exammer ....
(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)(l), in order to preserve the right to seek
review under 35 U.S.C. § 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
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 Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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