Ex Parte SWANSON

Patent Trials and Appeals Board

Jul 9, 2019

14295739 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/295,739 06/04/2014
61650 7590 07/11/2019
MYERS WOLIN, LLC
100 HEADQUARTERS PLAZA
West Tower, Floor 7
MORRISTOWN, NJ 07960-6834
FIRST NAMED INVENTOR
Ronald SW ANSON
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.
BEWT4454 4290
EXAMINER
RASTOVSKI, CATHERINE T
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
07/11/2019 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):
patent@myerswolin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD SW ANSON
Appeal2019-000170
Application 14/295, 739
Technology Center 2800
Before JEFFREY R. SNAY, MICHAEL G. McMANUS, and
SHELDON M. McGEE, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-24 under 35 U.S.C. § 101 as claiming ineligible
subject matter. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We cite to the Specification ("Spec.") filed June 4, 2014; the Final Office
Action ("Final Act.") dated November 30, 2017; Appellant's Appeal Brief
("Appeal Br.") filed April 20, 2018; the Examiner's Answer ("Ans.") dated
August 10, 2018, and Appellant's Reply Brief ("Reply Br.") filed October 8,
2018.
2 Appellant is the Applicant, Wireless Telecom Group, Inc. Appellant and
Bank of America N.A. are identified as the real parties in interest. Appeal
Br. 3.
3 The Examiner withdrew the rejection under 35 U.S.C. § 103(a). Ans. 2.
Appeal2019-000170
Application 14/295, 739
BACKGROUND
The subject matter on appeal relates to measuring peak power, such as
from radio frequency and microwave communication devices. Spec. ,r 6.
According to the Specification, conventional peak power sensors miss
detection of some peaks due to acquisition gaps caused by information
processing techniques. Id. ,r 3. The Specification describes a pipeline
processing technique by which a power detector signal is digitized and
continuously acquired, stored, converted into linear power units, and trace
averaged. Id. ,r 16. Claim 1 is illustrative:
1. A method for measuring power of an electromagnetic
signal, the method comprising:
receiving the electromagnetic signal by a power detector;
converting the received electromagnetic signal into a
plurality of digitized samples;
continuously acquiring and storing the plurality of
digitized samples into one or more sample memory buffers
based upon a plurality of power processing events;
simultaneously reading out of the one or more sample
memory buffers the stored plurality of digitized samples;
linearizing the plurality of digitized samples, wherein
linearizing comprises converting the digitized samples into a
plurality of linear power units such that the plurality of linear
power units represent power measurements based upon the
plurality of power processing events;
and
trace averaging the plurality of linear power units,
wherein the simultaneously reading out of the one or more
sample memory buffers, linearizing, and trace averaging are
pipeline processed.
App. Br. 20 (Claims Appendix). Claim 13 recites an apparatus for
performing a method essentially the same as is recited in claim 1. Claim 23
recites a computer program configured to execute a method essentially the
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same as is recited in claim 1. Each remaining claim on appeal depends from
claim 1, 13, or 23.
DISCUSSION
The Examiner rejects claims 1-24 under 35 U.S.C. § 101 as being
directed to a judicial exception-namely, an abstract idea without
significantly more. Final Act. 2-9. Appellant argues the claims as a group.
See Appeal Br. 9-18; Reply Br. 2-8. In accordance with 37 C.F.R.
§ 4I.37(c)(l)(iv), we select independent claim 1 as representative, and
decide the appeal based on the representative claim alone. Having
considered the Examiner's findings and Appellant's arguments, we are not
persuaded the Examiner reversibly erred in rejecting claim 1 under 35
U.S.C. § 101.
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. E.g., Alice Corp. Pty. Ltd. 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. Id. 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 the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
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risk."); see also Bilski v. Kappas, 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 (Gottschalkv. 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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum 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.
The PTO recently published revised guidance on the application of
§ 101. See Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) ("Guidance"). Under Step 1 of the Guidance, we
determine whether the claimed subject matter falls within the four statutory
categories: process, machine, manufacture, or composition of matter. Step
2A of the Guidance is two-pronged, under which we look to whether the
claim recites:
(1) any judicial exception, 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, under Step
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2B, look to whether the claim: adds a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional" in the field
(see MPEP § 2106.05(d)); or 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.
We have considered the Examiner's findings and the Appellant's
arguments in light of the controlling case-law and Guidance, and are not
persuaded the Examiner erred in rejecting the claims under 3 5 U.S. C. § 1 01.
Guidance Step 1
There is no dispute that claim 1 is within a statutory category. Claim
1 recites a method.
Guidance Step 2A, Prong 1
Under Step 2A of the Guidance, we first consider whether the
Examiner erred in determining that the claim recites a judicial exception.
The Examiner determined that claim 1 recites an abstract idea. Final Act. 2.
For the reasons explained below, we see no error in that determination.
The Guidance identifies mental processes as one of the enumerated
groupings of abstract ideas. A claim recites a mental process when it
encompasses acts people can perform using their minds or pen and paper.
See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-
73 (Fed. Cir. 2011) ( determining that a claim whose "steps can be performed
in the human mind, or by a human using a pen and paper" is directed to an
unpatentable mental process). This is true even if the claim recites use of a
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generic computer component to perform the process steps. See, e.g., Versata
Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)
("Courts have examined claims that required the use of a computer and still
found that the underlying, patent-ineligible invention could be performed via
pen and paper or in a person's mind."); see also 2019 Eligibility Guidance
84 Fed. Reg. at 52 n. 14 ("If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental process category
unless the claim cannot practically be performed in the mind.").
In this case, claim 1 recites "linearizing the plurality of digitized
samples" and "trace averaging the plurality of linear power units." The
claim does not require any particular machine or device in connection with
the linearizing and averaging steps, other than a generic processor. See
Spec. ,r 27 ("[A] 14 bit data sample ... is fed into linearizer logic which
computes the output power by performing linear interpolation between
points stored in one or more look-up-tables."); ,r 48 ("Synchronous trace
filtering takes place by multiplying the existing 'feedback' value of each
trace in an addressed location of trace buffer (150) by one coefficient, and
the incoming data from the pre-averager block ( 400) by a second coefficient,
then summing the two products, and writing the resulting sum back to the
same addressed location in the trace buffer (150)."). Apart from a generic
processor, a person could perform these steps entirely in the mind by
performing the necessary interpolation and averaging operations. Thus, in
the context of claim 1, the steps of "linearizing" and "averaging" can reside
solely within a human thought process. Accordingly, we conclude that
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claim 1 recites a mental process, which is identified in the Guidance as an
abstract idea.
Guidance Step 2A, Prong 2
Having determined that the claims recite a judicial exception, our
analysis under the Guidance turns to determining whether there are
additional elements that integrate the exception into a practical application.
See MPEP § 2106.05(a}-(c), (e}-(h). The additional elements in claim 1 are:
( 1) "receiving the electromagnetic signal by a power detector;" (2)
"converting the received electromagnetic signal into a plurality of digitized
samples;" (3) "acquiring and storing the plurality of digitized samples;" and
( 4) "reading out of the one or more sample memory buffers the stored
plurality of digitized samples."
We determine that claim 1 does not recite additional elements that
integrate the judicial exception into a practical application. The recited
"receiving," "converting," "storing," and "reading out" steps are data
gathering and data manipulation recited at a high level of generality. See
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
( characterizing certain steps of collecting information, analyzing information
by steps people go through in their minds, or by mathematical algorithms,
and presenting the results of collecting and analyzing information, without
more, as matters within the realm of abstract ideas); see also SAP Am., Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) ("As many cases
make clear, even if a process of collecting and analyzing information is
'limited to particular content' or a particular 'source,' that limitation does
not make the collection and analysis other than abstract." ( quoting Elec.
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Power Grp., 830 F.3d at 1353, 1355 (citing cases)). These information
gathering and data manipulation steps do not "transform the nature of the
claim into a patent-eligible application." See Alice, 573 U.S. at 217; see also
Guidance 84 Fed. Reg. at 55 n. 24 ("USPTO guidance uses the term
'additional elements' to refer to claim features, limitations, and/or steps that
are recited in the claim beyond the identified judicial exception.").
Appellant argues that claim 1 does not recite a mental process because
receiving and converting an electromagnetic signal requires a machine, and
cannot be performed mentally. Appeal Br. 10-11. Appellant also argues
that the claimed method is "for improving power measurements of
electromagnetic signals," and for that reason are not merely data-gathering
but "a technological solution to an existing problem." Id. at 12; see also id.
at 13-18. We find Appellant's argument unpersuasive. Appellant does not
persuasively demonstrate why the requirement of a generic detector for
receiving an electromagnetic signal and a generic processor for manipulating
the received information provide more than generic processing devices for
performing the recited mental process. See Versata Dev. Grp., Inc., 793
F.3d at 1335. Moreover, novelty of the claimed abstract idea, alone, neither
demonstrates a technological improvement nor otherwise transforms the
claimed abstract idea into eligible subject matter. See, e.g., Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo,
566 U.S. at 90) ("[A] claim for a new abstract idea is still an abstract
idea.")).
Viewed as a whole, the claim merely applies mental processes to the
environment of measuring power. "[M]erely limiting the field of use of the
abstract idea to a particular existing technological environment does not
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render the claims any less abstract." Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016). We are not
persuaded that the claimed method effects an improvement in computer-
technology or any other technology or technical field. See MPEP
§ 2106.05(a).
Nor does the claimed method apply the judicial exception using any
particular machine. See MPEP § 2106.05(b ). Claim 1 recites a generic
power detector and computer memory buffers. Appellant does not purport
that the claim adds any other meaningful (technological) limitation, i.e.,
limitations beyond linking the use of the abstract idea to generic technology.
See MPEP § 2106.05(c), (e); see also id. at (f}-(h) (mere instruction to apply
a judicial exception (f), insignificant extra-solution activity (g), and
generally indicating a field of use or technological environment in which to
apply a judicial exception (h), are insufficient to integrate an abstract idea
into a practical application).
For the foregoing reasons, we determine that claim 1 does not
integrate the judicial exception into a practical application.
Guidance Step 2B
In Alice step two, we consider the elements of the claim, both
individually and as an ordered combination, to assess whether the additional
elements transform the nature of the claim into patent-eligible subject
matter. Content Extraction & Transmission LLC v. Wells Fargo Bank, 776
F.3d 1343, 1347 (Fed. Cir. 2014). "To save a patent at step two, an
inventive concept must be evident in the claims." RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). "An inventive concept
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that transforms the abstract idea into a patent-eligible invention must be
significantly more than the abstract idea itself, and cannot simply be an
instruction to implement or apply the abstract idea on a computer." Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
(Fed. Cir. 2016).
In this context, we also look to see if the additional elements are more
than "well-understood, routine, and conventional" so as to amount to an
inventive concept. Conversely, we consider whether these additional
elements simply append "well-understood, routine, and conventional"
elements, particularly at a high level of generality, to the judicial exception.
Appellant does not point to any evidence of record that would tend to
show that the "receiving," "converting," "storing," and "reading out" of an
electromagnetic power signal as recited in claim 1 are more than well-
understood, routine, and conventional. The remaining steps in claim 1, as
noted, can be formed as a mental process and, therefore, are abstract ideas.
When considered as an ordered combination, the steps recited in claim 1
essentially apply a mathematical transformation to received power data.
For the foregoing reasons, we determine that the additional elements
recited in claim 1 do not amount to significantly more than the abstract idea
itself.
For the reasons discussed above and by the Examiner, we are not
persuaded of reversible error in the Examiner's rejection of representative
claim 1. Accordingly, the rejection of claims 1-24 is sustained.
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DECISION
The Examiner's decision rejecting claims 1-24 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).
AFFIRMED
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