Ex Parte Wentink et alDownload PDFPatent Trials and Appeals BoardSep 24, 201813737780 - (D) (P.T.A.B. Sep. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/737,780 01/09/2013 Maarten Menzo W entink 109682 7590 09/26/2018 Holland & Hart LLP/Qualcomm P.O. Box 11583 Salt Lake City, UT 84147 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. PT460.0l (88492.1430) 1038 EXAMINER NGUYEN, THAI ART UNIT PAPER NUMBER 2469 NOTIFICATION DATE DELIVERY MODE 09/26/2018 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): ocpat_uspto@qualcomm.com patentdocket@hollandhart.com qualcomm@hollandhart.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MAAR TEN MENZO WENTINK and DIDIER JOHANNES RICHARD VAN NEE Appeal2018-002295 Application 13/737,780 Technology Center 2400 Before HYUN J. JUNG, BARBARA A. BENOIT, and PHILLIP A. BENNETT, Administrative Patent Judges. JUNG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Maarten Menzo W entink and Didier Johannes Richard Van Nee (Appellants) 1 appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-8, 10-23, 25-28, 40-53, and 55---64, which constitute 1 The Appellants identify the real party-in-interest as Qualcomm Inc. App. Br. 2. Appeal2018-002295 Application 13/737,780 all the claims pending in this application. Claims 9, 24, 39, and 54 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claims 1, 16, 31, 46, and 61---64 are independent. Claim 1 is reproduced below: 1. An apparatus for wireless communication comprising: a processor configured to prepare a packet comprising a payload, a PHY header, and an aggregated media access control service data unit (A-MSDU) having a plurality of MSDU subframes and to insert an indication of an end of the A-MSDU in the A-MSDU, each MSDU subframe comprising a MSDU subframe header and a MSDU, each MSDU subframe header comprising a delimiter signature field, each delimiter signature field configured to indicate a difference between a first MSDU subframe delimiter signature field and a second MSDU subframe delimiter signature field, and no values contained in the PHY header are configured to indicate a length of the A-MSDU to reduce an amount of information carried in the PHY header; and a transmitter configured to transmit the packet wirelessly to a receiver. REJECTION The Appellants seek our review of the rejection of claims 1-8, 10-23, 25-38, 40-53, and 55-64 under 35 U.S.C. § 101 as directed to patent- ineligible subject matter. ANALYSIS The Examiner determines that claim 1 does not enhance the recited processor and transmitter and is directed to the abstract idea of a packet format as specified in the claim. Final Action 3 (addressing claim 1). The Examiner does not find any inventive concept because the recited processor 2 Appeal2018-002295 Application 13/737,780 and transmitter perform functions that can be performed by conventional processors and transmitters. Id. at 3. The Examiner, thus, determines that the claim 1 does not transform the abstract idea into patentable subject matter. Id. at 3--4. The Examiner also distinguishes claim 1 from the subject matter claimed in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) because "claim 1 is more comparable of a 'one trick pony', in the sense that the subject matter recited in claim 1 only applies to a specific data packet format." Id. at 4--5. The Examiner rejects independent claims 16, 31, 46, and 61-64 by referring to the reasons used for claim 1 and rejects the dependent claims by stating that they "recite additional characteristics of the packet format." Id. at 5---6. The Appellants contend that the "Examiner has not properly determined that the claims are directed to the judicial exception of an 'abstract idea"' in accordance with the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014) ("2014 Interim Guidance"). App. Br. 10; see also Reply Br. 3 (stating "the Office Action has failed to satisfy the initial burden ... by disregarding the guidance provided by both the Office and the courts"), 4 (stating "the Office Action has failed to establish[] a prima facie case of unpatentability under 35 U.S.C. § 101"), 12 (arguing the Office Action fails to satisfy its initial burden). The Appellants argue that the Examiner has refused to identify "a case where a court finds a 'packet format' to be an abstract idea." App. Br. 11. According to the Appellants, "a 'packet format' or a 'conceptual structure' is not an abstract idea because it is not similar to any concepts that have been identified by the courts as being an abstract idea." Id. at 10. The 3 Appeal2018-002295 Application 13/737,780 Appellants further argue that "the Office Action engages in the very 'broad interpretation' of the abstract idea," thereby eviscerating patent law. Reply Br. 12-13. We are not persuaded. Arguments that the Examiner has not followed the 2014 Interim Guidance do not show why the Examiner has not properly determined that claim 1 is not directed to an abstract idea in accordance with the laws and cases regarding patentable subject matter. In particular, the fact that the Examiner has not provided a case that identifies packet formats to be an abstract idea does not show that the Examiner improperly determined that the claims are directed to an abstract idea. For example, the Appellants provide no argument that the Examiner's analysis does not conform to the framework set out in Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014). Also, the argument that "a 'packet format' or a 'conceptual structure' is not an abstract idea because it is not similar to any concepts that have been identified by the courts as being an abstract idea" (App. Br. 10) does not provide a persuasive reason that the packet format specified in the claims is not an abstract idea. It does not address the Examiner's analysis of the claims and the Examiner's subsequent reasons why the recited elements, including the packet format, warrant the conclusion that the claims are directed to an abstract idea. Thus, we are not persuaded that the Examiner failed to satisfy the initial burden to establish unpatentability of the claims under 35 U.S.C. § 101. Moreover, we are not persuaded that the packet format recited in the claims is not similar to concepts identified by courts as being an abstract idea. According to the Appellants, the claimed packet format relates to 4 Appeal2018-002295 Application 13/737,780 information and how that information is arranged and reduced in the PHY header. See App. Br. 16 (stating that "[r]educing the amount of information carried in the PHY header clearly reduces both network and computational resources (e.g., processor time and memory) required to generate, transmit, and receive packets that include PHY headers" in their arguments that claim 1 is more than an abstract idea). Therefore, we are not persuaded that information and how information is arranged and reduced is not similar to concepts identified as being an abstract idea. See also App. Br. 10 (stating "a 'packet format' or a 'conceptual structure' is not an abstract idea"). The Federal Circuit treats collecting information, which is intangible, "as within the realm of abstract ideas"----even when collection of the information is limited to a particular content. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (for the proposition that information is intangible, citing Microsoft Corp. v. AT&T Corp., 550 U.S. 437,451 n.12 (2007); Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003)); Elec. Power, 830 F.3d at 1353 (for the proposition that collecting information is within the realm of abstract ideas, citing Internet Patents, Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)). Modifying data also can be within the realm of abstract ideas. In Digitech Imaging, the Federal Circuit considered a "process that started with 5 Appeal2018-002295 Application 13/737,780 data, added an algorithm, and ended with a new form of data" and determined that "[ w ]ithout additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible." Digitech Imaging, 758 F.3d at 1351; RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 201 7) ( characterizing the Digitech Imaging claim as a "process that started with data, added an algorithm, and ended with a new form of data"); see Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1296 (Fed. Cir. 2016) (discussing Digitech Imaging). Therefore, we are not persuaded that "a 'packet format' or a 'conceptual structure' is not an abstract idea" as not being "similar to any concepts that have been identified by the courts as being an abstract idea" (App. Br. 10) because "[r]educing the amount of information carried in the PHY header" (id. at 16) can be considered an example of collecting and modifying data----concepts previously found by courts to be abstract. The Appellants next argue that the "alleged abstract idea of a 'packet format' also fails 'to account for the specific requirements of the claims' and 'overgeneralize[ s] the claim[ s]. "' App. Br. 12. The Appellants assert that the Examiner "improperly characterizes the claims at a high level of abstraction and downplays the invention's benefits" and that the "alleged abstract idea ... fails to capture many features and characteristics of the claims." Id. at 12-13 (quoting from Final Action 4--5). We do not agree. The Examiner states "claim 1 is directed to a packet format as specified in the claim." Final Action 3 (emphasis added). Contrary to the Appellants' arguments, the Examiner's use of the phrase "as specified in the claim" indicates that claim 1 has not been overgeneralized or 6 Appeal2018-002295 Application 13/737,780 characterized at a high level of abstraction but instead, takes into account the requirements of the claim. The Appellants do not persuade us that "a packet format as specified in the claim" fails to capture the claimed features and characteristics of claim 1 or the other pending claims. In response to the Examiner's distinction of claim 1 from the claimed subject matter of Enfzsh, the Appellants contend that the "payload" of claim 1 can store any type of data, and thus, "the benefits of the packet described in claim 1 can be used for any type of generalized data transmission" in the same sense as the claimed logic table in Enfzsh "can be used to store any type of received data." App. Br. 14. The Appellants dispute the Examiner's statement that the "subject matter recited in claim 1 only applies to a specific data format." Id. (quoting Final Action 5); see also Reply Br. 10 (arguing "the claimed features would improve any computer or network system"). The Appellants also cannot find any reason why the distinction is relevant. App. Br. 14. The Appellants take issue with the Examiner's comparison with Enfzsh but do not persuade us that, even if the claimed packet format can be used with any type of generalized data transmission, the Examiner's determination that the claims are directed to an abstract idea fail to provide a prima facie case of unpatentability or should be reversed. The Appellants also argue that, "even if the claims are directed to an abstract idea, ... the claims clearly amount to significantly more than the abstract idea itself." App. Br. 14. The Appellants contend that the following recitations are "'more than the idea of 'a packet format"': "a processor configured to prepare a packet comprising a payload, a PHY header, and an aggregated media access control service data unit 7 Appeal2018-002295 Application 13/737,780 (A-MSDU) having a plurality ofMSDU subframes and to insert an indication of an end of the A-MSDU in the A-MSDU," "each MSDU subframe header comprising a delimiter signature field" ' "each delimiter signature field configured to indicate a difference between a first MSDU subframe delimiter signature field and a second MSDU subframe delimiter signature field," "no values contained in the PHY header are configured to indicate a length of the A-MSDU to reduce an amount of information carried in the PHY header," and "a transmitter configured to transmit the packet wirelessly to a receive." Id. at 15-16. The Appellants assert that these features taken together are examples of what constitutes significantly more than a mere abstract idea according to the 2014 Interim Guidance. Id. at 16. However, as discussed above, the Examiner determines that the claims are directed to a packet format as specified in the claims, which takes into account these features, and thus, an abstract idea. See Final Action 3---6. The Examiner also determines, and the Appellants do not persuasively dispute, that the recited processor and transmitter perform functions that would be done by conventional processor and transmitter. See id. at 3--4. We agree with the Examiner's statement that the "mere application of the abstract idea to a conventional apparatus does not transform the abstract idea into patentable subject matter" because the Examiner determines that the packet format as specified in the claims are being applied to conventional components. See id. at 4. 8 Appeal2018-002295 Application 13/737,780 The Appellants also argue that the Examiner ignores the benefits or improvements of the claimed invention by stating that the recitation "no values contained in the PHY header are configured to indicate a length of the A-MSDU to reduce the amount of information carried in the PHY header" "constitutes little more than a rule for how to populate data" and "fruit of the imagination." App. Br. 16-17 (quoting Final Action 4); see also Reply Br. 4--8 (arguing similarly). The Appellants contend the recitation is not a rule for populating fields, but the realized improvement. App. Br. 17 ( citing Spec. ,r 6); see also Reply Br. 8-9. The Appellants also contend that the characterization "fruit of the imagination" "has nothing to do with 35 U.S.C. § 101 or abstract ideas" because all inventions can be characterized as such. App. Br. 17; see also Reply Br. 4. The Appellants further contend that they must speculate as to what the Examiner means by "fruit of the imagination" and thus, are deprived of sufficient notice and ability to respond effectively to the Office Action. Reply Br. 11-12. These arguments do not persuade us of an error in the Examiner's analysis of the claims. Even if we were to agree that the benefits and improvements have not been considered and that "fruit of the imagination" is not part of the § 101 analysis, for the reasons discussed above, we would still determine that the Examiner's analysis is in accordance with relevant laws and cases regarding eligible subject matter. The Examiner determines, and we find no reversible error, that the claims are directed to an abstract idea, in particular the packet format as recited by the claims, and the application of that abstract idea to conventional apparatus does not transform the abstract idea into patentable subject matter. See Final Action 3---6. 9 Appeal2018-002295 Application 13/737,780 DECISION For the above reasons, the Examiner's rejection of claims 1-8, 10-23, 25-38, 40-53, and 55---64 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)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation