Ex Parte Wentink et al

Patent Trials and Appeals Board

Sep 24, 2018

13737780 - (D) (P.T.A.B. Sep. 24, 2018)

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.
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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
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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
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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
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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
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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
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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
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(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.
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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.
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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
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