Ex Parte Alpert et al

Patent Trial and Appeal Board

Sep 28, 2017

14086610 (P.T.A.B. Sep. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/086,610 11/21/2013 Charles J. Alpert AUS920130364US1 1077
45992 7590 09/28/2017
IBM CORPORATION (JVM)
C/O LAW OFFICE OF JACK V. MUSGROVE
2911 BRIONA WOOD LANE
CEDAR PARK, TX 78613
EXAMINER
LEE, ERIC D
ART UNIT PAPER NUMBER
2851
MAIL DATE DELIVERY MODE
09/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES J. ALPERT, ZHUO LI, SANI R. NASSIF,
YILIN ZHANG, and YING ZHOU
Appeal 2016-008080
Application 14/086,6101
Technology Center 2800
Before JAMES C. HOUSEL, WESLEY B. DERRICK, and
BRIAN D. RANGE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the maintained final
rejection under 35 U.S.C. § 101 of claims 1-21 as directed to non-statutory
subject matter. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 International Business Machines Corporation is identified as the real party
in interest. Appeal Br. 2.
Appeal 2016-008080
Application 14/086,610
THE INVENTION
The subject matter of the claims on appeal relates to computational
methods, systems, and computer media for computing an output slew in an
integrated circuit design. Specification filed November 21, 2013 (“Spec.”),
Abstract, 1,11. 6-8.
Independent claims 1,8, and 15 are directed to a method, system, and
computer program product, respectively. Claim 1, reproduced below, is
representative.
1. A method of determining the effective capacitance of a
gate in an integrated circuit design comprising:
constructing a n model for the gate which includes an
output resistance and a total capacitance, by executing first
program instructions in a computer system;
reducing the 7i model to first and second parameters
based on the output resistance and the total capacitance, by
executing second program instructions in the computer system;
providing a slew definition which includes a first voltage
level and a second voltage level, by executing third program
instructions in the computer system;
computing a capacitance coefficient as a function of a
slew value of the 7i model for the slew definition based on the
first and second parameters, by executing fourth program
instructions in the computer system; and
calculating the effective capacitance of the gate as the
product of the capacitance coefficient and the total capacitance,
by executing fifth program instructions in the computer system.
Appeal Brief filed December 7, 2015 (“Appeal Br.”), 13.
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DISCUSSION2
We have reviewed the ground of rejection set forth by the Examiner,
Appellant’s arguments, and the Examiner’s response. On this record, we are
unpersuaded that the Examiner erred reversibly in determining that the
claims do not comply with 35 U.S.C. § 101. We add the following.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include an implicit
exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. See, e.g., Alice Corp. Pty Ltd. v. CLSBankInt 7, 134 S. Ct.
2347, 2354 (2014). In Alice, the Court reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs,
Inc., 132 S. Ct. 1289, 1300 (2012), in which it is first determined whether
the claims at issue are directed to one of those patent-ineligible concepts and
then, if it is, to determine whether there are additional elements that
‘“transform the nature of the claim’” into a patent-eligible application of the
otherwise ineligible concepts. Alice, 134 S. Ct. at 2355 (quoting Mayo, 132
S. Ct. at 1297). Claims directed to, or reciting, systems are also ineligible
under § 101 if the hardware recited by the claims add nothing of substance
to the underlying abstract idea. Alice, 134 S. Ct. at 2360.
“Information as such is an intangible” and, regarding the first step of
Alice, our reviewing court has “treated collecting information, including
2 In this discussion, we refer to the Specification, the Final Office Action
mailed July 8, 2015 (“Final Act.”), the Appeal Brief, the Examiner’s Answer
mailed June 28, 2016 (“Ans.”), and the Reply Brief filed August 23, 2016
(“Reply Br.”).
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Application 14/086,610
when limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.” Electric Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citations
omitted). Similarly, the Federal Circuit “treat[s] analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.” Id. at 1354; see also Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
(“Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible.”).
For claims directed to computer software, the issue is whether “the
focus of the claims is on [a] specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016). The claims in
Enfish were determined to be directed to a “self-referential table for a
computer database” that operated differently from conventional databases
and improved the computer’s function. Enfish, 822 F.3d at 1337.
Regarding the second Alice/Mayo step, an inventive concept that
transforms an abstract idea into a patent-eligible invention “may arise in one
or more of the individual claim limitations or in the ordered combination of
the limitations.” BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) {citing Alice, 134 S. Ct. at 2355);
see also Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288
(Fed. Cir. 2016) (contrasting cases in which the claims were determined to
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be eligible from those that were ineligible). In Amdocs, determining the
claims were eligible, the court explained that the claims were tied to a
specific structure of various components and required those components to
operate in an unconventional manner to achieve an improvement in
computer functionality. Amdocs, 841 F.3d at 1300-1301.
Here, the Examiner determines the claims are directed to non-
statutory subject matter because “the claims are directed to the abstract idea
of a mathematical relationship or formula that involves generating a pi
model for a gate, reducing the pi model, providing a slew definition,
computing a capacitance coefficient, and calculating an effective
capacitance” and there is nothing in the additional recited elements that
transform the nature of the claim because they “amount[] to no more than:
(i) mere instructions to implement the idea on a computer, and (ii) recitation
of generic computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional activities
previously known to the pertinent industry.” Final Act. 2-3; Ans. 2-3.
Addressing the claimed method (claims 1-7), the claimed system (claims 8-
14), and the claimed computer-readable storage media including code
segments to be implemented by a computer (claims 15-21), the Examiner
determines that “[vjiewed as a whole, these additional claim element(s) do
not provide meaningful limitation(s) to transform the abstract idea into a
patent eligible application of the abstract idea such that the claim(s) amounts
to significantly more than the abstract idea itself.” Ans. 3 (citing Alice, 134
S.Ct.at2350).
Appellants contend that the claimed invention does not preempt
effective capacitance computation because, in adding what are characterized
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as additional significant limits beyond the abstract concept, the claims leave
open alternative, prior art methods, and do “not prevent all slew-based Ce/f
computations.” Appeal Br. 5-6. Citing claim 1, Appellants contend that “it
can be seen that there are four elements (constructing a n model, reducing
the 7i model, providing a slew definition, and computing a capacitance
coefficient) before the final element of ‘calculating the effective
capacitance.’” Appeal Br. 5-6. Appellants argue the claims “pose ‘no
comparable risk of pre-emption, and therefore remain eligible for the
monopoly granted under our patent laws.’” Appeal Br. 6; see also Reply Br.
2-3.
Appellants’ pre-emption arguments are not persuasive. First, the
abstract idea encompasses what is set forth by Appellants as further elements
as these are steps of the process employing mathematical algorithms
identified as the abstract idea. Second, the question of pre-emption is not
grounded on whether all methods for accomplishing the intended goal are
pre-empted, but rather on whether the claim pre-empts application of the
abstract idea embodied in the claim. It is, accordingly, of no import that the
claims do not read on existing, conventional methods. Third, the absence of
complete pre-emption does not demonstrate patent eligibility because even
though the principle of pre-emption is the basis for the judicial exceptions to
patentability, the concern is fully addressed and rendered moot where the
claim is determined to disclose patent ineligible subject matter under the
two-part framework described in Mayo and Alice. Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). As explained in
Alice, “the prohibition against patenting abstract ideas cannot be
circumvented by attempting to limit the use of [the idea] to a particular
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technological environment.” Alice, 134 S. Ct. at 2538 (internal citations and
quotations omitted).
Appellants contend that the Examiner erred in his “assertion that the
claimed functions are well-understood, routine and conventional activities.”
Appeal Br. 7. Appellants particularly contend that “computing a capacitance
coefficient as a function of a slew value of n model, for a particular slew
definition, based on first and second parameters of the n model, is not a
conventional activity,” and that the Examiner’s assertion is, therefore,
merely conclusory, incorrect, and not supported. Appeal Br. 7. Appellants
further contend that the Examiner errs in maintaining nothing recited in the
claims transforms the claims from an abstract idea because what is recited is
merely conventional, while, at the same time, apparently conceding there are
novel elements. Reply Br. 3.
Appellants’ arguments are not persuasive of reversible error. The
analysis in the second step of the Alice!Mayo framework is not an evaluation
of novelty or non-obviousness, but rather, a search for “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355. Further, the novelty or non­
obviousness of the claims does not necessarily flow from what the claim
adds to the abstract idea. Cf. Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d
1369, 1376 (Fed. Cir. 2016) (“[A] claim directed to a newly discovered law
of nature (or natural phenomenon or abstract idea) cannot rely on the novelty
of that discovery for the inventive concept necessary for patent eligibility.”).
As correctly set forth by the Examiner, even if novel, judicial exceptions are
patent ineligible absent further elements amounting to significantly more
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that transforms them into eligible subject matter. Ans. 12-13 (citing Parker
v. Flook, 437 U.S. 584, 591-92 (1978); Assoc. Mol. Pathology v. Myriad
Genetics, 133 S. Ct. 2107, 2116 (2013)). The relied on steps Appellants
contend are not conventional do not, accordingly, transform the ineligible
subject matter, because they are not something more than, but are, rather,
part of the ineligible concept.
Appellants contend that the claims are directed to a new and useful
end rendering them patent eligible. Appeal Br. 7, 9; Reply Br. 4-5.
Appellants argue that the “[ajccurate simulation of a design is critical to
proper performance of an integrated circuit chip” and that “[t]he Ce/f values
that are computed according to the claims have real-life value to the
integrated circuit designer.” Appeal Br. 7-8; see also Reply Br. 4-5.
Appellants further argue that “the effective capacitance resulting from
Appellants’ claimed invention does indeed have value regardless of the
absence of such a recitation in the claims.” Appeal Br. 9. Appellants
contend that the present invention is analogous to claims determined to be
patent eligible in Research Corp. Techs., Inc., v. Microsoft Corp., 627 F.3d
859 (Fed. Cir. 2010), which claims were “directed to a method for the
halftoning of gray scale images, and incorporated algorithms and formulas
that control masks and halftoning, but applied them in a technique that
improves the generated halftone image.” Appeal Br. 8; see also Reply Br.
4-5. Appellants further contend that “the invention as claimed does not
even meet the first prong of the Mayo test for ineligibility, i.e., it is not
directed to an abstract idea per se.” Appeal Br. 8.
Appellants’ arguments are not persuasive because, however useful the
calculations obtained may be, the claims do not recite the application of
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these calculations to any useful end. Arguments grounded on particular uses
to which the data obtained may be applied but which are not recited in the
claims, fail. Cf. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
(“The invention disclosed in Hiniker’s written description may be
outstanding in its field, but the name of the game is the claim.”). The value
or usefulness is not dispositive of patent eligibility. Parker v. Flook, 437
U.S. 584, 594-95 (1978) (Determining claims to “a new and presumably
better method for calculating alarm limit values,” which were of undisputed
usefulness, to be directed to nonstatuory subject matter.).
Appellants’ reliance on the Research Corporation Technologies
decision is misplaced because the claims at issue in that case (i.e., claims 1
and 2 of US 5,111,310 and claim 11 of US 5,341,228) incorporated
algorithms and formulas that control masks and half-toning, and provided a
functional and tangible improvement in the function of the computer
carrying out the recited method. Research Corp. Techs., 627 F.3d at 868—
69. In contrast, the subject matter of the appealed claims is not directed to
improving the function of the computer carrying out the method, but rather
to the computation of an effective capacitance for a gate of an integrated
circuit. Claim 1. As such, the computer is used to perform a function
commonly performed by generic computers, that is, to conduct a
mathematical operation. Cf. Bancorp Servs., L.L.C. v. Sun LifeAssur. Co. of
Canada (U.S.), 687 F.3d 1266, 1277—8 (Fed. Cir. 2012) (citing Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)) (a computer used “for its most basic
function, the performance of repetitive calculations”). Further, our
reviewing court distinguished Research Corp. Techs, as “requiring] the
manipulation of computer data structures (the pixels of the digital image and
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the mask) and [that] the output of the modified computer data structure (the
halftoned image), was dependent upon the computer components required to
perform it.” Bancorp, 687 F.3d at 1279. Further, contrary to Amdocs and
BASCOM, both discussed above, the instant claims’ limitations give rise to
neither specific structure of components carrying out the method, nor require
those components to operate in an unconventional manner to achieve an
improvement in computer functionality. Amdocs, 841 F.3d at 1300-1301;
BASCOM, 827 F.3d at 1349.
Appellants’ contention that the “invention as claimed ... is not
directed to an abstract idea per se” (Appeal Br. 8) is not persuasive of error
because, as explained by the Examiner, the invention as claimed is directed
to the abstract idea of mathematical formulae and relationships applied to
information providing different information (Final Act. 2-3; Ans. 2-3); see
also Alice, 134 S. Ct. at 2354; Elect. Power Grp., 830 F.3d at 1353;
Digitech, 758 F.3d at 1351. The abstract idea of computing effective
capacitance, as recited by the claims, does not improve the operation of the
computer itself. Enfish, 822 F.3d at 1337.
Appellants contend that additional elements recited in the claims go
beyond the abstract concept of effective capacitance computation and that
the Examiner has failed to explain why recited steps to accomplish the
computation do not add significantly more to the exception. Appeal Br. 9-
10; Reply Br. 5-6. Appellants argue that the Examiner has failed to provide
the necessary analysis why the recited steps, particularly “(i) providing a
slew definition which includes a first voltage level and a second voltage
level, and (ii) computing a capacitance coefficient as a function of the slew
value of the n model for this specific slew definition. ... are part of the
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abstract idea.” Reply Br. 5; see also Appeal Br. 9-10. Appellants further
argue that the Examiner “does not provide any analysis . . . why . . . [these]
elements would be included as part of the abstract idea, beyond saying that
they are mathematical in nature,” and that these elements go beyond the
abstract idea of computing effective capacitance identified by the Examiner.
Reply Br. 5; see also Appeal Br. 10.
Appellants cite SiRF Tech Inc. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010),
included with the July 2015 Update on eligibility, for support of their
position that claims reciting only steps that “are purely mathematical in
nature” and require neither display nor use of an obtained, calculated value
can amount to significantly more than an abstract idea.3 Reply Br. 6.
Appellants’ arguments are not persuasive because the further elements
are merely mathematical formulae and relationships and, as such, constitute
ineligible subject matter. See, e.g., Alice, 134 S. Ct. at 2354. As explained
above, these further elements are, in fact, properly identified aspects of the
abstract idea even if, at a greater level of generality, the abstract idea can
also be identified as effective capacitance computation.
Taking SiRF Tech under consideration, we find Appellants’ reliance
on the decision unavailing. SiRF Tech was decided before Mayo and Alice
and thus did not have the guidance provided by those cases. It is therefore
not clear that SiRF Tech was decided under the proper test. See SiRF Tech,
601 F.3d at 1332. Nonetheless, in SiRF Tech, despite the recited steps being
mathematical in nature, the GPS receiver was considered to place a
3 Appellants’ reliance on SiRF Tech, cited in the July 2015 Update, for the
first time in the Reply Brief, is not timely in the absence of good cause why
it was not included in the Appeal Brief.
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meaningful limitation on the claim because “without a GPS receiver it would
be impossible to generate pseudoranges or to determine the position of the
GPS receiver whose position is the precise goal of the claims.” Id. The
algorithm in SiRF Tech was used to determine the position of the GPS
receiver. The claims in this case are distinguishable because the algorithm
neither receives data from a device analogous to the GPS receiver, nor has
any application to the operation of such a device, but is rather directed to
calculating an effective capacitance, which, if used, is used in designing a
non-extant integrated circuit.
Appellants contend that claimed invention improves the functioning
of a computer in carrying out computation of effective capacitance. Appeal
Br. 10-11. Appellants argue that the “present invention allows for a more
efficient computation of Ceff, i.e., improving computer performance by
decreasing runtime.” Appeal Br. 10. Appellants further contend the
Examiner improperly discounts improved function in the computation of
effective gate capacitance due to the software operating on the computer
system. Reply Br. 6. Appellants again rely on Research Corp. Techs,
contending that the improved function in image generation was all internal
computer computations and that this cannot be reconciled with the
Examiner’s position. Reply Br. 6-7.
Appellants arguments are not persuasive because the operations
recited in the claims are directed to the abstract idea of calculating an
effective capacitance rather than to any improvement in the function of the
computer such as that provided by a self-referential table database. Enfish,
822 F.3d at 1337. For reasons detailed above, Research Corp. is not
contrary to the Examiner’s position because the invention in Research
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Corp., likewise, required manipulation of computer data structures and the
output was dependent on the computer components required to perform the
method. Bancorp, 687 F.3d at 1279. Such manipulation of data structure
and/or dependency on the particular computer components required to
perform the method is lacking for the appealed claims, as it is not disputed
that a general purpose computer running software according to the claims
can be used.
Further, while our reviewing court has recently determined that the
claims to software processes at issue in McRO, Inc. v. Bandai NAMCO
Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), were not directed to
an abstract idea, it does not support the position that the current claims are
not abstract. In determining that the claims were not directed to an abstract
idea, the court in McRO held “the automation [enabled by the rules] goes
beyond merely ‘organizing [existing] information into a new form’ or
carrying out a fundamental economic practice” and that “[t]he claimed
process uses a combined order of specific rules that renders information into
a specific format that is then used and applied to create desired results: a
sequence of synchronized, animated characters.” McRO, 837 F.3d at 1315.
In contrast, the process of the claims on appeal (or that carried out by the
claimed system) is simpler and the steps are recited with greater generality,
with the focus on the purpose of each step, and no further detail is provided
in that the steps are performed “by executing . . . program instructions in the
computer system.” Claim 1. Moreover, the claims here, unlike the claims at
issue in McRO, do not recite any application of the recited calculations to
effect a real-world result. Thus, we are not persuaded that the claims on
appeal are not directed to an abstract idea. Further, also as explained above,
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we determine nothing in the claims transforms the nature of the claims into
patent-eligible application of the otherwise ineligible concepts.
On this record, accordingly, we determine the claims are directed to
the abstract concept of calculating an effective capacitance. Further, also as
explained above, we determine nothing in the claims that transform the
nature of the claims into patent-eligible application of the otherwise
ineligible concepts.
On this record, we sustain the Examiner’s rejection of the claims
under 35 U.S.C. § 101.
DECISION
The Examiner’s decision rejecting claims 1-21 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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