Ex Parte Caputo et al

Board of Patent Appeals and Interferences

Jun 17, 2009

10463482 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBINSON GAUDINO CAPUTO and
LUIZ GUSTAVO VARELLA FIGUEIREDO
____________

Appeal 2008-004868
Application 10/463,482
Technology Center 2100
____________

Decided:1 June 18, 2009
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and JAY P.
LUCAS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-28 and 30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Invention
According to Appellants, the invention relates to methods of
generating complex waveforms and signal modulation techniques for use in
applications such as communications, signal processing, and manufacturing.
Based on manipulation of input parameters to a unique function, nearly any
desired output waveform can be mathematically generated via a single
mathematical expression. (Spec. 9:15-23.)

Representative Claim
1. A method of generating a waveform having a defined output value
for all input values, the waveform including at least one operational input
window wherein the output value of said waveform is substantially equal to
a base value for substantially all input values outside said at least one
operational window and the output value of the waveform is determined by a
window function for substantially all input values within said at least one
operational window, the method comprising the steps of:

providing a continuous function that includes said operational window
function, a position locus parameter for determining a position of said
operational window, an operational window aperture parameter for
determining a width of said operational window, and a slew rate parameter
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for determining the slope of transition rate for output values of said function
from said base value to a value based on said operational window function
for input values near at least one edge of said operational window; and

selecting said operational window function and said position locus
parameter, said operational window aperture parameter and said slew rate
parameter to achieve a desired waveform.

Examiner’s Rejection and Claim Status
Claims 1-28 and 30 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claim 29 stands allowed. The Examiner withdrew a § 101 rejection
of the claim in the Answer.

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).

ANALYSIS
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. “[N]o patent is available for a
discovery, however useful, novel, and nonobvious, unless it falls within one
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of the express categories of patentable subject matter of 35 U.S.C. § 101.”
Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483 (1974).
If claim 1 is directed to statutory subject matter, the claim falls within
the statutory class of “process.” “A process is . . . an act, or a series of acts,
performed upon the subject-matter to be transformed and reduced to a
different state or thing.” Cochrane v. Deener, 94 U.S. 780, 788 (1877).
“‘Transformation and reduction of an article “to a different state or thing” is
the clue to the patentability of a process claim that does not include
particular machines.’” Diamond v. Diehr, 450 U.S. 175, 184 (1981)
(quoting Gottschalk v. Benson, 409 U.S. 63, 70 (1972)).
Our reviewing court recently held that the “useful, concrete, and
tangible result” inquiry, first set forth in In re Alappat, 33 F.3d 1526, 1544
(Fed. Cir. 1994) (en banc), is inadequate to determine whether a claim is
patent-eligible under § 101. See In re Bilski, 545 F.3d 943, 959-60 (Fed.
Cir. 2008) (en banc). The law has thus been clarified such that, contrary to
Appellants’ contention at page 25 of the Appeal Brief, “utility” is not the
only inquiry to be made for patentability purposes.
The Supreme Court’s “machine-or-transformation test, properly
applied, is the governing test for determining patent eligibility of a process
under § 101.” Id. at 956. “A claimed process is surely patent-eligible under
§ 101 if: (1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing.” Id. at 954.
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Claim 1 fails the first branch of the “machine-or-transformation test.”
The claim does not recite, or require, that the steps of “providing” a function
and “selecting” a function and a parameter be performed on, or by, a
particular machine or apparatus. The claim does not require that the steps be
performed on any machine or apparatus.
Appellants submit, however, it is not Appellants’ “position” that the
steps “may be performed in the absence of a processing or computing
device.” (Reply Br. 4.) An unspecified “processing” or “computing” device
performing the claimed algorithm is not sufficient, in our view, to tie the
claimed process to a “particular” machine or apparatus.
Claim 1 also fails the second branch of the “machine-or-
transformation” test. The claim does not contain or require an article that is
transformed and reduced “to a different state or thing.” See Diehr, 450 U.S.
at 184.
We observe, first, that claim 1 does not involve the transformation of
any physical object or substance. However, that does not end the
“transformation” inquiry.
In Bilski, our reviewing court identified a circumstance in which
manipulating an electronic signal representative of a particular physical
object or substance served as a transformation of a particular “article” to a
“different state or thing.” In particular, the electronic transformation of data
representing physical and tangible objects (the structure of bones, organs,
and other body tissues) into a particular visual depiction of a physical object
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on a display was considered a transformation sufficient to render a claimed
process patent-eligible. See Bilski, 545 F.3d at 962-63 (discussing In re
Abele, 684 F.2d 902, 908-09 (CCPA 1982)).
In contrast, a broad independent claim reciting a process of
graphically displaying variances of data from average values, that did not
specify any particular type or nature of data, nor how or from where the data
was obtained or what the data represented, was held non-statutory. See
Bilski, 545 F.3d at 962; Abele, 684 F.2d at 909.
So long as the claimed process is limited to a practical
application of a fundamental principle to transform specific
data, and the claim is limited to a visual depiction that
represents specific physical objects or substances, there is no
danger that the scope of the claim would wholly pre-empt all
uses of the principle.

Bilski, 545 F.3d at 963.
As we have noted, instant claim 1 does not require that the steps be
performed by a machine; as such, there is no electronic transformation of
data. The claim purports a “method of generating a waveform,” but requires
no output “waveform.” The final step of the claim recites selecting a
function and parameters “to achieve a desired waveform,” which represents
an intended use without a resulting output.
Moreover, even if a resultant waveform were output to a display, the
output waveform would not be representative of a particular tangible and
physical object, but merely a visual representation of a mathematically
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generated waveform. The algorithm2 recited in claim 1 is not limited to a
practical application of the fundamental principle to transform specific data,
even if the claim were to require machine implementation of the procedure.
Machine implementation and display of such a data “transformation” would
not appear to represent a patent-eligible process, according to the recent
guidance provided by our reviewing court.
Appellants submit that the Examiner has not identified the
“abstraction” pre-empted by the invention as claimed (Reply Br. 4),
although Appellants’ remarks seem to indicate otherwise (see id.).
In any event, the inquiry into whether a given claim would pre-empt
all uses of a fundamental principle (i.e., law of nature, natural phenomenon,
or abstract idea) is “hardly straightforward.” Bilski, 545 F.3d at 954; see
also id. at 952 n.5. However, the Supreme Court’s “machine-or-
transformation” test determines “whether a process claim is tailored
narrowly enough to encompass only a particular application of a
fundamental principle rather than to pre-empt the principle itself.” Id. at
954. As claim 1 fails the “machine-or-transformation” test, the claim pre-
empts a fundamental principle, rather than being limited to a particular
application of the principle.
We therefore are not persuaded of error in the rejection of claim 1,
and sustain the rejection. We have decided the appeal on the basis of claim

2 An algorithm is defined as a procedure for solving a given type of
mathematical problem. See Gottschalk v. Benson, 409 U.S. 63, 70 (1972).
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1 alone because Appellants did not rely, in the Appeal Brief, on the
particulars of any claim in response to the rejection. We have not
considered Appellants’ untimely attempt at arguing claims separately in the
Reply Brief. However, it appears that our analysis (and result) with respect
to claim 1 would apply equally to the other claims having the recitations
pointed out by Appellants in the Reply Brief.

DECISION
The rejection of claims 1-28 and 30 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter 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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