Ex Parte Carvalho et al

Patent Trial and Appeal Board

Jul 6, 2016

12283652 (P.T.A.B. Jul. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/283,652 09/15/2008
45851 7590 07/08/2016
Treyz Law Group
870 Market Street, Suite 984
San Francisco, CA 94102
FIRST NAMED INVENTOR
Neville Carvalho
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.
A02891 8429
EXAMINER
FOTAKIS, ARISTOCRATIS
ART UNIT PAPER NUMBER
2633
NOTIFICATION DATE DELIVERY MODE
07/08/2016 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):
docket@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEVILLE CARVALHO, ALLAN THOMAS DAVIDSON,
ANDY TURUDIC, BRUCE B. PEDERSEN, DAVID W. MENDEL,
KAL YAN KANKIPATI, MICHAEL MENGHUI ZHENG,
SERGEY SHUMARA YEV, SEUNGMYON PARK, TIM TRI HOANG,
and KUMARA THARMALINGAM
Appeal2015-001076
Application 12/283,652
Technology Center 2600
Before JEAN R. HOMERE, JESSICA C. KAISER, and SHARON PENICK,
Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 4--14, 16-18, 24--28, 30-36, and 39.2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is Altera Corp. (App.
Br. 2.)
2 The Examiner indicated claims 19-23 are allowable. (Final Act. 12.)
Claims 2, 3, 15, 29, 37, and 38 have been canceled. (App. Br. 2.) Although
the Final Office Action lists claim 29 as pending (Final Act. 1 ), Appellants
canceled that claim in their Amendment dated May 24, 2013.
Appeal2015-001076
Application 12/283,652
EXEMPLARY CLAIMS
Claims 1 and 14 are exemplary and are reproduced below:
1. A transceiver system comprising:
a word aligner, wherein each word of a plurality of words
aligned by the word aligner has a plurality of bits and the word
aligner aligns the plurality of words to a word boundary; and
a bit slipper coupled to the word aligner;
wherein the bit slipper receives information regarding
word alignment from the word aligner, further wherein the bit
slipper slips bits in such a way so that total delay due to word
alignment by the word aligner and bit slipping by the bit slipper
is constant for all phases of a recovered clock signal.
14. A method comprising:
aligning words to a desired word boundary, wherein each
of the words has a plurality of bits;
receiving from a word aligner, by a bit slipper, information
regarding the aligning; and
slipping bits of the words, wherein total delay due to the
aligning and the slipping is constant for all phases of a recovered
clock signal,
wherein the aligning and the slipping are performed by a
transceiver system.
REJECTIONS
The Examiner has rejected claims 14 and 16 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. (Final Act. 2-3.)
The Examiner has rejected claims 1, 4, 5, 12-14, 16, and 39 under 35
U.S.C. § 102(e) as being anticipated by Cory (US 7,913,014 Bl; issued Mar.
22, 2011). (Final Act. 3-5.)
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Application 12/283,652
The Examiner has rejected claims 10 and 11under35 U.S.C. § 103(a)
as being unpatentable over Cory and Appellants' Admitted Prior Art
("AAP A"). (Final Act. 6.)
The Examiner has rejected claims 6-9, 17, 18, 24--28, and 33-35
under 35 U.S.C. § 103(a) as being unpatentable over Cory and Moyal (US
6,744,323 Bl; issued June 1, 2004). (Final Act. 7-12.)
ANALYSIS
Statutory Subject Matter
The Examiner rejected claims 14 and 16 under 35 U.S.C. § 101
because the Examiner found those claims were directed to an ineligible
abstract idea. (Final Act. 3.) The Examiner finds that claim 14 is "a mere
statement of a general concept," and that its recitation of a "transceiver
system," a "recovered clock signal," and the functions of aligning and
slipping are insufficient to make the claim patent eligible. (Id. at 13; Adv.
Act. 3; see also Ans. 2-6.) Specifically, the Examiner finds claim 14 is
directed to the abstract idea of "bit slipping according to information
regarding the aligning of words." (Ans. 3.) Appellants argue the Examiner
erred in finding claims 14 and 16 are directed to an abstract idea. (App. Br.
6-9; Reply Br. 1-3.)
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that "this provision
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
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CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014) (internal citation and quotation
omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 132 S. Ct. 1289 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of these concepts." Alice, 134 S. Ct. at 2355. The first
step in the analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts." Id. If so, the second step is to
consider the elements of the claims "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
132 S. Ct. at 1298, 1297). In other words, the second step is to "search for
an 'inventive concept' - i.e., 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."' Id. (brackets in original)
(quoting Mayo, 132 S. Ct. at 1294).
Recently inEnfish, LLCv. Microsoft Corp.,_F.3d_, No. 2015-1244,
2016 WL 2756255, at *4 (Fed. Cir. May 12, 2016), the Federal Circuit
explained that "directed to" under step one of the Alice framework, "applies
a stage-one filter to claims, considered in light of the specification, based on
whether 'their character as a whole is directed to excluded subject matter."'
(internal citation omitted). The Federal Circuit further explained that
improvements in computer-related technology, including software
improvements, are not inherently abstract, and thus, it is "relevant to ask
whether the claims are directed to an improvement to computer functionality
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Application 12/283,652
versus being directed to an abstract idea, even at the first step of the Alice
analysis." Id. Specifically, the Federal Circuit differentiated between claims
that focus on an improvement in computer capabilities and claims that focus
on an abstract idea "for which computers are invoked merely as a tool." Id.
at *5. In Enfzsh, the Federal Circuit determined that the claimed self-
referential database table was directed to an improvement in the functioning
of a computer and not "a situation where general-purpose computer
components are added post-hoc to a fundamental economic practice or
mathematical equation." Id. at *7-8. Thus, the court determined that the
claims at issue were not directed to an abstract idea and therefore the claims
were patent eligible under 35 U.S.C. § 101. Id.
Here, the methods of claims 14 and 16 relate to latency uncertainty
reduction in a transceiver system (i.e., a constant total delay due to word
aligning and bit slipping in claim 14 and a total delay of zero in claim 16).
The Specification explains that receiver 110 includes deserializer 113 to
convert incoming serial data to parallel data. (Spec. i-f 5, Fig. 1 (identified as
Prior Art).) Such a system can also use a divider 116 to produce a recovered
clock with N phases, and the deserializer also produces N different word
orderings. (Spec. i-f 6, Fig. 2 (identified as Prior Art).) Word aligner 120
receives the parallel words and aligns them to a desired word boundary.
(Spec. i-f 7, Fig. 1.) The Specification teaches, however, that doing so
introduces "a Deserializer/Word aligner latency uncertainty." (Spec. i-f 7.)
In one embodiment, the Specification solves this problem of latency
uncertainty by using a bit slipper so that the total delay from word aligning
and bit slipping is constant for all recovered clock phases, which "allows for
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having a fixed and known latency between the receipt and transmission of
bits for all phases of parallelization by the deserializer." (Spec. i-f 16.)
Because Enfish issued after this appeal was docketed, the Examiner
did not have the opportunity to evaluate claims 14 and 16 under the
principles set forth in that case or the Memorandum to the Patent Examining
Corps, dated May 19, 2016 and titled "Recent Subject Matter Eligibility
Decisions (Enfish, LLC v. Microsoft Corp. and TL! Communications LLC v.
A. V. Automotive, LLC)" (available at http://www.uspto.gov/sites/
default/files/ documents/ieg-may-2016_enfish_memo. pdt). Nevertheless, we
determine that claims 14 and 16, like the claims in Enfish, are directed to an
improvement in the functioning of a computer (i.e., eliminating word aligner
latency delay uncertainty) and not to the addition of general-purpose
computer components to a fundamental economic practice or mathematical
equation. Accordingly, we conclude that claims 14 and 16 are not directed
to an abstract idea under the first step of the Alice analysis, and we do not
sustain the Examiner's § 101 rejection of claims 14 and 16.
Anticipation
Appellants argue the Examiner erred in finding Cory discloses "the bit
slipper slips bits in such a way so that total delay due to word alignment by
the word aligner and bit slipping by the bit slipper is constant for all phases
of a recovered clock signal," as recited in claim 1. (App. Br. 9-11.)
Specifically, Appellants contend Cory discloses its total delay is variable (id.
at 9) and that the Examiner misconstrued "total delay" as "the overall final
latency after bit slipping" instead of "total delay due to word alignment by
the word aligner and bit slipping by the bit slipper" as claimed (id. at 9-10).
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Appellants further contend Cory's disclosure that "slip control block 302
issues a toggle signal to data alignment block 216, which toggles the data
alignment of data bytes received from deserializer 208 between one of two
possible settings, i.e., 0 UI or 1 UI," refers to the delay introduced by data
alignment block 216 and not to the recited "total delay." Id. at 10 (quoting
Cory 7:66-8:2); see also id. (arguing the disclosure at Cory 11 :65----67, 12: 1-
2, 34--40 does not disclose a constant total delay of 0 UI (unit intervals) but
rather a latency of 0 or 1 UI); id. at 10-11 (arguing that the disclosure at
Cory 12:29 shows the "latency" in Cory is not the recited "total delay" but
rather the latency generated by data alignment step 806).
Figure 3 of Cory is reproduced below:
' ' ..
FIG.3
Figure 3 of Cory, reproduced above, depicts a transceiver that
implements a phase rotation granularity of 1 UL (Cory 7:56-61.) The
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Examiner finds that deserializer 2083 discloses the recited "word aligner"
and data alignment 216 discloses the recited "bit slipper." (Ans. 7.) The
Examiner also clarifies that "total delay" was interpreted as "the overall final
latency caused by the word aligning and bit slipping." (Id.) The Examiner
further finds the delay introduced by data alignment block 216 is "the delay
needed to correct the delay introduced by the deserializer 208 (word aligner)
to a total delay ofOUI or lUI." (Id. at 8.) The Examiner further finds "Cory
teaches that the latency is OUI or 1 UI according to the selected clock
( deserialization clock, Fig. 3), where each clock signal by definition has a
plurality of phases." (Id.; see also Final Act. 3--4 (citing Cory 7:9-14, 8: 1-
2, 32-35); Adv. Act. 5 (citing Cory 11:65-12:2, 12:34--40).)
Appellants argue the Examiner's interpretation of Cory is erroneous
because it is not supported by evidence and is inconsistent with Cory's
disclosure. (Reply Br. 3--4.) In particular, Appellants argue Cory's
disclosure that "data alignment block 216 ... toggles the data alignment of
data bytes received from deserializer 208 between one of two possible
settings, i.e., 0 UI or 1 UI" means that the data alignment by data alignment
block 216 is 0 UI or 1 UI, not that the "total delay" is 0 or 1 UL (Id. at 4
(citing Cory 7:67-8:2).)
We are persuaded by Appellants' arguments. The portions of Cory
relied upon by the Examiner do not disclose that "total delay due to word
alignment by the word aligner and bit slipping by the bit slipper is constant
for all phases of a recovered clock signal." In particular, we agree with
3 We understand the Examiner's reference to item 218 (Ans. 7) to be a
typographical error. (See Ans. 8 (referring to deserializer 208 as the recited
"word aligner"); Final Act. 3 (same); Adv. Act. 5 (same).)
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Appellants (App. Br. 10; Reply Br. 3) that "slip control block 302 issues a
toggle signal to data alignment block 216, which toggles the data alignment
of data bytes received from deserializer 208 between one of two possible
settings, i.e., 0 UI or 1 UI" (Cory 7:66-8:2) refers to the delay introduced by
data alignment block 216 (i.e., 0 or 1 UI) and not to the recited "total delay."
In addition, the Examiner cites portions of Cory that discuss checking
the latency after data alignment block 216 and reducing the latency if its
magnitude is an unacceptable level. (Adv. Act. 5 (citing Cory 11 :65-12:2,
12:34--40).) However, the Examiner has not adequately shown how a
procedure that reduces latency to an acceptable level discloses that the
latency is constant for all phases of a recovered clock signal, as recited in
claim 1. Thus, we find the Examiner has not adequately shown that Cory
discloses "total delay due to word alignment by the word aligner and bit
slipping by the bit slipper is constant for all phases of a recovered clock
signal."
For the reasons discussed above, we do not sustain the Examiner's
§ 102( e) rejection of claim 1, independent claim 14 which recites a
substantially similar limitation (App. Br. 12; Final Act. 3), and dependent
claims 4, 5, 12, 13, 16, and 39.
Obviousness
The Examiner has rejected claims 10 and 11under35 U.S.C. § 103(a)
as being unpatentable over Cory and AAP A. (Final Act. 6.) Claims 10 and
11 depend directly or indirectly from claim 1, and AAP A as applied by the
Examiner (id.) does not cure the deficiency in the Examiner's rejection of
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claim 1 as discussed above. Accordingly, we do not sustain the Examiner's
§ 103 rejection of claims 10 and 11.
In addition, the Examiner has rejected claims 6-9, 17, 18, 24--28, and
33-35 under 35 U.S.C. § 103(a) as being unpatentable over Cory and Moyal.
(Final Act. 7-12.) Claims 6-9 depend directly or indirectly from claim 1,
and claims 17 and 18 depend from claim 14. The additional reference
(Moyal) as applied by the Examiner (Final Act. 7-9) in the§ 103(a)
rejection of those claims does not cure the deficiency in the Examiner's
rejection of claims 1 and 14. Accordingly, we do not sustain the Examiner's
§ 103(a) rejection of claims 6-9, 17, and 18.
Independent claims 24 and 3 3 recite limitations similar to the
limitation of claim 1 discussed above, and in rejecting independent claims
24 and 33, the Examiner relied on the same disclosure in Cory as teaching
those limitations (Final Act. 9). Accordingly, for the reasons discussed
above for claim 1, we do not sustain the Examiner's§ 103(a) rejection of
independent claims 24 and 33, and dependent claims 25-28, 34, and 35.
DECISION
We reverse the Examiner's decision to reject claims 14 and 16 under
35 U.S.C. § 101.
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We reverse the Examiner's decision to reject claims 1, 4, 5, 12-14,
16, and 39 under 35 U.S.C. § 102(e).
We reverse the Examiner's decision to reject claims 6-11, 17, 18, 24--
28, and 33-35 under 35 U.S.C. § 103(a).
REVERSED
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