Ex Parte Kim

Patent Trial and Appeal Board

Jun 28, 2018

14871168 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/871,168 09/30/2015
68103 7590 07/02/2018
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Soeng-Hun KIM
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.
0201-0527-4 3984
EXAMINER
DUFFY, JAMES P
ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOENG-HUN KIM
Appeal2017-009668
Application 14/871, 168 1
Technology Center 2400
Before NATHAN A. ENGELS, JAMES W. DEJMEK, and
MICHAEL M. BARRY, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-6 and 10-12. Appellant has canceled claims 7-9. See App. Br. 13.
We have jurisdiction over the remaining pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant identifies Samsung Electronics Co., Ltd. as the real party in
interest. App. Br. 2.
Appeal2017-009668
Application 14/871, 168
STATEMENT OF THE CASE
Introduction
Appellant's disclosed and claim invention relates to "activating
carriers by a terminal or a User Equipment (UE) for which a plurality of
Down-Link (DL) carriers and Up-Link (UL) carriers are configured," such
as in a Carrier Aggregation (CA) configuration. Spec. ,r,r 2, 4.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
1. A method for measurement by a terminal in a wireless
communication system supporting carrier aggregation, the
method comprising:
receiving, from a base station, a measurement interval for
a secondary cell in a deactivated state;
acqmnng a measurement period based on the
measurement interval; and
measuring a signal of the secondary cell in the deactivated
state, based on the measurement period,
wherein the measurement period is acquired by
multiplying the measurement interval by a predefined value
greater than 1.
The Examiner's Rejection
Claims 1-6 and 10-12 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 4.
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Application 14/871, 168
ANALYSIS 2
Appellant disputes the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter under 35 U.S.C. § 101. App.
Br. 4--10; Reply Br. 2-6. In particular, Appellant argues the claimed
solution provides an improvement in the functional operation of the recited
terminal and base station using the claimed measurement technique. App.
Br. 4--10.
The Supreme Court's two-step framework guides our analysis. Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). Ifa claim
falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture, or composition of matter) then the first
inquiry is whether the claim is directed to one of the judicially recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Alice, 134 S. Ct. at 2355. If so, the second step is to determine whether any
element, or combination of elements, amounts to significantly more than the
judicial exception. Alice, 134 S. Ct. at 2355.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Final Act. 4. In
particular, the Examiner concludes the claims are directed to a mathematical
formula and relationship. Final Act. 4; Ans. 2. The Examiner explains the
2 Throughout this Decision, we have considered the Appeal Brief, filed
March 8, 2017 ("App. Br."); the Reply Brief, filed July 3, 2017 ("Reply
Br."); the Examiner's Answer, mailed May 3, 2017 ("Ans."); and the Final
Office Action, mailed October 21, 2016 ("Final Act."), from which this
Appeal is taken.
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Application 14/871, 168
claims are similar to those held to be patent ineligible in Parker v. Flook,
437 U.S. 584 (1978). Ans. 2-6.
Instead of using a definition of an abstract idea, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea."). As part of this
inquiry, we must "look at the 'focus of the claimed advance over the prior
art' to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Our reviewing court has concluded that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection,
storage, and recognition of data are directed to an abstract idea").
Additionally, the collection of information and analysis of information are
also abstract ideas. Elec. Power, 830 F.3d at 1353. The Supreme Court has
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concluded "if a claim is directed essentially to a method of calculating, using
a mathematical formula, even if the solution is for a specific purpose, the
claimed method is [patent-ineligible subject matter]." Parker v. Flook, 437
U.S. 584, 595 (1978) (quoting In re Richman, 563 F.2d 1026, 1030 (CCPA
1977). Additionally, our reviewing court has concluded, absent additional
limitations, "a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
eligible." Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014).
Here, Appellant's claims are generally directed to measuring a signal
based on a determined measurement period. As claimed, a terminal in a
wireless communication system receives, from a base station, a
measurement interval. The measurement period is determined by
multiplying the received measurement interval by a predefined value greater
than 1. Contrary to Appellant's assertions the claims to not recite, nor are
they directed to, an improvement in the operation of the terminal and base
station. Unlike in Diamond v. Diehr, where claim requirements for using
results of a formula as part of an industrial process did not simply limit use
of the formula to a particular technological environment but instead were a
basis for determining the claim was directed to the industrial process in
compliance with§ 101, see 450 U.S. 175, 177-78, 191-93 (1981), here, the
use of the formula in the claims is simply limited to a particular
technological environment.
The receiving of a measurement interval and measuring a signal are
similar to the collection of data the courts have previously concluded to be
abstract. See Content Extraction, 776 F.3d at 1347; Elec. Power, 830 F.3d at
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1353; Affinity Labs, 838 F.3d at 1258-59 (holding that claims were directed
to an abstract idea where they claimed "the function of wirelessly
communicating regional broadcast content to an out-of-region recipient, not
a particular way of performing that function"). Further, we agree with the
Examiner (Ans. 2--4) that the determination of the measurement period is
simply the mathematical product of the received measurement interval and a
predefined number. Flook, 437 U.S. at 595. Accordingly, we agree with the
Examiner that the claims, as a whole, are directed to a combination of
abstract concepts.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to "significantly more" than
the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72, 77-79 (2012)). The
implementation of the abstract idea involved must be "more than [the]
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (quoting Alice, 134 S. Ct. at 2359) (alteration in original). "Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination." Berkheimer v. HP Inc.,
881 F.3d 1360, 1369 (Fed. Cir. 2018).
The Examiner concludes the claim limitations, individually or as an
ordered combination, do not recite significantly more than the abstract idea
to transform the abstract idea into a patent-eligible application. Final Act. 4;
Ans. 4--7. In particular, the Examiner finds the step of measuring a signal of
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the secondary cell, as recited in the claims, "is merely a recitation of
conventional wireless communication activity." Ans. 5. Appellant asserts
there is no support for the Examiner's finding that "such features were
'conventional wireless communication activity."' Reply Br. 5 ( emphasis
omitted).
As set forth in the Specification, a "measurement means an action in
which the [ user equipment] receives a signal from a target carrier instructed
to be measured and measures strength of the signal at intervals of a specific
period." Spec. ,r 121. Contrary to Appellant's assertion, measuring a signal
of a serving cell or neighbor cell is a conventional wireless communication
activity. See Spec. ,r 123 (describing a purpose of measuring a carrier "is to
detect wireless channel conditions of a serving cell or its neighbor cells" to
make appropriate decisions for UE mobility support, etc.). By using a
specific measurement period, the measured signal strength is filtered. Spec.
,r 123.
Further, to the extent Appellant is asserting a lack of rejection under
Sections 102 and/or 103 suggests the instant claims do not recite well
understood, routine, or conventional activities or , otherwise, recite an
inventive concept (see Reply Br. 3), we are not persuaded. Subject-matter
eligibility under 35 U.S.C. § 101 is a requirement separate from other
patentability inquiries. See Mayo, 566 U.S. at 90 (recognizing that the§ 101
inquiry and other patentability inquiries "might sometimes overlap," but that
"shift[ing] the patent-eligibility inquiry entirely to these [other] sections
risks creating significantly greater legal uncertainty, while assuming that
those sections can do work that they are not equipped to do"); see also
Diamond v. Diehr, 450 U.S. at 188-89 ("[t]he 'novelty' of any element or
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steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter"); Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017)
("[ e ]ligibility and novelty are separate inquiries").
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 101. We also sustain the Examiner's rejection of
independent claims 4 and 10, which recite commensurate limitations and
were not argued separately. See App. Br. 10; see also 37 C.F.R.
§ 4I.37(c)(l)(iv). Additionally, we sustain the Examiner's rejection under
35 U.S.C. § 101 of claims 2, 3, 5, 6, 11, and 12, which depend directly or
indirectly therefrom and were not argued separately.
DECISION
We affirm the Examiner's decision rejecting claims 1-6 and 10-12
under 35 U.S.C. § 101.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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