Ex Parte Lehane et al

Patent Trial and Appeal Board

Nov 20, 2018

14578198 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/578,198 12/19/2014 Andrew Robert Lehane
126187 7590 11/23/2018
Keysight Technologies, Inc.
In care of: CPA Global
900 Second A venue South
Suite 600
Minneapolis, MN 55402
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.
20140293-01 4670
EXAMINER
KIM, SEOKJIN
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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):
keysightdocketing@cpaglobal.com
notice.legal@keysight.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW ROBERT LEHANE and ANTONY J. A. KIRKHAM
Appeal2017-011728
Application 14/578, 198
Technology Center 2800
Before LINDA M. GAUDETTE, JENNIFER R. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-20. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Independent claims 1 and 12 illustrate the subject matter on appeal
and are reproduced below:
1. An apparatus comprising:
a symbol generator that receives an ordered sequence of
signal values and converts said ordered sequence of signal
1 Appellant is the applicant, Keysight Technologies, Inc., which, according
to the Appeal Brief, is the real party in interest. Appeal Brief filed May 16,
2017 ("App. Br."), 1.
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Application 14/578,198
values into an ordered sequence of symbols, each symbol
having a plurality of states; and
a finite state machine (FSM) that receives said ordered
sequence of symbols and generates a match signal if said
ordered sequence of symbols includes a target sequence
specified by a regular expression that includes a counting
limitation for one of said symbols, wherein
said FSM includes a counting state including a counter
that counts instances of said one of said symbol.
12. A method for operating a data processing system to
detect a signal pattern in a signal comprising an ordered
sequence of signal values, said method comprising:
converting said ordered sequence of signal values and
converts said ordered sequence of signal values into an ordered
sequence of symbols, [2J each symbol having a plurality of
states; and
implementing an FSM in said data processing system,
said FSM receiving said ordered sequence of symbols and
generating a match signal if said ordered sequence of symbols
includes a target sequence specified by a regular expression that
includes a counting limitation for one of said symbols, wherein
said FSM includes a counting state including a counter
that counts instances of said one of said symbol.
App. Br. 9, 11 (Claims Appendix).
The Examiner sets forth the rejection of claims 1-20 under 35 U.S.C.
§ 101 in the Final Office Action entered September 15, 2016 ("Final Act."),
and maintains the rejection in the Examiner's Answer entered July 21, 2017
("Ans.").
2 We note claim 12 appears to include a redundant recitation: "converting
said ordered sequence of signal values and converts said ordered sequence of
signal values."
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DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejection of
claims 1-20 under 35 U.S.C. § 101 for the reasons set forth in the Final
Office Action, the Answer, and below.
For purposes of this appeal, to the extent that Appellant presents
arguments directed to specific claims, we address those claims separately
consistent with 37 C.F.R. § 4I.37(c)(l)(iv).
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Court identified a two-step framework for determining whether claimed
subject matter is judicially excepted from patent eligibility under § 101. In
the first step, "[ w ]e must ... determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S. Ct. at 2355. The second step involves "a 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,'" and is more than "well-understood,
routine, conventional activit[y]." Alice, 134 S. Ct. at 2355, 2359 (first
alteration in original) ( quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The Examiner applies Alice's two-step framework in rejecting the
claims under 35 U.S.C. § 101. Final Act. 5---6. In the first step, the
Examiner determines that the claims are directed to a finite state machine
that receives a sequence of inputs and generates an output according to a
comparison of the input with a condition (target sequence) based on
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mathematical equations or logical relations ( a regular expression that
includes a counting of input symbols). Final Act. 6; Ans. 7-8. The
Examiner finds that a finite state machine is an ideal mathematical
computation model used to design computer programs and sequential logic
circuits, and is conceived as an abstract machine that can be in one of a finite
number of states. Final Act. 6; Ans. 6-7. The Examiner determines that the
claims are therefore directed to an algorithm that implements a finite state
machine-a mathematical computation model-which is similar to other
concepts identified by the Federal Circuit as abstract, such as collecting
information, analyzing it, and displaying certain results of the collection and
analysis. Final Act. 6; Ans. 8 ( citing Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016)).
For the second step of the Alice framework, the Examiner determines
that the additional elements recited in the claims do not amount to
significantly more than the judicial exception (the abstract idea). Final
Act. 6. Specifically, the Examiner determines that the recited symbol
generator constitutes a generic processing element that processes input data,
such as a keyboard input device that generates symbols ( alpha numeric
characters). Id. The Examiner determines that the signal digitizer recited in
claims 8, 9, 19, and 20 is a conventional device available in the art, such as
an analog-to-digital converter. Id. The Examiner concludes that the claims
are therefore directed to non-statutory subject matter. Id.
Claim 1
Appellant argues that paragraph 23 of the Specification provides a
definition of a "finite state machine" that "overrides the normal
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interpretation" of this phrase adopted by the Examiner. App. Br. 5.
Appellant argues that the Examiner's assertion that the definition of "finite
state machine" provided in the Specification is the "ordinary and customary
definition" of this phrase ignores the word "machine." Id.
We give claim terms the broadest reasonable interpretation consistent
with the Specification as it would be interpreted by one of ordinary skill in
the art. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007) (During prosecution of patent applications, "the PTO must give claims
their broadest reasonable construction consistent with the specification ....
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation."). Under the
broadest reasonable interpretation, the words of a claim must be given their
plain meaning, unless the plain meaning is inconsistent with the
Specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Paragraph 23 of Appellant's Specification as originally filed indicates
that "[a]n FSM [finite state machine] is a machine that has a plurality of
states connected by 'directed edges.'" Spec. ,r 23. The Specification
indicates that "[a]t each processing cycle, the FSM moves from its current
state to a next state when a new input word is received by the FSM." Id.
The Specification explains that when the FSM receives an input word having
a value equal to the value corresponding to an edge, and the FSM is in the
state associated with the input side of the edge, the FSM changes to the state
associated with the output side of the edge and then proceeds to process the
next input word. Id. The Specification further explains that certain
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transitions give rise to the FSM reporting a match that includes information
associated with the transition. Id.
This description of a finite state machine provided in Appellant's
Specification corresponds to the description of "Finite State Machines" set
forth in evidence provided by the Examiner to establish the plain and
ordinary meaning of this phrase. Final Act. 2-3 (citing Automata Theory,
https :// cs. stanford. edu/people/ eroberts/ courses/ soco/proj ects/2004-
05/ automata-theory /basics.html). Specifically, the evidence provided by the
Examiner indicates that finite state machines are abstract machines
consisting of a set of states ( a plurality of states), a set of input events (input
words), a set out output events (reporting a match), and a state transition
function ( changing from the state associated with the input side of the edge
to the state associated with the output side of the edge). Id. The Examiner's
evidence further explains that finite state machines are ideal computation
models, or mathematical models of a machine, which can be used in
mathematical problem analysis and recognition of regular languages. Id.
Therefore, contrary to Appellant's arguments, the Examiner does not
ignore the word "machine" in the phrase "finite state machine," but instead
provides evidence indicating that a "finite state machine" is not an actual
machine, but rather is a mathematical model of a machine. In addition, the
description of a "finite state machine" provided in Appellant's Specification
corresponds to the plain and ordinary meaning of this phrase, contrary to
Appellant's arguments.
Claim 1 recites a finite state machine that receives an ordered
sequence of symbols and includes a counting state having a counter that
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counts instances of a particular symbol. Claim 1 recites that the finite state
machine generates a match signal if the ordered sequence of symbols
includes a target sequence specified by a regular expression that includes a
counting limitation for the counted symbol. Claim 1 is therefore directed to
the abstract idea of an algorithm for manipulating or analyzing data or
information ( an ordered sequence of symbols) to generate additional data or
information (a match signal indicative of a target sequence that meets a
counting limitation). Digitech Image Techs., LLC v. Elecs. 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.");
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093 (Fed. Cir.
2016) ( explaining that abstract ideas include collecting information and
analyzing that information "by steps people go through in their minds, or by
mathematical algorithms"); Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1146-47 (Fed. Cir. 2016) ("[W]e continue to 'treat[] 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."' (second alteration in original) (citation omitted));
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340-
41 (Fed. Cir. 201 7) ( organizing, displaying, and manipulating data is an
abstract idea).
Appellant does not dispute the Examiner's finding that the symbol
generator recited in claim 1, which receives an ordered sequence of signal
values and converts the ordered sequence of signal values into an ordered
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sequence of symbols in which each symbol has a plurality of states,
constitutes a generic processing element. Compare Final Act. 6, with App.
Br. 3-7. Accordingly, claim 1 is directed to converting gathered data into a
different form of data using a generic processing element, and analyzing the
converted data to generate new data or information----corresponding to a
mathematical algorithm. The features of claim 1, considered individually
and as an ordered combination, therefore, do not constitute an inventive
concept that transforms the abstract idea into a patent-eligible application of
the abstract idea. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715-16 (Fed. Cir. 2014) (holding the claims insufficient to supply an
inventive concept because they did not "do significantly more than simply
describe [the] abstract method," but rather are simply "conventional steps,
specified at a high level of generality" (quoting Alice, 134 S. Ct. at 2357));
In re Bilski, 545 F.3d 943,963 (Fed. Cir. 2008) (en bane) (characterizing
data gathering steps as insignificant extra-solution activity).
We accordingly sustain the Examiner's rejection of claim 1 under
35 U.S.C. § 101.
Claim 12
Appellant argues that the "claims relate to a data processing system
executing a software system that implements the recited FSM together with
a symbol generator that receives an ordered sequence of signal values and
converts that ordered sequence into an ordered sequence of symbols." App.
Br. 6. Appellant contends that the "invention improves the ability of a data
processing system to provide real-time triggering to an apparatus that views
an incoming signal based on patterns in the incoming signals," which "is
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clearly an improvement in a technological field" that falls under Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Id.
The inquiry under Enfish is whether claim 12 is directed to a method
that improves the relevant computing technology, or is instead directed to a
process that is itself an abstract idea, and merely invokes generic processes
and machinery. Enfish, 822 F.3d at 1335-36 (The first step of Alice
considers whether the "focus of the claims is on the 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."). The data processing system recited in claim 12 is used as a tool to
implement the finite state machine, as explained in Appellant's
Specification. Specifically, the Specification indicates that the
FSM of the present invention is preferably implemented in
special purpose hardware to provide the speed needed to
implement a real-time trigger for a high speed oscilloscope or
similar instrument. However, embodiments could be
implemented on general purpose data processing systems if the
speed of the incoming data stream was sufficiently low.
Spec. ,r 63.
Thus, the data processing system recited in claim 12 acts as a tool to
implement the finite state machine and carry out the recited algorithm.
Contrary to Appellant's arguments, unlike the situation in Enfish where the
claims were directed to a specific improvement to computer functionality,
claim 12 recites "a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfish, 822 F.3d at 1336.
Although Appellant asserts that the method of claim 12 improves the
ability of a data processing system to provide real-time triggering to an
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apparatus that views an incoming signal based on patterns in the incoming
signals, Appellant does not direct us to any factual evidence supporting this
assertion, such as evidence of record comparing Appellant's method to
existing technology. App. Br. 5---6. Unsupported attorney arguments cannot
take the place of evidence necessary to resolve a disputed question of fact.
Schulze, 346 F.2d 600, 602 (CCPA 1965) ("Argument in the brief does not
take the place of evidence in the record.").
Although Appellant further argues that the "specification clearly
recites the benefits of the claimed invention in providing a trigger system for
use in digital oscilloscopes," and the invention is therefore eligible for
patenting under Enfish, Appellant does not direct us to any particular
disclosure in the Specification supporting this assertion. App. Br. 6.
Nonetheless, although the Specification may describe benefits of Appellant's
claimed invention, we find no disclosure in the Specification indicating that
Appellant's invention is directed to an improvement in computer capabilities
and functionality relative to the prior art (unlike the situation in Enfish ), and
Appellant does not direct us to any such disclosure. Id.
We accordingly sustain the Examiner's rejection of claim 12 under
35 U.S.C. § 101.
Claims 2-11 and 13-20
Appellant contends that the Examiner does not meet the "burden of
providing fact-based arguments with respect to the limitation of each claim
as to why the additional limitations do not rescue a rejected independent
claim" because claims 2, 6, 8, 9, and 10 "each recite additional hardware"
and "the other dependent claims recite limitations on the FSM itself which
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go beyond the Examiner's definition." App. Br. 7. Appellant's assertions,
however, do not meet the requirements for separate consideration under
37 C.F.R. § 4I.37(c)(l)(iv). Cf In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant.").
We accordingly sustain the Examiner's rejection of claims 2-11 and
13-20 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1-20 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).
AFFIRMED
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