Ex Parte Liikanen et al

Patent Trial and Appeal Board

Feb 28, 2019

15160322 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/160,322 05/20/2016 Bruce A. Liikanen
10580 7590 03/04/2019
Pritzkau Patent Group, LLC
16162 Olive St
Brighton, CO 80602
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.
SGEN-0001.02/US 9701
EXAMINER
NGUYEN, THIEN DANG
ART UNIT PAPER NUMBER
2111
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
USPTO@Dockettrak.com
mpritz@msn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE A. LIIKANEN, STEPHEN P. VAN AKEN,
GERALD L. CADLONI, JOHN L. SEABURY, and
ROBERT B. EISENHUTH
Appeal2018-004144
Application 15/160,322 1
Technology Center 2100
Before MARC S. HOFF, CARLL. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1 and 2. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appellants' invention is a system and method for multi-level data
encoding, wherein each symbol represents more than one bit of information
in a user data symbol stream. Each symbol is presented as a plurality of bits
where each bit in the plurality of bits is subject to a different probability of
1 Appellants state that the real party in interest is Ovonyx Memory
Technology LLC. Amended App. Br. 2 (filed Jan. 31, 2018).
Appeal2018-004144
Application 15/160,322
error. An error correction procedure is applied based on the different error
probabilities, such that an error correction power for at least one bit of the
plurality of bits is different than another error correction power that is
associated with another one of the plurality of bits. Spec. ,r 6.
Claim 1 is reproduced below:
1. In a system which uses multi-level data encoding where
each symbol of a plurality of user data symbols represents more
than one bit of information in a user data symbol stream for
transfer using a multilevel transmission channel, a controller
compnsmg:
a data transfer section for representing said user data
symbols, in relation to said transfer, in a digital bitwise form such
that each symbol is presented as a plurality of bits where each bit
in the plurality of bits is subject to a different probability of error;
and
an error correction section for applying an error correction
procedure to the plurality of bits, for the digital bitwise form of
each user data symbol that is transferred as part of the symbol
stream, based on the different probability of error that is
associated with each bit in the plurality of bits such that an error
correction power for at least one bit of the plurality of bits is
different than another error correction power that is associated
with another one of the plurality of bits and all the user data
symbols of the user data symbol stream are recoverable subject
to the error correction power to compensate at least for errors
induced by the multilevel transmission channel.
Claims 1 and 2 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter.
Throughout this Decision, we make reference to the Appeal Brief
("App. Br.," filed Jan. 3, 2018), the Reply Brief ("Reply Br.," filed Mar. 7,
2018), and the Examiner's Answer ("Ans.," mailed Feb. 2, 2018) for their
respective details.
2
Appeal2018-004144
Application 15/160,322
ISSUE
Is the claimed invention directed to patent-ineligible subject matter?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 573 U.S. 208,216 (2014) (internal quotation marks and citation
omitted).
In determining whether a claim falls within an excluded category,
we are guided by the Supreme Court's two-step framework, described in
Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed
to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third
party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S.
593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the
basic concept of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and, thus, patent
ineligible, include certain methods of organizing human activity, such as
fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561
U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594--95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
67 (1972)). Concepts determined to be patent eligible include physical
3
Appeal2018-004144
Application 15/160,322
and chemical processes, such as "molding rubber products" (Diamond v.
Diehr, 450 U.S. 175, 191 (1981)); "tanning, dyeing, making water-proof
cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting
Corning v. Burden, 56 U.S. 252, 267---68 (1853))); and manufacturing flour
(Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785
(1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 at 187; see also id. at 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.").
Having said that, the Supreme Court also indicated that a claim "seeking
patent protection for that formula in the abstract ... is not accorded the
protection of our patent laws, ... and this principle cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment." Id. ( citing Benson and Flook); see, e.g., id. at
187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be
deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal citation omitted).
"A claim that recites an abstract idea must include 'additional features' to
4
Appeal2018-004144
Application 15/160,322
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to
transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
5
Appeal2018-004144
Application 15/160,322
ANALYSIS
MEANS PLUS FUNCTION INTERPRETATION
We observe that Appellants present argument in response to the
Examiner's determination that "data transfer section," "error correction
section," and "decoder" should be interpreted to invoke 35 U.S.C. § 112,
sixth paragraph. App. Br. 10. We need not reach this issue in order to
determine whether the Examiner erred in rejecting the claims under § 101.
SECTION 101 REJECTION
Independent claim 1 generally relates to, inter alia, a controller in a
system that uses multi-level data encoding where each symbol of a plurality
of user data symbols represents more than one bit of information. The
controller comprises a data transfer section and an error correction section.
The data transfer section represents user data symbols such that each symbol
is presented as a plurality of bits, each bit in the plurality being subject to a
different probability of error. The error correction section applies an error
correction procedure, such that an error correction power for at least one bit
is different than another error correction power associated with another one
of the plurality of bits.
The Examiner found that the claimed invention - applying an error
correction procedure to a plurality of bits based on the different probability
of error that is associated with each bit, such that an error correction power
for at least one bit is different than another error correction power associated
with another one of the bits - is interpreted as "converting pure data into
encoded data based on an algorithm," as in Benson. Ans. 4 ( emphasis
omitted). The Examiner further found that the limitation "all the user data
symbols of the user data symbol stream are recoverable subject to the error
6
Appeal2018-004144
Application 15/160,322
correction power to compensate at least for errors induced by the multilevel
transmission channel" is interpreted as "the encoded data is recoverable
when errors [are] induced during transmission." Id. ( emphases omitted).
The Examiner concludes that the claimed invention is directed to an abstract
idea of "applying ECC for each bit according [ (sic)] probability of error for
each bit" based on "algorithm for converting binary coded decimal to pure
binary" and "encoding/decoding information" as recited in Benson, which
was found patent ineligible by the Supreme Court. Ans. 4, 11 (internal
quotation marks and citation omitted). The Examiner, thus, essentially
concluded that the claimed invention is directed to the abstract idea of a
mathematical concept. Ans. 4--5.
We do not agree with the Examiner's analogy of the invention under
appeal to that in Benson. Benson concerned a method for converting binary-
coded-decimal (BCD) numerals into pure binary numerals. The claims were
not limited to any particular art or technology, to any particular apparatus or
machinery, or to any particular end use. Benson, 409 U.S. at 64--65. We
find that the steps of the claimed invention - applying an error correction
procedure to a plurality of bits based on the different probability of error that
is associated with each bit, such that an error correction power for at least
one bit is different than another error correction power associated with
another one of the bits - amounts to more than the mere mathematical
concept expressed in Benson of "converting pure data into encoded data
based on an algorithm." Ans. 4 (emphasis omitted). Appellants' claimed
differential error correction corresponds to the Specification's disclosure that
the invention allocates "relatively more parity bits" to "correct errors on data
most likely to have errors," and relatively fewer parity bits to data bits less
7
Appeal2018-004144
Application 15/160,322
likely to have errors. Spec. ,r 60. "In this way, better memory performance
can be achieved with a fixed budget of available parity bits." Spec. ,r 60.
Based on this disclosure, we conclude that the claimed invention recites
more than a mathematical concept, such as was claimed in Benson.
We determine that the Examiner erred in concluding that the claimed
invention is directed to an abstract idea. 2 Accordingly, we do not sustain the
Examiner's 35 U.S.C. § 101 rejection of claims 1 and 2.
CONCLUSION
The claimed invention is not directed to an abstract idea.
The Examiner's decision to reject claims 1 and 2 under 35 U.S.C.
§ 101 is reversed.
REVERSED
2 Because we conclude that the claimed invention is not directed to an
abstract idea, we need not reach Appellants' arguments concerning step 2 of
the Alice analysis.
8