Ex Parte Mallik et al

Patent Trials and Appeals Board

Apr 25, 2019

14968376 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/968,376 12/14/2015
15757 7590 04/29/2019
Qualcomm /Norton Rose Fulbright US LLP
2200 Ross A venue
Suite 3600
Dallas, TX 75201-7932
FIRST NAMED INVENTOR
Siddhartha Mallik
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.
QLXX.Pl054US/1000209221 3251
EXAMINER
VALLECILLO, KYLE
ART UNIT PAPER NUMBER
2112
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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):
ocpat_uspto@qualcomm.com
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIDDHARTHA MALLIK, TAO LUO, JING JIANG, TINGF ANG
JI, KRISHNA KIRAN MUKKA VILLI, NAGA BHUSHAN, JOSEPH
BINAMIRA SORIAGA, KAMBIZ AZARIAN Y AZDI, PETER GAAL,
JOHN EDWARD SMEE, AND CHIH PING LI
Appeal2018-006565
Application 14/968,376
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, 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 and 6-25, which constitute all the claims
pending in this application. Claim 5 is cancelled. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Qualcomm. App.
Br. 2.
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Application 14/968,376
STATEMENT OF THE CASE
Embodiments of Appellants' invention relate to: "wireless
communication systems, and more particularly, to data encoding and
decoding to reduce the impact of bursty interference in wireless
communication systems." Spec. ,r 2.
Exemplary Claim
1. A method of wireless communication, comprising:
receiving, by a base station, a plurality of data bits;
generating, by the base station, one or more code blocks, each
of the one or more code blocks including one or more
information bits and one or more parity bits, wherein for each
code block the one or more information bits are generated
based, at least in part, on data bits in the received plurality of
data bits, and wherein for each code block the one or more
parity bits are generated based, at least in part, on the one or
more information bits of the code block;
generating, by the base station, one or more parity check code
blocks, each of the one or more parity check code blocks
including one or more information bits, wherein for each parity
check code block the one or more information bits correspond
to information bits of the one or more code blocks, and wherein
each information bit of a parity check code block corresponds
to a different set of information bits of the one or more code
blocks; and
transmitting, by the base station, each of the one or more code
blocks and the one or more parity check code blocks to a
mobile device.
App. Br. 14 (Claims Appendix).
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Rejection 2
Independent claims 1, 13, 16, and 21, and associated dependent claims
2--4, 6-12, 14, 15, 17-20, and 22-25, are rejected under 35 U.S.C. § 101, as
being directed to a judicial exception, without significantly more. See Final
Act. 7-12.
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection under§ 1 OJ of Independent Claims 1, 13, 16, and 21
Issue: Did the Examiner err in rejecting independent claims 1, 13, 16,
and 21, and associated claims 2--4, 6-12, 14, 15, 17-20, and 22-25 that
depend therefrom, under 35 U.S.C. § 101, as being directed to a judicial
exception, without significantly more?
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. Mayo Collaborative Servs. v. Prometheus Labs.,
2 The Examiner withdrew all other previous rejections under 35 U.S.C.
§§112, 102, 103. See Ans. 2.
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Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). 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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diehr, 450 U.S. at 193); "tanning,
dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1854)));
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 U.S. at 187; see also
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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 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
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.
USPTO Patent Subject Matter Eligibility 2019 Revised Guidance
The USPTO recently published revised policy guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised
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Guidance"). Under the 2019 Revised Guidance, we first look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people); 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)). 3
2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. 2019 Revised
Guidance, 84 Fed. Reg. at 54. When the judicial exception is so integrated,
then the claim is not directed to a judicial exception and is patent eligible
under § 101. Id.
Only if a claim: (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. 2019 Revised Guidance,
84 Fed. Reg. at 56; Alice, 573 U.S. at 217-18. For example, we 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
3 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
2. Mental processes-concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
3. Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or
interactions between people (including social activities,
teaching, and following rules or instructions).
According to the 2019 Revised Guidance, "claims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
( abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." 2019 Revised Guidance, 84 Fed. Reg. at 53.
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For example, additional limitations that are indicative of "integration
into a practical application" include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field - see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine - see MPEP § 2106.05(b );
3. Effecting a transformation or reduction of a particular article
to a different state or thing-see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception - see MPEP
§ 2106.05(e).
In contrast, additional limitations that are not indicative of
"integration into a practical application" include:
1. Adding the words "apply it" ( or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely using a
computer as a tool to perform an abstract idea - see MPEP
§ 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception-see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
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The Examiner's Rejection under 35 U.S. C. § 1 OJ
The Examiner concludes independent claims 1, 13, 16, and 21 recite
the abstract idea of mathematical concepts, including encoding and
decoding. See Final Act. 8. The Examiner further determines the claims
amount "to no more than receiving and transmitting [] signals over a
wireless network. These generic computing elements alone do not amount
to significantly more than the judicial exception." Id.
Thus, the Examiner concludes that claims 1--4 and 6-25 are not patent
eligible under 35 U.S.C. § 101. We review de nova and apply the 2019
Revised Guidance in this Decision.
Step 1 - Statutory Subject Matter Classes
In Step 1 we consider whether the claimed subject matter falls within
the four statutory categories of patentable subject matter identified by 35
U.S.C. § 101: process, machine, manufacture, or composition of matter.
We note that all claims 1--4 and 6-25 before us on appeal are method
(process) claims. 4
Thus, the claimed invention recites a process including a number of
steps. Accordingly, the claimed invention falls within the "process" subject-
matter category, and is thus statutory, with the exception of a software-only
embodiment ( e.g., software per se, and/or including a signal or carrier wave
modulated with instruction data).
4 See 35 U.S.C. § lOO(b)("The term "process" means process, art, or method,
and includes a new use of a known process, machine, manufacture,
composition of matter, or material.").
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We note Appellants' Specification describes implementing the
instructions in a software-only embodiment:
In one or more exemplary designs, the functions described may
be implemented in hardware, software, firmware, or any
combination thereof. If implemented in software, the
functions may be stored on or transmitted over as one or more
instructions or code on a computer-readable medium.
Computer-readable media includes both computer storage
media and communication media including any medium that
facilitates transfer of a computer program from one place to
another. Computer-readable storage media may be any
available media that can be accessed by a general purpose or
special purpose computer. By way of example, and not
limitation, such computer-readable media can include RAM,
ROM, EEPROM, CD-ROM or other optical disk storage,
magnetic disk storage or other magnetic storage devices, or any
other medium that can be used to carry or store desired
program code means in the form of instructions or data
structures and that can be accessed by a general purpose or
special-purpose computer, or a general-purpose or special-
purpose processor.
Spec. ,r 137 (emphasis added).
To the extent that a broad but reasonable interpretation of Appellants'
claimed invention covers an embodiment that consists of disembodied
software instructions per se, we note that software in itself, with no
structural tie to an article of manufacture ( e.g., a medium), machine ( e.g., a
computer), process, or composition of matter, is not patentable subject
matter, because "[a]bstract software code is an idea without physical
embodiment." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
Thus, software per se, or a computer program per se, does not fall
within a statutory class (i.e., disembodied code is not a process, machine,
manufacture, or composition of matter). "The four categories [of§ 101]
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together describe the exclusive reach of patentable subject matter. If a claim
covers material not found in any of the four statutory categories, that claim
falls outside the plainly expressed scope of§ 101 even if the subject matter
is otherwise new and useful." In re Nuijten, 500 F.3d 1346, 1356-57 (Fed.
Cir. 2007). See also MPEP § 2106(I)(iv) (listing examples of claims that are
not directed to one of the statutory categories: "a computer program per se")
(citing Gottschalkv. Benson, 409 U.S. 63, 72 (1972)).
We leave further consideration of this issue to the Examiner in the
event of further prosecution of this application.
Step 2A, Prong 1
The Judicial Exception
Under the 2019 Revised Guidance ( 1 ), we begin our analysis by
identifying specific claim language that recites a judicial exception within
the following categories of abstract ideas: (a) mathematical concepts, (b)
mental steps, and, ( c) certain methods of organizing human activities.
We note claim 1 recites the following "generating" steps which
involve mathematical concepts including the use of parity bits (i.e., an
abstract idea):
generating, by the base station, one or more code blocks, each
of the one or more code blocks including one or more
information bits and one or more parity bits, wherein for each
code block the one or more information bits are generated
based, at least in part, on data bits in the received plurality of
data bits, and wherein for each code block the one or more
parity bits are generated based, at least in part, on the one or
more information bits of the code block; [ and,]
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generating, by the base station, one or more parity check code
blocks, each of the one or more parity check code blocks
including one or more information bits, wherein for each parity
check code block the one or more information bits correspond
to information bits of the one or more code blocks, and wherein
each information bit of a parity check code block corresponds
to a different set of information bits of the one or more code
blocks;
Claim 1 ( emphasis added).
We conclude each "generating" limitation of claim 1, under a broad
but reasonable interpretation, 5 recites mathematical relationships,
mathematical equations and/or mathematical calculations which are
mathematical concepts, i.e., a specific subject matter group that is identified
as an abstract idea under the 2019 Revised Guidance. In particular, these
steps generate code blocks including information bits and parity bits, which
we conclude involve mathematical relationships and calculations on sets of
binary values.
Thus, after applying the 2019 Revised Guidance, and considering the
claim as a whole, we conclude Appellants' claim 1 falls into the category of
mathematical concepts ( an abstract idea). Independent claims 13, 16, and 21
recite similar language of commensurate scope.
We address infra the "receiving ... data bits" and "transmitting ...
code blocks," limitations under Step 2A, prong 2, as insignificant extra-
solution and post-solution activity, respectively. Claim 1.
5 We give the claims their broadest reasonable interpretation consistent with
the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Step 2A, Prong 2
Integration of the Judicial Exception into a Practical Application
Claims 13-15
We conclude independent claim 13 integrates the judicial exception
into a practical application, because the "decoded parity check code
blocks" are positively recited as actually being used to determine when to
correct errors in the "decoded code blocks." Thus, claim 13 effects an
improvement under MPEP § 2106.05(a) in wireless communication
technology that more efficiently corrects for bits dropped due to radio
frequency (RF) interference from other proximate mobile devices, or
neighboring base stations in adjacent cells. See Spec. ,r,r 6, 13.
Therefore, we conclude independent claim 13 is patent eligible and
our analysis for claim 13 ends. Accordingly, we reverse the Examiner's
rejection under 35 U.S.C. § 101 of independent claim 13, and claims 14 and
15, which depend therefrom.
Claims 1--4, 6--12, and 16--25
In contrast, for the reasons which follow, we conclude the generated
mathematical parity data is not positively recited as actually being used in
independent claims 1, 16, and 21, and thus we conclude independent claims
1, 16, and 21 do not integrate the judicial exception into a practical
application. For example, although claim 21 recites "decoding, by the
mobile device, the one or more code blocks," the claim does not require the
"decoding" to be performed using the "parity check code blocks."
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Applying the 2019 Revised Guidance, we address infra the relevant
"practical application" MPEP sections 2106.05(a}-(c) and (e}-(h), seriatim,
for claims 1--4, 6-12, and 16-25:
MP EP § 2106. 05 ( a) "Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field" [R-08.2017]
We consider the question of whether remaining claims 1--4, 6-12, and
16-25 are directed to a specific improvement in the capabilities of the recited
base station or mobile device, or, instead, "a process that qualifies as an
'abstract idea' for which computers are invoked merely as a tool." Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1336 (Fed. Cir. 2016).
In support of the contention that the claims on appeal are not directed
to an abstract idea, Appellants cite McRo, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (Fed. Cir. 2016):
Thus, the relevant question under McRO is whether the present
claims provide an improvement by merely implementing an
existing process on a computer, or whether the claims provide a
distinct process that improves an existing technological process.
Here, the present claims provide a novel, non-obvious, and
thus, distinct process for efficiently transmitting data in bursty
interference conditions. This is strongly suggested by the fact
that the arrangement of features of the present claims does not
represent a previously known process, which is evidenced by
the lack of prior art showing the specific arrangement of the
claimed features. Of course, Appellant notes that the lack of a
prior rejection is not evidence of patentability. But the lack of a
prior art rejection certainly is evidence of a previously unknown
and unconventional process. Thus, the present claims recite a
unique, unconventional, and previously unknown process.
App. Br. 9 (emphasis added).
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As acknowledged by Appellants (id.), the Supreme Court guides:
"[t]he 'novelty' of any element or 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."
Diehr, 450 U.S. at 188-89 (emphasis added).
For the reasons which follow, we do not find persuasive Appellants'
attempt to analogize the claims on appeal to the subject claims considered by
the court in McRO. App. Br. 9-10.
We note the subject claim considered by the McRO court concerned a
method for automatically animating lip synchronization and facial
expressions. McRO, 837 F.3d at 1303. The McRO court concluded the
subject claims did not recite an abstract idea because the computer animation
improved the prior art through the use of rules, rather than artists, to set
morph weights and transitions between phonemes. Id. at 1308. Thus, the
claimed invention in McRO allowed for computer performance of animation
steps that previously had to be performed by human animators. Id. at 1309.
The subject claims in McRO used "limited rules in a process specifically
designed to achieve an improved technological result" over "existing,
manual 3-D animation techniques." Id. at 1316 (emphasis added).
Here, Appellants' claimed invention does not apply positively recited
rules, per se. The invention under appeal merely adapts to a technological
setting ( comprising generic base stations and mobile devices) the known
concept of using parity bits to detect errors. See independent claims 1, 16,
and 21.
Thus, we agree with the Examiner (Final Act. 8, 10-12) that
Appellants' claims merely implement generic base stations and mobile
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devices to perform the recited method steps. We emphasize that McRO also
guides: "[t]he abstract idea exception prevents patenting a result where 'it
matters not by what process or machinery the result is accomplished.'" 837
F.3d at 1312 (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis
added).
Appellants additionally contend the claims provide a technical
solution to a communication system problem: solving transmission loss due
to bursty interference by correcting errors without the need for
retransmission of all the code blocks. App. Br. 5---6.
In support, Appellants urge:
[T]he features of the present claims provide a solution, by
providing a way to enable a wireless system to provide a
transmission with code blocks and parity check code blocks
with information bits corresponding to information bits of the
code blocks. As such, a system implementing the claimed
features would be able to correct errors in the decoded code
blocks using the parity check code blocks without the need for a
retransmission of all the code blocks. See Specification at
[0106].
App. Br. 11-12 (emphasis added).
In reviewing the claims before us on appeal, we note independent
claims 1, 16, and 21 are silent regarding specific limitations directed to an
improved communication system, base station, or mobile device. For
example, claim 1 does not positively recite that the generated blocks which
are subsequently transmitted as data are actually used to perform any
practical application, such as error correction. 6 Moreover, independent
6 See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential)
("[T]he nature of the information being manipulated does not lend
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claims 1, 16, and 21 are silent regarding the argued negative limitation:
"without the need for a retransmission of all the code blocks." App. Br. 11-
12.
Therefore, without more, we conclude Appellants' claimed invention
( claims 1, 16, and 21) does not provide a solution "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks," such as considered by the court in DDR
Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)
( emphasis added).
MPEP § 2106.05(b) Particular Machine
Appellants advance no arguments that the method claims on appeal
are tied to a particular machine. See MPEP § 2106.05(b) "Particular
Machine." Arguments not made are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
MPEP § 2106.05(c) Particular Transformation
Section 2106.05(c) of the MPEP guides: "Another consideration
when determining whether a claim recites significantly more is whether
the claim effects a transformation or reduction of a particular article to a
different state or thing." "[T]ransformation and reduction of an article 'to a
different state or thing' is the clue to patentability of a process claim that
does not include particular machines." Bilski v. Kappas, 561 U.S. 593, 658
(2010) (quoting Benson, 409 U.S. at 70, 175). If such a transformation
exists, the claims are likely to be significantly more than any recited judicial
patentability to an otherwise unpatentable computer-implemented product or
process.").
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exception. However, Bilski emphasizes that although the transformation of
an article is an important clue, it is not a stand-alone test for eligibility. See
MPEP § 2106.05(c).
Here, Appellants advance no arguments in the Briefs that are directed
to the Bilski machine-or-transformation test. To the extent Appellants may
contend the claims on appeal transform data by "generating ... one or more
code blocks ... [and] one or more parity check code blocks" (claim 1), our
reviewing court guides that, if not appropriately limiting, "[t]he mere
manipulation or reorganization of data, however, does not satisfy the
transformation prong." CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) (emphasis added). See also Benson, 409
U.S. at 71-72 (holding that a computer-based algorithm that merely
transforms data by converting BCD [(Binary Coded Decimal)] numerals to
pure binary numerals is not patent eligible).
Given the absence of any argument, and on this record, we are not
persuaded that any of method claims 1--4, 6-12, and 16-25 satisfy the
transformation prong of the Bilski machine-or-transformation test.
MPEP § 2106.05(e) Other Meaningful Limitations
In reviewing the Appeal Brief and Reply Brief, we find Appellants
advance no arguments as to any purportedly "meaningful" claim limitations
under MPEP § 2106.05(e)----Other Meaningful Limitations. Arguments not
made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
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MPEP §2106.05(!) Mere Instructions to Apply an Exception
As discussed above under Step 1 of our analysis, we note Appellants'
Specification (i1 137) describes implementing instructions in a software-
only embodiment. We further note Appellants advance no arguments in the
Briefs under MPEP §2106.05([) specifically contending the claims are more
than merely instructions to implement the abstract idea on a generic
computer, base station, or mobile device. Arguments not made are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
MPEP § 2106.05(g) Insignificant Extra-Solution Activity [R-08.2017]
We note the "receiving" step of claim 1 merely gathers information.
Courts have found such data gathering steps to be insignificant extra-
solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008)
(en bane), ajf'd sub nom Bilski v. Kappas, 561 U.S. 593 (2010)
( characterizing data gathering steps as insignificant extra-solution activity).
Similarly, we conclude the "transmitting" step of claim 1 is merely
post-solution activity. The Supreme Court guides that the "prohibition
against patenting abstract ideas 'cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment' or
[by] adding 'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11
(quoting Diehr, 450 U.S. at 191-92).
MPEP § 2106.05(h) Field of Use and Technological Environment
Appellants advance no specific arguments in the Briefs contending the
claims describe a field of use that limits the abstract idea to a particular
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technological environment, such that there is purportedly no preemption.
Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 1--4, 6--12, and 16--25
For all of the aforementioned reasons, on this record, we are of the
view that Appellants' independent claims 1, 16, and 21, and associated
dependent claims 2--4, 6-12, 17-20, and 22-25, do not operate the recited
generic wireless communications components, namely base stations and
mobile devices, in a manner to achieve an improvement in the technology of
the base stations or wireless devices, or in the technology of wireless
communication. Therefore, on this record, we conclude claims 1--4, 6-12,
and 16-25 do not recite additional elements that integrate the judicial
exception into a practical application.
The Inventive Concept, Step 2B
Independent Claims 1, 16, and 21
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
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The Examiner finds:
the claimed limitations merely recite a known and conventional
use of parity code blocks being used to determine the presence
of error in a code block received from a transmission, The
Examiner finds the generation of parity check code blocks for
detecting error in the received code block is known and
conventional use of parity bits used in error detection/ correction
and thus, cannot be a technological solution to the problem of
preventing inference from transmission of data and removing
the need for retransmission.
Final Act. 3.
In reviewing the prosecution history, we note the Examiner's Final
Action (June 22, 2017) was mailed before Berkheimer v. HP Inc. (881 F.3d
1360 (Fed. Cir. 2018)) was decided on February 8, 2018. However, the
Answer was mailed on April 9, 2018, over a month after the Berkheimer
decision. Having constructive notice of the Federal Circuit Berkheimer
decision, and the April 19, 2018 USPTO Berkheimer Memorandum,7
Appellants make no specific mention of either authority in the Reply Brief,
filed June 6, 2018. Arguments not made are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
However, Appellants contend in the Appeal Brief: "the present
claims do not merely recite a known and conventional encoding and
decoding algorithm, but rather provide for a distinct, novel and non-obvious,
7 See the USPTO April 19, 2018 Berkheimer Memorandum, entitled
"'Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)"' ("USPTO Berkheimer Memorandum").
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process for correcting errors in a data transmission." App. Br. 5 ( emphasis
added).
As discussed above, "[t]he 'novelty' of any element or 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." Diehr, 450 U.S. at 188-89 ( emphasis
added). Our reviewing court further emphasizes that "[ e ]ligibility and
novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016)
(holding that "even assuming" that a particular claimed feature was novel
does not "avoid the problem of abstractness").
Here, we tum to Appellants' Specification for context, and find the
Specification (i1 48) provides non-limiting, exemplary descriptions of
generic mobile devices and base stations that are sufficient to support the
Examiner's finding (Final Act. 3) of the claimed "well-understood, routine,
and conventional" components. 8
8 See e.g., Spec. ,r 48:
A UE 115 [("User Equipment")] may also be referred to by
those skilled in the art as a mobile station, a subscriber station,
a mobile unit, a subscriber unit, a wireless unit, a remote unit, a
mobile device, a wireless device, a wireless communications
device, a remote device, a mobile subscriber station, an access
terminal, a mobile terminal, a wireless terminal, a remote
terminal, a handset, a user agent, a mobile client, a client, or
some other suitable terminology. AUE 115 may be a cellular
phone, a personal digital assistant (PDA), a wireless modem, a
wireless communication device, a handheld device, a tablet
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Further regarding the use of the recited generic base station and
mobile device(s), the Supreme Court has held "the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Alice, 134 S. Ct. at 2358. Our reviewing court
provides additional guidance: See FairWarning IP, LLC v. Iatric Systems,
Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer
elements like a microprocessor or user interface do not alone transform an
otherwise abstract idea into patent-eligible subject matter."); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (claims
reciting, inter alia, sending messages over a network, gathering statistics,
using a computerized system to automatically determine an estimated
outcome, and presenting offers to potential customers found to merely recite
"'well-understood, routine conventional activities'" by either requiring
conventional computer activities or routine data-gathering steps (internal
citation omitted)).
Therefore, on the record before us, Appellants have not shown that
independent claims 1, 16, and 21 (and claims 2--4, 6-12, 17-20, and 22-25
that depend therefrom) add a specific additional limitation beyond the
judicial exception that is not "well-understood, routine, and conventional" in
the field (see MPEP § 2106.05(d)).
In light of the foregoing, we conclude that each of Appellants'
claims 1--4, 6-12, and 16-25, considered as a whole, is directed to a patent-
computer, a laptop computer, a cordless phone, a wireless local
loop (WLL) station, or the like.
( emphasis added).
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ineligible abstract idea that is not integrated into a practical application, and
does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of independent claims 1, 16,
and 21, and associated dependent claims 2--4, 6-12, 17-20, and 22-25,
which depend therefrom.
CONCLUSIONS
The Examiner erred in rejecting claims 13-15 under 35 U.S.C. § 101.
The Examiner did not err in rejecting claims 1--4, 6-12, and 16-25
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
DECISION
We reverse the Examiner's decision rejecting claims 13-15 under
35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1--4, 6-12, and
16-25 under 35 U.S.C. § 101, as being directed to a judicial exception,
without significantly more.
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-IN-PART
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