Ex Parte MOROZ et al

Patent Trials and Appeals Board

Apr 8, 2019

15024009 - (D) (P.T.A.B. Apr. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/024,009 03/22/2016 Victor MOROZ
36454 7590 04/10/2019
SYNOPSYS, INC. C/0 HA YNES BEFFEL & WOLFELD LLP
P.O. BOX366
HALF MOON BAY, CA 94019
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.
SYNP 2386-3US 3724
EXAMINER
LIN,ARIC
ART UNIT PAPER NUMBER
2851
NOTIFICATION DATE DELIVERY MODE
04/10/2019 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):
docket@hmbay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICTOR MOROZ, YONG-SEOG OH, STEPHEN LEE SMITH,
MICHAEL C. SHAUGHNESSY-CULVER, and JIE LIU
Appeal2018-006140
Application 15/024,009
Technology Center 2800
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
ALEX S. YAP, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 5-13, and 17-27, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants waived an oral hearing which was scheduled for this appeal on
February 27, 2019.
2 According to Appellants, the real party in interest is Synopsys, Inc. App.
Br. 4.
Appeal2018-006140
Application 15/024,009
STATEMENT OF CASE
Introduction
Appellants' Specification describes a method for measuring "the
effective channel length, which is defined as the average distance from
source junction to drain junction." Spec. ,r 3.
Representative Claim
Representative claim 1 under appeal reads as follows:
1. A system for enhancing simulations of three-
dimensional transistors, the system comprising:
a data processor;
a source of a data set for the data processor, the data set
describing a dopant profile of a three-dimensional transistor
having a semiconductor body, the data set also identifying a
gate length for the transistor which is no greater than 20 nm, the
data set further identifying surfaces of gate dielectric material
adjacent to the semiconductor body, the data set further
describing source/ drain dopant concentration within each of a
plurality of sub-volumes within the semiconductor body; and
a computer readable medium coupled to the data
processor, the computer readable medium having stored thereon
in a non-transitory manner a plurality of software code portions
defining logic for:
identifying containing boundaries of the channel in
dependence upon the surfaces of gate dielectric material
adjacent to the semiconductor body as identified in the
data set,
estimating an effective volume V of the channel of
the transistor in dependence upon the dopant profile
within the containing boundaries as described in the data
set, including summing all of the sub-volumes which are
within the containing boundaries and whose source/drain
dopant concentration is below a predetermined value,
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Application 15/024,009
determining a cross-sectional area A of the channel
of the transistor,
estimating the effective channel length of the
transistor as the ratio of V to A, and
providing the estimated effective channel length
for simulation of an aspect of the three-dimensional
transistor.
Rejection on Appeal
Claims 1, 5-13, and 17-27 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. See Final Act. 2-
5. 3
ANALYSIS
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. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
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,
3 The Examiner withdrew the rejection of claims under 35 U.S.C. § 112(a)
or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Ans. 2.
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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 and chemical processes,
such as "molding ... rubber products" (Diamond v. Diehr, 450 U.S. 175,
193 (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 (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 176; 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
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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."
( emphasis omitted)).
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 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.
The USPTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Guidance"). 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 interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)) (9th ed.
2018).
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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 2019 Guidance. Patent eligibility under 35 U.S.C. § 101 is a question of
law that is reviewable de nova. See Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333 (Fed. Cir. 2012).
DISCUSSION
Turning to claim 1, we first note that the claim recites a processor and
source of a data set in the form of dopant profile of a three-dimensional
transistor, wherein the processor executes software code to perform a series
of steps and, therefore, falls within the process category of§ 101. But
despite falling within this statutory category, we must still determine
whether the claim is directed to a judicial exception, namely an abstract idea.
See Alice, 573 U.S. at 217. To this end, we must determine whether (1) the
claim recites a judicial exception, and (2) fails to integrate the exception into
a practical application. If both elements are satisfied, the claim is directed to
a judicial exception under the first step of the Alice/ Mayo test. See id.
Rejections and Contentions
The Examiner determines the claims are abstract because they are
directed to "the abstract idea of estimating effective channel length of a
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transistor." Final Act. 2. The Examiner finds claim 1 recites "a method for
estimating channel length of a transistor, comprising steps of providing a
data set to a computer and estimating the effective channel length of the
transistor from the data using the computer" and "a mathematical algorithm
for estimating values from input data, which is an unpatentable abstract
idea." Final Act. 3. The Examiner also determines the claims amount to
nothing more than an abstract idea because they do not include "any subject
matter that could transform the abstract idea into a patent-eligible
application" and merely recite "providing a data set to a computer, and
providing the estimated effective channel length for simulation, which is
well-known, routine, and conventional post-solution activity." Id.
Appellants contend the Examiner erred because the specific
limitations in the claims, similar to the claims in McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016), relate to
"automating a task previously performed by humans." App. Br. 9, 10.
According to Appellants, their invention "improves an existing technological
process by automating a task previously performed by humans, without
simply implementing the conventional human-based method in computer
software." App. Br. 10 (emphasis omitted). Appellants refer to their
disclosure to explain how the recited features "improve an existing
technological process" such as "estimating gate length" and "simulating
three-dimensional transistors by improving the estimation of gate length."
App. Br. 10-11 (citing Figs. 1, 2, 4; Spec. ,r,r 3, 9, 14). Appellants assert:
Appellant's specification describes the claimed invention
as improving the simulations through the use of specific
methods to estimate gate length (specific ways to estimate
channel volume for the L=V/ A calculation) rather than human
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Application 15/024,009
engineers. As explained in Appellant's specification, human
engineers did not use the claimed L= V / A formula or the
claimed volume estimation method, and instead relied on
subjective determinations to estimate the gate lengths.
Appellant's specification explains how the claimed
L= V / A formula and the claimed volume estimation method
enables the automation of a specific transistor simulation task
that previously could not be automated. Like McRO, therefore,
Appellant's claims are directed to improvements in transistor
simulation technology instead of an abstract idea.
App. Br. 12.
Step 2A, Prong One - Recited Judicial Exception
Step 2A of the 2019 Guidance is a two-prong inquiry. In Prong One
we evaluate whether the claim recites a judicial exception. For abstract
ideas, Prong One represents a change as compared to prior guidance because
we here determine whether the claim recites mathematical concepts, certain
methods of organizing human activity, or mental processes.
First, the Examiner correctly characterizes the claimed invention as
directed to "an abstract mathematical algorithm for estimating the effective
channel length of a transistor." Ans. 2. We conclude at least the following
limitations of claim 1 recites a mathematical concept:
estimating an effective volume V of the channel of the
transistor in dependence upon the dopant profile within the
containing boundaries as described in the data set,
summing all of the sub-volumes which are within the
containing boundaries and whose source/ drain dopant
concentration is below a predetermined value,
estimating the effective channel length of the transistor as the
ratio of V to A, and
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Application 15/024,009
providing the estimated effective channel length for simulation
of an aspect of the three-dimensional transistor.
Whereas at least the following limitations of claim 1 recites a mental process
that practically could be performed via pen and paper or in a person's mind:
identifying containing boundaries of the channel in dependence
upon the surfaces of gate dielectric material adjacent to the
semiconductor body as identified in the data set,
determining a cross-sectional area A of the channel of the
transistor, ....
App. Br. 24 (Claims Appendix). Similar limitations are recited in claims 13
and 25. The "estimating" and "summing" steps recited in claim 1 involve
measuring an effective volume of a specific area which is determined by the
dopant profile as described in the "data set," which, as mathematical
concepts, calculate an estimated volume. The recited "identifying" and
"determining" steps are directed to a specific manner of identifying the
boundaries and cross-section of the channel area, which as mental processes,
covers performance of the limitations in the mind. Thus, the claim recites at
least a mathematical concept or a mental process.
Because we conclude the independent claims recite an abstract idea,
we proceed to Prong Two to determine whether the claims are "directed to"
the judicial exception.
Step 2A, Prong Two -Practical Application
If a claim recites a judicial exception, in Prong Two we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception( s ); and
(b) evaluating those additional elements individually and in combination to
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Application 15/024,009
determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application of
that exception, the claim is patent eligible.
Although we agree with the Examiner that Appellants' Specification
describes a new algorithm/formula for calculating the effective channel
length of a transistor (Ans. 4 (citing Spec. ,r 4)), the Specification describes
the conventional way of extracting an effective channel length from a
geometric model of a transistor as follows:
Conventionally, effective channel length Leff is extracted
from a geometric model of a transistor by drawing a line
parallel to the current flow somewhere inside the channel and
determining intersections of that line with the source junction
and the drain junction. This works fine if the source junction is
flat and is parallel to the drain junction, as is shown on Fig. 1.
This approach is not completely automatic, as it typically
requires the human to choose where to draw the line.
Spec. ,r 9. Additionally, Appellants' Specification explains the manner an
effective channel length is determined based on the actual profile of the
doped regions of the source and the drain as follows:
Fig. 9 shows a system which can resolve the issues of
curved and spotty junctions and also eliminate any need for the
human to choose where to draw the measuring lines and
therefore make it completely automatic. In the illustrated
embodiment, the system is organized as an analysis tool 910
which generates a set of parameters including the effective gate
length Leff, which are then written to a database 912 and used
for simulating electrical behavior of the transistor in a circuit.
The tool can execute a process that accepts a transistor
specification as input, where the transistor specification
includes transistor geometry and dopant distribution or
distributions. Using the transistor specification, the process can
generate parameters such as Leff·
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Spec. ,r 14 ( emphasis added).
Considering claim 1 as a whole, the limitation "estimating an effective
volume V of the channel of the transistor in dependence upon the dopant
profile within the containing boundaries" and "summing all of the sub-
volumes which are within the containing boundaries" that results in
"estimating the effective channel length of the transistor as the ratio of V to
A" and "providing the estimated effective channel length for simulation"
apply or use the abstract idea in a meaningful way such that the claim as a
whole is more than a drafting effort designed to monopolize the exception.
In particular, the recited "summing all of the sub-volumes" results in
"estimating an effective volume V of the channel" which produces a unique
value when a ratio of V to the determined cross-sectional area A is
estimated. The effective channel length produced by estimating the ratio of
V to A is used "for simulation of an aspect of the three-dimensional
transistor." Here, the recited "estimating" steps result in an estimated
volume V of the channel, a cross-sectional area A of the channel and finally,
an effective channel length, which is based on a realistic estimation of the
channel length in a channel having an irregular volume. The recited
estimation provides a specific improvement over the conventional way of
"drawing a line parallel to the current flow somewhere inside the channel,"
resulting in more accurate channel length measurement and an improved
simulation of a transistor performance. See Spec. ,r 9. As such, the claimed
process for estimating effective channel length amounts to more than the
mere manipulation of data. See MPEP § 2106.05(c). Thus, the abstract idea
is integrated into a practical application. Claims 13 and 25 similarly
integrate the abstract idea into a practical application.
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Because claims 1, 13, and 25 integrate the recited judicial exception
into a practical application, they are not "directed to" a judicial exception
and, therefore, our inquiry ends.
For these reasons, under the 2019 Guidance, we reverse the
Examiner's§ 101 rejection of independent claims 1, 13, and 25, as well as
the Examiner's rejection of dependent claims 5-12, 17-24, 26, and 27,
which stand with the independent claims from which they depend.
DECISION
We reverse the Examiner's decision rejecting claims 1, 5-13, and 17-
27 under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
REVERSED
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