Ex Parte Patel et al

Patent Trial and Appeal Board

Feb 1, 2018

13058007 (P.T.A.B. Feb. 1, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/058,007 04/06/2011 Maulin D. Patel 2008P01263WOUS 7133
24737 7590 02/05/2018
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue YUEN, KAN
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
2464
NOTIFICATION DATE DELIVERY MODE
02/05/2018 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):
patti. demichele @ Philips, com
marianne. fox @ philips, com
katelyn.mulroy @philips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAULIN D. PATEL and CARLOS M. CORDEIRO
Appeal 2017-008007
Application 13/058,0071
Technology Center 2400
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3—9, and 11—20. We have jurisdiction over the
pending rejected claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Koninklijke Philips Electronics N.V. as the real party
in interest. (App. Br. 3.)
Appeal 2017-008007
Application 13/058,007
THE INVENTION
Appellants’ disclosed and claimed invention is directed to medium
access control protocols used in body area networks, and solving
overhearing problems in the protocols. (Spec. 1:6—8.) Claims 1, 9, and 16
are independent.
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method for communicating between a sender device and
multiple receiver devices in a network, comprising:
generating, in the sender device, a preamble frame;
encoding a destination address of a target receiver device
in the preamble frame; and
transmitting the preamble frame,
wherein the encoding comprises a mathematical
relationship between a length of the preamble frame and the
destination address of the target receiver device.
REJECTIONS
The Examiner rejected claims 1, 3—9, and 11—20 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. (Final Act. 3.)
The Examiner rejected claims 1,3, 6—9, 11, and 13—17 under 35
U.S.C. § 102(e) as being anticipated by Kim et al. (US 2009/0103437 Al,
pub. Apr. 23, 2009) (hereinafter “Kim”). (Final Act. 4.2)
2 Although the heading of the rejection indicates claim 5 is rejected under 35
U.S.C. § 102(e), claim 5 is rejected under 35 U.S.C. § 103(a). See Final Act.
11.
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Appeal 2017-008007
Application 13/058,007
The Examiner rejected claims 5 and 18—20 under 35 U.S.C. § 103(a)
as being unpatentable over Kim and Gardner et al. (US 2004/0081127 Al,
pub. Apr. 29, 2004) (hereinafter “Gardner”). (Final Act. 10.)
ISSUES ON APPEAL
Appellants’ arguments in the Appeal Brief present the following
dispositive issues:3
Issue One: Whether the Examiner erred in rejecting claims 1, 3—9,
and 11—20 as being directed to non-statutory subject matter. (App. Br. 7—
12.)
Issue Two: Whether the Examiner erred in finding Kim teaches the
independent claim 1 limitations, “encoding a destination address of a target
receiver device in the preamble frame,” and “wherein the encoding
comprises a mathematical relationship between a length of the preamble
frame and the destination address of the target receiver device,” and the
commensurate limitations in independent claims 9 and 16. (App. Br. 13—
17.)
3 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed July 11, 2016) (herein, “App.
Br.”); the Reply Brief (filed May 2, 2017) (herein, “Reply Br.”); the Final
Office Action (mailed Feb. 11, 2016) (herein, “Final Act.”); the Advisory
Action (mailed June 16, 2016) (herein, “Adv. Act.”); and the Examiner’s
Answer (mailed Mar. 3, 2017) (herein, “Ans.”) for the respective details.
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Appeal 2017-008007
Application 13/058,007
ANALYSIS
First Issue
The Examiner concludes the pending claims are patent-ineligible
under 35 U.S.C. § 101:
Claims 1, 9[,] and 16 is/are directed to abstract limitation[] of
“the encoding comprises a mathematical relationship between a
length of the preamble frame and the destination address of the
target receiver device” . . . where . . . [this] abstract limitation^
. . . [is] broad enough that the claim could be completely
performed mentally, verballyf, l or without a machine nor is any
transformation apparent.
(Final Act. 4, emphasis in original.) In addition, the Examiner concludes:
The independent claims 1, 9[,] and 16 don’t have any limitation
that would amount to ‘significantly more’, thus, the claimed
invention is directed to a judicial exception (i.e., a law of nature,
a natural phenomenon, or an abstract idea) without significantly
more.
(Ans. 4, emphasis in original.)
Appellants argue the Examiner incorrectly describes the subject
matter of the claims, because the Office Action
overlooks the physical aspect of generating, in a sender device, a
preamble frame, transmitting the preamble frame, and encoding
a destination address of a target receiver device in the preamble
frame.
(App. Br. 8.) Appellants contend, “[generation of a preamble frame is a
physical process that cannot be performed mentally, verbally or without a
machine.” (App. Br. 9.) Appellants further contend that “[a]s in the Enfish
and DDR Holdings case, applicant’s claims recite a process designed to
address a technological problem, namely solving overhearing problems that
exist in Body Area Network (BAN) Medium Access Control (MAC)
protocols.” (App. Br. 11.)
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Appeal 2017-008007
Application 13/058,007
We are persuaded by Appellants’ arguments. The Supreme Court has
long held that “[l]aws of nature, natural phenomena, and abstract ideas are
not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347,
2354 (2014) (quoting Assoc, for Molecular Pathology v. Myriad Genetics,
Inc., 133 S. Ct. 2107, 2116 (2013)). The “abstract ideas” category embodies
the longstanding rule that an idea, by itself, is not patentable. Alice Corp.,
134 S. Ct. at 2354—55 (quoting Gottschalkv. Benson, 409 U.S. 63, 67
(1972)).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355. The first step in the analysis is to “determine
whether the claims at issue are directed to one of those patent-ineligible
concepts,” such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims “individually and ‘as an ordered combination’” to determine
whether there are additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to “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.’” Id. (quoting Mayo, 566 U.S. at 73.) The
prohibition against patenting an abstract idea “‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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Appeal 2017-008007
Application 13/058,007
environment’ or adding ‘insignificant postsolution activity.’” Bilski v.
Kappos, 561 U.S. 593, 610-11 (2010) (internal citation omitted.)
Here, we agree with Appellants that the claims “cannot be performed
mentally, verbally or without a machine,” and the claims are not directed to
a patent-ineligible concept such as an abstract idea. Although the limitation
of “the encoding comprises a mathematical relationship” is broad, the
claimed subject matter taken as a whole is not abstract. A preamble frame
length and a destination address are real quantities that an inventor must
consider in order to make and operate sender and receiver devices in a
network. Additionally, “a claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula, computer program, or digital computer.” Diamond v. Diehr, 450
U.S. 175, 187 (1981). Accordingly, we need not proceed to the second step
of the Alice analysis, and we reverse the Examiner’s rejection of
independent claims 1, 9, and 16, as well as all dependent claims.
Second Issue
In finding that Kim discloses the claim limitations at issue, the
Examiner relies on the disclosure of Kim of a sender node communicating
with the receiver node, in which the long preamble is generated (or encoded
for transmission) for the target receiver node 312 to sense the long preamble,
and that the length of the long preamble needs to be longer than at least the
length of a single short preamble (i.e., wake-up preamble) which is
composed of at least a DA (destination address) field. (Final Act. 5; Wallace
Fig. 3,1113, 37.)
Appellants argue that “Kim is discussing the generation of the long
preamble and not the encoding of the DA field in the short preamble.”
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Application 13/058,007
(App. Br. 13.) Appellants contend that while “Kim may teach inserting a
destination address into a short preamble,” that “[o]ne skilled in the art
appreciates the difference between inserting and encoding.” (App. Br. 14.)
We are not persuaded by these arguments. The Examiner finds, and
we agree, that “the functionality of the term ‘encoding’ is defined by the
applicant (i.e., wherein the encoding comprises a mathematical relationship
. . .)” and that:
the generated short preamble takes up at least one bit out of the
total bits of the short preamble to include the destination
address DA fields, thus, it creates a mathematical
relationship/association between a length of the preamble frame
and the destination address “DA”.
(Ans. 9, citing Kim Fig. 3; 13, 37-42.) Appellants’ arguments regarding
the distinctions between “generating” and “encoding” ignore Appellants’
own limitation in the claim, and Appellants supply no factual basis for the
distinction between Kim’s purported “inserting” and “encoding.”4
Accordingly, we sustain the Examiner’s anticipation rejection of
independent claim 1 over Kim. We also sustain the Examiner’s rejection of
4 Should there be further prosecution, the Examiner may wish to consider
whether the “wherein” limitation of claim 1 is non-functional descriptive
material. The informational content of non-functional descriptive material is
not entitled to weight in the patentability analysis. See also MPEP
§ 2111.05 (9th Ed., Rev. 07.2015, Nov. 2015) (“[Wjhere the claim as a
whole is directed [to] conveying a message or meaning to a human reader
independent of the intended computer system, and/or the computer-readable
medium merely serves as a support for information or data, no functional
relationship exists”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887—90
(BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI
2005) (informative), aff’d, No. 2006-1003 (Fed. Cir. June 12, 2006) (Rule
36); Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative),
aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
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Appeal 2017-008007
Application 13/058,007
claims 3, 6—9, 11, and 13—17 as being anticipated by Kim, and of claims 5
and 18—20 as obvious over Kim and Gardner, which rejections are not
argued separately with particularity. (App. Br. 16—20). We note claims 4
and 12 are not subject to prior art rejections. (See Final Act. 2).
DECISION
The Examiner’s decision rejecting claims 1, 3—9, and 11—20 under 35
U.S.C. § 101 is reversed.
The Examiner’s decision rejecting claims 1, 3, 6—9, 11, and 13—17
under 35 U.S.C. § 102(e) is affirmed.
The Examiner’s decision rejecting claims 5 and 18—20 under 35
U.S.C. § 103(a) is affirmed.
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-IN-PART
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