Ex Parte Saliba

Patent Trial and Appeal Board

Feb 1, 2019

14722809 (P.T.A.B. Feb. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/722,809 05/27/2015
76444 7590
Setter Roche LLP
14694 Orchard Parkway
Building A, Suite 200
Westminster, CO 80023
02/05/2019
FIRST NAMED INVENTOR
George Saliba
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.
Ql5-1004-US1 4363
EXAMINER
RIZK, SAMIR W ADIE
ART UNIT PAPER NUMBER
2112
NOTIFICATION DATE DELIVERY MODE
02/05/2019 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@setterroche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE SALIBA 1
Appeal2018-003989
Application 14/722,809
Technology Center 2100
Before JEAN R. HOMERE, JON M. JURGOV AN, and
NABEEL U. KHAN, Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-25. App. Br. 2. We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm-in-part. 2
1 The Appeal Brief indicates the real party in interest is Quantum
Corporation. Appeal Brief 2.
2 Our Decision refers to the Specification ("Spec.") filed May 27, 2015, the
Final Office Action ("Final Act.") mailed April 21, 2017, the Appeal Brief
("App. Br.") filed October 13, 2017, and the Examiner's Answer ("Ans.")
mailed December 15, 2017.
Appeal2018-003989
Application 14/722,809
CLAIMED INVENTION
The claimed invention relates to hybrid error correction codes
(HECC) that combine the speed and flexibility of rateless code approaches
( e.g., fountain codes) with the efficiency of rated Reed-Solomon codes.
Spec. ,r 45. The codes are dynamically variable, and the number of codes
provided to a set of receivers may be less than a complete set of codes to
save computing and transmission resources. Id.
Claim 1, reproduced below, is illustrative of the claimed invention:
1. A method, comprising:
accessing first electronic data that describes a data
storage device to which a message has been provided, where
the first electronic data is not provided by the data storage
device, where the message was provided from a hybrid Reed
Solomon data structure stored in an electronic data storage,
where the hybrid Reed Solomon data structure includes
plaintext data arranged in two or more dimensions and a set of
error detection codes associated with a first dimension of the
plaintext data;
selecting a number of error correcting codes to produce
for the message based, at least in part, on the first electronic
data;
producing the number of error correcting codes for the
message from data stored in the hybrid Reed Solomon data
structure,
storing the number of error correcting codes in the hybrid
Reed Solomon data structure as part of a set of error correcting
codes associated with a second, different dimension of the
plaintext data, and
selectively providing one or more of the number of error
correcting codes to one or more error correcting code receivers.
App. Br. (Claims App. 1) ( emphasis added).
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Application 14/722,809
REJECTIONS
Claims 23-25 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 2.
Claim 1 stands rejected under 35 U.S.C. § 112(b) as indefinite. Final
Act. 2-3.
Claims 1-25 stand rejected under 35 U.S.C. § I03(a) based on Watson
(US 2007/0300127 Al, December 27, 2007) and Oren (US
2013/0077719 Al, March 28, 2013). Final Act. 4--10.
ANALYSIS
§ 101 Rejection
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner's§ 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w Jhoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt "the basic tools of scientific and technological
work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("Benson"); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
("Mayo"); Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354
(2014) ("Alice"). The rationale is that patents directed to basic building
blocks of technology would not "promote the [p ]rogress of [ s ]cience" under
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Application 14/722,809
the U.S. Constitution, Article I, Section 8, Clause 8, but instead would
impede it. Accordingly, laws of nature, natural phenomena, and abstract
ideas, are not patent-eligible subject matter. Thales Visionix Inc. v. US., 850
F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 134 S. Ct. at 2354).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice (134 S. Ct. at 2355). The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76-77). If so, then the eligibility analysis proceeds to the
second step of the Alice/ Mayo test in which we "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, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 72, 79). There is no
need to proceed to the second step, however, if the first step of the
Alice/Mayo test yields a determination that the claim is directed to patent
eligible subject matter.
The Patent Office has recently revised its guidance for how to apply
the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50-57 (January 7, 2019) ("the Revised Guidance").
Applying Step 1 of the Revised Guidance (which is unchanged from the
prior guidance) to the present case, we determine that claims 23 to 25 recite
a "computerized method" which is a form of "process" falling within one of
the categories enumerated under § 101, thus satisfying Step 1 of the Revised
Guidance.
We proceed to apply Step 2A of the Revised Guidance to determine
if the claims are "directed to" a judicial exception. Step 2A of the Revised
Guidance corresponds to the first step of the Alice/Mayo test but is in part
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Application 14/722,809
changed from the 2014 Interim Guidance on Patent Subject Matter
Eligibility, 79 FR 74618-74633 (Dec. 16, 2014).
The first prong of Step 2A under the Revised Guidance is to
determine whether the claims recite a judicial exception including (a)
mathematical concepts; (b) certain methods of organizing human activity;
and ( c) mental processes. Reviewing claim 23, shown below, we note that
the claim involves mathematical concepts, namely, mathematical algorithms
for producing Reed Solomon error correcting codes and a Reed Solomon
generator matrix.
23. A computerized method, comprising:
storing a message, by a computer, in an electronic data
store;
controlling how many hybrid rateless Reed Solomon
error correcting codes for the message are produced by the
computer that stores the message in a modified Reed Solomon
generator matrix, where the hybrid rateless Reed Solomon error
correcting codes are produced using the modified Reed
Solomon generator matrix, and
controlling the time at which the computer produces the
hybrid rateless Reed Solomon error correcting codes.
App. Br. 15 (Claims App.).
Accordingly, we proceed to the second prong of Step 2A, where
we inquire whether an additional element of the claim integrates the
mathematical concept into a practical application. Revised Guidance at 54--
55. Such an additional element may reflect an improvement in the
functioning of a computer, or an improvement to another technology or
technical field. Id. at 55. By controlling how many hybrid rateless Reed
Solomon error correcting codes are produced by a computer for a message,
the claimed invention avoids generation of extraneous error codes. Spec.
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Application 14/722,809
3 8-39. Controlling the time at which a computer produces the codes allows
for their availability when needed, and prevents their generation when not
needed. Id. Consequently, claim 23 recites improvements to the functioning
of the computer, thus integrating the mathematical concept into a practical
application. Claims 24 and 25 incorporate the additional element by virtue
of their dependency from claim 23.
Thus, we determine claims 23 to 25 are directed to patent eligible
subject matter. Accordingly, we do not address Step 2B of the Revised
Guidance ( corresponding to step two of the Alice/Mayo test).
§ l l 2(b) Rejection
"[W]hen the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention, and thereafter the applicant fails to provide a satisfactory
response, the USPTO can properly reject the claim as failing to meet the
statutory requirements of§ 112(b )." In re Zietz, 893 F.2d 319, 322 (Fed.
Cir. 1989). The USPTO construes claims under their broadest reasonable
interpretation during prosecution "to facilitate sharpening and clarifying the
claims at the application stage." In re Buszard, 504 F.3d 1364, 1366 (Fed.
Cir. 2007); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984);
Zietz at 322. See also MPEP § 2173.
The Examiner concludes claim 1 is "indefinite and ambiguous and
foggy" and thus rejected the claim under§ 112(b ). Final Act. 2-3. In
particular, the Examiner notes claim 1 recites "accessing first electronic data
that describes a data storage device to which a message has been provided,
where the first electronic data is not provided by the storage device." Id.
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Application 14/722,809
The Examiner then asks "How [sic] an electronic data describes a data
storage?" Id. We interpret the Examiner's statement as meaning the claim
does not explain how the electronic data describes the data storage device,
and consequently is ambiguous.
Appellant responds that "electronic data can describe numerous
different types of information, such as software instructions, text documents,
audio/visual media, etc.," and that "it would not be outside the realm of
someone having ordinary skill in the art to make electronic data describe a
data storage device rather than, for example, a Word document." App. Br.
7-8. Appellant also argues modem operating systems display information
about storage components, such as hard disk drives, solid state drives, etc.,
in the computer. Id. at 8.
Appellant's argument is unclear and inconsistent with what the
Specification describes as the "first electronic data that describes a data
storage device." A decision on whether a claim is indefinite under 35 U.S.C.
§ 112(b) requires a determination of whether those skilled in the art would
understand what is claimed when the claim is read in light of the
specification. Power-On, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350
(Fed. Cir. 2010). The Specification seems to state that the first electronic
data relates to reliability of a data storage device or whether a message
provided to the data storage device was stored error free. Spec. ,r,r 43, 45.
Appellant's argument does not agree with what is described in the
Specification for the claimed limitation, and is thus unpersuasive to show
Examiner error.
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Application 14/722,809
§ 103 Rejection
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains."' KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) ("KSR"). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966).
A. Independent Claims 1, 19, and 2 3
Regarding claim 1, the Examiner finds that paragraph 45 of Oren
discloses the claimed "accessing first electronic data that describes a data
storage device to which a message has been provided." Final Act. 5. Oren
discloses that their invention can be used not only in Mobile Digital
Television (MDTV) receivers, but also in other applications that involve 2-D
encoding, such as other kinds of wireless receivers, Digital Video Disks
(DVDs), Hard Disk Drives (HDD), memories and backplanes. Oren ,r,r 11,
45. The Examiner concludes that Oren discloses "[a]ll kids [sic] of
electronic data that describes storage device." Ans. 9.
Title 35 U.S.C. § 132 provides in part:
(a) Whenever, on examination, any claim for a patent is rejected, or
any objection or requirement made, the Director shall notify the
applicant thereof, together with such information and references as
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Application 14/722,809
may be useful in judging of the propriety of continuing the
prosecution of his application.
The Examiner's rejection does not meet this standard, because it does
not provide the information necessary to judge the propriety of continuing
prosecution. In particular, the Examiner does not indicate what specifically
he is relying upon in Oren's paragraph 45 to disclose the claimed "first
electronic data that describes a data storage device." An explanation from
the Examiner was needed under the circumstances to support the rejection.
Accordingly, we do not sustain the § 103 rejection against claim 1.
The Examiner rejects claims 19 and 23 for the same reasons as claim
1. Final Act. 10. Appellant notes that claims 19 and 23 include limitations
not recited in claim 1, such as claim 19' s row-centric error detection codes
and column-centric error correcting codes. We agree with Appellant that the
Final Office Action should have explained where, specifically, Watson and
Oren disclose the elements of claims 19 and 23, which are significantly
different from claim 1. For example, the Examiner does not identify where
Watson or Oren discloses the row-centric error detection codes and column-
centric detection codes of claim 19, or the controlling of how many codes
are produced and their timing, as recited in claim 23. Appellant was not
given enough information useful in judging the propriety of continuing
prosecution of claims 19 and 23, as required under § 13 2.
B. Remaining Claims
The remaining claims depend from the independent claims discussed
above and necessarily incorporate all of their limitations. Accordingly, for
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Application 14/722,809
the same reasons, we do not sustain the§ 103 rejections of the dependent
claims.
DECISION
We reverse the Examiner's rejection of claims 23-25 under
35 U.S.C. § 101.
We affirm the Examiner's rejection of claim 1 under 35 U.S.C.
§ 112(b).
We reverse the Examiner's rejection of claims 1-25 under 35 U.S.C.
§ 103(a).
AFFIRMED-IN-PART
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