Ex Parte Summerson et al

Patent Trial and Appeal Board

Sep 27, 2018

14930230 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/930,230 11/02/2015
23494 7590 10/01/2018
TEXAS INSTRUMENTS IN CORPORA TED
PO BOX 655474, MIS 3999
DALLAS, TX 75265
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Samantha Rose Summerson
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.
TI-71381A 5427
EXAMINER
PREV AL, LIONEL
ART UNIT PAPER NUMBER
2416
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMANTHA ROSE SUMMERSON, ANUJ BATRA,
SRINATH HOSUR, and GEORGIOS ANGELOPOULOS 1
Appeal2018-001905
Application 14/930,230
Technology Center 2400
Before CARLA M. KRIVAK, HUNG H. BUI, and
DAVID J. CUTITTA II, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 22-34. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
STATEMENT OF THE CASE
Appellants' invention is directed to a network coding system that
includes a packet encoding engine, a packet decoding engine, and a packet
repository. Spec. ,r 49, Fig. 3.
1 Appellants identify the real party in interest as Texas Instruments
Incorporated of Dallas, Texas. App. Br. 1.
Appeal2018-001905
Application 14/930,230
Independent claim 22, reproduced below, is exemplary of the subject
matter on appeal.
22. A network coding system in a network layer of a
wireless transmitter, the system comprising:
a packet decoding engine to receive a number of encoded
packets; and
a packet repository coupled to the decoding engine to
temporarily store the received encoded packets,
wherein the packet decoding engine is configured to:
generate a received packet matrix using encoded
packets that are received successfully;
generate a decoding matrix, by selecting columns
of a network code matrix that have indices that
are same as indices of the encoded packets of
the received packet matrix;
invert the decoding matrix to form an inverted
decoding matrix;
multiply the received packet matrix by the inverted
decoding matrix to generate a recovered matrix
where each column corresponds to a decoded
packet.
REFERENCES and REJECTIONS
The Examiner rejected claim 22 under non-statutory obviousness-type
double patenting over Summerson (US 9,179,362 B2, issued Nov. 3, 2015).
The Examiner rejected claims 22-29 and 31-34 under 35 U.S.C.
§ 101 as directed to a judicial exception.
The Examiner rejected claims 22, 23, 25-28, and 30-34 under
35 U.S.C. § I03(a) based upon the teachings of Le Bars (US 2005/0138533
Al, published June 23, 2005) and Wylie (US 2009/0083590 Al, published
Mar. 26, 2009).
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The Examiner rejected claims 24 and 29 under 35 U.S.C. § I03(a)
based upon the teachings of Le Bars, Wylie, and Ball (US 2005/0188293
Al, published Aug. 25, 2005).
ANALYSIS
Non-statutory Obviousness-type Double Patenting
The Examiner rejects claim 22 under a non-statutory double patenting
rejection grounded in public policy as noted in MPEP 804(II)(B). Final Act.
3; Ans. 5-7.
Particularly, the Examiner finds "[a]lthough the claims at issue are not
identical, they are not patentably distinct from each other because the instant
application merely broadens the scope of the issued patent by omitting the
encoding portions and some of the language of the claims .... " Final
Act. 4; see also Ans. 5-7.
Appellants contend the Examiner errs in finding the claims in the
present application and Summerson are the same. App. Br. 9-11.
Particularly, Appellants assert the Examiner must establish a prima facie
case of obviousness and the claims of the present application must be
obvious "over the CLAIMS of the cited applications-NOT the application
itself." Reply Br. 4; App. Br. 9.
Contrary to Appellants' contentions, we find the Examiner has made a
prima facie case and has met the requirements of MPEP 804. That is, MPEP
804 states the conflicting claims need not be identical, "but at least one
examined application claim is not patentably distinct from the reference
claim(s) because the examined application claim is either anticipated by, or
would have been obvious over the reference claims." See MPEP 804
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(I)(B)(l) "A complete response to a nonstatutory double patenting (NDP)
rejection is either a reply by applicant showing that the claims subject to the
rejection are patentably distinct from the reference claims or the filing of a
terminal disclaimer in accordance with 37 CFR 1.321."
MPEP § 804(II) further provides "[ w ]here the claims of an application
are not the 'same' as those of a first patent, but the grant of a patent with the
claims in the application would unjustly extend the rights granted by the first
patent, a double patenting rejection under nonstatutory grounds is proper."
MPEP 804(1)(A) states "[s]ince the inventor/applicant/patent owner has
already secured the issuance of a first patent, the examiner must determine
whether the grant of a second patent would give rise to an unjustified
extension of the rights granted in the first patent."
The "appellant has the burden of establishing that the invention
claimed in his patent is 'independent and distinct' from the invention of the
appealed claims .... [ A Jppellant has clearly not established the independent
and distinct character of the inventions of the appealed claims." In re
Schneller, 397 F.2d 350, 354--355 (CCPA 1968); MPEP 804 (II)(B)(3).
The Examiner has shown Appellants' claims are not patentably
distinct over Summerson. Final Act. 3--4; Ans. 5. Appellants do not rebut
the Examiner's findings with evidence or argument as to how their claims
are patentably distinct from Summerson, as required. Appellants merely
contend Summerson does not teach or suggest the claim limitations.
Therefore, we conclude the Examiner has made a proper rejection of non-
statutory double patenting and sustain the Examiner's rejection of claim 22.
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Re} ection under 3 5 US. C. § 101
To determine whether subject matter is patentable under § 101, the
Supreme Court has set forth a two part test "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd.
v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). 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. (citation
omitted). For computer-related technologies, "the first step in the Alice
inquiry ... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities" (which would be eligible subject
matter) or instead "on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool" (which would be ineligible subject
matter). Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir.
2016) ( emphasis added). "If the claims are not directed to an abstract idea
[or other patent-ineligible concept], the inquiry ends. If the claims are
'directed to' an abstract idea, then the inquiry proceeds to the second step of
the Alice framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1312 (Fed. Cir. 2016).
The second step in the Alice framework 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. (citing Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78, 79 (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
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patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. ( citing Mayo, 566 U.S. at 72-73).
The Examiner rejects claims 22-29 and 31-34 under 35 U.S.C. § 101
as directed to a judicial exception (abstract idea). Final Act. 2. Particularly,
the Examiner determines independent claim 22 is directed to an abstract idea
of "organizing and manipulating information through mathematical
correlations without applying a practical use or solution to the abstract idea"
and includes limitations that are analogous or similar to the abstract ideas of
(1) "obtaining and comparing intangible data" discussed in CyberSource and
(2) "organizing and manipulating information through mathematical
corrections" discussed in Digitech. Ans. 3--4 ( quoting CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) and Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014)). Final Act. 2-3; Ans. 3. Further, the Examiner determines the
additional elements do not add significantly more as they are, "without
additional elements in the claim, mere mathematical manipulations." Final
Act. 3; Ans. 4.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue claims
22-29 ad 31-34 are not directed to an abstract idea because (1) independent
claim 22 positively recites a network coding system; and (2) Examiner's
characterization is an over-simplification of the claimed subject matter and
fails to address the actual language recited, including (i) a network coding
system in a network layer of a wireless transmitter, (ii) a packet decoding
engine, (iii) a packet repository, and (iv) a decoding matrix, App. Br. 5-8
(quoting Enfzsh, 822 F.3d 1327).
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Appellants' arguments are not persuasive. At the outset, we note the
Examiner is required to characterize whether a claim is directed to an
abstract idea under Alice step 1. However, because there is no single
universal definition of an abstract idea, the Examiner is asked "to examine
earlier cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided." Amdocs,
841 F.3d at 1288 (Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., v. Alstom S.A., 830
F.3d 1350, 1353-54 (Fed. Cir. 2016)); accordUSPTO Memorandum, July
2015 Update: Subject Matter Eligibility (July 30, 2015),
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf (instructing Examiners that "a claimed concept is not identified
as an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea"). In this case, the Examiner did what
was required under the USPTO Memorandum, and characterized the claims
as required under Alice.
Second, Appellants' reliance on Enfzsh is misplaced. In Enfzsh, the
claims were directed to an improved database architecture, i.e., a self-
referential table-"a specific type of data structure designed to improve the
way a computer stores and retrieves data in memory." Enfish, 822 F.3d at
1339. Such a data structure has several distinct advantages over
conventional relational databases, including: (1) faster searching of data
than would be possible with the conventional relational model (see
US 6,151,604 "Enfish '604 patent," 1:55-59, 2:66-3:6); (2) more effective
storage of data other than structured text, such as storage of images and
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unstructured text (Enfish '604 patent, 2:16-22, 2:46-52); and (3) more
flexibility in configuring the database (Enfish '604 patent, 2:27-29).
In Enfzsh, the Federal Circuit characterized the "directed to" inquiry
as a stage-one filter to the claims, "considered in light of the specification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfzsh, 822 F.3d at 1335. In particular, the Federal Circuit
interpreted the "directed to" inquiry as asking "whether the claims are
directed to an improvement to computer functionality versus being directed
to an abstract idea." Enfzsh, 822 F.3d at 1335 ( emphasis added). "[T]he
focus of the claims is on the specific asserted improvement in computer
capabilities (i.e., the self-referential table for a computer database)." Id.
Based on the "plain focus of the claims," the Federal Circuit reached the
conclusion that Enfish 's claims were directed to "a specific improvement to
the way computers operate, embodied in the self-referential table," and, as
such, were more than a mere abstract idea. Id. at 1336. Because the Federal
Circuit found step 1 of the Alice two-step analysis was satisfied, Alice step 2
was not required. Id.
In contrast to Enfish, Appellants' claim 22 merely uses a packet
decoding engine to process information (i.e., data packets) using a decoding
matrix (i.e., mathematical correlations). As correctly recognized by the
Examiner, claim 22 is directed to an abstract idea of "organizing and
manipulating information through mathematical correlations without
applying a practical use or solution to the abstract idea," and includes
limitations that are akin or analogous or similar to those discussed in
CyberSource and Digitech. Ans. 3--4.
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Information, as such, is intangible, and data analysis and comparisons
are abstract ideas. See, e.g., Microsoft Corp. v. AT & T Corp., 550 U.S. 437,
451 n.12 (2007); Alice, 134 S. Ct. at 2355; Parker v. Flook, 437 U.S. 584,
589, 594--95 (1978) ("Reasoning that an algorithm, or mathematical
formula, is like a law of nature, Benson applied the established rule that a
law of nature cannot be the subject of a patent"); Gottschalk v. Benson, 409
U.S. 63, 71-72 (1972). "[C]ollecting information collection and analysis,
including when limited to particular content ( which does not change its
character as information)," and "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more," are
"within the realm of abstract ideas." Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see also Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech, 758
F.3d at 1351; CyberSource, 654 F.3d at 1370.
Accordingly, we agree with the Examiner that claims 22-29 and 31-
34 are directed to the abstract idea of "organizing and manipulating
information through mathematical correlations without applying a practical
use or solution to the abstract idea." Final Act. 5.
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants do not argue
whether the claims contain an "inventive concept." Rather, Appellants
argue the additional elements in the claims, such, as "a wireless transmitter,"
"a packet repository coupled to the decoding engine" and "a decoding
matrix" constitute "more than mere mathematical manipulations and
calculations." Reply Br. 3.
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We disagree with Appellants. Instead, we agree with Examiner there
are no additional steps "that tie the mathematical operations to a meaningful
limitation (i.e. significantly more)" as the steps only manipulate data. Ans. 3
citing Cybersource, 654 F.3d at 1375 and Digitech, 758 F.3d 1344. See also
Parker v. Flook, 437 U.S. 584, 595 (1978) ("[I]f a claim is directed
essentially to a method of calculating, using a mathematical formula, even if
the solution is for a specific purpose, the claimed method is nonstatutory."
(quoting In re Richman, 563 F.2d 1026, 1030 (1977).
Contrary to Appellants' contentions, the claims do not provide
significantly more. Any improvement to a network coding system in a
wireless transmitter is missing from Appellants' claims. The claims merely
recite details of the mathematics involved in generating a decoded packet.
As the Examiner asserts, and we agree, the "wireless transmitter" and
"packet repository coupled to the decoding engine" recited in claim 22 are
generic computing elements performing generic computing functions.
Further, we agree the coding system, wireless transmitter, and packet
decoding engine are not inventive concepts "sufficient to transform the
claimed abstract idea into patent eligible subject matter" nor do they include
significantly more than the alleged abstract idea; rather, as noted above, they
are "mere mathematical manipulations and calculations." Ans. 4.
Accordingly, we conclude independent claim 22 does not amount to
significantly more than an abstract idea, and is not patent-eligible. We
further find dependent claims 23-29 and 31-34 do not add anything
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materially more than the abstract concepts recited in the independent claims,
and for which Appellants provided no substantive argument. 2
Rejection under 35 USC§ 103(a)
The Examiner finds independent claim 22 is obvious over the
combination of Le Bars and Wylie. Final Act. 7-9; Ans. 11-12.
Particularly, the Examiner finds Le Bars teaches all the claim elements
except for inverting the decoding matrix to form an inverted decoding matrix
and multiplying the received packet matrix by the inverted decoding matrix
to generate recovered matrix, finding Wylie discloses these limitations.
Final Act. 8-9; Ans. 12-13.
Appellants contend Wylie does not teach inverting the "decoding
matrix to form an inverted decoding matrix." App. Br. 16. Appellants'
state, contrary to the Examiner's finding in Wylie's paragraph 18, Wylie
discloses "applying the inverse of the generator matrix of ( encoding) step
156 to the data 162 so as to obtain the original data set 152": whereas
Appellants' claim language recites "'inverting the generator matrix of
(decoding) step 162 to form an inverted decoding matrix."' App. Br. 16.
Thus, "Wylie simply does not teach or suggest, 'invert the decoding matrix
to form an inverted decoding matrix', as required by Claim 22." Id.
( emphasis omitted). We agree.
The Examiner's Answer relies additionally, without any further
explanation, on Wylie's paragraph 24, which states "[ t ]he generator matrix
of a (k, m)-code is a k.times.(k+m) matrix in a Galois field GF(2)."
2 We note claim 30 was not included in this rejection. In light of any further
prosecution, the Examiner may wish to consider a rejection of this claim
under 35 U.S.C. § 101.
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Ans. 12-13. See In re Chaganti, 554 F. App'x 917, 922 (Fed. Cir. 2014) ("It
is not enough to say that ... to do so would 'have been obvious to one of
ordinary skill.' ... Such circular reasoning is not sufficient-more is needed
to sustain an obviousness rejection."). Therefore, we agree with Appellants
Wylie does not teach or suggest to "invert the decoding matrix to form an
inverted decoding matrix" as claimed. Because Appellants have shown at
least one reversible error in the Examiner's rejection, we need not reach
Appellants' remaining arguments.
Thus, we do not sustain the Examiner's rejection of independent claim
22 and dependent claims 23-34 as obvious over the collective teachings of
Le Bars, Wylie, and Ball.
DECISION
The Examiner's decision rejecting claim 22 under non-statutory
obviousness-type double patenting is affirmed.
The Examiner's decision rejecting claims 22-29 and 31-34 under
35 U.S.C. § 101 is affirmed.
The Examiner's decision rejecting claims 22-34 under 35 U.S.C.
§ 103(a) is reversed.
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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