SYNOPSYS, INC.

Patent Trials and Appeals Board

Jul 2, 2020

14727714 - (D) (P.T.A.B. Jul. 2, 2020)

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.
14/727,714 06/01/2015 Jamil KAWA SYNP 1731-7 2815
36454 7590 07/02/2020
SYNOPSYS, INC. C/O HAYNES BEFFEL & WOLFELD LLP
P.O. BOX 366
HALF MOON BAY, CA 94019
EXAMINER
DOAN, NGHIA M
ART UNIT PAPER NUMBER
2851
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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 JAMIL KAWA, VICTOR MOROZ, and DEEPAK D.
SHERLEKAR
____________

Appeal 2019-000245
Application 14/727,714
Technology Center 2800
____________

Before MAHSHID D. SAADAT, CARL L. SILVERMAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 and 4–11.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 An oral hearing scheduled for this appeal on May 14, 2020, was waived.
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant states the real party in interest is Synopsys, Inc.
Appeal Br. 3.
3 Claims 2 and 3 have been canceled.
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STATEMENT OF THE CASE
Appellant’s Specification is directed to electronic design automation
tools for integrated circuit devices, such as FinFET devices, using standard
cell libraries. See Spec. ¶¶ 2, 5.
Exemplary claim 1 under appeal reads as follows;
1. A system for circuit design and implementation
using FinFET block based cells from a cell library, comprising:
an EDA tool configured to:
transform on a data processing system a logical
circuit representation of a D-flip flop into a physical
circuit representation by performing steps including
placing FinFET block based cells from the cell library
and routing electrical interconnects directly connected to
the FinFET block based cells to implement the D-flip
flop; and
use the D-flip flop in automated design of an
integrated circuit,
wherein the FinFET block based cells include sets of
semiconductor fins of FinFET transistors, and
wherein the sets of semiconductor fins of FinFET
transistors include:
a first set of parallel fins sharing a first
conductivity type;
a second set of parallel fins sharing a second
conductivity type opposite to the first conductivity type;
and
an isolation structure between the first set of
parallel fins and the second set of parallel fins, the
isolation structure serving to prevent current leak.
Claims 1 and 4–11 stand rejected under 35 U.S.C. § 101, as being
directed to a judicial exception, without significantly more. Non-final Act.
3–11.
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ANALYSIS
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010). Arguments Appellant could have
made, but chose not to make, are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded of Examiner error in rejecting
claims 1 and 4–11 under 35 U.S.C. § 101.
Rejection and Arguments
The Examiner determines the claimed system performs the process of
transforming and analyzing data related to circuit design and is directed to
“an abstract idea of a mental process, which can done by software (EDA
tool) for performing data processing that is similar to data recognition and
storage in Content Extraction, Synopsys” and is “run by software code
(EDA tools)” and is further similar to mental process for logic circuit design
in Synopsys. Non-final Act. 3–7 (citing Spec. ¶¶ 20–23, 27, 28, 34, 100,
109–112). With respect to the recited additional elements, the Examiner
determines “claim 1 recited a generic computer and EDA tool/software to
perform manipulating (i.e., Engineering Change Order) data information to
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execute the mental process,” which “are readily identifiable as basis
computer components that individually perform purely generic function of
data manipulating of circuit design data to achieve the result that have been
well-known in the prior art.” Ans. 7–8. The Examiner further contrasts the
appealed claims with those in Amdocs,4 Enfish,5 Synopsys,6 BASCOM,7
DDR,8 and McRO9 and concludes the recited features “do not add
significantly more than the abstract idea.” Non-final Act. 8–10.
Appellant contends, similar to the claims of Enfish, “[t]he claims of
the present patent application are directed to an improvement in the

4 Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016) (explaining that, in determining whether claims are patent-eligible
under § 101, “the decisional mechanism courts now apply is 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”).
5 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (explaining
a specific type of data structure designed to improve the computer or its
components’ functionality or efficiency, or otherwise change the way those
devices function).
6 Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (“a claim for a new abstract idea is still an abstract idea.”) (emphasis
omitted).
7 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1348 (Fed. Cir. 2016) (“We have found software-related patents
eligible under both steps of the test Alice sets out. We found a patent to a
particular improvement to a database system patent-eligible under step one
in Enfish . . . .”).
8 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) (“[T]he claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks.”).
9 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15
(Fed. Cir. 2016) (finding claims not abstract because they “focused on a
specific asserted improvement in computer animation”).
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way an EDA tool operates, specifically in the implementation of a circuit
design comprising FinFETs by using FinFET block based cells,” which
“speeds up the implementation of the circuit design significantly, enables
more and finer granularity cell variation choices to be made available to
implement a given logic function, and is beneficial to the design of future
integrated circuit technology.” Appeal Br. 11. According to Appellant,
because “the claim considered in Enfish also does not require any physical
results,” “it would not be sufficient by itself to find Appellant’s claim patent
ineligible, merely because it does not recite the creation of a physical final
product.” Appeal Br. 13–14. With respect to the recited additional
elements, Appellant contends the recited features included “in the sets of
semiconductor fins of FinFET transistors” constitute additional elements that
“transform the nature of the claim into a patent-eligible application of the
idea” because “[t]hey are physical structures that can be found in physical
integrated circuit chips.” Appeal Br. 16–17. Additionally, Appellant argues
the Specification “describes an unconventional way to define cells for a cell
library, that takes particular advantage of unique differences between
FinFETs and planar transistors, differences which substantially increase the
flexibility with which circuits can be laid out, placed and routed.” See
Appeal Br. 19–20 (citing Spec. ¶¶ 111–112).
Legal Principles
Section 101 of the Patent Act provides “[w]hoever 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.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
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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) (internal quotation marks and citation
omitted).
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,
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. Kappos, 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, 191
(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 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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If the claim is “directed to” an abstract idea, we turn 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 (citation 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.
In January 2019, the PTO published revised guidance on the
application of § 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” Id. at 51; see also October 2019 Update at 1
(October 2019 Update: Subject Matter Eligibility).10 Under the 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 activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1); 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)) (9th ed. rev.
08.2017 Jan. 2018) (Step 2A, Prong 2).

10 USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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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. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Discussion
Abstract Idea
Turning to claim 1, we first note that the claim recites a system for
circuit design on an electronic design automation tool configured to perform
functions that fall 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. We therefore determine (1) whether claim 1 recites a judicial
exception (Guidance Step 2A — Prong 1) and, if so, (2) whether the
identified judicial exception is integrated into a practical application
(Guidance Step 2A — Prong 2). See Guidance, 84 Fed. Reg. at 52–55.
We agree with the Examiner that claim 1 recites limitations that are
directed to analyzing circuit design data, providing a physical circuit
representation, and applying the representation in designing an integrated
circuit, similar to the claims determined to be directed to extracting data and
recognizing specific information from the extracted data in Content
Extraction and Synopsys. See Ans. 2. In other words, the claimed method
steps recite a judicial exception that can be categorized as mental processes,
i.e., concepts performed in the human mind or using pen and paper
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(including an observation, evaluation, judgment, and opinion) under the
Guidance, 84 Fed. Reg. at 52. See also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(holding that presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis).
The recited functions of “transform . . . a logical circuit representation
of a D-flip flop into a physical circuit representation” and “use the D-flip
flop in automated design of an integrated circuit” constitute mental
processes or concepts performed in the human mind. People can determine
the recited circuit representation and incorporate those circuits in a set of
integrated circuit designs by, for example, using a list of circuit
representations, their interconnects, and fitting them together.
With respect to providing and using circuit representations in the
automated design of an integrated circuit having specific semiconductor fins
of FinFET transistors, we disagree with Appellant (see Appeal Br. 10–13)
that the focus of the claims is on a technical improvement. The mere
recitation of retrieving and transforming data and applying the results to
automate circuit design in claims 1, 10, and 11 do not embody an
improvement in computer capabilities as in Enfish. See Enfish, 822 F.3d at
1336. Similarly, using a computer merely automates and accelerates the
underlying, patent-ineligible invention that could be performed via pen and
paper or in a person’s mind. See Versata Dev. Grp., Inc. v. SAP Am., Inc.,
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793 F.3d 1306, 1335 (Fed. Cir. 2015). Thus, we determine that the claims
relate to the judicial exception identified above.
In a similar vein, we have treated analyzing information as steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category. See,
e.g., TLI Commc’ns, 823 F.3d at 613; Digitech, 758 F.3d at 1351;
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950, 955
(Fed. Cir. 2014); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); SiRF Tech., 601 F.3d
at 1333; see also Mayo, 132 S. Ct. at 1301; Parker, 437 U.S. at 589–90;
Benson, 409 U.S. at 67. That is, merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis. See, e.g., Content Extraction and
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347
(Fed.Cir.2014).
We also note the recited process to “use the D-flip flop in automated
design of an integrated circuit,” wherein a certain configuration of FinFET
transistors are used, merely collect and present circuit representation
information. Courts have found such data gathering and presenting steps to
be insignificant extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943,
963 (Fed. Cir. 2008) (en banc), aff’d sub nom. Bilski.
Integration of the Abstract Idea into a Practical Application —
Step 2A, Prong Two
Having determined that claims 1, 10, and 11 recite abstract mental
processes, we next look to determine whether the claims recite “additional
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elements that integrate the judicial exception into a practical application.”
Guidance, 84 Fed. Reg. at 53–54. We specifically determine whether the
claim applies, relies on, or uses the abstract idea in a manner that imposes a
meaningful limit on the abstract idea, such that the claim is more than a
drafting effort designed to monopolize the abstract idea. See Guidance, 84
Fed. Reg. at 54–55. We therefore (1) identify whether there are any
additional recited elements beyond the abstract idea, and (2) evaluate those
elements individually and collectively to determine whether they integrate
the exception into a practical application. See id.11
Here, the recited EDA tool, D-flip flop, FinFET block, and circuit
components in claim 1, as well as the processor, memory and instructions
executable by a data processor in claims 10 and 11, are the only recited

11 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 id.
§ 2106.05(b)); (3) effecting a transformation or reduction of a particular
article to a different state or thing (see id. § 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 id. § 2106.05(e)). See Guidance,
84 Fed. Reg. at 54–55 (“Prong Two”). In contrast, 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, merely
including 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(f)); (2) adding insignificant extra-solution activity to the judicial
exception (see id. § 2106.05(g)); and (3) generally linking the use of the
judicial exception to a particular technological environment or field of use
(see id. § 2106.05(h)). See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
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elements beyond the abstract idea, but these additional elements do not
integrate the abstract idea into a practical application when reading claims 1,
10, and 11 as a whole. As discussed below, the additional elements do not
improve computer capabilities or a technical field. Nor do they implement
the abstract ideas on a particular machine that is integral to the claims or
effect a transformation or reduction of a particular article to a different state
or thing. Guidance, 84 Fed. Reg. at 55. They simply use computers and
other components as tools to apply the abstract ideas. “[M]ere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 573 U.S. at 223; see also Enfish, 822 F.3d
at 1335‒36.
The above-mentioned elements employ generic components that
perform generic functions of collecting, analyzing, and processing data
(digital data comprising logical circuit representation of a D-flip flop
FinFET block-based cells from the cell library), which do not integrate the
abstract ideas into a practical application. See Guidance, 84 Fed. Reg. at 55
& n.31. These recited functions are performed by processing components
that are disclosed as a cell library and a processor for implementing the
design, and more specifically embodied in processor 214, storage subsystem
224, user interface devices 222 and 220, and a network interface 216. See
Fig. 2A, Spec. ¶¶ 35–42. Based on the description of the process and the
system recited in claims 1, 10, and 11, the logical circuit representation of a
D-flip flop is transformed into a physical circuit representation by generic
components listed above and used to design an integrated circuit, all based
on generic components performing generic software instructions. Simply
adding generic hardware and computer components to perform abstract ideas
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does not integrate those ideas into a practical application. See Guidance, 84
Fed. Reg. at 55 (identifying “merely includ[ing] instructions to implement
an abstract idea on a computer” as an example of when an abstract idea has
not been integrated into a practical application).
It is well settled that “mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice, 573 U.S. at 223 (“Stating an abstract idea while adding the words
‘apply it with a computer’ simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer amounts to a
mere instruction to ‘implemen[t]’ an abstract idea ‘on ... a computer,’ . . .
that addition cannot impart patent eligibility.”) (quoting Mayo, 566 U.S. at
82); see Guidance, 84 Fed. Reg. at 55 & n.30. The lack of details about
these elements also indicates that the above-mentioned elements are generic
computer components. See Intellectual Ventures I LLC v. Erie Indem. Co.,
850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so
lacking in implementation details that it amounts to merely a generic
component (software, hardware, or firmware) that permits the performance
of the abstract idea, i.e., to retrieve the user-specific resources.”).
In other words, unlike the claimed invention in McRO that improved
how the physical display operated to produce better quality images, the
claimed invention here merely uses generic computing components to
identify a physical circuit representation associated with a logical circuit
presentation of a D-flip flop for automated design of an integrated circuit.
See Appeal Br. 13–14. This generic computer implementation is not only
directed to a mental process, but also does not improve the underlying
technology, such as a display mechanism as was the case in McRO. See
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McRO, 837 F.3d at 1314–15 (finding claims not abstract because they
“focused on a specific asserted improvement in computer animation”); see
also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
(distinguishing McRO).
Additionally, we are not persuaded that the claimed invention
addresses the specific problem of automated circuit design. See Reply Br. 2.
Likewise, the functions recited in claims 1, 10, and 11 do not improve the
technology or the technical field of integrated circuit design and merely use
generic computer components and functions to perform the recited steps.
Also, the recited method steps do not require a “particular machine” and can
be utilized with a general purpose computer, and the steps performed are
purely conventional. In this case, contrary to Appellant’s assertion that
“Appellant’s claims do require a computer (an EDA tool; a data processing
system; a cell library), and as explained more fully in Appellant’s opening
brief at 11–13, this computer is improved by the claimed introduction of
‘FinFET block based cells,’ defined in the claim, to perform the conversion”
(Reply Br. 8), the general purpose computer and the related software
components are merely objects on which the method operates in a
conventional manner. Further, the claim as a whole fails to affect any
particular transformation of an article to a different state. The recited steps
fail to provide meaningful limitations to limit the judicial exception and
rather are mere instructions to apply the method to a generic computer.
Thus, the claims do not integrate the judicial exception into a practical
application. Further, the claims do not (1) improve the functioning of a
computer or other technology, (2) are not applied with any particular
machine (except for a generic computer), (3) do not effect a transformation
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of a particular article to a different state, and (4) are not applied in
any 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(a)–(c), (e)–(h).
Inventive Concept — Step 2B
Because we determine claims 1 and 13 are “directed to” an abstract
idea, we consider whether the claims recite an “inventive concept.” Under
the Guidance, if a claim: (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, 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. See Guidance, 84 Fed. Reg. at 56.
We agree with the Examiner that Appellant’s disclosure refers to the
recited components of a FinFET, including the parallel fins and the isolation
structure, as data files that are stored away. Ans. 9 (citing Spec. ¶ 100; Fig.
12). As discussed above, we are unpersuaded by Appellant’s contentions
(Reply Br. 6–9) and find the additional elements, other than the data files
representing the circuit components, performing the recited functions
include generic data collection and processing elements without requiring
any specific functions other than the known functions associated with those
components. See Ans. 12 (citing Spec. ¶ 41). As discussed above, the
Specification describes generic processing components that are disclosed as
a cell library and a processor for implementing the design including a
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processor, storage system, user interface devices, and a network interface.
See Fig. 2A, Spec. ¶¶ 35–42. Using generic computer components to
perform abstract ideas does not provide the necessary inventive concept.
See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.”). Contrary to Appellant’s argument that, in citing to Amdocs, the
Examiner relied on a “far too narrow reading of the principles set forth in
Amdocs” and ignored the unconventional way “to define cells for a cell
library” (Appeal Br. 19; Reply Br. 14), we find Appellant’s Specification
expressly describes well-known examples of using a cell that is selected
from a cell library to design integrated circuits. See Fig. 2A; Spec. ¶¶ 35–
42. The specific FinFET structure and layout, in contrast with a planar
transistor, in fact represent a block of data or information that is stored in a
library of cells and used as a building block in integrated circuit design. See
Figs. 2B–2C. Considering the elements of the claims both individually and
as “an ordered combination” the functions performed by the computer
system and other software components at each step of the process are purely
conventional. Each function of the system claims does no more than require
a generic computer to perform a generic computer function, i.e.,
transforming a logical circuit representation of a D-flip flop into a physical
circuit representation. Thus, these elements, taken individually or together,
do not amount to “significantly more” than the abstract ideas themselves.
Moreover, we note the Examiner provides Berkheimer12 evidence in
support of the “well-understood, routine, and conventional” fact findings in

12 Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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the form of citations to numerous Federal Circuit case authorities, which
Appellant has not substantively and persuasively distinguished from the
claims before us on appeal. See Ans. 2–13. In fact, the cited list of cases in
the MPEP § 2106.05(d)(II) supports the characterization of the recited
“transform on a data processing system a logical circuit representation of a
D-flip flop into a physical circuit representation” and “use the D-flip flop in
automated design of an integrated circuit” using generic data processor and
computer components as “well-understood, routine, and conventional
functions when they are claimed in a merely generic manner (e.g., at a high
level of generality).” See USPTO, Memorandum on Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19,
2018). Consequently, we find that the above-identified claim elements, at
the high level of generality recited in claims 1, 10, and 11, constitute no
more than what would have been well-understood, routine and conventional
to a skilled artisan.
Conclusion
For at least the above reasons, we agree with the Examiner that
claims 1, 10, and 11 are “directed to” an abstract idea and do not recite an
“inventive concept.” Accordingly, we sustain the Examiner’s rejection of
claims 1, 10, and 11, as well as the remaining claims which fail to include
additional elements that add significantly more to the abstract idea, under
35 U.S.C. § 101.
Appeal 2019-000245
Application 14/727,714

18
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–11 101 Eligibility 1, 4–11
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED