Ex Parte Buchner et al

Patent Trial and Appeal Board

Nov 5, 2012

10287143 (P.T.A.B. Nov. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN A. BUCHNER and VINEET GOEL
____________

Appeal 2010-005195
Application 10/287,143
Technology Center 2600
____________

Before JEFFREY S. SMITH, BRUCE R. WINSOR, and
STANLEY M. WEINBERG, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005195
Application 10/287,143

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20 and 22, which are the only claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.

Illustrative Claim
1. A method of tessellating a higher-order surface that is used to
model a graphical surface, said method comprising:
storing triangle-evaluation-function tessellation weighting factors;
storing vertex indices of the higher-order triangular surface;
retrieving triangle-evaluation-function tessellation weighting factors
and vertex indices of the higher-order triangular surface using a dual-index
address;
calculating new vertices of a tessellation triangle for said higher-order
triangular surface by evaluating said triangle-evaluation function using the
vertices of the higher-order triangular surface and weighting values that are
identified by the dual-index address; and
wherein the dual index address points to different memory locations
wherein one memory location stores tessellation weighting factors and
another memory location stores vertex indices of the higher order triangular
surface.

Prior Art
Morein US 6,314,490 B1 Nov. 6, 2001
Kato US 6,462,738 B1 Oct. 8, 2002
Alex Vlachos et al., Curved PN Triangles, PROC. 2001 SYMP. ON
INTERACTIVE 3D GRAPHICS 159 (Mar. 2001).

Appeal 2010-005195
Application 10/287,143

3
The Examiner’s Rejections
Claims 1-9, 11-16, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kato and Morein.
Claims 10 and 17-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kato, Morein, and Vlachos.

ANALYSIS
Section 103 rejection of claims 1-9, 11-16, and 22
Claim 1 recites “the dual index address points to different memory
locations.” The Examiner finds that address 410 shown in Figure 4 of
Morein teaches a dual index address that points to different memory
locations as shown in steps 710 and 722 of Morein. Ans. 5. Appellants
contend that Morein teaches an address that points to a single memory
location and is therefore not a dual index address. App. Br. 15. In
particular, Appellants contend that Morein uses an address that points to a
single memory location, then modifies the address into another address if a
different memory location needs to be accessed. App. Br. 15-16. The
Examiner find that reordering bits is not excluded by the claim, and no new
information is required to complete a second memory access. Ans. 16-17.
The Examiner also finds that Morein teaches an embodiment where the dual
index address can be used directly, without modification. Ans. 17 (citing
col. 6, ll. 52-54). Appellants contend that Morein teaches discarding,
shifting, and filling bits to modify the first address into the second address.
Reply Br. 1-2.
Address 410 of Morein is an address for a stream data memory access.
Col. 3, ll. 20-22. The data in address 410 is relocated to generate a cache
Appeal 2010-005195
Application 10/287,143

4
address 420. Col. 3, ll. 40-42. The cache memory is further modified by
discarding and replacing a more significant portion with a predetermined bit
pattern 432 to generate a memory address 430. Col. 4, ll. 24-40.
The addresses 410, 420, and 430 shown in Figure 4 of Morein are
three different addresses. To generate address 430 that points to a location
in another memory structure, bits from cache address 420 are discarded and
replaced with other bits. The cache address 420 therefore does not point to a
memory location in another memory structure. Similarly, address 430 does
not point to a location in cache.
We disagree with the Examiner’s finding that a processor that receives
a single address, then processes the single address to generate to other
addresses by reordering, discarding, and adding bits teaches a dual index
address that points to different memory locations. We conclude that the
scope of “dual index address points to different memory locations” excludes
reordering bits, discarding bits, and adding different bits to an initial address
to generate another address as taught by Morein.
We also disagree with the Examiner’s finding that column 6, lines 52-
54, of Morein teaches using a received address without modification to
access different memory locations. This section of Morein teaches that in
other embodiments, “the second memory address may be generated directly
from the address received at step 702.” The Examiner has not explained
how generating a second address from a received address teaches that the
received address is used without modification to access different memory
locations.
We do not sustain the rejection of claim 1 and corresponding
dependent claims 2-8 and 22 under 35 U.S.C. § 103. Independent claim 9
Appeal 2010-005195
Application 10/287,143

5
contains a limitation similar to that of claim 1 for which the rejection fails.
We do not sustain the rejection of claim 9 and corresponding dependent
claims 11-16 under 35 U.S.C. § 103.

Section 103 rejection of claims 10 and 17-20
Claim 10 depends from claim 9, which recites “the dual index address
points to different memory locations.” The Examiner relies on Morein to
teach the dual index address. Ans. 13. We do not sustain the rejection of
claim 10 for the reasons given in our analysis of claim 9 above.
Claim 17 recites “the dual index address points to different memory
locations.” The Examiner relies on Morein to teach the dual index address.
Ans. 13-14. We do not agree with the Examiner for the reasons given in our
analysis of claim 1 above. We do not sustain the rejection of claim 17 and
corresponding dependent claims 18-20 under 35 U.S.C. § 103.

New grounds of rejection -- § 101 non-statutory subject matter
Claims 1-20 and 22 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

Method claims 1-16 and 22
“Whoever 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. While the scope of patentable
subject matter encompassed by § 101 is “extremely broad” and intended to
“‘include anything under the sun that is made by man,’” it is by no means
Appeal 2010-005195
Application 10/287,143

6
unlimited. In re Comiskey, 554 F.3d 967, 977 (Fed. Cir. 2009) (quoting
Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). For example, laws of
nature, abstract ideas, and natural phenomena are excluded from patent
protection. Diamond v. Diehr, 450 U.S. 175, 188 (1981).
If claim 1 is directed to statutory subject matter, the claim falls within
the statutory class of “process.” “[T]he machine-or-transformation test is a
useful and important clue, an investigative tool, for determining whether
some claimed inventions are processes under § 101.” Bilski v. Kappos, 130
S. Ct. 3218, 3227 (2010). Although not the sole test, the machine-or-
transformation test is nonetheless an investigative tool that asks whether a
claimed process is (1) tied to a particular machine or apparatus, or (2)
transforms a particular article into a different state or thing. Id. at 3225,
3227 (quoting In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc)). If
claim 1 is tied to a particular machine, or transforms a particular article to a
different state or thing, the claim is less likely to be drawn to an abstract
idea; if not, the claim is more likely to be so drawn. See MPEP § 2106.
Claim 1 does not recite a machine, let alone a particular machine.
The steps of storing data, retrieving data using a dual-index address
that points to different memory locations, and calculating new vertices using
the retrieved data imply that the method is performed by a processor that
retrieves data from memory and calculates new vertices. Even if the claimed
method explicitly recited memory for “storing” and a processor for
“retrieving” and “calculating,” the combination of memory and a processor
is not a type of particular machine sufficient to render the claimed method
patent-eligible. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34
(Fed. Cir. 2012) (“The computer here does no more than the computer in
Appeal 2010-005195
Application 10/287,143

7
Benson to limit the scope of the claim.”) (citing Gottschalk v. Benson, 409
U.S. 63, 68 (1972)); SiRF Technology, Inc. v. International Trade Com’n,
601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a
machine to impose a meaningful limit on the scope of the claim, it must play
a significant part in permitting the claimed method to be performed, rather
than function solely as an obvious mechanism for permitting a solution to be
achieved more quickly, i.e., through the utilization of a computer for
performing calculations.”). We find that claim 1 is not drawn to a particular
machine.
Claim 1 also fails the second branch of the “machine-or-
transformation” test. The claim does not contain or require an article that is
transformed and reduced “to a different state or thing.” See Diamond v.
Diehr, 450 U.S. at 184. In Bilski, our reviewing court identified a
circumstance in which electronic transformation of data into a particular
visual depiction of a physical object on a display may be considered a
transformation sufficient to render a claimed process patent-eligible. See
Bilski, 545 F.3d at 962-63 (discussing In re Abele, 684 F.2d 902, 908-09
(CCPA 1982)). Even if the method of claim 1 were limited to being
implemented on a general purpose computer, claim 1 fails to recite anything
more than a mathematical algorithm for “calculating” new vertices of a
tessellation triangle, which is not a “transformation” that is recognized by
our reviewing court, or by the U.S. Supreme Court, sufficient to render the
claimed method patent-eligible.
Thus, claim 1 fails the machine-or-transformation test. However, our
analysis does not end there. In holding that the machine-or-transformation
test “is not the sole test for deciding whether an invention is a patent-eligible
Appeal 2010-005195
Application 10/287,143

8
process,” Bilski, 130 S.Ct. at 3227, the Supreme Court has made clear that a
claim’s failure to satisfy the machine-or-transformation test is not dispositive
of the § 101 inquiry. We find that claim 1 fails to recite patent-eligible
subject matter because it is drawn to an unpatentable mathematical
algorithm, which is a subcategory of unpatentable abstract ideas. Diamond
v. Diehr, 450 U.S. 175, 191-192 (1981); Parker v. Flook, 437 U.S. 584
(1978); Benson, 409 U.S. 63.
Claim 1 recites the steps of storing data, retrieving the stored data, and
calculating a number using the retrieved data. The steps of storing and
retrieving data are mere data gathering steps that cannot make an otherwise
nonstatutory claim statutory. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011). The step of “calculating new vertices
of a tessellation triangle for said higher-order triangular surface by
evaluating said triangle-evaluation function using the vertices of the higher-
order triangular surface and weighting values that are identified by the dual-
index address” is a “mathematical formula [that] has no substantial practical
application except in connection with a digital computer, which means that
[the claim] would wholly pre-empt the mathematical formula and in
practical effect would be a patent on the algorithm itself.” Benson, 409 U.S.
at 71-72.
Claim 1 therefore pre-empts a fundamental principle, rather than
being limited to a particular application of the principle. Dependent claims
2-8 and 22 fail to recite anything more than additional steps of the
mathematical algorithm, insignificant post-solution activity, or field of use
limitations.
Appeal 2010-005195
Application 10/287,143

9
Independent claim 9 fails the machine-or-transformation test for the
reasons given in our analysis of claim 1. Claim 9 recites a mathematical
algorithm which is non-statutory subject matter. Benson, 409 U.S. at 71-72.
Dependent claims 10-16 fail to recite anything more than additional steps of
the mathematical algorithm, insignificant post-solution activity, or field of
use limitations.

Processor claims 17-20
Claim 17 recites a processor comprised of an address fetch engine, a
cache memory, and a vertex shader processor. That a claim may appear on
its face to be directed to subject matter within a § 101 statutory class does
not end the analysis. The ultimate question is whether the claimed subject
matter falls within a judicially created exception to § 101. See In re Alappat,
33 F.3d 1526, 1542 (Fed. Cir. 1994). “‘Benson . . . applies equally whether
an invention is claimed as an apparatus or process, because the form of the
claim is often an exercise in drafting.’” Id. (quoting In re Johnson, 589 F.2d
1070, 1077 (CCPA 1978)). An abstract idea can be unpatentable, even when
performed by a computer. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1376 (Fed. Cir. 2011). “[T]he Supreme Court … found
other method claims invalid under § 101 for being drawn to abstract ideas.
In so holding, the Court did not indicate that those claims could have
avoided invalidity under § 101 by merely requiring a computer to perform
the method….” Id. See also Bancorp Services, LLC V. Sun Life Assur. Co.
of Canada, 687 F.3d 1266 (Fed. Cir. 2012).
If a claimed machine (or article of manufacture) involves a
mathematical algorithm, then we must determine whether the scope of the
Appeal 2010-005195
Application 10/287,143

10
claimed invention encompasses one of the judicially-created exceptions.
This determination of claim scope requires that we make two inquiries:
(1) Is the claim limited to a tangible practical application, in which the
mathematical algorithm is applied, that results in a real-world use (e.g., “not
a mere field-of-use label having no significance”)? Alappat, 33 F.3d at
1544.
(2) Is the claim limited so as to not encompass substantially all
practical applications of the mathematical algorithm either “in all fields” of
use of the algorithm or even in “only one field”? Ex parte Gutta, 93
USPQ2d 1025, 1031 (BPAI 2009) (precedential); see also MPEP § 2106
II.A.(b) (A claim that is directed to a machine, such as a machine that
operates in accordance with F=ma and includes no tangible structural
elements under the broadest reasonable interpretation covers the operating
principle with no limits on the claim scope. The claim wholly embraces the
mathematical concept and is not patent eligible subject matter.).
The body of claim 17 recites “an address fetch engine” defined solely
by the function of retrieving data, “a cache memory” defined solely by the
function of storing data, and “a vertex shader processor” defined solely by
the function of receiving data. However, retrieving data, storing data, and
receiving data do not define tangible structural limitations sufficient to
render the claim a particular machine. The processor set forth in claim 17
does not do anything more than gather data for performing a mathematical
algorithm. Furthermore, the mathematical algorithm involved here has no
substantial practical application except for calculating a result, which means
that the claim wholly pre-empts the mathematical formula and in practical
Appeal 2010-005195
Application 10/287,143

11
effect is a claim for the algorithm itself. Thus, claim 17 fails the first
inquiry.
Claim 17 recites a “processor” that appears to be defined solely by
data gathering for performing the method of claim 1, which method pre-
empts substantially all uses of a mathematical algorithm, which is an
unpatentable fundamental principle, as discussed in our analysis of claim 1.
The claimed processor does nothing more than receive data used for
calculating new vertices of a triangle tessellation. We find that claim 17 is
not limited to a particular application but encompasses all practical
applications of the mathematical algorithm. Thus, claim 17 fails the second
inquiry.
Based on our consideration of representative claims 1 and 17, we
conclude that claims 1-20 and 22 are not directed to statutory subject matter
in accordance with 35 U.S.C. § 101.

DECISION
The rejection of claims 1-9, 11-16, and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Kato and Morein is reversed.
The rejection of claims 10 and 17-20 under 35 U.S.C. § 103(a) as
being unpatentable over Kato, Morein, and Vlachos is reversed.
We enter a new ground of rejection for claims 1-20 and 22 as
unpatentable under 35 U.S.C. § 101.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Appeal 2010-005195
Application 10/287,143

12
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

babc