Ex Parte Fellers

Patent Trials and Appeals Board

Mar 15, 2019

14005924 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/005,924 09/18/2013
143308 7590 03/19/2019
FISH & RICHARDSON P.C. (Dolby)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Matthew C. Fellers
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.
23156-0029US 1 6500
EXAMINER
SAINT CYR, LEONARD
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
03/19/2019 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):
P ATDOCTC@fr.com
patents@dolby.com
mguo@dolby.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW C. FELLERS
Appeal2017-004160
Application 14/005,924
Technology Center 2600
Before JEREMY J. CURCURI, JUSTIN BUSCH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1---6 and 8-16, which constitute all the
claims pending in this application. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b ).
We affirm.
CLAIMED SUBJECT MATTER
Appellant's claimed invention relates to applying "filterbanks to
limited bandwidth audio channels such as so called low-frequency-effects
(LFE) channels using fewer computational resources." Spec. 1: 8-11. More
specifically, Appellant contends known multichannel audio coding systems
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implement filterbanks using transforms that "have many attractive
properties" but require "significant processing or computational resources"
to perform the needed calculations. Spec. 1 :33-2: 1. Appellant also
contends the computational complexity of certain known more efficient
transform techniques, which reduce the needed computational resources,
varies with the length of the transform. Spec. 2: 1--4. Appellant
acknowledges it is known to reduce "computational complexity by using
shorter transform lengths to process audio channels with narrower
bandwidths" and, "[b ]ecause the bandwidth of the LFE channel is narrower,
known techniques can be used to perform a filterbank transform more
efficiently for the LFE channel than can be performed for one of the full-
bandwidth channels." Spec. 2:4--16.
Appellant contends their invention provides methods "to perform
transforms that implement filterbanks for limited-bandwidth channel signals
more efficiently than is possible using known techniques." Spec. 2:21-23.
Appellant explains that "[t]he present invention is directed toward reducing
the computational resources needed to perform the transform that
implements the synthesis filterbank 231 or 232 in the receiver 200 used to
generate narrower bandwidth output audio signals." Spec. 4: 11-13; see also
Spec. 4:16-19 (explaining that the invention also may be used to reduce
computational resources used to implement the analysis filterbank(s) applied
to narrower bandwidth audio signals at a transmitter). Appellant explains
that the claimed "folding technique," which involves three stages, performs
conventional direct transforms more efficiently. Spec. 4:26-27; Fig. 2; see
Spec. 4:28-31 (explaining that the second of the three transforms, which has
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a shorter length than the direct transform implemented in the folding
technique, "is referred to as a 'folded transform'").
Claims 1, 6, and 12 are independent claims. Claim 1 is reproduced
below:
1. A method performed by a device for processing a digital
audio signal, wherein the method comprises:
the device receiving a block of real-valued transform
coefficients, wherein the block has a quantity K of real-valued
transform coefficients of which only a number L of the real-
valued transform coefficients represent spectral components of a
limited-bandwidth audio signal, YzL < M < K, and Mis a power
of two;
the device applying a first-transform of length R to either
the L real-valued transform coefficients representing spectral
components of the limited-bandwidth audio signal, or complex-
valued coefficients derived from the L real-valued transform
coefficients representing spectral components of the limited-
bandwidth audio signal, wherein R = Mand Pis a power of two; p
the device applying a bank of Q second transforms of
length P to outputs of the first transform; and
the device deriving a sequence of N real-valued signal
samples from outputs of the bank of second transforms, wherein
N = 2·K and the real-valued signal samples represent temporal
components of the limited-bandwidth audio signal.
REJECTION
Claims 1---6 and 8-16 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Final Act. 3--4.
ANALYSIS
FRAMEWORK FOR JUDICIAL EXCEPTIONS UNDER 35 U.S.C. § 101
The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 573 U.S. 208, 217 (2014); Mayo Collaborative Servs. v. Prometheus
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Labs., Inc., 566 U.S. 66, 70-71 (2012). In addition, the Office recently
published revised guidance for evaluating subject matter eligibility under
35 U.S.C. § 101, specifically with respect to applying the Alice framework.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) ("Guidance").
If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter)
then the first inquiry is whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. Per the Guidance, this first inquiry
has two prongs of analysis: (i) does the claim recite a judicial exception
( e.g., an abstract idea), including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activities such
as a fundamental economic practice, or mental processes) and (ii) if so, is the
judicial exception integrated into a practical application. 84 Fed. Reg. 50,
54. Under the Guidance, if the judicial exception is integrated into a
practical application, see infra, the claim is eligible under§ 101. 84 Fed.
Reg. 50, 54--55; see Manual of Patent Examining Procedure (MPEP)
§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018). The Guidance
instructs us that, only after completing analysis under these two "prongs" do
we move to step two of the Alice analysis. 84 Fed. Reg. 50, 51.
Although an abstract idea, itself, is patent ineligible, an application of
the abstract idea may be patent eligible. Alice, 573 U.S. at 217. Thus, if the
claim is directed to a judicial exception (i.e., recites a judicial exception and
does not integrate the exception into a practical application), we must
consider "the elements of each claim both individually and 'as an ordered
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combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 573 U.S. at
217 ( quoting Mayo, 566 U.S. at 79, 78); 84 Fed. Reg. 50, 56. In other
words, this search for an inventive concept analyzes whether the claim
contains "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."' Alice, 573 U.S. at 217-18 (quoting Mayo,
566 U.S. at 72-73 (brackets in original)). The Guidance instructs us that
step two of Alice requires evaluating whether the claim adds a specific
limitation beyond the judicial exception that is not "well-understood,
routine, conventional" in the field or merely appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. 84 Fed. Reg. 50, 56;
see MPEP § 2106.05( d).
STEP ONE OF ALICE FRAMEWORK
In step one of the Alice analysis, we "determine whether the claims at
issue are directed to a patent-ineligible concept," such as an abstract idea.
Alice, 573 U.S. at 217-18. The Examiner concludes claim 11 is directed to
and "built around the behavior of mathematically defined of transforming-
based filterbank concept," which is an abstract idea. Final Act. 2--4. The
Examiner explains that "all [the claimed] steps are directed to mathematical
calculations," not to processing audio signals. Ans. 3. The Examiner
explains the claimed steps merely define mathematical relationships without
1 Appellant argues claims 1---6 and 8-16 as a group. See Appeal Br. 4--16.
We select independent claim 1 as representative of claims 1-6 and 8-16.
See 37 C.F.R. § 4I.37(c)(l)(iv).
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improving "how one would solve any of the problems involved in getting a
computer to actually apply the exception" rather than "a particular useful
application." Ans. 4--5.
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). There is no definitive rule to determine what constitutes an
"abstract idea." Rather, the Federal Circuit has explained that "both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases." Enfzsh, 822 F.3d at 1334; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent-ineligible 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").
Claim 1 recites a method in which a device performs four steps:
( 1) receiving transform coefficients ( a subset of which represent spectral
components of a limited-bandwidth audio signal); (2) applying a transform
to the subset of coefficients ( or derivations thereof); (3) applying a transform
to the result of the first transform; and (4) deriving signal samples (which
represent temporal components of the limited-bandwidth audio signal) from
the output of the second transform. Both applying a transform steps and the
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deriving signal samples step recite applying mathematical relationships.
Specifically, Appellant identifies various mathematical formulas in the
Specification in support of the claimed steps. See Amended Appeal Br. 2-3
(citing Spec. 6:6-19, 7:14--9:2). 2
The portions of the Specification Appellant cites are the sections of
the disclosure titled "2. Folding Technique" and "4. Transform
Decomposition-Technique." Spec. 6:6-19, 7:14--9:2. The cited portions of
Appellant's Specification simply describe mathematical relationships, using
both formulas and prose. Spec. 6:6-19, 7: 14--9:2.
The courts have long held that "[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." Parker v.
Flook, 437 U.S. 584, 595 (1978); see Gottschalkv. Benson, 409 U.S. 63, 67,
69. The Federal Circuit has made clear that a claim may be directed to
abstract mathematical relationships even if the claims do not recite a
formula. See Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758
F.3d 1344, 1350-51. In Digitech, the court determined claims reciting
2 Appellant cites to paragraph numbers of the Specification throughout the
Appeal Brief and Reply Brief. The Specification, however, has no
paragraph numbers. Therefore, in response to a "Notification ofNon-
Compliant Appeal Brief," mailed on June 27, 2016, Appellant filed a second
appeal brief ("Amended Appeal Brief') that included a "Summary of
Claimed Subject Matter" section, which references the line and page
numbers of the original Specification rather than paragraph numbers.
Although we generally cite to the originally filed Appeal Brief in this
opinion, when citing to the "Summary of Claimed Subject Matter," we cite
to Appellant's Amended Appeal Brief. All of our citations to Appellant's
Specification use page and line numbers, except when noting Appellant's
citations to paragraph numbers of the Specification in the Briefs.
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generating two sets of data based on existing information and combining the
two sets into a single data set recited "an ineligible abstract process of
gathering and combining data that does not require input from a physical
device," notwithstanding the claims' failure to recite a particular
mathematical formula. Digitech, 758 F.3d at 1351 ("Without additional
limitations, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
eligible."). Therefore, we agree with the Examiner that Appellant's claims
recite mathematical formulas, which fall under the Guidance's Mathematical
concepts" category of abstract ideas. 84 Fed. Reg. 50, 52.
Because Appellant's claims recite a judicial exception, we next
determine whether the claims integrate the judicial exception into a practical
application. 84 Fed. Reg. 50, 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are "any additional elements recited in the claim beyond the judicial
exception(s)" and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
84 Fed. Reg. 50, 54--55 (emphasis added); see also MPEP § 2106.05(a}-(c),
(e}-(h). As discussed above, both the applying transform steps and the
deriving signal samples step recite the concept of using mathematical
formals or relationships to generate derived data from input data-i.e., the
abstract idea of mathematical concepts, which the Guidance instructs us
encompasses "mathematical relationships, mathematical formula, or
mathematical calculations." 84 Fed. Reg. 50, 52. For purposes of this
decision, we consider the receiving coefficients step and the "device" to be
elements in addition to the recited mathematical concepts.
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The receiving coefficients step recites receiving "a block of ...
coefficients, wherein the block" of coefficients has certain characteristics.
Although this step identifies characteristics of the information received, the
step still recites simply receiving information. This step does not integrate
the abstract mathematical relationships into a practical application because
this step merely is an insignificant pre-solution data gathering activity,
which is necessary in order to perform the first transformation that is part of
the mathematical concepts recited in the claims. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 ("We have held that mere '[data-
gathering] step [ s] cannot make an otherwise nonstatutory claim statutory."'
(citations omitted)); see also 84 Fed. Reg. 55 (court-identified "examples in
which a judicial exception has not been integrated into a practical
application" include when "an additional element adds insignificant extra-
solution activity to the judicial exception"); MPEP § 2106.05(g) ( describing
"a step of obtaining information about credit card transactions, which is
recited as part of a claimed process of analyzing and manipulating the
gathered information by a series of steps in order to detect whether the
transactions were fraudulent" as an exemplary pre-solution activity of data
gathering).
Machine-or-Transformation
Appellant argues the claims recite "a method that is implemented by a
particular machine (i.e., a device for processing a digital audio signal)."
Appeal Br. 12. Appellant argues the recited device is not a generic computer
because "[a] generic computer performs arbitrary operations on arbitrary
data." Appeal Br. 12. Appellant further argues "[t]he particular machine
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performs a specific function and transforms" the received coefficients into a
different state. Appeal Br. 12.
Contrary to Appellant's arguments, the claims do not recite a
particular machine or transformation for performing the claimed calculation
methodology. See MPEP § 2106.05(b}-(c). The device is recited only at a
high level of generality. The claim only limits the device in the preamble,
stating that it is "a device for processing a digital audio signal." Neither the
claim nor the Specification provide any details regarding particular
components that must be in the device. See Spec. 3: 16-17, 12: 13-13: 8
(notably disclosing that the "[d]evices ... may be implemented in a variety
of ways including software for execution by a computer or some other
device that includes more specialized components" emphasis added), Fig. 5.
In light of the generically recited device and Appellant's
Specification, Appellant's arguments do not persuade us the device to be a
particular machine. Contra 84 Fed. Reg. 50, 55 ( explaining that, if "an
additional element implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine," the additional
element(s) may integrate the abstract idea into a practical application); 84
Fed. Reg. 50, 55 n.27 (citing MPEP § 2016.05(b). Instead, with respect to
the device, Appellant's claims merely recite "'apply it' (or an equivalent)
with the judicial exception, or merely includes instructions to implement an
abstract idea on a [device], or merely uses a [device] as a tool to perform an
abstract idea." 84 Fed. Reg. 50, 55. Thus, the "device" recited in the claims
also fails to integrate the abstract mathematical concepts into a practical
app li cation.
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We disagree with Appellant that the additional elements in claim 1
effect a transformation of a particular article into a different state or thing, as
set forth in MPEP § 2106.05( c ). The recited mathematical transformation of
values is a different concept than the transformation of an article into a
different state, which the courts have found relevant to analyzing patent
eligibility. Merely manipulating or reorganizing data, as recited in
Appellant's claimed mathematical concepts, is not enough to satisfy the
transformation test. Cf CyberSource Corp. v. Retail Decisions, Inc., 654
F3.d 1366, 1375 (Fed. Cir. 2011). Moreover, we look to the additional
elements, beyond the abstract ideas themselves, to determine whether these
elements integrate the abstract ideas into a practical application, such as by
recited a particular machine or transformation. See 84 Fed. Reg. 50, 55.
Therefore, we disagree with Appellant that the claims recite a particular
machine or transformation sufficient to integrate the abstract mathematical
concepts into a practical application.
Improvement to a Computer or Other Technology
Appellant argues the claims are directed to applying filterbanks to
LFE channels using fewer computational resources. Appeal Br. 4 ( citing
Spec. ,r 2). Appellant explains that the claimed "folding technique" involves
three stages, the second of which is a "folded transform." Appeal Br. 4
(citing Spec. ,r,r 6, 22). Appellant contends "[t]he folded transform
'improves efficiency because the computational resources needed to perform
the direct transform as opposed to the folded transform in the stage 402 is
greater than the computational resources needed to implement the processes
performed in the pre-processor stage 401 and the post-processor stage 403. "'
Appeal Br. 4 ( citing Spec. ,r 22).
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Appellant summarizes various Federal Circuit and Supreme Court
cases determining the eligibility of claims under 35 U.S.C. § 101 and assert
the "concept of a filterbank ... is not even remotely related to fundamental
economic practices, or conventional business practices, or methods of
organizing human activates." Appeal Br. 6-8. Notably, the Examiner's
rejection does not rely on any of these bases in rejecting the claims as
directed to abstract ideas; rather, the Examiner determines the claims recite
mathematical concepts. Ans. 3 ("the claimed steps are not directed to
processing audio signals as argued by the appellant; all steps are directed to
mathematical calculations"); see Final Act. 2.
Appellants argue their claims improve "the functioning of the
computer itself by allowing the computer to process such digital audio
signals more efficiently and using less resources that is possible using
conventional resources." Appeal Br. 11 ( emphasis omitted) ( citing Spec.
,r,r 22, 28); see Appeal Br. 8-11 ( citing Research Corp. Techs., Inc. v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010)). Appellant also argues the
claims focus "on applying the mathematical algorithm to derive 'temporal
components of the limited-bandwidth audio signal' from 'spectral
components of a limited bandwidth audio signal' for a[ n] LFE channel."
Appeal Br. 8. Appellant further argues "[t]he application of the claim is
specific," and "[t]he improvements to technologies in the marketplace by
using the recited features are clear." Appeal Br. 8-9.
As noted above, the majority of Appellant's claims recite abstract
ideas-i.e., the two applying a transform steps and the deriving step recite
mathematical concepts. Thus, we look to the additional elements recited to
determine whether they integrate the abstract idea into a practical
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application. Here, as already explained, the device is recited at a high level
of generality and amounts to no more than applying the abstract
mathematical concepts on the device. Even to the extent we consider the
fact that the coefficients on which the abstract mathematical concepts are
performed represent certain components of an audio signal or that the results
derived from the abstract mathematical concepts represent other components
of an audio signal to be elements in addition to the abstract idea, we disagree
that these aspects are sufficient to integrate the abstract mathematical
concepts into a practical application.
First, as stated above, the receiving coefficients step is simply
insignificant pre-solution data gathering activity. Second, to the extent the
output is distinct from the mathematical concept of deriving those values, it
is no more than insignificant post-solution activity-i.e., simply outputting
the results of the abstract idea does not integrate the abstract idea into a
practical application. Third, and finally, "generally link[ing] the use of [the
abstract mathematical concepts] to a particular technological environment or
field of use" is not sufficient to integrate the abstract mathematical concepts
into a practical application. 84 Fed. Reg. 50, 55; 84 Fed. Reg. 50, 55 n.31
(citing MPEP § 2106.05(g)).
The combination of the additional elements merely applies the
abstract idea on generic computing components without improving the
underlying computer or technology or imposing any other meaningful limits
on the abstract idea, adding only insignificant pre-solution data gathering.
See MPEP § 2106.05(a), (e}-(g). In other words, claim 1 's recitation of
computing components merely links the abstract idea to a particular
technological environment or field of use. See MPEP § 2106.05(h).
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At first blush, Appellant's claims appear somewhat similar to the
claims determined eligible in Research Corp. See Appeal Br. 8 ( citing
Research Corp., 627 F.3d 859). However, in that case, the Federal Circuit
noted that "[c]ompared to prior art blue noise masks, ... [the] inventive
mask produces higher quality halftone images while using less processor
power and memory space." Research Corp., 627 F.3d at 865. In fact,
Appellant argues only that the recited folded transform method is "more
efficient" than prior methods. Appeal Br. 8-9 (quoting Spec. ,r 38). This is
consistent with the Specification, which explicitly discloses that the folded
transform technique provides identical results to the prior techniques,
"[ e ]xcept for any errors that might occur from finite-precision arithmetic
operations." Spec. 5:4--8; see Spec. 2:21-23 ("It is an object of the present
invention to provide ways that can be used to perform transforms that
implement filterbanks for limited-bandwidth channel signals more
efficiently than is possible using known techniques."), 4:26-27 ("One
technique referred to herein as a 'folding technique' can be used to perform
these direct transforms more efficiently."), 5:8-12 ("This technique
improves efficiency because the additional computational resources needed
to perform the direct transform as opposed to the folded transform in the
stage 402 is greater than the computational resources needed to implement
the processes performed in the pre-processor stage 401 and the
postprocessor stage 403."), 7:15-18 ("A transform decomposition technique
may be used to derive a more efficient method for performing the folded
transform for limited bandwidth signals in which some of the transform
coefficients in a block of frequency-domain transform coefficients are
known to be equal to zero.").
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Appellant's arguments and Specification demonstrate that the
improvements in computational efficiency are a result of choosing different
mathematical relationships than previously used. Thus, we are not
persuaded that Appellant's claims improve a computer or other technology
because the arguments and evidence presented demonstrate that the
improvement is in the abstract idea itself-i.e., the particular calculations
performed. Contra 84 Fed. Reg. 50, 55 (explaining that additional elements
may integrate the abstract idea into a practical application if those elements
"reflect[] an improvement in the functioning of a computer, or an
improvement to other technology or technical field"). We see nothing in the
additional elements, beyond the abstract idea, that constitute an
improvement to a computer or other technology. Nor does Appellant
identify a particular element or combination of elements that improves a
computer or other technology; rather, Appellant merely argues the recited
abstract mathematical concepts improve the computer. See Appeal Br. 8-11.
For the reasons above, we conclude Appellant's claims recite an
abstract idea and fail to integrate the abstract idea into a practical
application. Because we agree with the Examiner that Appellant's claims
are directed to an abstract idea, we tum to step 2 of the Alice analysis.
STEP Two OF ALICE FRAMEWORK
In step two of our Alice analysis, we analyze the claims to determine
if there are additional limitations that individually, or as an ordered
combination, ensure the claims amount to "significantly more" than the
abstract idea. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 72-73,
77-79). As stated in the Guidance, many of the considerations to determine
whether the claims amount to "significantly more" under step two of the
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Alice framework are already considered as part of determining whether the
judicial exception has been integrated into a practical application. 84 Fed.
Reg. 50, 56. Thus, at this point of our analysis, we determine whether the
claims ( 1) add a specific limitation or combination of limitations that are
more than well-understood, routine, conventional activity in the field, or
(2) simply append well-understood, routine, conventional activities at a high
level of generality. 84 Fed. Reg. 50, 56.
Appellant argues "the recited features are not well-understood,
routine, [ and] conventional" because "there [are] currently no pending prior
art-based rejections." Appeal Br. 10. Appellant also argues "claim 1 adds
unconventional steps that confine the claim to a particular useful
application." Appeal Br. 14. Appellant explains the particular order of
mathematical steps performed and the characteristics of those mathematical
transformations and conclude "[t]hese limitations are not conventional."
Appeal Br. 15. Appellant argues the Examiner failed to address these
arguments and "[ e ]ven if assuming, arguendo, that all the claimed steps are
mathematical calculations as transforming coefficients representing spectral
components of a limited-bandwidth signal, the Examiner did not explain
why these steps, alone or in an ordered combination, do not recite
unconventional limitations." Reply Br. 9.
Notably, an inventive concept "cannot be furnished by the
unpatentable law of nature (or natural phenomenon or abstract idea)
itself." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016); see also Alice, 134 S. Ct. at 2355 (explaining that, after
determining a claim is directed to a judicial exception, "we then ask, '[w J hat
else is there in the claims before us?'" ( emphasis added, brackets in original)
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(quoting Mayo, 566 U.S. at 78)). Instead, an "inventive concept" is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim
as a whole amounts to significantly more than the judicial exception
itself. Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 72-73); see BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
( explaining that the Supreme Court in Alice "only assessed whether the
claim limitations other than the invention's use of the ineligible concept to
which it was directed were well-understood, routine and conventional"
( emphasis added)).
On the other hand, "[i]f a claim's only 'inventive concept' is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea." BSG Tech, 899 F.3d at 1290-91 (citing
Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)). "[I]t is
irrelevant whether [the claimed abstract idea] may have been non-routine or
unconventional as a factual matter ... narrowing or reformulating an
abstract idea does not add 'significantly more' to it." BSG Tech, 899 F.3d at
1291.
As discussed above, the only limitations recited in addition to the
judicial exception are the device and the receiving coefficients step. For
purposes of addressing Appellant's arguments in this decision, we also
consider the fact that the particular input and output data represent
components of audio to be elements beyond the abstract idea. However,
Appellant does not present persuasive arguments that these additional
components ( or combination of components) are more than well-understood,
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routine, and conventional. For example, as discussed above, the claims
recite a generic device at a high level of generality and the generic computer
function of "receiving" data. These generically recited components
performing generic receiving steps are merely well-understood, routine, and
conventional components performing well-understood, routine, and
conventional activities. buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) ("That a computer receives and sends the information over
a network-with no further specification-is not even arguably inventive.");
Cf Alice, 573 U.S. at 226 ("Nearly every computer will include a [computer
components] ... capable of performing the basic calculation, storage, and
transmission functions required by the method claims.").
Appellant's argument focuses on the arrangement of the mathematical
concepts as being more than well-understood, routine, and conventional and,
thus, providing the inventive concept. Appellants, however, have not
pointed to anything that would raise a genuine issue of material fact that the
generically recited device, the steps of receiving data, or receiving and
performing transforms on data representing audio signals constitute steps or
elements beyond what was well-understood, routine, and conventional.
Contrary to Appellant's argument, Reply Br. 9, an unconventional
arrangement of steps that constitute the abstract idea is not sufficient to
confer eligibility. Even assuming the particular mathematical relationships
claimed are novel and nonobvious, the relationships still constitute an
abstract idea which, without more, is ineligible. See Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 ("But, a claim for a new
abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty").
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Appeal2017-004160
Application 14/005,924
Thus, the claimed limitations, considered both individually and
together, do not add significantly more to the abstract idea and, therefore, do
not render the subject matter patent eligible.
SUMMARY
For these reasons, we conclude Appellant's claims are directed to
merely an abstract idea without an inventive concept and, therefore,
Appellant's claims fail to recite eligible subject matter under 35 U.S.C.
§ 101.
DECISION
We affirm the Examiner's decision to reject claims 1---6 and 8-16
under 35 U.S.C. § 101.
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
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