Ex Parte Fenzi et al

Patent Trial and Appeal BoardMar 27, 2017

14300124 (P.T.A.B. Mar. 27, 2017)

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. 14/300,124 06/09/2014 Neal Fenzi RES-014CON 5804 23410 7590 03/28/2017 Vista IP Law Group LLP 100 Spectrum Center Drive Suite 900 IRVINE, CA 92618 EXAMINER KIK, PHALLAKA ART UNIT PAPER NUMBER 2851 MAIL DATE DELIVERY MODE 03/28/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte NEAL FENZI and KURT RAIHN ____________________ Appeal 2016-002762 Application 14/300,124 Technology Center 2800 ____________________ Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellants2 filed an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 2–24 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over 1 Our decision refers to Appellants’ Specification filed June 9, 2014 (Spec.), the Final Office Action (Final Act.) mailed Mar. 23, 2015, Appellants’ Appeal Brief filed Aug. 14, 2015 (Appeal Br.), the Examiner’s Answer mailed Nov. 24, 2015 (Ans.), and Appellants’ Reply Brief filed Dec. 31, 2015 (Reply Br.). 2 Appellants identify the real party in interest as Resonant, Inc. Appeal Br. 2. Appeal 2016-002762 Application 14/300,124 2 claims 1–23 of US 8,751,993 in view of Duff3 and/or Anderson4 and rejecting claims 2–24 under 35 U.S.C. § 101 as being directed to non- statutory subject matter.5 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Independent claim 2 is illustrative of the subject matter on appeal. Claim 2 is reproduced from the Claims Appendix of the Appeal Brief: 2. A computerized filter design system, comprising: a user interface configured for receiving parameter values and filter specifications from a user, and outputting filter designs to the user; memory storing a filter design software program; a processor configured for executing the filter design software program to (a) generate a filter circuit design in process (DIP) in response to the parameter values and filter specifications received by the user interface, the DIP comprising a plurality of circuit elements having a plurality of resonant elements and one or more non-resonant elements, (b) optimizes the DIP, (c) determines that one of the plurality of circuit elements in the DIP is insignificant after the DIP has been optimized, (d) removes the one insignificant circuit element from the DIP, (e) derives a final filter circuit design from the DIP, and (f) outputs the final filter circuit design to the user via the user interface. Appeal Br. 9. 3 Duff et al., US 2014/0137069 A1, published May 15, 2014 (“Duff”). 4 Anderson et al., US 2004/0044970 A1, published Mar. 4, 2004 (“Anderson”). 5 The rejection of claims 2–24 under 35 U.S.C. § 103(a) as unpatentable over Giraud et al. in view of McConaghy and further in view of Duff and/or Anderson has been withdrawn by the Examiner. Ans. 2. Appeal 2016-002762 Application 14/300,124 3 OPINION Rejection of claims 2–24 under 35 U.S.C. § 101 Claims 2–24 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. First, we note that Appellants do not argue any of the claims apart from the others. Thus, we select claim 2 as representative for resolving the issue on appeal. Although the Specification describes the invention as directed to microwave filters and, more particularly, to acoustic wave microwave filters designed for narrow-band applications, claim 2 is not directed to such a filter,6 but to a computerized filter design system. Claim 2. In essence, Appellants’ claimed invention is directed to using a general purpose computer running models to make a series of decisions about what components (e.g., types of resonators) to place into the filter circuit, and how to connect the circuit components based on the predicted effect of those components on the output of the circuit. Spec. ¶¶ 12–21, 36, 37. Appellants’ decision-based process is analogous to an engineer designing, for instance, the structure of a house by selecting the two-by-fours, trusses, and other structures needed to hold up the roof and keep the house from falling down, based on the known ability of the various lumber structures to bear weight, placing them in the design, and then optimizing the design by reviewing the placement of the various structures and deciding what can be removed or repositioned so the lumber will still hold up the house, but with the least amount of cost. These are mental steps whether they are performed on a computer or in one’s mind. 6 Spec. ¶ 2. Appeal 2016-002762 Application 14/300,124 4 Again, as accurately pointed out by the Examiner, the claim does not require any step of actually manufacturing the microwave filter based on the final filter circuit design. Final Act. 5. The problem with claim 2 is, in essence, its breadth. It ensnares the basic idea of creating a circuit design based on decision-making. Implementing the idea on a general purpose computer does not transform it into a patentable apparatus; the idea remains a pre-empted mental process. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (“We have described the concern that drives this exclusionary principle as one of pre-emption.”), citing Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010) (“upholding the patent ‘would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea’”). The test is often articulated as a two-step test. The first step in analyzing whether a claim is directed to patent-eligible subject matter is determining whether the claim is directed to one of the patent-ineligible concepts: laws of nature, natural phenomena, and abstract ideas. Id. at 134 S. Ct. at 2355 (citing Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)). If the claim is directed to a patent-ineligible concept, the second step in the analysis is to determine whether additional elements of the claim, “both individually and ‘as an ordered combination,’” “‘transform the nature of the claim’ into a patent-eligible application.” Id. at 134 S. Ct. at 2355 (quoting 132 S. Ct. at 1297, 1298). Here, the decision- making processes and design output of the claims are abstract ideas, and the use of a general computer does not transform the nature of the abstract decision-making process design output into something that is patent eligible. Appeal 2016-002762 Application 14/300,124 5 Appellants assert that claim 2 is not directed to an abstract idea because “[t]he claimed steps do not merely involve mathematical algorithms, correlations, relationships, or formulas.” Appeal Br. 6. Appellants review several Federal Circuit decisions involving abstract ideas and contend claim 2 is directed to different subject matter than the claims of those cases and, therefore, is not directed to an abstract idea. Appeal Br. 6– 8. Appellants’ arguments are unpersuasive. The Federal Circuit has recognized “that defining the precise abstract idea of patent claims in many cases is far from a ‘straightforward’ exercise.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150 (Fed. Cir. 2016) (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). In view of this, the Federal Circuit has defined the “‘basic thrust’” of a claim, something that is wholly consistent with the description of an invention, to determine what abstract idea the claim may be directed to. 839 F.3d at 1150–51. The Examiner finds claim 2 recites an abstract idea in steps (a)–(f) because those steps “involve mathematical algorithm/correlation.” Final Act. 4. This is supported by Appellants’ Specification, which describes the optimization of filter designs via computerized techniques. Spec. ¶¶ 36–37. As the Examiner finds at page 6 of the Examiner’s Answer, Appellants’ Specification describes algorithms for steps (a)–(e). For instance, paragraphs 38–41 of the Specification describe algorithms, such as the modified Butterworth-Van Dyke (MBVD) model, for generating an initial filter circuit design, as in step (a). Paragraph 43 describes an algorithm (e.g., a computerized optimizer that improves frequency response Appeal 2016-002762 Application 14/300,124 6 of a filter by changing values of circuit elements, such as to achieve a desired goal) for optimizing the initial design, as in step (b). Paragraphs 44– 49 describe algorithms for determining whether a circuit element has become insignificant, as in step (c), such as by comparing a property of the element (e.g., absolute impedance value or susceptance) to a threshold or to another circuit element of the same type or by determining if its removal from the circuit results in a small percentage degradation change. Paragraphs 49–56 describe algorithms for determining whether a circuit element should be removed, as in step (d), such as by determining whether an insignificant non-resonant element was previously changed (i.e., between a capacitor and an inductor), removing an insignificant non-resonant element if it was previously changed, changing the insignificant non-resonant element if it has not been changed already, determining if any resonant element has become insignificant, and changing any insignificant resonant elements to a static capacitance. Lastly, paragraph 57 describes an algorithm for determining when a final filter circuit design has been derived, as in step (e), by determining if none of the resonant elements in the design have become insignificant. The Examiner further finds step (f) of claim 2 is merely directed to using a user interface to output a result to a user, which is a generic computer function. Ans. 6. Therefore, the Specification supports the Examiner’s finding that claim 2 is directed to the abstract concept of using algorithms to optimize a filter circuit design. Appellants respond to the Examiner’s findings by arguing there is no mathematical correlation, relation, or formula recited in the steps of claim 2 Appeal 2016-002762 Application 14/300,124 7 and, to the extent the recited steps encompass such algorithms, correlations, relations, or formulas, this does not mean the steps are directed to them. Reply Br. 5–7. Appellants further argue “the claims clearly do not preempt any patent ineligible abstract idea and most certainly do not preempt any specific model or mathematical calculation that can be used to perform any of steps (a)–(e) of the claimed invention.” Reply Br. 9. These arguments are not persuasive because although claim 2 does not recite a specific algorithm for generating a filter circuit design, optimizing the design, and removing insignificant circuit elements from the design, such as those algorithms described in the Specification, claim 2 encompasses all algorithms that accomplish the tasks recited in the steps of claim 2. All such algorithms would be pre-empted by claim 2. Such claim breadth supports, rather than detracts from the Examiner’s finding. Therefore, Appellants’ arguments do not identify a reversible error in the Examiner’s finding that claim 2 is directed to an abstract idea, which is a patent-ineligible concept. Appellants further contend that the Examiner did not consider the claim elements as an ordered combination to determine whether the nature of claim has been transformed into patent-eligible subject matter, as part of the second step for analyzing whether a claim is directed to patent-eligible subject matter. Reply Br. 8. Appellants assert “the ordered combination of claim elements provides significantly more than the abstract idea identified by the Examiner” because “the claimed invention solves the problem of having an unnecessary number of circuit elements that may increase the footprint or cost of the filter . . . by removing insignificant circuit elements after optimization of the filter circuit design without having a significant impact on filter performance.” Reply Br. 9 (citing Spec. ¶¶ 21, 36, 44). Appeal 2016-002762 Application 14/300,124 8 We agree with the Examiner that claim 2, when considered as a whole, recites a generic computer to perform the abstract concept of using algorithms to optimize a filter circuit design. As stated in Alice, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” 134 S. Ct. at 2358. Furthermore, when the elements of claim 2 are considered separately, one readily determines that the recited user interface, memory, and processor are basic computer components that individually perform purely generic functions, as the Federal Circuit determined with regard to the elements of the claims in Alice. Alice, 134 S. Ct. at 2359. Therefore, the recitations of claim 2 do not add significantly more to transform the abstract idea into patent-eligible subject matter. Moreover, claim 2 recites a system that outputs a filter circuit design, which itself is an abstract entity. Claim 2 does not recite the filter that provides the benefits and advantages asserted by Appellants. In addition, as discussed above, although claim 2 does not recite a specific algorithm, claim 2 encompasses all algorithms useful for optimizing a filter circuit design by generating a filter circuit design, optimizing the design, and removing any insignificant circuit elements from the design, as recited in claim 2. In view of the above, Appellants’ arguments do not identify a reversible error in the Examiner’s finding that the recitations of claim 2 are insufficient to transform the nature of claim 2 to patent-eligible subject matter. Therefore, for the reasons discussed above and those set forth in the Examiner’s Answer, we sustain the Examiner’s § 101 rejection. Appeal 2016-002762 Application 14/300,124 9 Double Patenting Rejection Claims 2–24 are rejected on the ground of nonstatutory obviousness- type double patenting as being unpatentable over claims 1–23 of U.S. Patent 8,751,993 in view of Duff and/or Anderson. In the Response After-Final Rejection filed May 23, 2015, Appellants acknowledged the non-statutory obviousness-type double patenting rejection, requested the rejection be held in abeyance until no other rejections were pending, and stated Appellants would file a terminal disclaimer at that time. No arguments regarding the propriety of the rejection have been proffered by Appellants in the Brief. We therefore summarily affirm the Examiner’s non-statutory obviousness- type double patenting rejection of claims 2–24. DECISION On the record before us, we affirm the decision of the Examiner to reject the claims. 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). AFFIRMED