Ex Parte Fenzi et al

Patent Trial and Appeal Board

Jun 16, 2017

14300124 (P.T.A.B. Jun. 16, 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
Vista IP Law Group LLP
100 Spectrum Center Drive
Suite 900
IRVINE, CA 92618
06/19/2017 EXAMINER
KIK, PHALLAKA
ART UNIT PAPER NUMBER
2851
MAIL DATE DELIVERY MODE
06/19/2017 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 REHEARING
Appellants request rehearing of a Decision on Appeal dated March 28, 2017
(Decision), affirming the Examiner’s decision to finally reject claims 2—24, which
are all of the pending claims.1
A request for rehearing must state with particularity the points believed to
have been misapprehended or overlooked by the Board. Arguments not raised in
the briefs before the Board and evidence not previously relied on in the briefs are
not permitted in a request for rehearing except as permitted by 37 C.F.R.
§ 41.52(a)(2) through (a)(4). 37 C.F.R. § 41.52(a)(1) (2014).
For the reasons set forth below, the request is DENIED.
1 Our decision refers to Appellants’ Request for Rehearing dated May 23, 2017
(Request) and Appellants’ Reply Brief dated December 31, 2015 (Reply Br.).
Appeal 2016-002762
Application 14/300,124
I.
Appellants state that they are submitting their request for rehearing pursuant
to § 41.52(a)(2) and based on the recent precedential Federal Circuit decision in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016), which issued subsequent to Appellants' Appeal Brief, dated August 14,
2015, and Appellant's Reply Brief, dated December 31, 2015. Appellants have
provided a sound basis for us to consider their new arguments given they are based
on a subsequent case relevant to the issue of non-statutory subject matter under 35
U.S.C. § 101. 37 C.F.R. § 41.52(a)(2) (2016). Thus, we consider Appellants’ new
arguments.
Although we have considered the new arguments, Appellants have not
persuaded us that McRO changed the law in such a way as to result in a different
outcome in the present case. Nor have Appellants persuaded us that the facts in the
McRO case are sufficiently analogous to the facts of the present case to control the
outcome here. Request 1—8.
McRO regards patents that were found by a district court to be directed to
patent ineligible subject matter and therefore invalid under 35 U.S.C. § 101.
McRO at 1302. The Federal Circuit reversed. Id. at 1303.
The patents at issue in McRO related to automating part of a pre-existing 3-
D animation method in which models of a character’s face are used to depict
various facial expressions made during speech. Id. Various “morph targets” (i.e.,
models of a character’s face) can be used to represent a face as a phoneme (i.e., a
certain sound) is pronounced. Id. Each morph target has identified points at
certain locations on a face and distances between a location of a point for a morph
target and a location for a corresponding point of a “neutral model” of the face
form “a ‘delta set’” of vectors representing a change in the locations of the points
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between the neutral model and the morph target. Id. A value (e.g., from 0 to 1)
called a “morph weight” is assigned to each delta set. Id.
The method to animate a character prior to the patentee’s invention in McRO
involved animators using a “‘keyframe’ approach” in which an animator sets
appropriate morph weight values at important times instead of every frame of
animation. Id. at 1305. A computer is then used to interpolate between the
keyframes set by the animator. Id. at 1306.
Claim 1 ofU.S. Patent No. 6,307,576, the representative claim in McRO, is
reproduced below:
1. A method for automatically animating lip synchronization and
facial expression of three-dimensional characters comprising:
obtaining a first set of rules that define output morph weight set
stream as a function of phoneme sequence and time of said phoneme
sequence;
obtaining a timed data file of phonemes having a plurality of sub­
sequences;
generating an intermediate stream of output morph weight sets
and a plurality of transition parameters between two adjacent morph
weight sets by evaluating said plurality of sub-sequences against said
first set of rules;
generating a final stream of output morph weight sets at a desired
frame rate from said intermediate stream of output morph weight sets
and said plurality of transition parameters; and
applying said final stream of output morph weight sets to a
sequence of animated characters to produce lip synchronization and
facial expression control of said animated characters.
Id. at 1307-1308.
When reviewing the district court’s determination that claim 1 was drawn to
an abstract idea, the Federal Circuit reiterated their caution that “courts ‘must be
careful to avoid oversimplifying the claims’ by looking at them generally and
failing to account for the specific requirements of the claims.” Id. at 1313 (quoting
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Application 14/300,124
In re TLI Comma ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). The
Federal Circuit disagreed with the district court’s determination that claim 1 of one
of the patents was “drawn to the [abstract] idea of automated rules-based use of
morph targets and delta sets for lip-synchronized three-dimensional animation.”
Id. (quoting Patentability Op., 55 F.Supp.3d at 1226). Instead, the Federal Circuit
determined that “the claims are limited to rules with specific characteristics.” Id. at
1313. More specifically, the Federal Circuit stated:
[a]s the district court recognized during claim construction, “the claims
themselves set out meaningful requirements for the first set of rules:
they ‘ define [ ] a morph weight set stream as a function of phoneme
sequence and times associated with said phoneme sequence.’”
Id. The Federal Circuit determined “[t]he specific, claimed features of these rules
allow for the improvement realized by the invention.” Id.
Appellants submit the factual and legal issues of their appeal and those of
McRO are virtually identical and a comparison between claim 1 of McRO and
claim 2 of their application “reveals that both claims recite rule-based inventions.”
Request 2—3. Appellants further assert that, although McRO does not address
whether the claims at issue are directed to a mathematical algorithm/correlation,
claim 1 of McRO can be considered a mathematical algorithm/correlation and
Appellants’ claim 2 is not more algorithmic or mathematical in nature than claim 1
of McRO. Request 5—6.
Appellants’ arguments are unpersuasive. Appellants’ arguments are
conclusory and do not explain how claim 2 is a rule-based invention. In fact, a
comparison of claim 2 to claim 1 of McRO demonstrates differences between the
facts of this appeal and the facts of McRO. Claim 1 of McRO recites a method for
automatically animating lip synchronization and facial expression of 3-D
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Application 14/300,124
characters comprising, among other things, “obtaining a first set of rules that
define output morph weight set stream as a function of phoneme sequence and time
of said phoneme sequence.” As noted above, the Federal Circuit determined “the
claims are limited to rules with specific characteristics.” Id. at 1313.
In contrast, Appellants’ claim 2 does not recite any rules with specific
characteristics. As noted at page 5 of the Decision, the Examiner finds steps (a)—
(f) of claim 2 “involve mathematical algorithm/correlation” but these steps do not
actually recite any particular rules. For example, claim 2 does not recite any rule
for generating a filter design, for optimizing the filter design, for determining that a
circuit element of the filter design is insignificant, for removing the insignificant
circuit element, or for deriving a final filter design. Indeed, Appellants previously
argued that steps (a)-(e) do not recite any specific mathematic
correlation/relation/formula. Reply Br. 5—7.
II.
On rehearing, Appellants further contend McRO shows that a combination of
computer-implemented rules can be directed to patent-eligible subject matter if the
combination of rules is otherwise novel and was not previously performed
manually. Request 4. Appellants argue the Federal Circuit in McRO found the
claimed method was not previously performed by human animators and
Appellants’ system of claim 2 was found by the Examiner to be novel over the
prior art and a similar invention, as a method claim, was patented in Appellants’
parent application. Id. at 4—5.
The dispositive issue here is not whether claim 2 is patentable over the prior
art but whether claim 2 is directed to patent-eligible subject matter that improves
the existing technological process, as in McRO. 837 F.3d at 1313—14. The first
step in analyzing whether a claim is directed to patent-eligible subject matter is
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Application 14/300,124
determining whether the claim is directed to one of the patent-ineligible concepts:
laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v.
Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)). As previously explained at pages
5—6 of the Decision, Appellants’ Specification supports the Examiner's finding that
claim 2 is directed to the abstract concept of using algorithms to optimize a filter
circuit design. As discussed above, claim 2 is directed to an abstract idea and does not
recite a rule with specific characteristics, as in claim 1 of McRO.
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 2355 (quoting 132 S. Ct. at 1297, 1298).
Thus, 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].” 134 S. Ct. at 2357 (quoting 132 S. Ct. at 1297). As stated by the
Supreme Court in Alice,
Mayo made clear that transformation into a patent-eligible application
requires “more than simply stat[ing] the [abstract idea] while adding
the words ‘apply it.’”
Id. at 2357 (quoting 132 S. Ct. at 1294). The Supreme Court further stated “the
mere recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id. at 2358. If a claim’s recitation of a
computer is a mere instruction to implement an abstract idea on a computer, the
addition of a computer cannot impart patent eligibility. Id. Thus, even if an
algorithm is novel with regard to the prior art, a claim that merely implements this
new algorithm on a generic computer is nonstatutory.
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As in Alice, the relevant question here is whether claim 2 does more than
simply instruct a practitioner to implement the abstract idea of using algorithms to
optimize a filter circuit design. Id. at 2359. When considered as a whole, claim 2
recites a generic computer to perform the abstract concept of using algorithms to
optimize a filter circuit design. When the elements of claim 2 are considered
separately and as an ordered combination, the recited user interface, memory, and
processor are readily identifiable as basic computer components that individually
perform purely generic functions. See Id. Therefore, the recitations of claim 2 do
not add significantly more to transform the abstract idea into patent-eligible subject
matter and, because claim 2 simply uses a generic computer to implement an
abstract idea, claim 2 does not improve the existing technology in the way McRO’s
rules with specific characteristics transform the abstract idea of McRO.
Ill
On rehearing, Appellants additionally argue “McRO holds that a claim
directed to a specific set of rules to achieve a result does not pre-empt the result if
there are other sets of rules that can be performed to achieve the result.” Request
6. Appellants assert we incorrectly focused on whether the “specific rules for
designing a filter recited in claim 2 were, themselves, preempted by claim 2,
instead of focusing on whether the design of filters were preempted by the specific
rules recited in claim 2.” Request 7. Appellants contend claim 2 recites rules that
“are quite specific, and do not prevent others from automating filter circuit designs
using other known or unknown combinations of rules.” Request 7.
Appellants’ arguments are unpersuasive. An analysis of the McRO decision
reveals that the Federal Circuit cautioned against claims like Appellants’ claim 2.
In McRO, the Federal Circuit stated that the concern of preemption arises when a
claim is directed to “the basic tools of scientific and technological work” instead of
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a specific invention. 837 F.3d at 1314 (quoting 134 S. Ct. at 2354). The Federal
Circuit further stated:
[t]he abstract idea exception has been applied to prevent patenting of
claims that abstractly cover results where “it matters not by what
process or machinery the result is accomplished.”
837 F.3d at 1314 (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1853)). The
Supreme Court further stated in Morse:
[a]nd it has never, we believe, been supposed by any one, that the first
inventor of a steam printing-press, was entitled to the exclusive use of
steam, as a motive power, however developed, for marking or printing
intelligible characters.
56 U.S. at 112-14.
Thus, courts have cautioned against claims directed to results and to basic
scientific and technological tools instead of a specific invention. In view of this,
the Federal Circuit stated in McRO\
[w]e therefore look to whether the claims in these patents focus on a
specific means or method that improves the relevant technology or are
instead directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery.
837 F.3d at 1314.
In McRO, the Federal Circuit found the claims prevent preemption of all
processes for achieving automated lip-synchronization of 3-D characters because
the claims recite a rule with specific characteristics. 837 F.3d at 1315. As
discussed above, Appellants have failed to show that claim 2 recites rules with
specific characteristics. Claim 2 is directed to the result of using algorithms to
optimize a filter circuit design via generic computer components. The software
program stored in the memory of claim 2 lacks a rule with any specific
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characteristics for the design of a filter circuit, lacks a specific rule for optimizing
the filter design, and lacks a specific rule for determining a circuit element of the
design is insignificant.
As a result, unlike the claims of McRO, claim 2 does not include a rule with
specific features and would “preempt approaches that use rules of a different
structure or different techniques.” Id. at 1316 (citing 56 U.S. at 113).
IV.
The Appellants’ Request for Rehearing has been granted to the extent that
the Decision on Appeal dated March 28, 2017, has been reconsidered in light of
Appellants’ arguments. However, the Request is denied because the Decision is
not modified in any respect.
REHEARING DENIED
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