Ex Parte Lindemann et al

Patent Trial and Appeal BoardOct 30, 2017

13054152 (P.T.A.B. Oct. 30, 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. 13/054,152 01/14/2011 Stig Lindemann 35010/324US 4899 32827 7590 10/31/2017 THE OLLILA LAW GROUP LLC 2569 Park Lane, Suite 202 Lafayette, CO 80026 EXAMINER WILLIAMS, HOWARD L ART UNIT PAPER NUMBER 2845 MAIL DATE DELIVERY MODE 10/31/2017 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 STIG LINDEMANN and MADS KOLDING NIELSEN ____________ Appeal 2017-000940 Application 13/054,152 Technology Center 2800 ____________ Before BRADLEY R. GARRIS. MICHAEL P. COLAIANNI, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 5–8, 12–14, and 25–28. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is identified as Micro Motion, Inc. App. Br. 1. Appeal 2017-000940 Application 13/054,152 2 STATEMENT OF THE CASE Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A data translation system (100) for performing a non-linear data translation on a digitized AC signal, the translation system (100) comprising: an input for receiving the digitized AC signal; an output for outputting a non-linearly translated signal; and a processing system (104) coupled to the input and to the output and configured to receive the digitized AC signal, non-linearly translate the digitized AC signal using a predetermined transfer function to create the non-linearly translated signal, wherein the predetermined transfer function creates the non-linearly translated signal with respect to a reference point and wherein the predetermined transfer function is configured to alternatively compress or amplify digital values of the digitized AC signal in relation to a distance from the reference point, and transfer the non-linearly translated signal to the output; wherein the reference point is an AC signal zero-crossing point of the received digitized AC signal that is shifted one of above and below a zero voltage level. REJECTIONS Appellants (App. Br. 1, 3) request review of the following rejections from the Examiner’s Final Action dated October 29, 2015: I. Claims 1, 5, 6, 8, 12, 13, and 25–28 rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a Appeal 2017-000940 Application 13/054,152 3 law of nature, a natural phenomenon, or an abstract idea) without significantly more.2 II. Claims 1, 5–8, 12–14, and 25–28 rejected under 35 U.S.C. § 103(a) as unpatentable over Betts (US 4,037,226, issued July 19, 1977), Gingell (US 4,288,873, issued September 8, 1981), and Thyssen (US 6,618, 700 B1, issued September 9, 2003).3 ANALYSIS Rejection under 35 U.S.C. § 101 (ineligible subject matter) Appellants rely on the same line of arguments in addressing the rejection of independent claims 1 and 8 and do not present separate arguments for claims 5, 6, 12, 13, and 25–28. See generally App. Br. Accordingly, we select claim 1 as representative of the claimed subject 2 We adopt Appellants’ statement of rejection under 35 U.S.C. § 101 because it correctly reflects claim 8 instead of claim 7 as a rejected claim. App. Br. 3–4; Final Act. 2, 6. The Examiner’s statement of rejection in the Final Action erroneously includes claim 7 and excludes claim 8. Final Act. 2. The Examiner further erroneously states in the Final Action that claim 8, instead of claim 7, is no longer subject to this ground of rejection. Id. at 5. However, the Examiner correctly addresses claim 8 as a rejected claim in the response to the §101 arguments. Ans. 2–3. The Examiner further states that claim 14 is no longer rejected under § 101 (Final Act. 5). Therefore, we find the omission of claim 8 and the inclusion of claim 7 in the statement of rejection in the Final Action to be harmless error. Accordingly, only claims 1, 5, 6, 8, 12, 13, and 25–28 are before us for review on appeal for this rejection. 3 The prior art rejection statement has been modified to include claims 25– 28, which were erroneously omitted by the Examiner. Final Act. 3, 5. The Examiner addressed the omitted claims on page 5 of the Final Action. Appellants recognize that the omitted claims were subject to the appealed rejection on page 18 of the Appeal Brief. Therefore, we find this omission to be harmless error. Accordingly, claims 1, 5–8, 12–14, and 25–28 are before us for review on appeal for this rejection. Appeal 2017-000940 Application 13/054,152 4 matter for review on appeal for this rejection. Claims 5, 6, 8, 12, 13, and 25–28 stand or fall with claim 1. This rejection is based on the Examiner's determination that the subject matter of claim 1 is directed to ineligible subject matter because it recites a mathematical function, an abstract idea which is a judicial exception under 35 USC § 101. Final Act. 2. According to the Examiner, the data translation is not applied to any particular product and appears directed to any and all uses of any non-linear transfer function. Id. The Examiner also determines that claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Id. In Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014), the Supreme Court reiterated the following two-step analysis (previously set forth in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (2012)) for distinguishing patents that claim patent-ineligible laws of nature, natural phenomenon, and abstract ideas from those that claim patent-eligible applications of those concepts: First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, what else is there in the claims before us? . . . We have described step two of this analysis as a search for an “inventive concept”-- i.e., an element or combination of elements that is sufficient to ensure that the patent in practice Appeal 2017-000940 Application 13/054,152 5 amounts to significantly more than a patent upon the ineligible concept itself. Alice, 134 S. Ct. at 2355. The Supreme Court in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014) reiterated the framework set out in Mayo Collaborative Services v. Prometheus Labs. Inc., 132 S. Ct. 1289 (2012) for “distinguishing patents that claim . . . abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to determine if the claim is directed toward a patent-ineligible concept and, if so, the second step is to determine whether there are additional elements that transform the nature of the claim into a patent eligible application. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1297–98). The second step searches for an inventive concept that is sufficient to ensure that the patent amounts to significantly more than a patent on the patent-ineligible concept. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1294). Appellants argue independent claim 1 is not a patent ineligible abstract idea because it addresses the technological problem of preserving phase information while decreasing bandwidth when compressing or amplifying digital values of the digitized AC signal. App. Br. 4–5. We are unpersuaded by this argument. As noted by the Examiner, and Appellants do not dispute, the step of non-linearly translating a digitized signal using a transfer function to create a non-linearly translated signal involves using math to convert a digitized signal into a non-linearly translated signal. Ans. 2–3; see generally App. Br.; see also Spec. 8; (“The Appeal 2017-000940 Application 13/054,152 6 transfer function can comprise a mathematical function that translates the digitized AC signal. Alternatively, the transfer function can comprise a series of coefficients that are multiplied by the digitized AC signal, essentially a digital filter” (emphasis added)). A mathematical formula is judicially recognized as patent ineligible subject matter. See Parker v. Flook, 437 U.S. 584, 585–86, 59495 (1978). Moreover, a patent-ineligible abstract idea of a mathematical formula is not transformed into a patent- eligible invention by “limiting the use of an abstract idea ‘to a particular technological environment.”’ Alice, 134 S. Ct. at 2358, quoting Bilski v. Kappos, 561 U.S. 593, 610–11 (2010). As also noted by the Examiner, the preservation of phase information appears to be merely retaining the signal bit. Ans. 2. That is, there is no language in the claim that indicates how the translated signal (compressed/amplified values) resulting from the transfer function (mathematical formula) is used. Thus, Appellants have not established error in the Examiner’s determination that the subject matter of representative claim 1 is directed to a judicial exception (an abstract idea in the form of a mathematical function) under the first step of Alice. While Appellants argue that claims 7 and 14 serve as evidence of patent eligibility (App. Br. 6–7), we note that these claims were withdrawn from this rejection because they, unlike the broader subject matter of claim 1, positively recite a reduction of signal bandwidth. Ans. 5. The first threshold under Alice is met. We now turn to the second step under Alice to consider if there is an inventive concept that is sufficient to ensure that the patent amounts to significantly more than a patent on the Appeal 2017-000940 Application 13/054,152 7 patent-ineligible concept. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1294). Appellants argue, even if the claims are considered to be an abstract idea, the claims are substantially more because the claims do not attempt to preempt all possible uses of a transfer function. App. Br. 5–6. We have considered this argument and are unpersuaded by it for the reasons presented by the Examiner. Ans. 3. Appellants’ argument is premised on the mathematical function that compresses or amplifies the digital values of the digitized AC signal. App. Br. 6. However, Appellants do not direct us to “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, 134 S. Ct. at 2355. That is, Appellants do not adequately explain how the translation of the signal amounts to significantly more than a patent upon the ineligible concept itself. Thus, Appellants have not established error in the Examiner’s determination that the subject matter of representative claim 1 lacks additional elements that transforms the subject matter of the claim into a patent-eligible application under the second step of Alice. Ans. 3. Accordingly, we affirm the Examiner’s rejection of claims 1, 5, 6, 8, 12, 13, and 25–28 under 35 U.S.C. § 101 for the reasons presented by the Examiner and given above. Appeal 2017-000940 Application 13/054,152 8 Prior Art Rejection under 35 U.S.C. § 103(a) For the prior art rejection, Appellants rely on the same line of arguments in addressing the rejection of independent claims 1 and 8 and do not present separate arguments for claims 5–7, 12–14, and 25–28. See generally App. Br. Accordingly, we select claim 1 as representative of the claimed subject matter for review on appeal for this rejection. Claims 5–8, 12–14, and 25–28 stand or fall with claim 1. The subject matter of representative claim 1 is directed to a data translation system used to perform a non-linear data translation on a digitized AC signal. App. Br. 2–3. The Examiner finds Betts discloses a data translation system that differs from the claimed invention in that Betts does not disclose shifting a predetermined reference point one of above and below a zero voltage level. Final Act. 3–4; Betts Figures 1, 3, col. 1, ll. 24–31, col. 4 (Table). The Examiner finds Gingell and Thyssen disclose as known to shift a reference point by biasing the signal to reduce noise in a signal. Final Act. 4; Gingell Figure 1; col. 2, ll. 12–16, 52–62; Thyssen Figure 4, col. 2, ll. 52–60. The Examiner determines it would have been obvious to one skilled in the art to modify Betts by shifting the reference point as taught by Gingell and Thyssen. Final Act. 4–5. Appellants argue the claimed shifting of the AC signal zero-crossing point (reference point) is not the same as adding a bias to a signal as alleged by the Examiner. App. Br. 8. According to Appellants, this interpretation is unreasonably broad because the interpretation includes a reference point of a Appeal 2017-000940 Application 13/054,152 9 transfer function that is not the AC signal zero crossing point of a received digitized AC signal that is shifted one of above and below a zero crossing point. App. Br. 13. Appellants further contend that the bias added in Gingell is not to the AC signal zero crossing point of the signal received by the A law compressor because the filter 2 blocks any DC offset contained in the signal before reaching point 4 of Gingell’s Figure 1. App. Br. 9; Gingell col. 2, ll. 7–16. That is, Appellants argue the signal subject to the added DC offset at point 4 is different from the one inputted in the vicinity of point 2. See also App. Br. 10–11. We are unpersuaded by these arguments. As noted by the Examiner, Thyssen discloses that adding the constant causes the signal to shift away from zero. Ans. 4; Thyssen Figure 4 (cf. output 4 with output 23), col. 3, ll. 40–58. While Appellants argue that Thyssen applies a constant to output digital values within a certain range (App. Br. 11–12; Thyssen col. 3, ll. 11– 26), Appellants have not adequately explained why this disclosure of Thyssen detracts from the broader teaching of applying a constant to shift a signal reference point as shown in Thyssen’s Figure 4. With respect to the arguments concerning Gingell (App.Br. 9–11), it appears that Appellants are contending that Gingell discloses multiple shifting of the signal reference point. We note that the language of claim 1, drafted with the open transitional language of “comprising,” does not exclude multiple shifting of the reference point. Thus, Appellants have not adequately explained why Appeal 2017-000940 Application 13/054,152 10 one skilled in the art would not have arrived to the claimed invention from the combined teachings of the cited art. We have considered Appellants’ arguments that the combined teachings of Betts, Gingell, and Thyssen show the purported reference points are always zero. App. Br. 12–13. We are unpersuaded for the reasons presented by the Examiner (Ans. 5) and again direct Appellants attention to Thyssen teaching of shifting the reference point discussed above. Appellants, at most, have provided mere attorney arguments and such arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979). Moreover, the Examiner’s rejection is based on a combination of teachings and these arguments do not address the Examiner’s reasons for combining the cited art. Appellants argue the Examiner did not address the limitation of “a predetermined transfer function configured to alternatively compress or amplify digital values of the AC signal.” App. Br. 16. That is, the Examiner did not point out where the cited art teaches this claimed feature. We find this argument unavailing. The Examiner determines that A- law and mu-law functions disclosed by the cited art (see Thyssen Figure 3 (encoder/decoder 14/16) and Gingell Figure 2) are well known companding functions that amplify small level signals and compress large level signals and, thus, the transfer function that compresses or amplifies the digitized values of an AC signal is not missing from the combined teachings of the Appeal 2017-000940 Application 13/054,152 11 cited art. Ans. 5. Appellants have not pointed to error in the Examiner’s determination. Accordingly, we affirm the Examiner’s prior art rejection of claims 1, 5–8, 12–14, and 25–28 for the reasons presented by the Examiner and given above. DECISION The Examiner’s rejection under 35 U.S.C. § 101 is affirmed. The Examiner’s prior art rejection under 35 U.S.C. § 103(a) is affirmed. 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