Ex Parte Miguelanez et al

Patent Trial and Appeal Board

Jan 30, 2013

11535851 (P.T.A.B. Jan. 30, 2013)

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.
11/535,851 09/27/2006 Emilio Miguelanez TAI.1117 8186
39602 7590 01/30/2013
THE NOBLITT GROUP, PLLC
8800 NORTH GAINEY CENTER DRIVE
SUITE 279
SCOTTSDALE, AZ 85258
EXAMINER
LAU, TUNG S
ART UNIT PAPER NUMBER
2857
MAIL DATE DELIVERY MODE
01/30/2013 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 EMILIO MIGUELANEZ and
GREG LABONTE
________________

Appeal 2010-005496
Application 11/535,851
Technology Center 2800
________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6 and 8-21. We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.
Claims 1-6, 8-13, and 15-20 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Tabor (US 2003/0014205 A1 (Jan. 16, 2003; filed May 24,
2002).1
Claims 8-21 stand rejected under 35 U.S.C. § 101 for being directed
to non-statutory subject matter.2
Claims 14 and 21 have been objected to as being dependent upon a
rejected base claim and are tentatively allowable if rewritten in independent
form including all of the limitations of the base claim and any intervening
claims, assuming the § 101 rejections are overcome. 6/10/2009 Final
Rejection, ¶ 4.
Claim 7 has also been objected to and indicated as being tentatively
allowable, also assuming the § 101 rejections have been overcome.
6/10/2009 Final Rejection, ¶ 4. The Examiner’s statement that the
allowability of claim 7 depends upon resolution of the § 101 rejections is
incorrect because claim 7 has not been rejected based upon § 101. See

1 Throughout this opinion, we refer to (1) the Appeal Brief filed October 16,
2009; (2) the Examiner’s Answer mailed December 28, 2009; and (3) the
Reply Brief filed March 1, 2010.
2 Appellants acknowledge that these claims have been rejected under § 101
(App. Br. 4, ¶ III.3); but in one part of their brief, they do not identify claims
14 and 21 as being appealed. App. Br. 4, ¶ III.1. Because other parts of
Appellants’ Appeal Brief identify claims 14 and 21 as being appealed (App.
Br. 14, ¶ VI, Issue 1; 15-17), we conclude that those claims are, in fact, on
appeal. See also Reply Br. 2-3.
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6/10/2009 Final Rejection ¶ 2; Ans. 3, ¶ 1. Claim 7 has therefore not been
rejected on any basis.

STATEMENT OF THE CASE
Appellants’ invention relates to a method and apparatus for testing
semiconductor devices on a wafer, circuit boards, packaged devices, or other
electrical or optical systems. Spec. ¶ 0020.
Independent claim 1 is illustrative:
1. A test data analysis system for analyzing test data for multiple
components fabricated on a wafer, comprising:
a memory configured to store the test data; and
a hybrid outlier system having access to the memory and
configured to, for each of a plurality of test data for each of a plurality
of selected components:
select a component as a central component;
identify a plurality of local components in a local area
near the central component;
determine a derived value of the test data for the plurality
of local components;
compare the test data for the central component to the
derived value for the plurality of local components; and
identify whether the test data for the central component
represents a hybrid outlier according to the comparison of the test data
for the central component to the derived value for the plurality of local
components.

THE ANTICIPATION REJECTION
The Examiner finds that Tabor discloses every recited feature of
representative claim 1. Ans. 4-5.
Appellants argue that Tabor does not qualify as prior art and therefore
cannot support the rejection. App. Br. 17-18; Reply Br. 3-5.

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ISSUE
Under § 102, has the Examiner erred by concluding that Tabor
qualifies as prior art?

FINDINGS OF FACT
The record supports the following Findings of Fact:
1. The present application was filed on September 27, 2006. Paragraph
0001 of the application states:
This application is a continuation-in-part of U.S. Patent
Application Serial No. 11/134,843, filed on May 20, 2005,
entitled METHODS AND APPARATUS FOR LOCAL
OUTLIER DETECTION, and incorporates the disclosure of
such application by reference. To the extent that the present
disclosure conflicts with any referenced application, however,
the present disclosure is to be given priority.
2. A rejection of claims 1-6, 8-13, and 15-20 as anticipated by Tabor was
mailed on September 28, 2007.
3. On December 28, 2007, Appellants responded to the September 28,
2007 rejection by amending the Abstract. Appellants’ response made no
other amendment to the Specification.
4. A Final Rejection of claims 1-6, 8-13, and 15-20 as anticipated by
Tabor was mailed on March 14, 2008.
5. Tabor’s Application No. 10/154,627 was filed on May 24, 2002.
6. On May 13, 2008, Appellants filed a Request For Reconsideration
After Final Office Action which sought to amend the Specification as
follows (footnote added):
This application is a continuation-in-part of U.S. Patent
Application Serial No. 11/134,843, filed on May 20, 2005,
entitled METHODS AND APPARATUS FOR LOCAL
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OUTLIER DETECTION which is a continuation-in-part
(“CIP”) of U.S. Serial No. 10/817,750, filed April 2, 2004,
which is a CIP of U.S. Serial No. 10/730,388, filed on
December 7, 2003, which is a CIP of U.S. Serial No.
10/367,355, filed on February 14, 2003, which is a CIP of U.S.
Serial No. 10/154,627, filed on May 24, 2002, and incorporates
the disclosure of such applications3 by reference. To the extent
that the present disclosure conflicts with any referenced
application, however, the present disclosure is to be given
priority.
7. In an Office Action mailed on February 9, 2009, prosecution was
reopened and the May 13, 2008 amendment was objected to because it
introduces new matter that was not supported by the original disclosure.
2/9/2009 Office Action 3. The Office Action again rejected claims 1-6, 8-
13, and 15-20 as anticipated by Tabor. Id. at 4.
8. On May 11, 2009, Appellants filed a Response to Office Action which
sought to amend the Specification as follows (footnote added):
This application is a continuation-in-part of U.S. Patent
Application Serial No. 11/134,843, filed on May 20, 2005,
entitled METHODS AND APPARATUS FOR LOCAL
OUTLIER DETECTION which is a continuation-in-part
(“CIP”) of U.S. Serial No. 10/817,750, filed April 2, 2004,
which is a CIP of U.S. Serial No. 10/730,388, filed on
December 7, 2003, which is a CIP of U.S. Serial No.
10/367,355, filed on February 14, 2003, which is a CIP of U.S.
Serial No. 10/154,627, filed on May 24, 2002, and incorporates
the disclosure of such applications4 by reference. To the extent
that the present disclosure conflicts with any referenced

3 Even though the version of this statement that was contained in the
application as originally filed used the singular “application,” this
amendment changed “application” to “applications” without indicating that
the word had been changed.
4 See supra note 3.
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application, however, the present disclosure is to be given
priority.
9. In an Office Action mailed on June 10, 2009, the Examiner objected
to the May 11, 2009 Specification Amendment and declined to enter it,
stating that “it is improper to change the priority after the time define[d] in
MPEP 201.11, 37 CFR 1.78 (a)(2)(ii), any change of priority after the date is
by petition.” 6/10/2009 Office Action 2. The Office Action also objected to
the amendment filed on May 13, 2008 under 35 U.S.C. § 132(a), stating that
it introduced new matter into the disclosure and the added material was not
supported by the original disclosure. Id. The Office Action included a Final
Rejection of claims 1-6, 8-13, and 15-20 as anticipated by Tabor. Id. at 4.
10. The file history of the present application does not indicate that
Appellants filed a petition to accept an unintentionally delayed priority claim
under 35 U.S.C. § 120 and 37 C.F.R. § 1.78(a)(3).

PRINCIPLES OF LAW
1. 35 U.S.C. § 120 states, in part (footnote added):
An application for patent for an invention disclosed . . .
in an application previously filed in the United States . . . which
is filed by an inventor or inventors named in the previously
filed application5 shall have the same effect, as to such
invention, as though filed on the date of the prior application . .
. if it contains or is amended to contain a specific reference to
the earlier filed application. No application shall be entitled to
the benefit of an earlier filed application under this section

5 The inventors in the present application are Emilio Miguelanez and Greg
Labonte. The sole inventor in the Tabor reference for which Appellants seek
to obtain priority is Eric Paul Tabor. The Examiner did not raise an issue as
to whether the inventorship in the present application satisfies 35 U.S.C. §
120 and we decline to raise it in the first instance on appeal.
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unless an amendment containing the specific reference to the
earlier filed application is submitted at such time during the
pendency of the application as required by the Director. The
Director may consider the failure to submit such an amendment
within that time period as a waiver of any benefit under this
section. The Director may establish procedures . . . to accept an
unintentionally delayed submission of an amendment under this
section.
2. 37 C.F.R. § 1.78(a) states, in part:
(2)(i) . . . any nonprovisional application . . . must contain
or be amended to contain a reference to each such prior-filed
application, identifying it by application number (consisting of
the series code and serial number) . . . and indicating the
relationship of the applications.
(ii) . . . [T]his reference must also be submitted within the
later of four months from the actual filing date of the later-filed
application or sixteen months from the filing date of the prior-
filed application. . . . These time periods are not extendable.
Except as provided in paragraph (a)(3) of this section, the
failure to timely submit the reference required by 35 U.S.C. 120
and paragraph (a)(2)(i) of this section is considered a waiver of
any benefit under 35 U.S.C. 120 . . . to such prior-filed
application.
. . . .
(3) If the reference required by 35 U.S.C. 120 and
paragraph (a)(2) of this section is presented after the time
period provided by paragraph (a)(2)(ii) of this section, the claim
under 35 U.S.C. 120 . . . may be accepted if the reference
identifying the prior-filed application by application number . . .
was unintentionally delayed. A petition to accept an
unintentionally delayed claim under 35 U.S.C. 120 . . . for the
benefit of a prior-filed application must be accompanied by:
[the items specified in sub-sections (i) – (iii)].

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ANALYSIS
An objection to an amendment and a refusal to enter an amendment
are not usually considered to be under the Board’s jurisdiction. In the
present case, the objection and the refusal to enter Appellants’ proposed
Amendment bear directly on the claims and the Examiner’s rejection under
35 U.S.C. § 102(b). FF 2, 4, 6, 8. We will therefore address the Examiner’s
refusal to enter the Amendment and the Examiner’s conclusion that the
proposed Amendment constitutes new matter. See In re Hengehold, 440
F.2d 1395, 1404 (CCPA 1971) (“[T]he kind of adverse decisions of
examiners which are reviewable by the board must be those which relate, at
least indirectly, to matters involving the rejection of claims.”).
The Examiner’s Refusal to Enter the
Proposed May 11, 2009, Amendment
The Examiner refused to enter the proposed May 11, 2009
Amendment because: (1) it would change the priority after the time
deadlines in MPEP § 201.11 and 37 C.F.R. § 1.78(a)(2)(ii); and (2) no
petition had been filed seeking permission to file such an Amendment. Ans.
15-16.
Appellants contend that the present application is entitled to the
benefit of Tabor’s filing date because the required priority reference was
included in the present application as filed. In particular, they contend, their
application as filed incorporated Tabor by reference in paragraph [0001] of
the Specification of the present application and the purported incorporation
by reference is sufficient to support the priority claim. App. Br. 17-18;
Reply Br. 3-4.
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First, Appellants contend that 37 C.F.R. § 1.57(b) provides that a clear
intent to incorporate by reference using the root words “incorporat(e)” and
“reference” along with a clearly identified reference to a patent application is
sufficient to incorporate the material in the referenced patent application into
the newer application. App. Br. 18; Reply Br. 4.
To the contrary, 37 C.F.R. § 1.57(b) applies “[e]xcept as provided in
paragraph [1.57](a)” which in turn requires as a preliminary condition that
the application contains a claim under § 1.78 for the benefit of a prior-filed
application. As explained in MPEP § 201.17(II) “Conditions and
Requirements of 37 CFR 1.57(a),” “a claim under 37 CFR 1.78 for the
benefit of a prior-filed . . . application, must have been present on the filing
date of the application.” The provisions of § 1.57(b)(1) do not reduce
Appellants’ burden to fully comply with § 1.78. Instead, § 1.78 is a
prerequisite to obtaining the benefit of § 1.57(b)(1). Therefore, the
provisions of § 1.57(b) apply only if a proper claim under § 1.78 is already
of record.
Appellants’ application as originally filed on September 27, 2006,
included an explicit and specific reference only to Application No.
11/134,843. FF 1. The originally filed application did not include an
explicit and specific reference to Tabor. FF 1. Appellants’ May 13, 2008
Request for Reconsideration included a proposed Amendment to the
Specification that provided a specific reference to prior applications,
including Application No. 10/154,627, Tabor’s application number, and
stated Tabor’s filing date as May 24, 2002. FF 5, 6. Appellants’ May 13,
2008 filing was the first time Appellants sought to include a specific
reference to Tabor in their Specification. See FF 1-6. The May 13, 2008
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filing was more than 4 months after the filing of Appellants’ current
application and more than 16 months after the filing of the Tabor
application. Compare FF 1 with FF 6.
Appellants filed the same specific reference to prior applications,
including Tabor, on May 11, 2009. FF 8.
The file history of Appellants’ present application does not indicate
that Appellants filed a petition to accept an unintentionally delayed claim
under 35 U.S.C. § 120 and 37 C.F.R. § 1.78(a)(3). FF 10.
We disagree with Appellants and conclude that § 1.57 does not
eliminate their obligation to comply fully with § 1.78 and we conclude that
Appellants did not comply with § 1.78 in such a way as to afford them
priority any earlier than May 20, 2005.
Second, Appellants contend that
[a]s soon as the Tabor publication was cited as a prior art
reference against the present claims and it was discovered that
an explicit claim of priority to the Tabor publication had been
inadvertently omitted, the appellant filed an amendment in
compliance with 37 C.F.R. § 1.57(a) to incorporate the
inadvertently omitted material and clarify the already present
claim of priority.
Reply Br. 4.
To the contrary, Appellants did not file a clarifying amendment as
soon as the Tabor publication was cited on September 28, 2007. Instead,
they filed only an amendment to the Abstract. FF 3. Proposed clarifying
amendments were not filed until May 13, 2008 and May 11, 2009. FF 6, 8.
Third, Appellants contend that 37 C.F.R. § 1.57(a) and MPEP §
201.06(c)(IV) support their position that the proposed priority claims filed
after their original filing date should be considered. Specifically citing these
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authorities, Appellants contend that “if the inadvertently omitted material is
‘completely contained in the prior-filed application, the claim under . . .
§1.78 shall also be considered an incorporation by reference.’” App. Br. 18;
Reply Br. 3. They also contend that “‘the purpose of 37 CFR 1.57(a) is to
provide a safeguard for applicants when all or a portion of the specification
and/or drawing(s) is (are) inadvertently omitted from an application.’”
Reply Br. 4 (quoting MPEP § 201.06(c)(IV)). 6 We disagree with
Appellants’ interpretation of these authorities.
37 C.F.R. § 1.57, by the very terms quoted by Appellants, requires a
proper claim under § 1.78 as a prerequisite. In addition, the MPEP provision
cited by Appellants, MPEP § 201.06(c)(IV) includes a paragraph A entitled
“Application NOT Entitled to a Filing Date,” which states, in part: “if the
material needed for a filing date is completely contained within a prior-filed
application to which benefit is claimed, applicant may file a petition under
37 CFR 1.57(a)(3)” along with other requirements.
Based upon the facts of record, we find that Appellants’ originally
filed application did not explicitly and specifically incorporate by reference
any prior application other than Application No. 11/134,843 and did not
amend their Specification within the time limits required by 37 C.F.R. §
1.78. We also find that Appellants did not file a petition to amend their
Specification to change their priority date.
Accordingly, we conclude that the Examiner properly refused to enter
the proposed Amendment filed on May 11, 2009.

6 Appellants apparently inadvertently referred to a section of the MPEP that
they identified as § 2106(c) part IV. Reply Br. 4:25. The quotation, instead,
is in MPEP § 201.06 (c) Part IV.
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The Examiner’s Objection to the
Proposed Amendment as New Matter
The Examiner objects to the proposed May 11, 2009 Amendment
under 35 U.S.C. § 132(a) because it introduces new matter in the disclosure
in that the added material is not supported by the original disclosure. Ans.
16. Appellants do not respond to the new matter objection. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2010).
We observe, nevertheless, the following passage in MPEP §
201.06(c)(IV):
An incorporation by reference statement added after an
application’s filing date is not effective because no new matter
can be added to an application after its filing date (see 35
U.S.C. 132(a)). If an incorporation by reference statement is
included in an amendment to the specification to add a benefit
claim under 35 U.S.C. 120 after the filing date of the
application, the amendment would not be proper. When a
benefit claim under 35 U.S.C. 120 is submitted after the filing
of an application, the reference to the prior application cannot
include an incorporation by reference statement of the prior
application. See Dart Indus. v. Banner, 636 F.2d 684, 207
USPQ 273 (C.A.D.C. 1980).
This section of the MPEP directly supports the Examiner’s conclusion
that the proposed amendments constitute new matter.
Based upon Appellants’ failure to respond to the new matter objection
and upon MPEP § 201.06(c)(IV), we conclude that the proposed
Amendment constitutes new matter.
We are therefore not persuaded that the Examiner erred in (1) refusing
to enter the proposed priority Amendment to the Specification; (2) in
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objecting to the proposed Amendment as new matter; and (3) in rejecting
claims 1-6, 8-13, and 15-20 as anticipated by Tabor.
Accordingly, we will sustain the Examiner’s rejection of claims 1-6,
8-13, and 15-20 as anticipated by Tabor.

THE 35 U.S.C. § 101 REJECTION
The Examiner concludes that claims 8-21 are directed to non-statutory
subject matter because they are not tied to a particular machine or do not
transform any underlying subject matter. Ans. 3. Appellants contend that
claims 8 and 15 are patentable subject matter because they are tied to a
particular machine and transform data into a representation of a physically
tangible object. App. Br. 17.
Claim 8 is illustrative:
8. A computer-implemented method for analyzing test data
for multiple components fabricated on a wafer, comprising:
selecting a component as a central component;
identifying a plurality of local components in a local area
near the central component;
determining a derived value of the test data for the
plurality of local components;
comparing the test data for the central component to the
derived value for the plurality of local components; and
identifying whether the test data for the central
component represents a hybrid outlier according to the
comparison of the test data for the central component to the
derived value for the plurality of local components.

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ISSUE
Under § 101, has the Examiner erred in rejecting claims 8-21 by
finding that the computer-implemented method of claim 8 and the computer
program of claim 15 are non-statutory subject matter?

ANALYSIS
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 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 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).
Appellants argue that claim 8 recites statutory subject matter because
it is tied to a computer (App. Br. 16:1; 17:1), which is a particular machine
(App. Br. 16:7), the calculated hybrid outlier inherently corresponds to the
physical location of a component on a wafer and therefore represents a
physically tangible object (App. Br. 16:16-21), and the recited
“components” are components on a wafer and are therefore physically
tangible objects represented by “derived values” and “test data.” Reply Br.
5-6.
Appellants also argue that the identification of a hybrid outlier
represents the transformation of test data from among a plurality of selected
components on a wafer to the possible identification of a hybrid outlier from
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among the plurality of selected components (App. Br. 16:24-27; 17:2). They
also argue that it is not necessary for the components recited in the claims to
undergo a transformation as long as the underlying data has been
transformed into something more than simple data gathering. Reply Br.
3:11-13.
It is the second exclusion noted above – abstract ideas – that is
relevant to the appeal before us. Thus, even if the claimed invention
nominally recites subject matter that falls within the enumerated categories
under § 101, the claimed invention is still ineligible if the claim as a whole is
nonetheless directed to an abstract idea. Diehr, 450 U.S. at 191-93.
To make this determination for claimed processes, the machine-or-
transformation test is “a useful and important clue.” 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)).
Independent claim 8 recites a computer-implemented method for
analyzing test data for multiple components fabricated on a wafer. This test
data analyzing includes: (1) selecting a component as a central component;
(2) identifying a plurality of local components in a local area near the central
component; (3) determining a derived value of the test data for the plurality
of local components; (4) comparing the test data for the central component
to the derived value for the plurality of local components; and (5) identifying
whether the test data for the central component represents a hybrid outlier
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according to the comparison of the test data for the central component to the
derived value for the plurality of local components.
We conclude that the method in independent claim 8, when
interpreted as a whole, is not tied to a particular machine or apparatus, nor
does it transform a particular article into a different state or thing. We
address each prong of the machine-or-transformation test separately.
Claim 8 recites a computer implemented method for analyzing test
data. The Specification states that the invention may be described in terms
of functional block components and various process steps that may be
realized by hardware or software components configured to perform the
specified functions. Spec. ¶ 0018. Other software may be used to facilitate
the testing of components. Spec. ¶ 0024. We therefore regard the claimed
method as steps executed by the software. The method steps are then
considered under Bilski to determine if they are tied to a particular machine
or apparatus or transform a particular article to a different state or thing. We
find these steps do not satisfy either prong.
Claim 8 merely recites software for selecting and identifying
components, deriving and comparing test data regarding the components,
and identifying whether the comparison represents a hybrid outlier.
Accordingly, claim 8 is software that does nothing more than receive data
and analyze data. There is no reference to a specific machine by reciting
structural limitations to any apparatus, nor is there any recitation to any
specific operations that would cause a machine to receive or operate on a
component or to receive and use the recited data. Thus, absent any specific
structural limitations, claim 8 recites no more than an abstract concept.
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The mere recitation of a “computer-implemented method” in the
preamble of claim 8 is not a sufficient tie to a particular machine. We are
guided by the outcome in Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012), where the Federal Circuit found that a similarly tangential
computer recitation did not render patent-eligible a method that
“‘explain[ed] the basic concept’ of processing information through a
clearinghouse.” Id. (“[Appellants’] primary argument is that the ‘computer-
aided’ limitation in the preamble sufficiently limits the claims to an
application of the idea. We disagree.”). In that case, the claims at issue
were silent with respect to how a computer aided the method, the extent to
which a computer aided the method, and the significance of the computer to
the performance of the method. Id. The claims did not “specify[] any level
of involvement or detail” of a computer, and thus the case was
distinguishable from Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed.
Cir. 2011), where “the patent claimed a practical application with concrete
steps requiring an extensive computer interface.” Dealertrack, 674 F.3d at
1334.
Here too there is no limitation on how a computer is involved in
performing the steps recited in claim 8. “Simply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render the claim patent eligible.” Id. at 1333.
Furthermore, the transformation of data does not make the claim
patent-eligible. Although Appellants contend that claim 8 requires that test
data be transformed in information regarding a hybrid outlier and the
calculated hybrid outlier is associated with a component on a wafer (App.
Br. 16:11-17), the transformation is merely mapping one set of data to
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another set of data. Accordingly, no transformation to a different state or
thing occurs, even if the items in claim 8 represent physical objects.
Thus, claim 8 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
‘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. Diehr, 450
U.S. at 191-92; Parker v. Flook, 437 U.S. 584 (1978).
Claim 8 recites the steps of determining data, comparing data, and
identifying data. The steps of determining, comparing, and identifying 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 “identifying whether the test data for the
central component represents a hybrid outlier according to the comparison of
the test data for the central component to the derived value for the plurality
of local components” 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.” Gottschalk
v. Benson, 409 U.S. 63, 71-72 (1972).
Claim 8 therefore pre-empts a fundamental principle, rather than
being limited to a particular application of the principle. Dependent claims
Appeal 2010-005496
Application 11/535,851

19
9-14 fail to recite anything more than additional steps of the mathematical
algorithm.
We are therefore not persuaded that the Examiner erred in rejecting
(1) representative claim 8 as directed to non-statutory subject matter; (2)
claim 15 for similar reasons; and (3) claims 9-14 and 16-21 not argued
separately with particularity.

CONCLUSION
Under § 102, the Examiner did not err in rejecting claims 1-6, 8-13,
and 15-20. Under § 101, the Examiner did not err in rejecting claims 8-21.

DECISION
The Examiner’s decision rejecting claims 1-6 and 8-21 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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