Ex Parte SilverDownload PDFPatent Trials and Appeals BoardApr 11, 201915390254 - (D) (P.T.A.B. Apr. 11, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/390,254 12/23/2016 Richard N. Silver 48329 7590 04/15/2019 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 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. R039-Pl6772 8504 EXAMINER BUI,BRYAN ART UNIT PAPER NUMBER 2865 NOTIFICATION DATE DELIVERY MODE 04/15/2019 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD N. SIL VER Appeal2018-006145 Application 15/390,254 Technology Center 2800 Before JEFFREY T. SMITH, DONNA M. PRAISS, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL 1 1 Our decision refers to the Specification ("Spec.") filed December 23, 2016, the Examiner's Final Office Action ("Final") dated August 16, 2017, Appellant's Appeal Brief ("Appeal Br.") filed January 9, 2018, the Examiner's Answer ("Ans.") dated March 28, 2018, and Appellant's Reply Brief ("Reply Br.") filed May 24, 2018. Appeal2018-006145 Application 15/390,254 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134 from a rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER The claims are directed to a "fast method and system ... for spectral analysis of electronic circuits and equivalent linear time invariant systems." Spec. ,r 31. The Specification provides that the methods disclosed may "accelerate the circuit design process by orders of magnitude, which can enable discovery of new types of circuits." Id. ,r 33; see also Appeal Br. 7 (providing that "the spectral analysis method of the instant claims produces a characterization of the performance of an electronic circuit that is useful to an electronic circuit designer"). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A spectral analysis method for determining performance of an electronic circuit, comprising: receiving a list of parts for the electronic circuit; determining a part admittance matrix with algebraic nodes for each part; determining a circuit admittance matrix for exterior nodes, interior nodes, and algebraic nodes based on the part admittance matrices; reducing interior nodes of the circuit admittance matrix for exterior nodes, interior nodes, and algebraic nodes to determine a circuit admittance matrix for exterior nodes and algebraic nodes; 2 Appellant is the Applicant, Resonant Inc., which is identified in the Appeal Brief as the real party in interest (Appeal Br. 2). 2 Appeal2018-006145 Application 15/390,254 reducing algebraic nodes to transform the circuit admittance matrix for exterior nodes and algebraic nodes into a Green's Function; evaluating the Green's Function to determine a circuit exterior node admittance matrix over a frequency spectrum; and transforming the circuit exterior node admittance matrix to a circuit scattering matrix that characterizes the performance of the electronic circuit over the frequency spectrum. REJECTION Claims 1-8 are rejected under 35 U.S.C. § 101. Final Act. 4. OPINION Legal Framework An invention is patent eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, our inquiry focuses on the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 3 Appeal2018-006145 Application 15/390,254 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula 4 Appeal2018-006145 Application 15/390,254 to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "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]."' Id. ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The Office recently published revised guidance on the application of § 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance ("Memorandum"), 84 Fed. Reg. 50. Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)). Only if a claim recites a judicial exception and does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or 5 Appeal2018-006145 Application 15/390,254 ( 4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See generally Memorandum. Analysis Applying the guidance set forth in the Memorandum, we conclude that claims 1-8 do not recite patent-eligible subject matter. Revised Step 2A, Prong One-Directed to a Judicial Exception The Memorandum instructs us first to determine whether each claim recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The Memorandum identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. Id. at 52. We primarily focus here on the first grouping-mathematical concepts. The Examiner finds that the claims are directed to mathematical concepts. Final Act. 5; Ans. 2. Appellant, on the other hand, argues that although the "individual steps recited in the instant claims are mathematical operations which could, in isolation, be considered abstract," "the ordering of the steps and the dependence of each step on its predecessor are not abstract." Appeal Br. 7. Appellant reasons that the recited steps, "some having not previously been applied to spectral analysis of electronic circuits," are performed in the recited order, and are not directed to any abstract idea. Id. Although claims 1-8 and the Specification mention the structure of electronic circuits, the claims are not directed to such a structure, but to methods for the spectral analysis of the circuits which may provide certain characteristics of the circuit to potentially aid the design thereof. See Spec. 6 Appeal2018-006145 Application 15/390,254 ,r,r 31, 33 ("Spectral analysis over thousands of frequency points and pole zero analysis can be a rate limiting steps for this design process [ of circuits]" and the disclosure provides "a fast method ... for spectral analysis of electronic circuits and equivalent linear time invariant systems"). These methods are directed to the abstract idea of mathematical concepts, wherein the steps "are mathematical operations" as Appellant acknowledges. Appeal Br. 7. More specifically with regard to claim 1 which recites the following limitations: ( 1) "receiving a list of parts for the electronic circuit;" (2) "determining a part admittance matrix with algebraic nodes for each part;" (3) "determining a circuit admittance matrix for exterior nodes, interior nodes, and algebraic nodes based on the part admittance matrices;" ( 4) "reducing interior nodes of the circuit admittance matrix for exterior nodes, interior nodes, and algebraic nodes to determine a circuit admittance matrix for exterior nodes and algebraic nodes;" (5) "reducing algebraic nodes to transform the circuit admittance matrix for exterior nodes and algebraic nodes into a Green's Function;" (6) "evaluating the Green's Function to determine a circuit exterior node admittance matrix over a frequency spectrum;" and (7) "transforming the circuit exterior node admittance matrix to a circuit scattering matrix that characterizes the performance of the electronic circuit over the frequency spectrum." These limitations, under their broadest reasonable interpretation, recite the steps to perform a spectral analysis of electronic circuits. See Spec. ,r 31. Each of the recited (2) and (3) "determining a ... matrix" limitations carries out one or more mathematical concepts. The Specification discloses a nodal analysis of a circuit involving an admittance matrix Y which is 7 Appeal2018-006145 Application 15/390,254 expressed by the mathematical relation "between currents and voltages, I= YV." Spec. i-fi-f53; see also Spec. ,r,r 53-81 (section titled "ALGEBRAIC NODE EXPANSION"). For example, the Specification describes that matrices may be determined using "frequency-independent functions." Id. i148. The recited ( 4) "reducing interior nodes" limitation similarly carries out one or more mathematical concepts "to determine a circuit admittance matrix" whereas the recited ( 5) "reducing algebraic nodes" limitation carries out one or more mathematical concepts "to transform the circuit admittance matrix ... into a Green's function." See Spec. ,r,r 87-107 (section titled "REDUCTION OF ALGEBRAIC NODES TO GREEN's FUNCTION FORM"). For example, the Specification describes that to "compute the admittance spectrum for exterior nodes, reduce all algebraic nodes Yfe(w) = Yee - Yea C ~ Yae·" Spec. i190. JW+c l+Yea The recited ( 6) "evaluating the Green's Function" limitation carries out one or more mathematical concepts "to determine [an] ... admittance matrix." See Spec. ,r,r 116-133 (section titled "NUMERICAL EVALUATION OF GREENS FUNCTION"). For example, the Specification provides that "[i]n addition to the three ( diagonalization, linear algebra, kernel polynomial) methods detailed above, there are other Green's function evaluation methods widely used in physics that may be adapted to circuit spectral analysis." Spec. ,r 133. The recited (7) "transforming the ... admittance matrix to a circuit scattering matrix" limitation carries out one or more mathematical concepts. See Spec. ,r,r 139-146 (section titled "POLE ZERO ANALYSIS"). For 8 Appeal2018-006145 Application 15/390,254 example, the Specification describes the scattering matrix "F(s) = P(s) ; s = Q(s) jm" in which "the numerator and denominator polynomials" must satisfy certain conditions "for the electrical response of the circuit to be stable." Spec. ,r,r 139--40. The remaining recited ( 1) "receiving a list of parts" is a limitation recited at a high level of generalization and merely provides the information to be used in the mathematical concepts recited in limitations (2) - (7). The dependent claims similarly recite mathematical concepts such as "vectorizing" (claim 2), "evaluating Green's Function by linear algebra" (claim 3), "expanding the Green's Function" (claim 4), and "Fourier transform" ( claim 5), to name a few. As the Specification provides, the claims perform a spectral analysis that "introduces algebraic node analysis, and matrix transformations comprised, in part, of successive nodal expansions and interior node reduction" - for "the computation of the spectral response of a circuit." Spec. ,r 34. Appellant's argument that the ordering and dependence of the steps are not abstract ideas (Appeal Br. 7) is not persuasive. Mathematical operations ( such as the matrix transformation and reduction recited by the claims) performed in a particular sequence nonetheless involves mathematical concepts which are abstract ideas. Because the claims recite mathematical concepts, we find that the claims are directed to the judicial exception of an abstract idea in the first prong of the revised Step 2A of the 2019 Guidelines. See Memorandum, 84 Fed. Reg. 51-52. Revised Step 2A, Prong Two - Practical Application Having determined that claims 1-8 are directed to the abstract idea of mathematical concepts, we next look to determine whether the claims recite 9 Appeal2018-006145 Application 15/390,254 "additional elements that integrate the judicial exception into a practical application." MPEP § 2106.05(a}-(c), (e}-(h); Memorandum, 84 F.3d at 53-54. Integration into a practical application requires an additional element or a combination of additional elements in the claim to "apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception." Memorandum, 84 Fed. Reg. at 53-54; see also id. at 55 (setting forth exemplary considerations indicative that an additional element or combination of elements may have integrated the judicial exception into a practical application). Here, the Examiner finds that the additional elements claims 1-8 recite do not integrate the judicial exception into a practical application. Final Act. 5; Ans. 3. The claims do not specify whether the steps are carried out by a computer or a human using pen and paper. The claims do not recite, and the Specification does not describe, an improvement to the functioning of a computer, or to any other technology or technical field. 3 There are, in fact, no additional elements directed to a particular machine or transformation. The claims do not require any step of using the result of the spectral analysis. The claims do not require any step of actually designing or manufacturing a circuit. As the Examiner points out, to the extent that the 3 In the Reply Brief, Appellant argues for the first time that the performance of the recited steps of claim 1 results in "a reduction in processing time by a factor of 350 or more." Reply Br. 4. This assertion is not supported by any citation to the record. See id. Whether claim 1 is directed to mathematical concepts said to allow faster computation ( e.g., a short cut) does not change the fact that the claims are directed to the abstract idea of mathematical concepts. See Alice, 573 U.S. 208,216 ("We have described the concern that drives this exclusionary principle as one of pre-emption."). 10 Appeal2018-006145 Application 15/390,254 claims provide results indicative of the performance of an electronic circuit, the Specification does not disclose any real-life application of using the performance for circuit design. Final Act. 5; see also Appeal Br. 10 ( disagreeing with the Examiner without providing evidence in the Specification for an actual circuit design), 7 (arguing, without factual support, that the claims produce certain outcomes "useful to an electronic circuit designer"). Appellant argues that the performance of the circuit "can be used by an electronic circuit designer to determine whether a certain electronic circuit meets a specified performance characteristic." Appeal Br. 9. We note that Appellant does not cite to the Specification in support of this argument. To the extent that the Specification provides that the recited methods "can enable discovery of new types of circuits" (Spec. ,r 33), the Specification does not describe that circuits are in fact discovered or manufactured as a result of the recited methods. Such disclosure does not integrate the mathematical concepts recited in the claims into a practical application. See Memorandum, 84 Fed. Reg. at 55 (setting forth examples in which a judicial exception has not been integrated into a practical application). Step 2 B-Inventive Concept Because we determine that claims 1-8 are directed to an abstract idea and they do not include additional elements that integrate the abstract idea into a practical application, we look to whether each claim provides an inventive concept, i.e., adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field. Memorandum, 84 Fed. Reg. at 56. There is, however, none other than the 11 Appeal2018-006145 Application 15/390,254 abstract idea itself (i.e., carrying out the mathematical concepts and performing mathematical operations) in the claims. See Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (holding that "the 'inventive concept' cannot be the abstract idea itself'). Accordingly, we conclude that method claims 1-8 are directed to patent ineligible subject matter under 35 U.S.C. § 101. Claims 1-8 are directed to the abstract idea of mathematical concepts determining certain characteristics of electronic circuits and do not recite additional elements that integrate those mathematical concepts into a practical application. Further, the possible use of the method in circuit design does not transform it into a patentable apparatus; the method remains pre-empted mathematical concepts. Alice, 573 U.S. 208, 216 ("We have described the concern that drives this exclusionary principle as one of pre-emption.") (citing Bilski v. Kappas, 561 U.S. 593, 612 (2010) ("[U]pholding the patent 'would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea."')). DECISION The Examiner's decision 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)(l )(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation