Ex Parte Silver

Patent Trials and Appeals Board

Apr 11, 2019

15390254 - (D) (P.T.A.B. Apr. 11, 2019)

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).
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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
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(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
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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
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( 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.
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,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
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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
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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
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"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.").
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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
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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
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