Ex Parte Sinnadurai et alDownload PDFPatent Trials and Appeals BoardApr 11, 201914746237 - (D) (P.T.A.B. Apr. 11, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/746,237 45634 7590 Compass IP Law PC Lawrence M. Cho FILING DATE 06/22/2015 04/15/2019 4804 NW Bethany Blvd Ste 1-2 #237 Portland, OR 97229 FIRST NAMED INVENTOR Nishanth Sinnadurai 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. ALT.Pl50 (A04803) 1155 EXAMINER SIEK, VUTHE ART UNIT PAPER NUMBER 2851 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): eofficeaction@appcoll.com admin@compassiplaw.com lawrence@compassiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NISHANTH SINNADURAI and BENJAMIN GAMSA Appeal 2018-005117 Application 14/746,237 Technology Center 2800 Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-27. We have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant is the Applicant, Altera Corporation, which, according to the Appeal Brief, is also the real party in interest. Appeal Br. 3. Appeal 2018-005117 Application 14/7 46,237 STATEMENT OF THE CASE2 Appellant describes the invention as relating to electronic design automation ("EDA") tools for creating and optimizing design for a physical target device such as a field programmable gate array (FPGA) or application specification integration circuit (ASIC). Spec. ,r,r 1-5. In particular, the Specification explains that performing a timing analysis, presenting the timing analysis to a designer, and allowing modifications prior to compilation of an entire system enables a system to be designed on a target device in a shorter period of time. Id. at ,r 5. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for designing a system on a target device, compnsmg: performing one of synthesis, placement, and routing on the system; presenting a designer with a timing analysis of the system after one of the synthesis, placement, and routing, wherein the timing analysis reflects register retiming optimizations predicted to be implemented on the system; and modifying one of the synthesis, placement, and routing on the system in response to input provided by the designer after the presenting. Appeal Br. 13 (Claims App.). REJECTION The Examiner rejects claims 1-27 under 35 U.S.C. § 101 as directed to an abstract idea. Final Act. 2. 2 In this Decision, we refer to the Final Office Action dated May 22, 2017 ("Final Act."), the Appeal Brief filed October 17, 2017 ("Appeal Br."), the Examiner's Answer dated February 23, 2018 ("Ans."), and the Reply Brief filed April 17, 2018 ("Reply Br."). 2 Appeal 2018-005117 Application 14/7 46,237 ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections."). After considering the evidence presented in this Appeal and each of Appellant's arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner's rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant argues all claims as a group and focuses on claims 1 and what Appellant refers to as "independent claim 17 ." See Appeal Br. 5-12. Claim 1 7 depends from claim 16. 3 We presume that Appellant intended to reference claim 16 rather than claim 17 with its arguments. We therefore limit our discussion to claims 1 and 16. Claims 17-19, 22, 25, and 27 ( which depend from claim 16) stand or fall with claim 16, and all remaining claims stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv) (2013). Patent Eligible Subject Matter Section 101 of the Patent Act provides that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the 3 We also note that claim 17 refers to "[t]he non-transitory computer readable medium of claim 16" but then states "wherein the method further comprises." It is unclear whether claim 17 attempts to claim a device, a method, or both. In the event of further prosecution, we leave assessment of any issues under 35 U.S.C. § 112 to the Examiner. 3 Appeal 2018-005117 Application 14/7 46,237 Supreme Court has long recognized exceptions to this section: "Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,216 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is "directed to one of those patent-ineligible concepts." Id. at 217. If so, we then examine "the elements of [the] claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). The Patent Office recently issued guidance about this framework. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, a claim is directed to an abstract idea only if the claim (1) recites one of the abstract ideas listed in the Guidance and (2) fails to integrate the abstract idea into a practical application. See id. at 51, 53. The abstract ideas listed in the Guidance are (a) mathematical concepts, (b) certain methods of organizing human activity, and ( c) mental processes. Id. at 52. The Guidance explains that a claim may integrate an abstract idea into a practical application when an additional claim element "reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field" or uses the abstract idea "in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment." 4 Appeal 2018-005117 Application 14/7 46,237 Id. at 55. If the claim integrates the abstract idea into a practical application, the claim is patent eligible. See id. at 54. With these principles in mind, we assess the Examiner's rejection and Appellant's argument. Examiner's Determination of Patent-Ineligibility In rejecting claims 1 and 16 under 35 U.S.C. § 101, the Examiner determines that, for example, the claims' recited synthesis, placement, and routing steps are "mental processes that could be done in the human mind and involving mathematical algorithms/mathematical correlations/ relationships." Final Act. 2-3. The Examiner determines that the claims' recited "system" is "represented by a mathematical model describing the system. The mathematical model is described by relationships between components and interconnects." Id. at 3. The Examiner also determines that the additional claim element with providing a designer with a timing analysis is not "significantly more" than the identified abstract ideas because the feature is "well-understood, routine, and conventional and does not add meaningful limits to practice the abstract idea." Id. at 3--4. Claim Construction Before addressing 35 U.S.C. § 101 under a Mayo/Alice analysis, we first address claim construction. See, e.g., Chargepoint, Inc. v. SemaConnect, Inc., 2019 WL 1388304, at *5 (Fed. Cir. Mar. 28, 2019) ("[I]n some cases the 'directed to' inquiry [ of Alice/Mayo step one] may require claim construction, which will often involve consideration of the specification."). 5 Appeal 2018-005117 Application 14/7 46,237 We agree with the Examiner that the recited "system" of claims 1 and 16 is a logic or mathematical model that could be implemented on the recited "target device." Final Act. 2-3. In other words, the "system" is an abstraction rather than being a physical device. The language of the claims supports this construction because the claims refer to the system being "on a target device" rather than the system being a device itself. Appeal Br. 13-15 (Claims App.). The Specification also supports this construction because the Specification indicates the "system" is something that is implemented on a device rather than being a device itself. See, e.g., Spec. ,r 21 ("Synthesis includes generating a logic design of the system to be implemented on the target device .... [S]ynthesis generates an optimized logical representation of the system .... "); ,r 26 ("At 106, the system is placed .... [P]lacement involves placing the technology-mapped logical system design on the target device."). Alice/Mayo-Step 1 (directed to an Abstract Idea) Turning to the first step of the Alice/Mayo inquiry, Appellant contends that the Examiner errs in determining that the claims are directed to an abstract idea. Appeal Br. 4--8; Reply Br. 3-6. Claim 1 recites the following: (1) "a method for designing a system on a target device, comprising:"; "performing one of synthesis, placement, and routing on the system;" "presenting a designer with a timing analysis of the system after one of the synthesis, placement, and routing, wherein the timing analysis reflects register retiming optimizations predicted to be implemented on the system; and" [ and] "modifying one of the synthesis, placement, and routing on the system in response to input provided by the designer after the presenting." 6 Appeal 2018-005117 Application 14/7 46,237 Each of these recitations, considered individually and as a whole, requires performing a function (synthesis, placement, or routing) on the system ( as explained above, a logical or mathematical model that could be implemented on a device), presenting a timing analysis, and modifying a function upon the analysis. For example, "performing one of synthesis, placement, and routing on the system" refers to performing one of the three recited functions on the system. As another example, "presenting a designer with a timing analysis of the system after one of the synthesis, placement, and routing, wherein the timing analysis reflects register retiming optimizations predicted to be implemented on the system" refers to presenting a timing analysis (a mathematical result) occurring based on the function. As yet another example, "modifying one of the synthesis, placement, and routing on the system in response to input provided by the designer after the presenting" refers to changing the function based upon the designer's further input after the timing analysis. Performing functions on the system, presenting a timing analysis, and then allowing the designer to further modify the function are mental processes. We reach this determination because the recitations here are similar to those that our reviewing court held patent ineligible in Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016). In particular, the claims at issue in Synopsis were directed to applying functions to an abstract logic circuit. Id. at 1147. Our reviewing court explained why the Synopsis claims were directed to a mental process as follows: The claim recites a method of changing one description of a level sensitive latch (i.e., a functional description) into another description of the level sensitive latch (i.e., a hardware component description) by way of a third description of that very same level sensitive latch (i.e., 7 Appeal 2018-005117 Application 14/7 46,237 assignment conditions). . . . As demonstrated above, supra at 1142 - 44, and in the patent specification itself, '841 patent, 21 :45-22 :23, the method can be performed mentally or with pencil and paper. Synopsis, 839 F.3d at 1147. Here, the preponderance of the evidence supports that claim 1 likewise can be performed mentally or with pen and paper. Performing or modifying "synthesis"4 is a mental step----"generating a logic design of the system to be implemented by the target device." Spec. ,r 21. Presenting a "timing analysis" is merely presenting information. Notably, claim 1 does not require generation of a timing analysis. Moreover, even if claims 1 was construed to require creation of a timing analysis, creation of such an analysis could be performed mentally or with pen and paper. The Specification explains that the timing analysis "determines whether timing constraints of the system are satisfied" and also that the timing analysis may "utilize estimations and approximations." Spec. ,r 41; see also id. ,r 35. The Specification further explains that a timing analysis might merely mean identifying that certain paths are critical. Id. ,r 39 ("timing analysis would identify paths 210 and 220 as most critical, and 230 as least critical"). The Specification does not indicate that a computer is necessary to, for example, assess path criticality or to provide an estimation of whether timing constraints are satisfied. The key steps of claim 1 all involve observation, evaluation, judgment, and opinion-i.e., mental processes. 4 Because of its recitation of "performing one of' and "after one of," claim 1 does not require "placement" or "routing." 8 Appeal 2018-005117 Application 14/7 46,237 Accordingly, we determine that claim 1 recites a mental process, which is one of the categories of abstract ideas recognized by the Guidance. These recitations of claim 1 are thus an abstract idea. Claim 16 recites a "non-transitory computer readable medium" having instructions to perform the steps akin to those of claim 1 ( except that claim 16 does not refer to placement or routing). Claim 16 thus puts the mental process of claim 1 on a computer readable medium. Placing the mental process on a non-transitory computer readable medium does not transform mental processes into something else. Alice Corp., 573 U.S. at 208 (holding that "method claims recit[ing] the abstract idea implemented on a generic computer" were patent ineligible). Thus, claim 16 also recites a mental process ( one of the categories of abstract ideas recognized by the Guidance). We next assess, as part of the "directed to" inquiry, whether or not claims 1 or 16 integrate the abstract idea into a practical application. We determine that the claims do not recite such an integration. Rather, claim 1 merely requires synthesis ("generating a logic design of the system to be implemented by the target device" (Spec. ,r 21) ), presentation of a timing analysis, and modification of the synthesis. Claim 1 does not, for example, implement a design in a physical device. The only portion of claim 1 that is not purely a mental step is presentation of a timing analysis, but this is mere presentation of information. Our analysis with respect to claim 16 is the same. In this instance, implementation of the abstract idea on a generic computer does not equate to integration into a practical application. Alice Corp., 573 U.S. at 208. Appellant argues that the Examiner's level of abstraction of the claims is too generalized. Appeal Br. 5-6; Reply Br. 3--4. We disagree. The 9 Appeal 2018-005117 Application 14/7 46,237 Examiner determined, just as we do, that the "recited steps" are mental processes. Final Act. 2-3. Appellant also argues that the claims are patent eligible because they are directed to an improvement of existing technology (Appeal Br. 7-8; Reply Br. 4---6). Appellant argues that providing a timing analysis allows the designer to modify a design "without having to wait for an entire compilation of a design to be completed." Appeal Br. 7 (emphasis removed). This argument is also not persuasive. Claims 1 and 16 do not require modification without compiling an entire design. Moreover, even if the recited mental process is more efficient than an old mental process, it is still an abstract mental process. As explained above, claims 1 and 16 do not integrate the mental process into a practical application. Alice/Mayo-Step 2 (additional elements) The Examiner determines that the claims lack elements that amount to "significantly more" than an abstract idea. Final Act. 2-3. Appellant argues that the recitations of claims 1 and 16 amount to significantly more than an abstract idea and describe improvements to a technology. Appeal Br. 8-12; Reply Br. 6-10. We agree with the Examiner that the claims do not recite "significantly more" than an abstract idea. As the examiner explains, the only portion of claims 1 and 16 that is not a mental process ( other than claim 16 being on generic computer memory as addressed above), is the recitation of "providing a designer with a timing analysis." Final Act. 3. The Examiner finds that presenting a timing analysis is well-understood, routine, and conventional. Id. While Appellant argues in the Appeal Brief that its claim as a whole is not taught or suggested by the art (Appeal Br. 10-11), 10 Appeal 2018-005117 Application 14/7 46,237 Appellant does not dispute the Examiner's finding that presenting a designer with the recited timing analysis is conventional. Appellant states, for example, that the claims include "subject matter that is not disclosed, taught, or suggested by the prior art in its field" (Appeal Br. 12) (emphasis removed), but Appellant does not identify the subject matter Appellant references. Appellant argues that presenting the recited timing information is unconventional in the Reply Brief. Reply Br. 10. This is new argument which could have been but was not presented in the Appeal Brief. Under regulations governing appeals to the Board, a new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) as well as 37 C.F.R. § 41.37 and§ 41.41. Because the record contains no such showing, we will not consider the new argument in the Reply Brief. In the alternative, even if we were to consider Appellant's argument that providing the recited timing information is unconventional (Reply Br. 10), the argument is unpersuasive. Appellant does not dispute that providing a timing analysis, in general, was well-known in the art. Id. at 9-10. In particular, Appellant admits that Albrecht, U.S. Patent Publication No. 2008/0276212 Al (Nov. 6, 2008) ("Albrecht") teaches integrating a timing analysis with an RTL editor so that text annotations reflect delays and sequential timing information. Id. In other words, Appellant admits that Albrecht teaches providing a timing analysis. Appellant distinguishes Albrecht based upon the type of timing analysis provided. Id. at 10. 11 Appeal 2018-005117 Application 14/7 46,237 Computing a different type of timing analysis, however, is a distinction based entirely on a mathematical operation and/or mental steps-i.e., a distinction based upon abstract aspects of the claim. See, e.g., Spec. ,r 6 ("timing analysis reflects register retiming optimizations predicted to be implemented on the system"). Appellant's argument that claims 1 and 16 recite "significantly more" than an abstract idea is not persuasive because Appellant's argument focuses on claim recitations that are themselves abstract. Because Appellant's arguments fail to persuasively explain how claims 1 or 16 include significantly more than an abstract idea, the arguments do not identify reversible error in the Examiner's determinations. We, therefore, sustain the Examiner's rejection. DECISION For the above reasons, we affirm the Examiner's rejections of claims 1-2 7. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 12 Copy with citationCopy as parenthetical citation