Ex Parte Sinnadurai et al

Patent Trials and Appeals Board

Apr 11, 2019

14746237 - (D) (P.T.A.B. Apr. 11, 2019)

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.
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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.").
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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.
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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."
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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.").
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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."
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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.,
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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."
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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
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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),
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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.
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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
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