Ex Parte Van Berkel et alDownload PDFPatent Trial and Appeal BoardJan 17, 201310565926 (P.T.A.B. Jan. 17, 2013) Copy Citation 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. 10/565,926 01/20/2006 Cornelis Hermanus Van Berkel 6275-223 9399 24112 7590 01/17/2013 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER BULLOCK JR, LEWIS ALEXANDER ART UNIT PAPER NUMBER 2199 MAIL DATE DELIVERY MODE 01/17/2013 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 CORNELIS HERMANUS VAN BERKEL, PATRICK PETER ELIZABETH MEUWISSEN, and RICKY JOHANNES MARIA NAS ____________________ Appeal 2010-0072411 Application 10/565,926 Technology Center 2100 ____________________ Before JEAN R. HOMERE, DEBRA K. STEPHENS, and JASON V. MORGAN, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is ST-Ericckson, S.A. (App. Br. 3.) Appeal 2010-007241 Application 10/565,926 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-11. (App. Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention As depicted in Appellants’ Figure 2 below, Appellants invented a vector processing device (100) for composing basic code vectors (102) into a composite code vector (104). In particular, two weighted sum units (106) perform two distinct weighted sum operations, each under the control of a distinct configuration word (114), from a plurality of incoming basic code vectors (102) to select therefrom basic code vectors (102) that are added together to separately produce each an intermediate code vector. An add unit (110) subsequently adds the intermediate vectors together to produce the composite code vector (104). (Abstract.) Appeal 2010-007241 Application 10/565,926 3 Illustrative Claim Independent claim 1 further illustrates the invention as follows: 1. A device arranged to compose basic-code vectors into a composite-code vector, the device comprising: at least two weighted sum units, each weighted sum unit being arranged to provide an intermediate-code vector which is a weighted sum of a plurality of the basic-code vectors; an add unit, the add unit being arranged to sum the intermediate-code vectors into the composite-code vector; the weighted sum units being under the control of a first and a second configuration word, and wherein the first and the second configuration word are deployed to configure the operations performed by the weighted sum units. Prior Art Relied Upon The Examiner relies on the following prior art as evidence of unpatentability: Erdogan US 7,076,514 B2 Jul. 11, 2006 Rejections on Appeal The Examiner rejects the claims on appeal as follows: 1. Claims 1-10 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1-11 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Erdogan. Appeal 2010-007241 Application 10/565,926 4 ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the principal Brief, pages 7-21. Non-Statutory Rejection Dispositive Issue 1: Have Appellants shown the Examiner erred in concluding that claim 1 is directed to non-statutory subject matter? Appellants argue that the Examiner erred in finding that claim 1 is directed to a series units of mathematical operations for generating a composite vector code. Rather, Appellants argue that the claim is directed to a particular machine arranged to compose the basic code vector. (App. Br. 14.) In response, the Examiner finds that because the recited device does not set forth any physical structure for performing the recited functions, the claim is directed to software units for performing the functions. (Ans. 7-8.) We find error in the Examiner’s conclusion that claim 1 is directed to non-statutory subject matter. Appellants’ Specification indicates that the subject matter of the invention can be implemented in the form of dedicated hardware or in the form of a programmed general purpose computer. (Spec. 7.) We find nothing in the Specification to support the Examiner’s finding that the recited units are implemented in software. We are therefore satisfied that implementing the units in hardware or in a programmed general purpose computer would satisfy the machine requirements, and would thereby render Appeal 2010-007241 Application 10/565,926 5 the claim patent eligible.2 It follows that Appellants have shown error in the Examiner’s rejection of claims 1-10. Anticipation Rejection Dispositive Issue 2: Have Appellants shown that the Examiner erred in finding that Erdogan describes a first and second weighted sum units, under the control of a first and second configuration words, arranged to provide intermediate code vectors, as recited claim 1? Appellants argue that Erdogan does not describe the disputed limitations emphasized above. (App. Br. 15-21.) In particular, Appellants argue that while Erdogan discloses a first and a second summer, the disclosed summers are not weighted sum units because they simply add the outputs of filter coefficients, without performing any selection of input vectors. (Id. at 16-17.) Further, Appellants argue that because Erdogan’s summers provide a sum of filtered binary signals, and do not relate to standards/codes, their outputs cannot be said to describe an intermediate code vector. (Id. at 18-19.) In response, the Examiner finds that Erdogan’s disclosure of a first summer and a second summer, under the control of a plurality of filters, for 2 “[A] machine is a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’” Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009) (quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), reh’g denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), cert. denied, 129 S. Ct. 70 (2008)). Appeal 2010-007241 Application 10/565,926 6 adding a plurality of selected input vector codes describes the disputed limitations, as broadly claimed. (Ans. 8-9.) Figure 12 of Erdogan is reproduced below: Figure 12 depicts a diagram of a polyphase combiner-sinc filter. On the record before us, we agree with the Examiner’s finding of anticipation. As depicted in Figure 12 above, Erdogan discloses a plurality of input vectors (D11..22) that are fed to a plurality of filters (C11..24) before they are selected to be summed by a first summer or a second summer, the outputs of the summers are subsequently added to produce a composite output vector. We find that because the filters are able to select or de-select input vectors based on whether or not the characteristics of the vectors match those of filters to which they are fed, the filters in conjunction with the summers describe the weighted summers, as claimed. Further, we find Appeal 2010-007241 Application 10/565,926 7 for these same reasons that the output of the summers describe the intermediate vectors. Therefore, we find Erdogan discloses each weighted sum unit (adder) being arranged to provide an intermediate-code vector which is a weighted sum of a plurality of the basic-code vectors. Additionally, we find unpersuasive Appellants’ argument seeking to distinguish the claimed units from Erdogan’s disclosure on the basis on the types of data they are set out to process. We conclude that the content of the code vectors to be directed to nonfunctional descriptive material. In a precedential Opinion, an expanded Board panel held that nonfunctional descriptive material (sequence data) did not distinguish the claimed computer-based system from a prior art system that was the same except for its sequence data. See Ex parte Nehls, 88 USPQ2d 1883, 1887-88 (BPAI 2008) (precedential).3 It follows that Appellants have not shown error in the Examiner’s rejection of claim 1 as being anticipated by Erdogan. Because Appellants did not argue 2-11 separately, those claims fall together with claim 1 as set forth above. See 37 C.F.R. § 1.37(c)(1)(vii). DECISION 1. We reverse the Examiner’s decision to reject claims 1-10 as being directed to non-statutory subject matter under 35 U.S.C. § 101. 3 See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006) (stating if a claimed phrase cannot alter how the process steps are to be performed to achieve the utility of the invention or merely states an intended use or purpose for the data, it is not entitled to patentable weight). Appeal 2010-007241 Application 10/565,926 8 2. We affirm the Examiner’s decision to reject claims 1-11 as being anticipated by Erdogan under 35 U.S.C. § 102(e). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a) 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)(iv). AFFIRMED msc Copy with citationCopy as parenthetical citation