Hiroshi Nakamura

Patent Trials and Appeals Board

Jun 22, 2020

2018007602 (P.T.A.B. Jun. 22, 2020)

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.
14/226,137 03/26/2014 Hiroshi NAKAMURA SAS0268US 4595
23413 7590 06/22/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
ELLIS, SUEZU Y
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROSHI NAKAMURA
Appeal 2018-007602
Application 14/226,137
Technology Center 2800
Before N. WHITNEY WILSON, BRIAN D. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 3, 5, 8, 10. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

1 In this Decision, we refer to the Specification filed March 26, 2014
(“Spec.”), the Final Office Action dated June 20, 2017 (“Final Act.”), the
Appeal Brief filed March 26, 2018 (“Appeal Br.”), the Examiner’s Answer
dated May 16, 2018 (“Ans.”), and the Reply Brief filed July 16, 2018
(“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Nidec
Sankyo Corporation. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The invention relates to a symbol information reader that optically
reads symbol information, such as barcode symbols, and a method for
reading symbol information. Spec. 1 ¶ 1. Independent claims 8 and 10,
reproduced below from the Claims Appendix of the Appeal Brief, are
illustrative of the claimed subject matter.
8. A method for detecting a physical position of
symbol information on a medium and decoding the symbol
information, the method comprising:
optically capturing, with an imaging device, an image of
the medium on which symbol information is recorded and
converting the image into image data;
storing said image data in a storage unit;
retrieving said image data and detecting the physical
position of said symbol information recorded on said medium;
and
decoding the symbol information located at the detected
physical position;
wherein said detecting the physical position of said
symbol information comprises:
calculating brightness changes of said image data
along a plurality of parallel scanning lines extending in a
scanning direction of said image data, and identifying a
temporary area having a possibility of corresponding to
said symbol information when the brightness changes
exceed a predetermined brightness change threshold,
calculating correlations of said temporary area
with a first neighboring area neighboring the temporary
area in a first direction perpendicular to the scanning
direction and a second neighboring area neighboring the
temporary area in a second direction perpendicular to the
scanning direction and opposite to the first direction and
creating a correlation map indicating the correlation of
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the temporary area to the first neighboring area and the
second neighboring area,
searching said correlation map for a presence of a
predetermined basic barcode pattern and labeling an area
judged as having said predetermined basic barcode
pattern, and
detecting the position of said symbol information
recorded on said medium based on said labeled area,
wherein, in the correlation map, a high correlation area is
an area in which the correlation of the temporary area with the
first neighboring area and the second neighboring area exceeds
a predetermined correlation threshold; and
wherein said labeling the area comprises judging that the
temporary area includes the predetermined basic barcode
pattern when a ratio of high correlation areas to a total area of
temporary area exceeds a predetermined ratio threshold or
based on a position of said high correlation areas;
wherein the temporary area includes the predetermined
basic barcode even if a sum of element values of all elements in
said basic pattern is smaller than the sum of the element values
obtained when all elements are of high correlation as long as
the sum of element values of all elements in said basic pattern
is equal to or larger than a predetermined value.
Appeal Br. 25–27 (Claims App.).
10. A method for detecting a physical position of
symbol information on a medium and decoding the symbol
information, the method comprising:
optically capturing, with an imaging device, an image of
the medium on which symbol information is recorded and
converting the image into image data;
storing said image data in a storage unit;
retrieving said image data and detecting the physical
position of said symbol information recorded on said medium;
and
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decoding the symbol information located at the detected
physical position;
wherein said detecting the physical position of said
symbol information comprises:
calculating brightness changes of said image data
along a plurality of parallel scanning lines extending in a
scanning direction of said image data, and identifying a
temporary area having a possibility of corresponding to
said symbol information when the brightness changes
exceed a predetermined brightness change threshold,
calculating correlations of said temporary area
with a first neighboring area neighboring the temporary
area in a first direction perpendicular to the scanning
direction and a second neighboring area neighboring the
temporary area in a second direction perpendicular to the
scanning direction and opposite to the first direction and
creating a correlation map indicating the correlation of
the temporary area to the first neighboring area and the
second neighboring area,
searching said correlation map a presence of a
predetermined basic barcode pattern and labeling the area
judged as having said predetermined basic barcode
pattern, and
detecting the position of said symbol information
recorded on said medium based on said labeled area,
wherein, in the correlation map, a high correlation area is
an area in which the correlation of the temporary area with the
first neighboring area and the second neighboring area exceeds
a predetermined correlation threshold; and
wherein said labeling the area comprises judging that the
temporary area includes the predetermined basic barcode
pattern when a ratio of high correlation areas to a total area of
temporary area exceeds a predetermined ratio threshold or
based on a position of said high correlation areas;
wherein in the searching said correlation map,
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basic pattern areas are formed by shifting elements
one by one in said correlation map, every basic pattern
area is judged whether a basic pattern is present or not,
according to the ratio of high correlation area to an area
subject to judgment, or the position of high correlation
area in the basic pattern; when the basic pattern is not
judged as said basic barcode, said basic pattern is
regarded uncertain; when the following basic pattern
after the shift by one element is judged as the
predetermined basic barcode pattern, said basic pattern
regarded uncertain is now judged as the predetermined
basic barcode pattern.
Id. at 27–28.
Independent claims 3 and 5 are system claims that include claim
language similar to claims 8 and 10, respectively. See Appeal Br. 14–16; see
also id. at 23–25.
REJECTION
The Examiner maintains, and Appellant requests review of, the
rejection of claims 3, 5, 8, and 10 under 35 U.S.C. § 101 as “directed to a
judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract
idea) without significantly more.” Final Act. 3.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, and for the reasons stated below,
we do not sustain the Examiner’s rejection under 35 U.S.C. § 101.
A. The Examiner’s Rejection
The Examiner rejects claims 3, 5, 8, and 10 under 35 U.S.C. § 101 as
directed to an abstract idea without significantly more. Final Act. 3. Claims
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8 and 10 recite, “A method for detecting a physical position of symbol
information on a medium and decoding the symbol information.” Appeal Br.
25–27. The Examiner determines that, the steps of “calculating brightness
changes,” “calculating correlations . . . and creating a correlation map,”
“searching [the] correlation map,” and “detecting the position of [the]
symbol information” amount to “mathematical relationship/formulas” that
are “similar to the concepts that have been identified as abstract by the
courts in [Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014),] which involved functions of organizing and
manipulating information through mathematic correlations[,] and/or [In re
Abele, 684 F,2d 902 (CCPA 1982),] which involved functions of calculating
the differen[ce] between local and average data values.” Final Act. 9.
The Examiner determines that the claims do not include additional
elements that are sufficient to amount to “significantly more” than the
judicial exception because the claimed steps are performed by a processor,
which “is considered to amount to nothing more than requiring a generic
computer to carry out the abstract idea itself.” Id. at 10. The Examiner
further determines that the steps of capturing an imaging device, an image of
the medium on which the symbol information is recorded, converting the
image into image data, storing the image data, and retrieving the image data
“are considered mere routine data gathering steps necessary to obtain
information to perform the analyzing/decoding, and are therefore considered
insignificant extrasolution activities that do not add significantly more to the
judicial exception.” Id.
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B. Appellant’s Contentions
Appellant argues that the claims are not directed to an abstract idea
because “the claims result in an improvement in operations of a computer,”
“making it possible to more accurately identify a location of a barcode on a
surface, even if the barcode is obscured or damaged” (Appeal Br. 13–14
(citing Spec. ¶ 78)), and the claims include limitations specifically directed
to the noted improvement in computer operation. Id. at 16–17.
C. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The U.S.
Supreme Court, however, 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, we
are guided by the Court’s two-part 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. Kappos, 561 U.S. 593, 611 (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
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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 (Gottschalk v. Benson, 409 U.S. 63, 67 (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 waterproof 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))).
If the claim is “directed to” an abstract idea, we turn to the second part
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.
(alterations in original) (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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(“2019 Revised Guidance”).3,4 Consistent5 with the 2019 Revised Guidance
and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

3 The Office issued further guidance on October 17, 2019, clarifying the
2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter
Eligibility (the “October 2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 Neither the Examiner nor Appellant had benefit of this Guidance when
advocating their respective positions concerning subject matter eligibility.
5 Our reviewing court has explained that the 2019 Revised Guidance “cannot
modify or supplant the Supreme Court’s law regarding patent eligibility, or
[our reviewing court’s] interpretation and application thereof.” In re Rudy,
956 F.3d 1379, 1383 (Fed. Cir. Apr. 24, 2020). Our decision, therefore, is
based upon applicable statute and precedent of the United States Supreme
Court and the Court of Appeals for the Federal Circuit. This decision applies
the analytical framework set forth in the 2019 Revised Guidance, and it does
so in a manner consistent with statute and precedent.
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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Consistent with the guidance, only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then look, under Step 2B, 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
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
D. Analysis
Pursuant to the U.S. Supreme Court’s Mayo and Alice framework and
consistent with the Guidance, we consider whether the claim recites a
judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 51. The
Guidance synthesizes the key concepts identified by the courts as abstract
ideas into three primary subject-matter groupings: mathematical concepts,
certain methods of organizing human activity (e.g., a fundamental economic
practice), and mental processes. Id. at 52. For the reasons discussed below,
independent claims 3, 5, 8, and 10 recite mathematical concepts.
Claim 8 is reproduced below with emphases added to the key
recitations that are mathematical concepts.
8. A method for detecting a physical position of
symbol information on a medium and decoding the symbol
information, the method comprising:
optically capturing, with an imaging device, an image of
the medium on which symbol information is recorded and
converting the image into image data;
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storing said image data in a storage unit;
retrieving said image data and detecting the physical
position of said symbol information recorded on said
medium; and
decoding the symbol information located at the detected
physical position;
wherein said detecting the physical position of said
symbol information comprises:
calculating brightness changes of said image
data along a plurality of parallel scanning lines
extending in a scanning direction of said image data,
and identifying a temporary area having a possibility of
corresponding to said symbol information when the
brightness changes exceed a predetermined brightness
change threshold,
calculating correlations of said temporary area
with a first neighboring area neighboring the
temporary area in a first direction perpendicular to
the scanning direction and a second neighboring area
neighboring the temporary area in a second direction
perpendicular to the scanning direction and opposite
to the first direction and creating a correlation map
indicating the correlation of the temporary area to the
first neighboring area and the second neighboring area,
searching said correlation map for a presence of
a predetermined basic barcode pattern and labeling
an area judged as having said predetermined basic
barcode pattern, and
detecting the position of said symbol
information recorded on said medium based on said
labeled area,
wherein, in the correlation map, a high correlation area is
an area in which the correlation of the temporary area with the
first neighboring area and the second neighboring area exceeds
a predetermined correlation threshold; and
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wherein said labeling the area comprises judging that the
temporary area includes the predetermined basic barcode
pattern when a ratio of high correlation areas to a total area of
temporary area exceeds a predetermined ratio threshold or
based on a position of said high correlation areas;
wherein the temporary area includes the predetermined
basic barcode even if a sum of element values of all elements in
said basic pattern is smaller than the sum of the element values
obtained when all elements are of high correlation as long as
the sum of element values of all elements in said basic pattern
is equal to or larger than a predetermined value.
Appeal Br. 25–27 (Claims App.) (emphasis added). Independent claims 10
recites a method, and claims 3 and 5 recite a symbol information reader
having a position detection processer, performing similar mathematical
concepts as those identified in claim 8 above.
The Specification explains that: (1) at the temporary area judging unit,
brightness changes are calculated using variance or standard deviation
(Spec. ¶ 24); (2) at the correlation map creating unit, correlation calculations
are implemented to discriminate a barcode symbol from other symbol
information (id. ¶ 25); (3) at the labeling unit, multiple basic barcode symbol
patterns are used to search the correlation map for the presence of a basic
barcode pattern (id. ¶¶ 53, 56); and (4) at the position determining unit,
calculations are performed (e.g., the center of gravity of the barcode map is
calculated) to detect the position of the barcode symbol on a medium (id. at
¶¶ 57–60). Thus, as the Examiner determines, at least each of the steps in
claims 8 and 10 of “calculating brightness changes,” “calculating
correlations . . . and creating a correlation map,” “searching [the] correlation
map,” and “detecting the position of [the] symbol information,” and at least
each of the corresponding recitations of the symbol information reader in
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claims 3 and 5 is a mathematical calculation (Final Act. 8–9, 12), which is
one of the mathematical concepts identified in the 2019 Revised Guidance.
2019 Revised Guidance, 84 Fed. Reg. at 52; see also, e.g., Diamond, 450
U.S. 175 at 191 (“A mathematical formula as such is not accorded the
protection of our patent laws.”). Accordingly, each of claims 3, 5, 8, and 10
recite an abstract idea.
Because each independent claim (and thus all claims on appeal)
recites an abstract idea, we next determine, pursuant to the precedent of the
U.S. Supreme Court and our reviewing court and consistent with the 2019
Revised Guidance, whether the recited judicial exception is integrated into a
practical application. 2019 Revised Guidance, 84 Fed. Reg. at 51. According
to the 2019 Revised Guidance, when a claim recites a judicial exception and
fails to integrate the exception into a practical application, the claim is
“directed to” the judicial exception. Id. The claim may integrate the judicial
exception when, for example, it reflects an improvement to technology or a
technical field. Id. at 55.
As Appellant argues, the Specification explains that the “invention
provides a symbol information reader capable of accurately reading the
entire symbol information while preventing mis-judgments on reading of
symbol information such as barcode symbols, a method for reading symbol
information[,] and a program to execute the method.” Spec. ¶ 10; see also id.
¶ 78 (“[M]isjudgment can be prevented when symbol information such as a
barcode symbol pattern is read, enabling accurate reading of the entire
symbol information.”). As Appellant argues, the claims are not “directed to”
an abstract idea because the claims integrate the mathematical calculations
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into improving claim 3 and 5’s symbol information reader, and claim 8 and
10’s method. See Appeal Br. 13–14, 16–18.
The Examiner maintains that the only improvement is to an abstract
idea, i.e., “the algorithm for detecting symbol information in an image, not
improving the imaging device or the processor itself[,]” and thus the claims
are “directed to an abstract idea.” Ans. 4–5. The Examiner is correct that our
reviewing court has stated that “a claim for a new abstract idea is still an
abstract idea.” Id. (quoting Synopsys v. Mentor Graphics Corp., 839 F.3d
1138 (Fed. Cir. 2016)). As discussed above, however, the mathematical
calculations recited in claims 8 and 10 improve a method of reading, i.e.,
detecting the physical position of, and decoding, symbol information, rather
than only improving upon an abstract idea. Similarly, the position detection
processer recited in claims 3 and 5, which performs similar mathematical
calculations as recited in method claims 8 and 10, improves a symbol
information reader.
Claims 8 and 10 before us are similar to, for example, those of SiRF
Tech., Inc. v. International Trade Commission, 601 F.3d 1319, 1331–33
(Fed. Cir. 2010). In SiRF, the claims at issue recited a method for calculating
the position of a GPS receiver by providing pseudoranges and making
various estimates. Id. at 1332. Our reviewing court determined that a GPS
receiver is a machine and is integral to each claim at issue. Id. The court
further determined that the GPS receiver in the claims “places a meaningful
limit on the scope of the claims.” Id. at 1332–1333.
Claims 8 and 10 require an “imaging device” akin to the GPS receiver
of SiRF. The methods of claims 8 and 10 cannot be performed without this
particular machine. SiRF at 1332–1333; see also Thales Visionix Inc. v. U.S.,
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850 F.3d 1343 (Fed. Cir. 2017) (holding that claims directed to system for
tracking object’s motion with two inertial sensors were patent eligible);
McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016)
(holding that claim focused on specific asserted improvement in computer
animation was patent eligible). Similarly, the symbol information reader of
claims 3 and 5 also requires an imaging device. Claims 3 and 5 also require
a position detection processor configured as those claims recite. Although
claims 8 and 10 do not recite “a position detection processor,” claims 8 and
10 recite the processing steps performed by the position detection processor
recited in claims 3 and 5.
Consequently, claims 3, 5, 8 and 10 recite new and useful techniques
that involve a particular combination of optically capturing an image with an
imaging device, and processing the data received from the imaging device in
a specific way to more accurately detect a physical position of symbol
information, e.g., a barcode, on a surface, even if the barcode is obscured or
damaged. See Appeal Br. 13–14; see also Spec. ¶¶ 10, 78. “That a
mathematical equation is required to complete the claimed method and
system does not doom the claim[] to abstraction.” Thales, 850 F.3d at 1349.
Because independent claims 8 and 10 integrate the recited abstract
idea into a practical application, we determine that claims 8 and 10 are not
“directed to” an abstract idea. For similar reasons, we determine independent
claims 3 and 5, which recite limitations comparable to those of claims 8 and
10, are also not “directed to” an abstract idea. We, therefore, do not sustain
the Examiner’s rejections under 35 U.S.C. § 101.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
3, 5, 8, 10 101 Eligibility 3, 5, 8, 10
Overall
Outcome
3, 5, 8, 10
REVERSED