Imagination Technologies Limited

Patent Trials and Appeals Board

May 26, 2021

2020001796 (P.T.A.B. May. 26, 2021)

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.
15/293,541 10/14/2016 Casper VAN BENTHEM 2645-0323US01 1012
125968 7590 05/26/2021
Potomac Law Group PLLC (IMGTEC)
8229 Boone Boulevard Suite 430
Vienna, VA 22182
EXAMINER
LAROCQUE, EMILY E
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
05/26/2021 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
Patents@potomaclaw.com
vdeluca@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CASPER VAN BENTHEM and SAM ELLIOTT
Appeal 2020-001796
Application 15/293,541
Technology Center 2100
Before JEAN R. HOMERE, MICHAEL J. ENGLE, and
SCOTT RAEVSKY, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20, which are all of the claims pending in the
application. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Imagination Technologies Limited as
the real party in interest. Appeal Br. 1.
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TECHNOLOGY
According to Appellant, the claimed subject matter relates to
“determining whether an infinitely precise result of a reciprocal square root
operation performed on an input floating point number is greater than a
particular number in a first floating point precision,” including accounting
for “error . . . due to . . . floating point precision.” Spec. Abstract.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A system configured to determine whether an infinitely precise
result of a reciprocal square root operation performed on an
input floating point number is greater than, less than, or equal to
a particular number in a first floating point precision, the system
comprising:
one or more fused multiply add components configured to:
(a) calculate a square of the particular number in a
second floating point precision that is less than the first
floating point precision;
(b) calculate a rounding error in the calculated
square;
(c) calculate a first delta value in the first floating
point precision by calculating the square multiplied by the
input floating point number less one; and
(d) calculate a second delta value in the first floating
point precision by calculating the rounding error
multiplied by the input floating point number plus the first
delta value; and
an output module configured to output an indication of
whether the infinitely precise result of the reciprocal square root
operation is greater than, less than or equal to the particular
number based on a sign of the second delta value.
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REJECTIONS
Claims 1–7 and 11–20 are rejected under 35 U.S.C § 101 as directed
to patent-ineligible subject matter without significantly more. Non-Final
Act. 17.
Claims 1–11, 19, and 20 are rejected under 35 U.S.C. § 112(a) for
failing to comply with the written description requirement. Non-Final Act.
13.
Claims 1–11 and 15–20 are rejected under 35 U.S.C. § 112(b) as
indefinite. Non-Final Act. 14.
ISSUES
1. Did the Examiner err in concluding that claim 1 is directed to
patent-ineligible subject matter without significantly more?
2. Did the Examiner err in finding that an “output module”
(claim 1), “decision logic” (claim 3), and “particular number generation
logic unit” (claim 5) lacked sufficient written description in the Specification
and concluding that those terms render the claims indefinite?
3. Did the Examiner err in concluding that the term “one of one or
more predetermined bit patterns” renders claim 4 indefinite?
4. Did the Examiner err in concluding that “a reciprocal square
root operation” in claims 1 and 12 and “a reciprocal square root calculation”
in claims 8 and 16 render those claims indefinite?
ANALYSIS
§ 101
The Supreme Court has set forth a two part test for § 101 to determine
whether the subject matter of a claim is patent eligible: (1) “whether the
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claims at issue are directed to” “laws of nature, natural phenomena, and
abstract ideas” and (2) “whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 217 (2014) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). “Eligibility under 35
U.S.C. § 101 is a question of law, based on underlying facts.” SAP Am., Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018).
In 2019, the U.S. Patent & Trademark Office (“USPTO”) expanded
on the Supreme Court’s test with revised guidance. USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”); USPTO, October 2019 Update: Subject Matter Eligibility,
available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“Oct. Update”). Under that Guidance, we use the
following steps to determine whether a claim recites the following items:
USPTO
Step Does the claim recite ___? MPEP §
1 A process, machine, manufacture, or composition of matter 2106.03
2A,
Prong 1
A judicial exception, such as a law of nature or any
of the following groupings of abstract ideas:
1) Mathematical concepts, such as
mathematical formulas;
2) Certain methods of organizing human
activity, such as a fundamental economic
practice; or
3) Mental processes, such as an observation or
evaluation performed in the human mind.
2106.04
2A,
Prong 2
Any additional limitations that integrate the judicial
exception into a practical application
2106.05(a)–
(c), (e)–(h)
2B
Any additional limitations beyond the judicial
exception that, alone or in combination, were not
“well-understood, routine, conventional”
2106.05(d)
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See Guidance, 84 Fed. Reg. at 52, 55, 56.
The Examiner determines that the claims “all recite mathematical
calculations” and that the additional elements beyond the abstract idea (e.g.,
“one or more fused multiply add components” and “an output module”) do
not limit the abstract idea to a particular machine or amount to significantly
more than the abstract idea. Non-Final Act. 6–8.
Here, the dispute is over the Examiner’s determinations under USPTO
Step 2A, Prongs 1 and 2. See Appeal Br. 6–12; Ans. 3–5. First, for Prong 1,
Appellant argues that “while claim 1 recites functions performed by the
fused multiply add components that involve calculation,” “claim 1 does not
recite the calculation itself.” Appeal Br. 7. Appellant’s argument is not
persuasive. Claim 1 recites four different “calculate” limitations:
(a) calculate a square of the particular number in a second
floating point precision that is less than the first floating point
precision;
(b) calculate a rounding error in the calculated square;
(c) calculate a first delta value in the first floating point
precision by calculating the square multiplied by the input
floating point number less one; and
(d) calculate a second delta value in the first floating point
precision by calculating the rounding error multiplied by the
input floating point number plus the first delta value.
These limitations recite mathematical calculations. For example, to
“calculate a square of [a] particular number”; “calculating the square
multiplied by . . . [a] number less one”; and “calculating [a value] multiplied
by . . . [a] number plus . . . [a] value” are all mathematical calculations,
indeed simply a mathematical formula rewritten in textual form. “A
mathematical formula as such is not accorded the protection of our patent
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laws.” Diamond v. Diehr, 450 U.S. 175, 191 (1981); see also Parker v.
Flook, 437 U.S. 584, 594 (1978) (“[T]he discovery of [a mathematical
formula] cannot support a patent unless there is some other inventive
concept in its application.”). Similarly, a “series of mathematical
calculations” still recites abstract ideas. SAP America, Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). These mathematical
calculations are also mental processes that can be performed in the human
mind or with pen and paper. Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
(“mental processes . . . are not patentable, as they are the basic tools of
scientific and technological work”).
To the extent Appellant is arguing that claim 1 satisfies § 101 because
it recites a system configured to perform mathematical calculations rather
than a method, this is not the law. For example, the ineligible claims in SAP
America included both system and methods claims. 898 F.3d at 1165. We
further note that claims 12–19 here recite a method.
At best, Appellant’s arguments go to whether claim 1 as a whole is
directed to mathematical calculations, whereas Prong 1 instead asks whether
any part of claim 1 recites a mathematical calculation or other abstract idea.
Compare Guidance 54 (“To determine whether a claim recites an abstract
idea in Prong One, . . . [i]dentify the specific limitation(s) in the claim under
examination (individually or in combination) that the examiner believes
recites an abstract idea”), with id. (“In Prong Two, examiners should
evaluate whether the claim as a whole integrates the recited judicial
exception into a practical application”). Accordingly, we conclude that
claim 1 recites a mathematical calculation of whether an infinitely precise
result of a reciprocal square root operation performed on an input floating
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point number is greater than, less than, or equal to a particular number in a
first floating point precision.
Turning to Prong 2, Appellant argues “the focus of claim 1 is not on a
mathematical calculation per se” but rather “the focus of the claim is on
improving the accuracy of processor operation.” Appeal Br. 8. Elsewhere,
Appellant argues that “the focus of the claimed apparatus is to obtain an
output indication of whether the infinitely precise result of the reciprocal
square root operation is greater than, less than or equal to the particular
number based on a sign of the second delta value, thus improving accuracy
of the result.” Id. at 10.
In claim 1, the additional limitations beyond that abstract idea are the
components of the system, namely the “one or more fused multiply add
components” configured to do the calculations and “an output module
configured to output an indication of whether the infinitely precise result of
the reciprocal square root operation is greater than, less than or equal to the
particular number based on a sign of the second delta value.”
Starting with the latter of these additional limitations, Appellant’s
reliance on the “output module” is misplaced. “[M]erely presenting the
results of abstract processes of collecting and analyzing information, without
more (such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis.” Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Here, the “output
module” merely provides the result without using that result in any practical
way. See also SAP Am., 898 F.3d at 1163 (“the advance lies entirely in the
realm of abstract ideas” when the claim’s “subject is nothing but a series of
mathematical calculations based on selected information and the
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presentation of the results of those calculations”). Thus, the output module
is merely insignificant post-solution activity.
Similarly, doing the calculations on “fused multiply add components”
likewise is insufficient for patent eligibility under § 101. As Appellant
points out for the written description rejection (discussed below), the
Specification discloses that the claims can be performed on a broad range of
generic “processors”; “computers”; “software”; or “logic” circuitry. Appeal
Br. 13–14 (citing Spec. ¶¶ 138, 140, 144). The Supreme Court has said that
“simply implementing a mathematical principle on a physical machine,
namely, a computer, [is] not a patentable application of that principle.”
Mayo, 566 U.S. at 84; see also Alice, 573 U.S. at 222–23 (“the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention”).
Furthermore, “[t]he abstract idea itself cannot supply the inventive
concept, no matter how groundbreaking the advance.” Trading Techs. Int’l,
Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (quotation omitted).
Here, Appellant has not pointed to anything beyond the abstract idea,
whether alone or in combination, that integrates the abstract idea into a
practical application or provides significantly more than the abstract idea.
Turning to USPTO Step 2B, Appellant does not challenge the
Examiner’s determinations that the additional limitations (e.g., the “fused
multiply add components” and “output module”) were generic logic
components, and we agree that they were well-understood, routine, and
conventional. See Non-Final Act. 7–8. Thus, we agree with the Examiner
that the additional limitations do not add significantly more beyond the
abstract idea.
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Accordingly, we sustain the Examiner’s § 101 rejection of claim 1,
and claims 2–7 and 11–20, which Appellant does not argue separately. See
37 C.F.R. § 41.37(c)(1)(iv).
§ 112(a)
The Examiner determines that the limitations of an “output module”
(claim 1); “decision logic” (claim 3); and “a particular number generation
logic unit” (claim 5) are means-plus-function limitations under 35 U.S.C.
§ 112(f) and that the disclosures in the Specification “fail to evidence the
corresponding structure of the 112(f) limitations . . . in such a way as to
reasonably convey to one skilled in the relevant art that the inventor . . . , at
the time the application was filed, had possession of the claimed invention.”
Non-Final Act. 3–4.
Appellant argues that original claims provide written description
support, the Specification and figures provide numerous examples of
hardware and software for performing the claimed functions, and well-
known components need not be described in the Specification. Appeal Br.
13–16.
Even if these limitations are means-plus-function, the claimed
functions are (1) “to output an indication of whether the . . . result . . . is
greater than, less than or equal to . . . [another] number . . . ”; (2) “to
determine whether a calculated result . . . is within a predetermined range”;
and (3) “to generate the particular number in the first floating point precision
based on a received calculated result . . . .” These functions are so basic that
we agree with Appellant that the Specification’s disclosures of processors,
computers, and logic circuitry, “alone or in combination with software, [are]
capable of performing the claimed subject matter.” Appeal Br. 13–14 (citing
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Spec. ¶¶ 138, 140, 144). If the claimed “functions can be achieved by any
general purpose computer without special programming,” then it is “not
necessary to disclose more structure than the general purpose processor that
performs those functions.” In re Katz Interactive Call Processing Pat.
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (finding “the functions of
‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure
disclosed, i.e., a general purpose processor” and therefore disclosure of a
general purpose processor sufficed).
Accordingly, we do not sustain the Examiner’s § 112(a) rejection of
claims 1–11, 19, and 20.
§ 112(b)
First, the Examiner determines that the means-plus-function
limitations discussed above render those claims indefinite. Appeal Br. 5–6.
We are not persuaded for reasons similar to above. In particular, we agree
with Appellant that the terms “output module”; “decision logic”; and
“particular number generation logic unit” are broad but that a person of
ordinary skill in the art would have understood them, particularly in view of
the Specification’s disclosure of using a processor or logic circuitry. Appeal
Br. 17.
Second, the Examiner determines that “[c]laim 4 becomes indefinite
because it is unclear whether the ‘one or more predetermined bit patterns’
comprises the bit pattern from claim 3 or a different bit pattern.” Ans. 8.
However, we agree with Appellant that the “bit patterns” in claim 3 can be
different than the “bit patterns” in claim 4. Appeal Br. 20. In particular,
claim 3 recites “the calculated result comprises one of one or more
predetermined bit patterns” whereas claim 4 recites “the at least two guard
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bits of the calculated result comprise one of one or more predetermined bit
patterns.” Thus, the bit pattern in claim 4 must apply to the guard bits
whereas the bit pattern in claim 3 need not be so narrow (e.g., it could apply
only to bits in the result other than the guard bits).
Third, the Examiner determines that “it is unclear whether ‘the
reciprocal square root calculation’ [in claims 8 and 16] is the same as ‘the
square root operation’ in claims 1, and 12.” Ans. 8. The preamble of
claim 1 recites a system “to determine whether an infinitely precise result of
a reciprocal square root operation . . . is greater than, less than, or equal to a
particular number.” The preamble of claim 8 recites a system “to generate
an accurately rounded result of a reciprocal square root calculation” and the
body of claim 8 recites “a reciprocal square root calculation module
configured to generate a calculated result of the reciprocal square root
calculation in a first floating point precision.” Claims 12 and 16 recite
limitations commensurate with those of claims 1 and 8, respectively. The
“calculation” in claims 8 and 16 is introduced separately and does not
require the “operation” of claims 1 and 12 for antecedent basis, so as
currently written, the “calculation” and “operation” could be different.
However, that goes towards breadth, not indefiniteness, and the Examiner
has not persuaded us that a person of ordinary skill in the art would have
been unable to understand either the claimed “calculation” or “operation.”
Accordingly, we do not sustain the Examiner’s § 112(b) rejection of
claims 1–11 and 15–20.
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OUTCOME
The following table summarizes the outcome of each rejection:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 11–20 101 Eligibility 1–7, 11–20
1–11, 19, 20 112(a) Written Description 1–11, 19, 20
1–11, 15–20 112(b) Indefiniteness 1–11, 15–20
Overall
Outcome
1–7, 11–20 8–10
TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).
AFFIRMED IN PART