Imagination Technologies LimitedDownload PDFPatent Trials and Appeals BoardMay 26, 20212020001796 (P.T.A.B. May. 26, 2021) 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. 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. Appeal 2020-001796 Application 15/293,541 2 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. Appeal 2020-001796 Application 15/293,541 3 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 Appeal 2020-001796 Application 15/293,541 4 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) Appeal 2020-001796 Application 15/293,541 5 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 Appeal 2020-001796 Application 15/293,541 6 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 Appeal 2020-001796 Application 15/293,541 7 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 Appeal 2020-001796 Application 15/293,541 8 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. Appeal 2020-001796 Application 15/293,541 9 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 Appeal 2020-001796 Application 15/293,541 10 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 Appeal 2020-001796 Application 15/293,541 11 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. Appeal 2020-001796 Application 15/293,541 12 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 Copy with citationCopy as parenthetical citation