Michael J. Anderson et al.Download PDFPatent Trials and Appeals BoardSep 9, 201914476930 - (D) (P.T.A.B. Sep. 9, 2019) 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. 14/476,930 09/04/2014 Michael J. Anderson H20141034US1 (WESD/0079US 9662 124731 7590 09/09/2019 Patterson + Sheridan, LLP - Western Digital 24 Greenway Plaza, Suite 1600 Houston, TX 77046 EXAMINER LI, SIDNEY ART UNIT PAPER NUMBER 2136 NOTIFICATION DATE DELIVERY MODE 09/09/2019 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): PAIR_eOfficeAction@pattersonsheridan.com PSDocketing@pattersonsheridan.com sversteeg@pattersonsheridan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL J. ANDERSON, ADAM MICHAEL ESPESETH, BRANDON WILLIAM SCHULZ, and LEE ANTON SENDELBACH1 ____________________ Appeal 2018-003167 Application 14/476,930 Technology Center 2100 ____________________ Before JOHN P. PINKERTON, JON M. JURGOVAN, and NABEEL U. KHAN, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek review under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–20. In support of their appeal, Appellants requested a hearing, which we held on August 13, 2019. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.2 1 The Appeal Brief indicates the real party in interest is Western Digital Technologies, Inc. App. Br. 3. 2 Our Decision refers to the Specification (“Spec.”) filed September 4, 2014, the Final Office Action (“Final Act.”) mailed March 22, 2017, the Appeal Brief (“App. Br.”) filed September 5, 2017, the Examiner’s Answer (“Ans.”) Appeal 2018-003167 Application 14/476,930 2 CLAIMED INVENTION The invention relates to debug data saving in a host memory on a Peripheral Component Interconnect Express (PCIE) solid state drive (SSD). Spec. Abstract. Claim 1, reproduced below, is illustrative of the claimed invention: 1. A method for implementing debug data saving in host memory on a Peripheral Component Interconnect Express (PCIE) solid state drive (SSD) performed by the solid state drive (SSD) and host system, said method comprising: detecting a Power Loss Interruption (PLI) event in a solid state drive (SSD); responsive to the detected PLI event, generating a debug snapshot including specially formatted data with a header describing contents and length, and including memory ranges, internal variables, hardware register values, and event tracing information; and transferring said debug snapshot data directly to a host system main memory via a Peripheral Component Interconnect Express (PCIE) bus, responsive to the detected PLI event. App. Br. 15 (Claims App’x). REJECTIONS & EVIDENCE Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Final Act. 2–3. ANALYSIS Patent eligibility is a question of law that is reviewable de novo. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). mailed December 1, 2017, and the Reply Brief (“Reply Br.”) filed January 30, 2018. Appeal 2018-003167 Application 14/476,930 3 Accordingly, we review the Examiner’s § 101 determinations concerning patent eligibility under this standard. Patentable subject matter is defined by 35 U.S.C. § 101, as follows: [w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. In interpreting this statute, the Supreme Court emphasizes that patent protection should not preempt “the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (“Mayo”); Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) (“Alice”). The rationale is that patents directed to basic building blocks of technology would not “promote the [p]rogress of [s]cience” under the U.S. Constitution, Article I, Section 8, Clause 8, but instead would impede it. Accordingly, laws of nature, natural phenomena, and abstract ideas, are not patent-eligible subject matter. Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. 208 (2014)). The Supreme Court set forth a two-part test for subject matter eligibility in Alice (573 U.S. 208 (2014)). The first step is to determine whether the claim is directed to a patent-ineligible concept. Id. (citing Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the second step of the Alice/Mayo test in which we “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. 208 (2014) (quoting Mayo, 566 U.S. at 72, 79). There is no need to proceed to the second step, however, if the first step of the Appeal 2018-003167 Application 14/476,930 4 Alice/Mayo test yields a determination that the claim is directed to patent eligible subject matter. The Patent Office has recently revised its guidance for how to apply the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (January 7, 2019) (“the Revised Guidance”). Under the Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, mental processes, or certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)– (h)). 84 Fed. Reg. at 51–52, 55. A claim that integrates a judicial exception into a practical application applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. 84 Fed. Reg. at 54. When the judicial exception is so integrated, then the claim is not directed to a judicial exception and is patent-eligible under § 101. 84 Fed. Reg. at 54. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept as part of the eligibility analysis. 84 Fed. Reg. at 56; Alice, 573 U.S. 208 (2014). Appeal 2018-003167 Application 14/476,930 5 Step 1 of the Revised Guidance As an initial matter, we consider whether claims 1–20 fall under one of the statutory categories of invention under 35 U.S.C. §§ 100 and 101. Claims 1–6 recite “methods” which constitute “processes” under 35 U.S.C. §§ 100 and 101. Claims 7–14 recite “apparatuses” which constitute “machines” under 35 U.S.C. § 101. Claims 15–20 recite “systems” which also constitute “machines” under 35 U.S.C. § 101. Accordingly, each of claims 1–20 falls within one of the statutory categories of invention. The patent eligibility inquiry does not end here, however, as we must proceed to apply the Alice/Mayo test and Revised Guidance to determine whether the claims are patent eligible. Alice/Mayo—Step 1 (Abstract Idea) Step 2A–Prongs 1 and 2 identified in the Revised Guidance Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?) Turning to the first step of the Alice inquiry (Step 2A of the Revised Guidance), the Examiner finds each of independent claims 1, 7, and 15 “is directed to an abstract idea: detecting a power interruption to generate and store/transmit debug data.” Final Act. 2; App. Br. 2. On this record, however, the Examiner has not shown that detecting a power interruption, and generating and transferring debug data, is an abstract idea. Under the Revised Guidance, claims are found abstract when they recite a mathematical concept, a method of organizing human activity, or a mental process. 84 Fed. Reg. at 52. In rare circumstances, a claim not falling within one of these categories may be found abstract when the Examiner provides justification. 84 Fed. Reg. 56–57. The Examiner has not shown that the identified abstract idea falls into any of these enumerated Appeal 2018-003167 Application 14/476,930 6 categories of abstract ideas, and provides no justification for why the claims should be treated as abstract. Accordingly, the Examiner has not made the necessary showings to support the assertion that the claims recite abstract ideas. Step 2A—Prong 2 (Integration into Practical Application) Under Step 2A, Prong 2 of the Revised Guidance, even assuming the Examiner were correct in determining that detecting a power interruption to generate and store and transmit debug data recite an abstract idea, independent claims 1, 7, and 15 recite additional elements, and combinations thereof, that integrate the purported judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). For example, as Appellant’s counsel argued in the hearing, transferring debug snapshot data directly to a host system memory via a PCIE bus, rather than to NAND memory, on the SSD reduces the necessary storage capacity and capacitance needed to store power to perform debug data storage upon detection of a PLI event. Thus, independent claims 1, 7, and 15 recite improved SSDs that qualify as practical applications under the Revised Guidance. 84 Fed. Reg. 55. Furthermore, case law supports that the claims recite a technical solution to a technical problem that improves the functioning of the SSD in storing debug snapshot data when encountering a PLI event. See MPEP § 2106.05(a); DDR Holdings, LLC. v. Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir. 2014). Viewed another way, the claims cover a particular solution to a problem or particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome. McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1314–15 Appeal 2018-003167 Application 14/476,930 7 (Fed. Cir. 2016); see also Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (claims held directed to an improved computer memory system, not to the abstract idea of categorical data storage). Further, independent claims 1, 7, and 15 are applied to a particular machine, rather than to a generic computer device. See 84 Fed. Reg. 55. For example, the claims recite additional elements including a “host memory,” “Peripheral Component Interconnect Express (PCIE) solid state drive (SSD),” “host system,” “detecting a Power Loss Interruption (PLI) event,” “generating debug snapshot data” including “memory ranges, internal variables, hardware register values, and event tracing information,” and “transferring said debug snapshot data directly to a host system main memory via a PCIE bus.” The high degree of specificity of the recited features establish that the claims are applied to a particular machine, not merely to a generic one. See MPEP § 2106.05(b). Furthermore, the recited PCIE SSD implements the recited steps or functions in the claims. Id. These additional elements are recited in the body of the claims, and are not merely a field of use. Id. Finally, transferring the debug data snapshot to the host system main memory (e.g., as described at Spec. ¶ 23), is not merely extra-solution activity, but is instead the feature that makes it possible to reduce memory size and capacitance needed to store power to perform the debug data snapshot storage and other functions upon detection of power loss. Moreover, the claims recite additional elements applied in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See Appeal 2018-003167 Application 14/476,930 8 MPEP § 2106.05(e). In the claimed invention, detecting a power interruption to generate and store and transmit debug data is meaningfully applied to PCIE SSDs to detect a PLI event, and generate store debug snapshot data in a host system main memory, thereby reducing the memory size and capacitance needed for the PCIE SSD to support functions to be completed upon detection of power loss. Accordingly, even if the claims do recite an abstract idea, as the Examiner determines, it is applied to a specific application, and the claims are therefore patentable under § 101. See Classen Immunotherapies Inc. v. Biogen IDEC, 659 F.3d 1057, 1066–1068 (Fed. Cir. 2011). CONCLUSION Having decided the appeal on the bases that the claims do not recite an abstract idea (Step 2A, Prong 1 of the Revised Guidance) and that the claims recite a practical application (Step 2A, Prong 2 of the Revised Guidance), we do not extend our analysis to reach the question of whether the claims recite an inventive concept (Step 2B of the Revised Guidance). Accordingly, for the stated reasons, we do not sustain the rejection of independent claims 1, 7, and 15, or their dependent claims, under 35 U.S.C. § 101. DECISION We reverse the rejection of claims 1–20 under 35 U.S.C. § 101. REVERSED Copy with citationCopy as parenthetical citation