Michael J. Anderson et al.

Patent Trials and Appeals Board

Sep 9, 2019

14476930 - (D) (P.T.A.B. Sep. 9, 2019)

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.”)
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Application 14/476,930

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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.
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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
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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).
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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
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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
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(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
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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