Quang Ha et al.

Patent Trials and Appeals Board

Jan 2, 2020

14671547 - (D) (P.T.A.B. Jan. 2, 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.
14/671,547 03/27/2015 Quang HA 1012/0162PUS1 6495
60601 7590 01/02/2020
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
OJHA, AJAY
ART UNIT PAPER NUMBER
2824
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QUANG HA, MARTIN AUST, and
FRANK PUSCHMANN

Appeal 2019-000433
Application 14/671,547
Technology Center 2800

BEFORE KAREN M. HASTINGS, RAE LYNN P. GUEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13 under 35 U.S.C. § 101 as being
directed to judicially excepted subject matter. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 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 dSPACE GmbH.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method for real-time testing of a
control unit with a simulator, the simulator having a simulator
I/O interface and the control unit having a control unit I/O
interface,
the control unit and the simulator being connected to one another
through their I/O interfaces via at least one data channel, the
method comprising:
transmitting, via the control unit, converter control data to
the simulator through the data channel;
calculating by the simulator a load current and a load
voltage as electrical load state variables via the converter control
data and via an electrical load model that excludes current
discontinuities caused by the converter;
transmitting by the simulator at least a portion of the load
state variables to the control unit;
implementing a control observer on the simulator;
calculating via the control observer at least the load current
as a load state variable, based on the converter control data and
an observer load model;
detecting, via the control observer, a zero-crossing of the
load current and a current discontinuity caused thereby from the
calculated load current; and
upon detection of a current discontinuity, calculating via
the control observer an electrical compensating quantity such
that when the compensating quantity is additionally applied to
the electrical load in the load model, the calculation of the load
current using the load model takes place with reduced error in
the presence of current discontinuities.

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OPINION
Preliminary comment
The 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance,”
supersedes the earlier guidance that was in effect at the time the Appeal
Brief was filed June 1, 2018; Reply Br. filed October 24, 2018. Id. at 51
(“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”)
Accordingly, we will not analyze the sufficiency of the Examiner’s rejection
against the Office’s previous guidance. Rather, our analysis will comport
with the 2019 Revised 101 Guidance.

Introduction
35 U.S.C. § 101 provides that “[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.”
In that regard, illustrative claim 1 (above) covers a “process” and is
thus statutory subject matter for which a patent may be obtained.2 This is
not in dispute (e.g., Ans. 11).
However, the § 101 provision “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014);

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether a “claim is to a statutory category.” Id. at 53.
See also sentence bridging pages 53 and 54 (“consider[ ] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. [§] 101 . . . .”).
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(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding, independent claim 1 is statutory
subject matter (as are the claims depending therefrom), the Examiner has
raised a question of patent-eligibility on the ground that they are directed to
an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept” (Id. at 218
(emphasis added)).
The Examiner determined, inter alia, that the claims are “directed to
an abstract idea,” reproducing the claim and highlighting portions of the
method steps. Final Act. 3. See also id. at 4:
The highlighted portion of the claim constitute an
abstract idea because it is analogous to other ideas identified as
abstract in court decisions. . . . This abstract idea is
transmitting data to [a] simulator, performing calculations using
the data and making some observations (analogous to collecting
data in Electric Power Group and CyberSource and analyzing
[it] in Electric Power Goup) and detecting high error (Grams),
at least in principal.
With respect to claim 1, Appellant contends, inter alia, that the
invention
is a process for detecting and correcting current discontinuities
in an integrated circuit by transmitting duty cycles over
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hardware to a simulator. The claimed process involves at least
three integrated circuits or processors as well as connections
between them. The functions of the recited structure and the
recited descriptions of the interaction between various structural
pieces of the system are not abstract.
Appeal Br. 9.
See also id. at 11 (“The claim recites a method for more accurately modeling
and correcting current discontinuities in an integrated circuit. To perform
this process, the claims recite various structural devices all working in
concert to produce the result.”) and Spec. ¶ 3 (“The present invention relates
to a computer-implemented method for real-time testing of a control unit
with a simulator.”).
Accordingly, there is a dispute over what the claims are directed to.
Are they directed to “performing a simulation” (Ans. 14) or a “process for
detecting and correcting current discontinuities in an integrated circuit by
transmitting duty cycles over hardware to a simulator” (Appeal Br. 9)?

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Claim Construction3
We consider claim 1 as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the Specification6 at the time of filing.
Claim 1 describes a method “for real-time testing of a control unit
with a simulator”. This testing is accomplished via the seven listed
“computer-implemented steps” including “implementing a control observer
on the simulator” that detect[s] . . . a zero-crossing of the load current and a

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).

4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).

5 2019 Revised 101 Guidance, page 52, footnote 14 (“If a claim, under its
broadest reasonable interpretation . . . .”) (Emphasis added.)

6 “First, it is always important to look at the actual language of the
claims. . . . Second, in considering the roles played by individual limitations,
it is important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (R. Linn, dissenting in part and concurring in part), citing Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among
others.

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current discontinuity” and “upon detection of a current discontinuity,
calculating via the control observer an electrical compensating quantity [that
is] additionally applied to the electrical load in the load model [so that] the
calculation of the load current . . . takes place with reduced error” (see claim
1).
Specifically, according to claim 1, “a control observer” analyzes and
calculates the load current of the control circuit as a load state variable, and
detects “a zero-crossing of the load current and a current discontinuity
caused thereby from the calculated load current” and when such a
discontinuity is detected, the control observer calculates a control
“compensating quantity such that when the compensating quantity is
additionally applied to the electrical load in the load model, the calculation
of the load current . . . takes place with reduced error in the presence of
current discontinuities.”
According to the Specification, current methods have various
disadvantages including not taking into account current discontinuities
caused by the converter control data, and the claimed method obviates these
disadvantages by using a control observer as recited in claim 1 (e.g., Spec.
¶¶ 13–18).
Consistent with the intrinsic evidence, we reasonably broadly construe
claim 1 as being directed to a computer-implemented method “for real-time
testing of a control unit with a simulator” as claimed; that is, a method for
more accurately modeling and correcting current discontinuities in an
integrated circuit. To perform this process, the claims recite various
structural devices all working in concert to produce the result. When
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accurately viewed (i.e., in Appellant’s view), the claims do not fall in any of
the enumerated classes of abstract ideas under current guidance.

The Abstract Idea7
Normally, we would identify in italics in the illustrative claim the
limitations that recite an abstract idea.8 However, based on our claim
construction analysis (above), it is unnecessary to do so. The subject matter
to which claim 1 is directed to, i.e., “a computer-implemented method for
real-time testing of a control unit with a simulator” as claimed, is not a
matter that falls within the enumerated groupings of abstract ideas; that is
“Mathematical concepts,” “Certain methods of organizing human activity,”
and “Mental processes.” 9

7 See Step 2A of the 2019 Revised 101 Guidance. Step 2A determines
“whether a claim is ‘directed to’ a judicial exception,” such as an abstract
idea. 84 Fed. Reg. at 53. Step 2A is a two prong inquiry.

8 See Prong One (a) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: (a) Identify the specific limitation(s) in the claim under
examination (individually or in combination) that the examiner believes
recites an abstract idea . . . .” Id. at 54.

9 See Prong One [“Evaluate Whether the Claim Recites a Judicial
Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” Id. at 54.
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Improvement in the Functioning of a Computer10 (Appellant’s Argument)
Even assuming that the claim recites an abstract idea, we find that it is
integrated into a practical application under Step 2A, Prong 2 of the
Guidance.
The Examiner’s characterization of what the claim is directed to is
inaccurate. The Examiner indicated that the claim is directed to “performing
a simulation.” Ans. 14. The claimed method, however, calls for “real-time
testing of a control unit” that has specific steps which use a control unit, a
simulator, a converter, a data channel, and a control observer. The method as
claimed includes steps for detecting and correcting current discontinuities in
an integrated circuit; the Examiner’s analysis “ignores the improved
consideration of current discontinuities by the claimed system with reduced
error and the novel application of an electrical compensation quantity to
correct the current discontinuities.” Reply Br. 5, citing to Spec. ¶¶ 15, 16.
The characterization the Appellant has put forward, e.g., claim 1
“recites significant improvements to the field of testing control units” by

10 See Prong Two (“If the Claim Recites a Judicial Exception, Evaluate
Whether the Judicial Exception Is Integrated Into a Practical
Application”) of Step 2A of the 2019 Revised 101 Guidance. “A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use 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.” 2019 Revised 101
Guidance, 84 Fed. Reg. at 54. One consideration, implicated here, that is
“indicative that an additional element (or combination of elements) may
have integrated the exception into a practical application” (id. at 55) is if
“[a]n additional element reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field” (id.).

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“the combination of ordered steps recited in claim 1 [which] explains how
the recited hardware performs the unique process and reaches the improved
result with reduced error” with “detailed transactions between test hardware
and the development environment limit[ing] the I/O and the control
observer” (Reply Br. 5), is the more accurate characterization.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex., LLC v. DIRECTTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)); see also Enfish, 822 F.3d at 1335. As the Federal Circuit stated
in Ancora Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343, 1347
(Fed. Cir. 2018):
We examine the patent’s “‘claimed advance’ to determine
whether the claims are directed to an abstract idea.” Finjan, Inc. v.
Blue Coat System, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018). “In
cases involving software innovations, this inquiry often turns on
whether the claims focus on ‘the specific asserted improvement in
computer capabilities . . . or, instead, on a process that qualifies as an
“abstract idea” for which computers are invoked merely as a tool.’”
Id. (quoting Enfish, 822 F.3d at 1335–36); see BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1285–86 (Fed. Cir. 2018).
Computers are improved not only through changes in hardware;
“[s]oftware can make non-abstract improvements to computer
technology . . . .” Enfish, 822 F.3d at 1335; see Finjan, 879 F.3d
at 1304. We have several times held claims to pass muster under
Alice step one when sufficiently focused on such improvements.
The Specification’s description of the problem and solution shows the
advance over the prior art by the claimed invention is in crafting an element
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of a computer device such that it functions to compensate for electrical load
current discontinuities of a control unit.
In our view, the claim as a whole reflects a specific asserted
improvement in technology, rooted in computer technology, over that which
was available in the prior art. See Spec., paras. 12–17. Accordingly, we
find the Appellant’s arguments that the claimed subject matter is not directed
to merely performing a simulation but to a technical improvement
persuasive, given the present record.
Specific asserted improvements, when claimed, can render claimed
subject matter not directed to an abstract idea. Cf. McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (“When
looked at as a whole, claim 1 is directed to a patentable, technological
improvement over the existing, manual 3–D animation techniques.”)
It should be noted that we have addressed purported specific asserted
improvements in technology under step one of the Alice framework. This is
consistent with the case law. See Ancora, 908 F.3d at 1347 (“We have
several times held claims to pass muster under Alice step one when
sufficiently focused on such improvements.”). It can be discussed under
step two of the Alice framework as well. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1354–55 (Fed. Cir. 2014). “[R]ecent Federal Circuit
jurisprudence has indicated that eligible subject matter can often be
identified either at the first or the second step of the Alice/Mayo
[framework].” 2019 Revised 101 Guidance, 84 Fed. Reg. at 53; see also id.
n.17.
In any case, there is sufficient evidence in the record before us that the
claimed subject matter reflects a specific asserted improvement in
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technology over that which was practiced in the art and for that reason we
determine that independent claim 1, and the claims depending therefrom, are
not directed to an abstract idea. Accordingly, within the meaning of the
2019 Revised 101 Guidance, we find there is an integration into a practical
application.
For the foregoing reasons, the Examiner’s determination under Alice
step one is not sustainable. Consequently, we do not reach the merits of
Examiner’s determination under Alice step two.
The rejection is not sustained.
CONCLUSION
The decision of the Examiner to reject claims 1–13 is reversed.
More specifically:
The rejection of claims 1–13 under 35 U.S.C. § 101 as being directed
to judicially excepted subject matter is reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13 101 1–13

REVERSED