SHIN, Jong-Yoon et al.Download PDFPatent Trials and Appeals BoardJan 9, 202015198535 - (D) (P.T.A.B. Jan. 9, 2020) 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. 15/198,535 06/30/2016 Jong-Yoon SHIN PA3203-0T 3378 96767 7590 01/09/2020 William Park & Associates LTD. 930 N. York Road, Suite 201 Hinsdale, IL 60521 EXAMINER HOSSAIN, SAZZAD ART UNIT PAPER NUMBER 2111 NOTIFICATION DATE DELIVERY MODE 01/09/2020 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): eofficeaction@appcoll.com uspto.actions@wpapat.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JONG-YOON SHIN, JONGHO KIM, JE SOO KO, and KWANGJOON KIM ________________ Appeal 2019-001102 Application 15/198,535 Technology Center 2100 ________________ Before JASON V. MORGAN, JEREMY J. CURCURI, and ADAM J. PYONIN, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Introduction Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 31–47. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as Electronics and Telecommunications Research Institute. Appeal Br. 2. Appeal 2019-001102 Application 15/198,535 2 Summary of the disclosure Appellant’s claimed subject matter relates to transmitting data in an optical transport network [by] . . . generating an optical transmission unit frame including an in- band area including a first area to which information data is allocated and a second area to which the information data is not allocated and an out-band area including parity information and transmitting the data through the optical transmission unit frame. Abstract. Representative claim (key recitations emphasized) 31. A method for transmitting client data of 100G Ethernet by a transmitting apparatus in an optical transport network, the method comprising: generating an optical channel transport unit 4 (OTU4) frame including an in-band area and an out-band area, wherein the in- band area includes an overhead area and a payload area and the out-band area includes a forward error correction (FEC) area, wherein the FEC area is subsequent to the payload area and for forward error correction of the overhead area and the payload area, and wherein the payload area includes a first area, to which client data is allocated, and a second area, to which fixed stuff is allocated, and the second area is positioned at an end of the payload area; and transmitting the OTU4 frame, wherein generating the OTU4 frame includes placing a plurality of groups of 80 successive bytes of client data in the payload area so as to occupy a plurality of groups of 80 successive bytes in the payload area. The Examiner’s rejection The Examiner rejects claims 31–47 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 4–6. Appeal 2019-001102 Application 15/198,535 3 PRINCIPLES OF LAW To be statutorily patentable, the subject matter of an invention must be a “new and useful process, machine, manufacture, or composition of matter, or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are implicit exceptions to the categories of patentable subject matter identified in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena; and (3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court has set forth a framework for distinguishing patents with claims directed to these implicit exceptions “from those that claim patent-eligible applications of those concepts.” Id. at 217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The evaluation follows a two-part analysis: (1) determine whether the claim is directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so, then determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the patent-ineligible concept itself. See Alice, 573 U.S. at 217–18. In early 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of the two-part analysis. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (“Revised Guidance”); see also USPTO, October 2019 Update: Subject Matter Eligibility, available at https://www. uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic Appeal 2019-001102 Application 15/198,535 4 practice, or mental processes) (see id. at 54 (step 2A, prong one)); and (2) additional elements that integrate the judicial exception into a practical application (see id. at 54–55 (step 2A, prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)). See Revised Guidance, 84 Fed. Reg. 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Revised Guidance, 84 Fed. Reg. 56. REVISED GUIDANCE STEP 2A, PRONG ONE In rejecting claim 31 as being directed to patent-ineligible subject matter, the Examiner determines that the limitations directed to generating the claimed optical channel transport unit frame2 recites an abstract idea 2 The Examiner recognizes: (1) that the claimed frame is divided into in- band and out-band areas; (2) that the out-band area includes a forward error correction area; (3) that the in-band area is sub-divided into an overhead area and a payload area; and (4) that the payload area is further sub-divided into an area for allocating client data and an area, positioned at the end of the Appeal 2019-001102 Application 15/198,535 5 “substantially similar to the court identified abstract idea of Recognicorp v Nintendo[3] organizing and manipulating information through mathematical correlations as identified in Digitech[4].” Final Act. 5. Appellant argues the Examiner erred because “there are no . . . limitations as to . . . manipulating information through mathematical correlations.” Appeal Br. 8. Appellant’s argument is unpersuasive because the Examiner’s determination is supported by the claimed assignment of particular types of values to areas of a frame. That is, the claimed generation of an optical channel transport unit frame, when read in light of the Specification, recites generation of a two-dimensional array of elements—in a manner similar to a matrix—where particular elements are reserved for particular types of values. See, e.g., Spec. Figs. 1, 11. Such organization represents a type of mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, mathematical calculations). See Revised Guidance, 84 Fed. Reg. 52. Specifically, the claimed organization is comparable to Digitech’s patent-ineligible method of generating a device profile, which combined first and second generated data into a device profile, and thus described “a process of organizing information through mathematical correlations.” Digitech, 758 F.3d at 1350; see also In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994) (claim recitations directed to “the steps of payload area, for allocating fixed stuff. Final Act. 5. The Examiner further recognizes that the claim recites “placing a plurality of groups of 80 successive bytes of client data in the payload area” as part of the claimed frame generation. Id. 3 RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir. 2017). 4 Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). Appeal 2019-001102 Application 15/198,535 6 ‘locating’ a medial axis[] and ‘creating’ a bubble hierarchy . . . describe[d] nothing more than the manipulation of basic mathematical constructs, the paradigmatic ‘abstract idea.’”); compare with Diamond v. Diehr, 450 U.S. 175, 192 (1981) (“when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect . . . then the claim satisfies the requirements of § 101”). That is, the claimed frame generation merely combines different types of data (e.g., in-band and out-band data) into a frame. Accordingly, we agree with the Examiner that claim 31 recites mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations) and thus an abstract idea. See Revised Guidance, 84 Fed. Reg. 52. REVISED GUIDANCE STEP 2A, PRONG TWO Appellant contends the Examiner erred because the claimed frame generation—particularly the use of an area for fixed stuff—improves the error correction performance of the optical channel transport transmission technologies. See Appeal Br. 6–7 (citing Spec. 8, ll. 8–13). That is, Appellant argues “claim 31 includes limitations directed to an improvement to stably transmitting a high-speed signal providing a large bandwidth in the optical transport network.” Id. at 7. In response, the Examiner determines that the cited disclosure “lacks any description of how the claimed feature is directed to” the argued benefits. See Ans. 4. We agree with the Examiner that “simply stating that using the FS area as the fixed stuff improves error correction performance Appeal 2019-001102 Application 15/198,535 7 does not persuasively establish how the claimed feature achieves the contended improvements.” Id. (emphasis added); cf. Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355, 1364 (Fed. Cir. 2019) (“neither the specifics of any novel computer modelling nor experimental modal analysis are disclosed in the patent, much less included in the claims themselves, and these unclaimed features cannot function to remove [the] claims . . . from the realm of ineligible subject matter”). Appellant cites to additional disclosures regarding the purported “improvement of the error correction capability and transmission performance.” Appeal Br. 7 (citing Spec. Figs. 4–7, p. 8, l. 14–p. 11, l. 24). The Examiner correctly determines, however, that the cited disclosures describe features not recited in claim 31. See Ans. 4. Appellant further argues that alleged improvements in error correction performance would have been obvious to those skilled in the art because, for example, “it is assumed that the Reed-Solomon Code is used as the error correction code.” Reply Br. 9. Appellant’s contention, however, is based on a declaration improperly filed under 37 C.F.R. § 41.33(d).5 Because Appellant’s contention is based on a declaration that has not been admitted, we will not consider Appellant’s contention. Appellant further argues that the recitation of placing a plurality of groups of 80 successive bytes of client data in the payload area so as to 5 All “affidavits or other Evidence filed after the date of filing an appeal . . . will not be admitted except” to request that prosecution be reopened in response to: a designated new ground of rejection in the Answer; a substitute Examiner’s Answer written in response to a remand by the Board; or a new ground of rejection in a Decision of the Board. 37 C.F.R. §§ 41.33(d)(2); 41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1). Appeal 2019-001102 Application 15/198,535 8 occupy a plurality of groups of 80 successive bytes in the payload area represents “an improvement to prevent the device from being complicated and from [having to use a] faster serial to parallel converter.” Appeal Br. 7 (emphasis omitted) (citing Spec. Figs. 3, 11). We agree with the Examiner, however, that the purported improvements are not supported by the cited disclosures. See Ans. 5 (the Specification “lacks any mention of [a] ‘serial to parallel converter’ and ‘registers’”). For these reasons, rather than reciting any additional elements that reflect “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” claim 31 merely recites elements that “generally link the use of a judicial exception to a particular technological environment or field of use.” Revised Guidance, 84 Fed. Reg. 55. Put another way, “generating” and “transmitting” as recited and without more are not a practical application of the abstract idea. Accordingly, we determine that claim 31 does not include additional recitations that integrate the underlying mathematical concepts into a patent-eligible practical application. REVISED GUIDANCE STEP 2B The Examiner further determines that claim 31 lacks additional recitations that add anything significantly more to the underlying abstract idea because the additional recitations such as generating or transmitting a frame either implement the abstract idea or perform generic and conventional functions. See Final Act. 5. Appellant contends the Examiner erred by failing to “provide any factual determination in concluding that the additional elements were well-understood, routine, and conventional.” Appeal 2019-001102 Application 15/198,535 9 Appeal Br. 9; see also id. at 8–9 (citing USPTO Memorandum of April 19, 2018, “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” at *3–4, available at https://www.uspto.gov/sites/default/files/ documents/memo-berkheimer-20180419.PDF (Berkheimer Memorandum)). Appellant’s contention is unpersuasive because, as the Examiner correctly determines, most of the recitations (i.e., the generating recitation and the final wherein clause) are directed to the underlying mathematical concepts and do not represent additional recitations. See Final Act. 5; Ans. 6–7. Moreover, the Examiner’s determination that the “transmitting the OTU4 frame” limitation recites a “generic and conventional function” is supported by the evidence of record. See Final Act. 5; Ans. 6–7. In particular, Appellant acknowledges that OTU4 transmission was an existing technology. See Appeal Br. 5; Spec. 2, ll. 2–15 (describing as part of the background of the invention how OTU4 transmission compares with OTU1– 3 transmission). Therefore, we are unable to ascertain any additional recitations, individually and as an ordered combination, that add significantly more to claim 31 so as to transform the abstract mathematical concepts into a patent-eligible invention. Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 31, and claims 32–47, which Appellant does not argue separately. Reply Br. 10. Appeal 2019-001102 Application 15/198,535 10 CONCLUSION Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 31–47 101 Eligibility 31–47 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. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation