SHIN, Jong-Yoon et al.

Patent Trials and Appeals Board

Jan 9, 2020

15198535 - (D) (P.T.A.B. Jan. 9, 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.
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.
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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.
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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
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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
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“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).
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‘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
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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).
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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.”
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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.
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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