TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)

Patent Trials and Appeals Board

Mar 28, 2022

2021001121 (P.T.A.B. Mar. 28, 2022)

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. 15/641,632 07/05/2017 Jonas SVEDBERG 3602-1091US3 2905 6449 7590 03/28/2022 ROTHWELL, FIGG, ERNST & MANBECK, P.C. 607 14TH STREET, N.W. SUITE 800 WASHINGTON, DC 20005 EXAMINER ZHU, RICHARD Z ART UNIT PAPER NUMBER 2675 NOTIFICATION DATE DELIVERY MODE 03/28/2022 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): PTO-PAT-Email@rfem.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONAS SVEDBERG Appeal 2021-001121 Application 15/641,632 Technology Center 2600 Before CAROLYN D. THOMAS, CHRISTA P. ZADO, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 2, 4-7, 9-13, 15-17, and 19-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and enter a new ground of rejection under 35 U.S.C. § 41.50(b).2 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Telefonaktiebolaget LM Ericsson. Appeal Br. 2. 2 The Examiner indicated that claims 8, 18, and 21 are patent eligible. Final Act. 24-26. We enter a new ground for rejection for these claims below. Appeal 2021-001121 Application 15/641,632 2 CLAIMED SUBJECT MATTER The claims relate to audio encoding. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An audio encoding method performed by an audio encoder for audio encoding utilizing a Pyramid Vector Quantizer (PVQ) shape search, the PVQ shape search taking a target vector x as input and deriving a vector by iteratively adding unit pulses in an inner dimension search loop, the method comprising: before entering a next inner dimension search loop for unit pulse addition, determining whether more than a current bit word length is needed to represent a variable (enloopy) in a lossless manner in the next inner dimension search loop, wherein the determination is based on a maximum pulse amplitude (maxampy) of a current vector y, and enloopy is related to an accumulated energy of y; as a result of determining that more than the current bit word length is needed to represent enloopy, performing an inner loop calculation using a longer bit word length to represent enloopy; and the audio encoder performing a PVQ indexing process using the vector y. REJECTION The Examiner made the following rejection: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 2, 4-7, 9-13, 15- 17, 19-20 101 Patent eligibility ANALYSIS The Supreme Court has set forth a two-part test for § 101 to determine whether the subject matter of a claim is patent eligible: (1) “whether the claims at issue are directed to” “laws of nature, natural phenomena, and abstract ideas” and (2) “whether the additional elements ‘transform the Appeal 2021-001121 Application 15/641,632 3 nature of the claim’ into a patent-eligible application.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). “Eligibility under 35 U.S.C. § 101 is a question of law, based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). In 2019, the U.S. Patent & Trademark Office (“USPTO”) explained the Supreme Court’s test with revised guidance. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”); USPTO, October 2019 Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf (“Oct. Update”). Under that Guidance, we use the following steps to determine whether a claim recites the following items: USPTO Step Does the claim recite ___? MPEP § 2A, Prong 1 A judicial exception, such as a law of nature or any of the following groupings of abstract ideas: 1) Mathematical concepts; 2) Certain methods of organizing human activity; or 3) Mental processes. 2106.04 2A, Prong 2 Any additional limitations that integrate the judicial exception into a practical application 2106.05(a)- (c), (e)-(h) 2B Any additional limitations beyond the judicial exception that, alone or in combination, were not “well-understood, routine, conventional” 2106.05(d) See Guidance, 84 Fed. Reg. at 52, 55, 56. We discuss the eligibility of claim 1 as representative of both independent claims 1 and 12 because Appellant argues these claims together. Appeal 2021-001121 Application 15/641,632 4 See Appeal Br. 15. We address the dependent claims, which Appellant argues separately, below. Step 2A, Prong 1 The Examiner finds, and we agree, that claim 1 recites a mathematical concept and therefore recites an abstract idea. Final Act. 11-13. In the Final Action, the Examiner finds that “the process of vector quantization is an abstract procedure of mathematical calculation.” Id. at 13.3 The Examiner identifies at least the following claim language as relating to mathematical calculations: “performing an inner loop calculation” and “PVQ indexing.” Id. The Examiner also underlines the following limitations for emphasis, implying that they are part of the recited mathematical concept: “the PVQ shape search taking a target vector x as input and deriving a vector by iteratively adding unit pulses in an inner dimension search loop” and “performing an inner loop calculation using a longer bit word length to represent enloopy.” Id. at 11-12. Appellant’s Appeal Brief does not contest the Examiner’s finding that claim 1 recites an abstract idea, but instead argues that claim 1 is patent eligible because it “is directed to an improvement in the technological field of audio encoding.” Appeal Br. 10. Although the Appeal Brief has a section entitled “Claim 1 is not Directed to an Abstract Idea,” that section focuses on claim 1’s alleged improvement, a lack of preemption, and the inapplicability of the machine-or-transformation test. Id. at 8-13. Thus, Appellant forfeited its argument that the limitations the Examiner identified in the Final Action recite an abstract idea. See Ex parte Frye, 94 USPQ2d 3 For clarity, we omit the Examiner’s emphasis everywhere unless otherwise noted. Appeal 2021-001121 Application 15/641,632 5 1072, 1075 (BPAI 2010) (precedential) (The Board “reviews . . . rejection[s] for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon,” and treats arguments not made as waived.); 37 C.F.R. § 41.37(c)(1)(iv). In the Answer, the Examiner expands upon the initial abstract idea finding, now determining that essentially the entire claim recites mathematical calculations. Ans. 6-8. In the Reply, Appellant contends that the following limitations of claim 1 do “not claim[] a mathematical principal”: before entering a next inner dimension search loop for unit pulse addition, determining whether more than a current bit word length is needed to represent a variable (enloopy) in a lossless manner in the next inner dimension search loop, wherein the determination is based on a maximum pulse amplitude (maxampy) of a current vector y, and enloopy is related to an accumulated energy of y; as a result of determining that more than the current bit word length is needed to represent enloopy, performing an inner loop calculation using a longer bit word length to represent enloopy; and the audio encoder performing a PVQ indexing process using the vector y. Reply Br. 3. Instead, Appellant contends, claim 1 is directed to a specific process that first uses a particular value (maxampy) to make a determination as to whether or not more than the current bit word length is needed, and then, if it is determined that more than the current bit word length is needed, then using a longer bit word length in the inner loop calculation. Id. Appellant further contends that the claimed “determining whether more than a current bit word length is needed . . ., wherein the determination is Appeal 2021-001121 Application 15/641,632 6 based on a maximum pulse amplitude (maxampy)” recites “a ‘determining’ step, . . . not a mathematical formula, as was the case in Flook.” Id. at 5. We agree with the Examiner that the claims recite a mathematical concept. The Guidance defines “mathematical concepts” as “mathematical relationships, mathematical formulas or equations, and mathematical calculations.” Guidance at 52. The October Update describes a mathematical relationship as “a relationship between variables or numbers,” which “may be expressed in words or using mathematical symbols.” October Update, 3. “For example, pressure (p) can be described as the ratio between the magnitude of the normal force (F) and area of the surface on contact (A), or it can be set forth in the form of an equation such as p = F/A.” Id. Likewise, formulas or equations “written in text format . . . should also be considered” to be mathematical formulas or equations. Id. at 4. Finally, “[a] mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation.” Id. Based on these principles, we agree with the Examiner that claim 1 recites a mathematical concept. Specifically, the preamble and each limitation of claim 1 recites mathematical concepts as follows. The preamble recites a mathematical calculation, including “utilizing a Pyramid Vector Quantizer (PVQ) shape search, the PVQ shape search taking a target vector x as input and deriving a vector by iteratively adding unit pulses in an inner dimension search loop.” (Emphasis added.) The “before entering” limitation recites mathematical calculations such as “unit pulse addition” and “determining whether more than a current bit word length is needed.” Appeal 2021-001121 Application 15/641,632 7 (Emphasis added.) This limitation also recites mathematical relationships such as “represent a variable (enloopy) in a lossless manner in the next inner dimension search loop,” “wherein the determination is based on a maximum pulse amplitude (maxampy) [another variable] of a current vector y [yet another variable],” and “enloopy is related to an accumulated energy of y.” (Emphasis added). The next limitation also recites a mathematical calculation, namely “performing an inner loop calculation using a longer bit word length to represent enloopy.” (Emphasis added). Lastly, the final limitation also recites a mathematical calculation, “performing a PVQ indexing process using the vector y.” (Emphasis added). Thus, we conclude that claim 1 (and claim 12) recites a mathematical concept, and therefore an abstract idea. We note that claim 1 further recites an “audio encoder,” which the Examiner correctly points out does not recite a mathematical concept. Ans. 8, 13. We address the “audio encoder” as an additional limitation under our prong 2 analysis below. As for dependent claims 2, 4-7, 9, 13, 15-17, and 19, Appellant contends that the Examiner has mischaracterized these claims as calculating “the K to be input to the PVQ shape search.” Appeal Br. 16. “By ignoring the express limitations,” Appellant contends, “the Examiner has provided no evidence or logical reasoning to support a conclusion that these claims are directed to an abstract idea.” Id. The Examiner finds: Finally, dependent Claims 2, 4-7, 9, 13, 15-17 and 19 are focused on calculating the K to be input to the PVQ shape search K = function (bits (band), N) to determine the precision of the PVQ shape search. In other words, the focus of the ordered combination is on an abstract mathematical process for manipulating a vector of “0” and “1” into its quantized form of Appeal 2021-001121 Application 15/641,632 8 “0” and “1”; i.e., taking existing vector and manipulating / organizing the existing vector into a new form. Such mathematical process to organize a vector of “0” and “1” into a new quantized form of “0” and “1” is not a specific asserted improvement in computer capabilities. Final Act. 23. In the Answer, the Examiner identifies specific limitations in claims 2 and 4-7 that the Examiner appears to find are abstract ideas. Ans. 29-30. In our view, the entirety of each of the dependent claims recites mathematical concepts. We highlight portions of these claims for emphasis. For example, claim 2 refers to the calculations “unit pulse addition” and “determining an upshift in a bit word” and the relationship, “accumulated in- loop correlation value between the target vector x and the vector y.” Claim 4, for example, recites “performing an inner loop calculation” and the relationship “represent a squared accumulated in-loop correlation value” between two vector values. Claims 5 and 6 recites similar calculations and mathematical relationships. Claim 7 also recites a similar mathematical relationship of “determining” based on variables as recited in claim 1, as well as the calculation, “a unit pulse is added to the position in y being associated with maxampy.” Claim 9 recites another calculation-“keep[s] track of” the variable maxampy when a target vector “exceeds a threshold value.” Claims 15-17 and 19 recite similar mathematical calculations and mathematical relationships. Thus, each of the dependent claims argued recites an abstract idea with no additional limitations not part of the abstract idea. As for dependent claims 10 and 11, which Appellant does not argue, we summarily affirm the Examiner’s rejections of these claims. Appeal 2021-001121 Application 15/641,632 9 Step 2A, Prong 1 - New Ground The Examiner finds that claims 8, 18, and 21 “may amount to significantly more than the abstract mathematical calculations.” Final Act. 24. This is error. Each of these claims also recites mathematical concepts. Claim 8 is representative, as claim 18 is similar, and claim 21 incorporates the limitations of claim 8 into independent form along with similar limitations as claim 1. We reproduce claim 8 below together with bracketed, bolded text indicating the mathematical concepts recited in the claim: 8. The method according to claim 1, further comprising: in the inner dimension search loop for unit pulse addition: [part of the mathematical calculation in the next limitation] determining i) a position (nbest) in y for addition of a unit pulse ii) a squared correlation (BestCorrSq), and iii) an energy value (bestEn) saved from previous values of n, as: [mathematical calculations] corrxy2 * bestEn > BestCorrSq * enloopy where Claims 18 and 21 recite similar mathematical calculations and formulas. Claim 21 recites additional mathematical calculations not recited in claims 8 or 18, including “receiving a target vector x as input” and “deriving a vector y using the target vector x by iteratively adding unit pulses in an inner dimension search loop.” Appeal 2021-001121 Application 15/641,632 10 There are no additional limitations in these claims not reciting an abstract idea, apart from an audio encoder recited in claim 21. As we explain below, the claimed audio encoder does not integrate the abstract idea into a practical application or recite significantly more than the abstract idea, either individually or as an ordered combination. Pursuant to our authority under 37 C.F.R. § 41.50(b), we therefore enter a new ground of rejection for claims 8, 18, and 21 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Step 2A, Prong 2 The Examiner finds that the recited “audio encoder” is an additional limitation that does not integrate the abstract idea into a practical application because [e]ven when limited to the technological environment . . . of [an] audio encoder performing audio encoding (field of use), it does not impart practical application because “if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” Ans. 13 (citing Parker v. Flook, 437 U.S. 584, 595 (1978)). Appellant focuses its practical application arguments on the “before . . . determining” and “as a result of determining” steps in claim 1 that the Examiner finds recite abstract ideas. Appeal Br. 14-15; Reply Br. 5-12; Ans. 6-8. Appellant does not contest the Examiner’s finding that the “audio encoder” is directed to a field of use and therefore “does not impart practical application.” See generally Reply Br.; Ans. 13. Instead, Appellant contends that the claimed invention “enables a computationally efficient PVQ shape search.” Reply Br. 6. Appeal 2021-001121 Application 15/641,632 11 We agree with the Examiner’s uncontested finding that the claimed audio encoder does not integrate the abstract idea into a practical application. We also find Appellant’s argument that the claimed invention “enables a computationally efficient PVQ shape search” unpersuasive because “[t]he abstract idea itself cannot supply the inventive concept, no matter how groundbreaking the advance.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (quotation omitted). Above, we determined that all of the limitations other than the claimed audio encoder recite an abstract idea. Appellant has not pointed to any additional limitations, whether considered alone or together with the claim as a whole, that integrate the abstract idea into a practical application. Thus, claim 1 is directed to an abstract idea. Step 2B Turning to Step 2B, the Examiner finds that “applicant’s background reveal[s] that [a] communication device / audio encoder is a conventional, well-known, routine device to implement PVQ.” Final Act. 21. Appellant does not challenge this finding. See generally Appeal Br. We agree with the Examiner that the additional limitation, whether considered individually or together with the other claim limitations as a whole, does not add significantly more beyond the abstract idea. Accordingly, we sustain the Examiner’s § 101 rejection and set forth a new ground of rejection of claims 8, 18, and 21, as explained above. Appeal 2021-001121 Application 15/641,632 12 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 2, 4-7, 9-13, 15- 17, 19-20 101 Eligibility 1, 2, 4-7, 9-13, 15- 17, 19-20 8, 18, 21 101 Eligibility 8, 18, 21 Overall Outcome 1, 2, 4-7, 9-13, 15- 17, 19-20 8, 18, 21 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. Appeal 2021-001121 Application 15/641,632 13 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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; 37 C.F.R. § 41.50(b)