Yoshihide Tonomura et al.

Patent Trials and Appeals Board

Aug 29, 2019

14912054 - (D) (P.T.A.B. Aug. 29, 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.
14/912,054 02/12/2016 Yoshihide TONOMURA 0011175USU/3294 3837
27623 7590 08/29/2019
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
NGUYEN, THIEN DANG
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
08/29/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YOSHIHIDE TONOMURA, TATSUYA FUJII,
TAKAHIRO YAMAGUCHI, DAISUKE SHIRAI, and
TAKAYUKI NAKACHI1
____________________

Appeal 2018-006311
Application 14/912,054
Technology Center 2100
____________________

Before MICHAEL J. STRAUSS, KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

1 According to Appellant, the real party in interest is Nippon Telegraph and
Telephone Corporation. See Appeal Br. 2.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–12. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.2
THE INVENTION
The claims are directed to channel decoding. Spec., Title. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A channel decoding device, comprising:
a computer; and
a storage device that contains a program that causes the
computer to:
receive a data string that includes redundant data encoded
based on a relation of a sparse graph;
detect generation of lost data lost in a channel using data
from the data string; and
multiple times alternately and repeatedly:
(a) decode the lost data using a trivial decoding method for
restoring one piece of the lost data having no relation with other
lost data uniquely; and
(b) decode the lost data using a Gauss elimination method,
thus yielding corrected data, wherein first, the lost data is
decoded using the trivial decoding method, decoding of lost data
using the Gauss elimination method is performed on at least one
piece of the lost data, and when the at least one piece of the lost
data is decoded using the Gauss elimination method, decoding of
the lost data using the trivial decoding method is performed using
a decoding result using the Gauss elimination method.

2 We refer to the Specification, filed February 12, 2016 (“Spec.”); Final
Office Action, mailed September 14, 2017 (“Final Act.”); Appeal Brief,
filed February 22, 2018 (“App. Br.”); Examiner’s Answer, mailed April 25,
2018 (“Ans.”); and Reply Brief, filed May 31, 2018 (“Reply Br.”).
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REJECTION
The Examiner rejects claims 1–12 under 35 U.S.C. § 101 as being
directed to a judicial exception, without significantly more. Final Act. 8–10;
Ans. 3–5.
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding of rubber products” (Diehr, 450 U.S. at 193); “tanning,
dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a
mathematical formula, but the Supreme Court held that “[a] claim drawn to
subject matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also
id. at 191 (“We view respondents’ claims as nothing more than a process for
molding rubber products and not as an attempt to patent a mathematical
formula.”). Having said that, the Supreme Court also indicated that a claim
“seeking patent protection for that formula in the abstract . . . . is not
accorded the protection of our patent laws, . . . and this principle cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment.” Id. (citing Benson and Flook); see, e.g., id. at
187 (“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
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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. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.

USPTO Patent Subject Matter Eligibility 2019 Revised Guidance
The USPTO recently published revised policy guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “2019 Revised
Guidance”). Under the 2019 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)).3
2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.

3 All references to the MPEP are to the Ninth Edition, Revision 08–2017
(rev. Jan. 2018).
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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. 2019 Revised
Guidance, 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. Id.
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. 2019 Revised Guidance,
84 Fed. Reg. at 56; Alice, 573 U.S. at 217-18. For example, we 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, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;

2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
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3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or
interactions between people (including social activities,
teaching, and following rules or instructions).

According to the 2019 Revised Guidance, “claims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, additional limitations that are indicative of “integration
into a practical application” include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field – see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine – see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing – see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
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 MPEP
§ 2106.05(e).

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In contrast, additional limitations that are not indicative of
“integration into a practical application” include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely using a
computer as a tool to perform an abstract idea – see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception – see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use – see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).

The Examiner’s Rejection under 35 U.S.C. § 101
The Examiner concludes independent claims 1, 5, and 9 recite the
abstract idea of receiving and repeatedly decoding encoded data using trivial
and Gauss elimination decoding methods. See Final Act. 8–9. The
Examiner explains both decoding methods are based on mathematical
computations that are considered to be abstract ideas. Ans. 3–4. The
Examiner further determines each of “[t]he additional limitations . . . is not
significant[ly] more because it is well-known in the art and conventional” to
decode information and analyze data for errors. Id. at 5. Furthermore, the
Examiner determines the recited computer and storage devices are generic
devices “that [do] not add meaningful limitation[s] to the abstract idea
because they would be routine in any computer implementation.” Id.
Appellants contend “claim 1 provides for a detection of lost data, and
a provision of corrected data. Hence, the device of claim 1 provides for an
improvement in the operation of a communication system and an improved
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technological result.” Appeal Br. 19. Accordingly, Appellants argue claim
1 is not directed to an abstract idea. Id. In the alternative, Appellants
contend “even if the Examiner maintains that claim 1 is directed to an
abstract idea, it recites significantly more than the abstract idea.” Id.
Appellants argue the recitations of detecting lost data lost in a channel and a
decoding step yielding corrected data provide a solution rooted in computer
technology to a problem specifically arising in the realm of communications.
Id. at 20. Appellants further contend the operations recited by the claims,
including alternately and repeatedly decoding lost data using trivial and
Gauss elimination methods, is not routine or conventional. Id., Reply Br. 9–
10.
The Examiner responds, finding the invention is for decoding using
the Gauss elimination and trivial methods. Ans. 9. Because the claims only
recite a channel decoding device rather than a communications system
device, the Examiner dismisses Appellants’ argument that the invention
addresses the technical problem of erroneous data in a communication
system. Id. at 10. Furthermore, according to the Examiner, because the
claims use a generic computer for decoding data, an invention directed to
channel decoding “would not . . . provide [an] improvement in computer (or
Channel Decoding System) capabilities or functionality as [in the argued]
Enfish[4] or McRO[5] [cases].” Id. at 12. The Examiner also dismisses
Appellants’ argument that the decoding required by the claims is not routine
or conventional because the argued methods are themselves the abstract idea
of encoding/decoding information and because “[t]he limitation ‘thus

4 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
5 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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yielding corrected data’ [is] based on the result of mathematical computation
of abstract idea of encoding/decoding information.” Id. at 15–16.

Step 2A, Prong 1
The Judicial Exception
Under the 2019 Revised Guidance (1), we begin our analysis by
identifying specific claim language that recites a judicial exception within
the following categories of abstract ideas: (a) mathematical concepts, (b)
mental steps, and, (c) certain methods of organizing human activities.
We note claim 1 recites the following activities which involve
mathematical concepts:
i) Detect generation of lost data lost in a channel using data from the
data string: This activity is accomplished “using a trivial decoding
method and decoding of lost data using a Gauss elimination method
on redundant data encoded based on a relation of a sparse graph
multiple times alternately and repeatedly.” Appeal Br. 7 citing Spec.
¶ 13. Appellants disclose “[t]he Gauss elimination method is a
solution capable of solving a system of linear equations when the
number of variables is identical to the number of ranks of equations.”
Spec. ¶ 9. Furthermore, “the trivial decoding method is a solution
capable of solving one variable in one equation.” Spec. ¶ 12.
Accordingly, the recited activities are implemented using
mathematical formulas, equations and/or calculations that are
mathematical concepts considered to be abstract ideas.
ii) Decoding the lost data using (i) trivial and (ii) Gauss elimination
methods. For the reasons described above, these steps using the
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indicated methods also recite mathematical formulas or equations
and/or calculations that are mathematical concepts considered to be
abstract ideas.
Similarly, the decoding steps of the wherein clause of claim 1 specify
the use of trivial and Gauss elimination methods thereby also reciting
mathematical formulas or equations and/or calculations that are
mathematical concepts.
Thus, after applying the 2019 Revised Guidance, and considering the
claim as a whole, we conclude certain limitations of Appellants’ claim 1
recite a judicial exception of mathematical concepts (an abstract idea).
Independent claims 5 and 9 recite similar language of commensurate scope.

Step 2A, Prong 2
Integration of the Judicial Exception into a Practical Application
We conclude the claims integrate the judicial exception into a
practical application, because the claimed channel decoding device detects
generation of lost data lost in a channel and decodes the lost data “thus
yielding corrected data.” Claim 1. Although claim 1 does not explicitly
recite a communication system, we agree with Appellants that addressing
erroneous data in a channel is a technical problem involving
communications systems. See Reply Br. 3–4; see also App. Br. 18; Spec.
¶¶ 8–11. Thus, claim 1 implements an improvement under MPEP
§ 2106.05(a) in communication technology that more efficiently corrects for
lost data in a channel. See Spec. ¶¶ 1, 13. Therefore, we conclude the
Examiner erred in determining independent claim patent ineligible and our
analysis for claim 1 ends.
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Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments.
Accordingly, we do not sustain the Examiner’s rejection of independent
claim 1 and, for the same reasons, the rejection of independent claims 5 and
9 under 35 U.S.C. § 101 together with the rejection of claims 2–4, 6–8, and
10–12 which depend therefrom.
DECISION
We reverse the Examiner’s decision to reject claims 1–12 under 35
U.S.C. § 101.

REVERSED