Ex Parte Mattson et al

Patent Trial and Appeal Board

Nov 20, 2018

14229041 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/229,041 03/28/2014
45113 7590 11/23/2018
Siemens Corporation
Intellectual Property Department
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Howard Charles Duncan Mattson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2014 PO l 854US 4073
EXAMINER
PIERRE LOUIS, ANDRE
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD CHARLES DUNCAN MATTSON,
DOUGLAS JOSEPH KING,
and Y ANONG ZHU
Appeal2018-003949
Application 14/229,041
Technology Center 2100
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Appellants indicate the real party in interest is Siemens Product Lifecycle
Management Software Inc. App. Br. 3.
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Application 14/229,041
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1---6, 8-13, and 15-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Illustrative Claims
Illustrative claims 1 and 6 under appeal reads as follows ( emphasis
and bracketed material added):
1. A method for intelligent offset recognition in CAD
models, the method performed by a data processing system
including at least one processor and comprising through
operation of the at least one processor:
[A.] receiving a CAD model that includes a plurality of
entities each having an underlying geometry;
[B.] identifying a first offset pair chain corresponding to a
first entity of the plurality of entities, including identifying a first
partner entity that is part of the same offset pair;
[C.] determining whether the first offset pair chain is a
strong chain based on a ratio of a sum of lengths by which the
first entity and at least one other entity that shares the first partner
entity overlap the first partner entity to an offset distance between
the first entity and the first partner entity,
[i.] and when the first offset pair chain is a strong chain,
then marking the first entity as a part of an offset
pair; and
[D.] storing the CAD model including the marked first
entity.
6. The method of claim 1, wherein the first offset pair
chain is determined to be a strong chain based on geometric
types of the underlying geometries of the first entity and the first
partner entity.
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Rejections2
The Examiner rejected claims 1---6, 8-13, and 15-20 under 35 U.S.C.
§ 101 because "the claimed invention is directed to a judicial exception ...
without significantly more," i.e., because the claimed invention is directed to
patent-ineligible subject matter. Final Act. 3. Separate patentability, in
compliance with 37 C.F.R. § 4I.37(c)(iv), is not argued for claims 2---6, 8-
13, and 15-20 ("Under each heading identifying the ground of rejection
being contested, any claim(s) argued separately or as a subgroup shall be
argued under a separate subheading that identifies the claim( s) by
number."). 3 Therefore, we select independent claim 1 as representative.
Except for our ultimate decision, we do not discuss the § 101 rejection of
claims 2---6, 8-13, and 15-20 further herein.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to patent-
ineligible subject matter?
ANALYSIS 4
We have reviewed the Examiner's rejections in light of Appellants'
Appeal Brief and Reply Brief arguments that the Examiner has erred.
2 All citations to the "Final Action" are to the Final Action mailed on
June 14, 2017.
3 Appellants' dependent claim argument( s) spanning Appeal Brief pages 25-
28 do not comply with the rule and have not been considered.
4 All Manual of Patent Examining Procedure (MPEP) citations herein are to
MPEP Rev. 08.2017, January 2018.
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Application 14/229,041
A. Section 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589-90 (2013)).
Accordingly, in applying§ 101, the Supreme Court cautioned:
[W]e must distinguish between patents that claim the
"'buildin[g] block[ s] '" of human ingenuity and those that
integrate the building blocks into something more, thereby
"transform[ing]" them into a patent-eligible invention. The
former "would risk disproportionately tying up the use of the
underlying" ideas, and are therefore ineligible for patent
protection. The latter pose no comparable risk of pre-emption,
and therefore remain eligible for the monopoly granted under our
patent laws.
Alice, 134 S. Ct. at 2354--55.
The Supreme Court in Alice reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-83 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. For example, a fundamental economic practice or merely
implementing a mathematical algorithm/formula is an abstract idea. See
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Alice, 134 S. Ct. at 2357-58 (discussing Bilski v. Kappas, 561 U.S. 593
(2010) and Parker v. Flook, 437 U.S. 584 (1978)).
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
If the claims are not directed to an abstract idea or other patent-ineligible
concept (e.g., a law of nature), the inquiry ends. Id. at 1339. Otherwise, the
inquiry proceeds to the second step where the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566
U.S. at 79, 78).
In Enfish, the Federal Circuit provided further guidance.
In setting up the two-stage Mayo/Alice inquiry, the
Supreme Court has declared: "We must first determine whether
the claims at issue are directed to a patent-ineligible concept."
Alice, 134 S. Ct. at 2355. That formulation plainly contemplates
that the first step of the inquiry is a meaningful one, i.e., that a
substantial class of claims are not directed to a patent-ineligible
concept. The "directed to" inquiry, therefore, cannot simply ask
whether the claims involve a patent-ineligible concept, because
essentially every routinely patent-eligible claim involving
physical products and actions involves a law of nature and/or
natural phenomenon-after all, they take place in the physical
world. See Mayo, 566 U.S. at 79, 78 ("For all inventions at some
level embody, use, reflect, rest upon, or apply laws of nature,
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natural phenomena, or abstract ideas.")[.] Rather, the "directed
to" inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether "their character as a
whole is directed to excluded subject matter."
Enfish, 822 F.3d at 1335 (bold emphasis added).
B. Examiner's §1 OJ Rejection -Alice/Mayo - Steps 1 and 2
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to an abstract idea.
The claims provide for [above claim 1 steps A.---C.], which is
[sic] concepts that have been identified as abstract such as
organizing information through mathematical correlations in
Digitech or data recognition and storage in Content Extraction.
Final Act. 3.
Applying step 2 of the Alice/Mayo analysis, the Examiner further
concludes:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the claims have an abstract idea limited solely by mere
instructions to implement the idea on a computational processor
or by recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
industry. The claims are silent as to how the computer aids the
method, the extent to which a computer aids the method, or the
significance of a computer to the performance of the method.
Simply adding a computer or processor limitation to a claim
covering an abstract concept, without more, is insufficient to
render the claim patent eligible.
Final Act. 3.
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C. Appellants'§ 1 OJ Arguments
Appellants argue the Examiner's decision of June 14, 2017, finally
rejecting claim 1, "should be reversed." App. Br. 1. We are unpersuaded by
Appellants' arguments.
C.1.a.
Appellants particularly contend:
The claims at issue describe an improvement to the way
the data processing system operates to enhance accurately and
automatically identify the offset pairs, overcoming the problems
of other systems that do not recognize offset relations without
specific constraints or identify too many pairs of geometries as
having an offset relationship simply because they are proximate
to each other, causing a slow and unproductive user interaction
with the system. Specification, paragraph 0021. Since this is
not an "abstract idea" at all, but rather a specific improvement to
the device itself, the claims are statutory under the "first step" of
the analysis, without ever requiring an analysis of the specific
"significantly more" characteristics of the claims, per the Federal
Circuit.
App. Br. 19 (emphasis added).
The claims describe specific processes, devices, and
systems for intelligent recognition and marking of offset pairs in
CAD models of products being designed.
While Claim 1 may include mathematical processes, this
claim is clearly not attempting to patent the mere concept of
"organizing information through mathematical correlations" or
"data recognition and storage." Rather, Claim 1 recites a specific
process that uses specific data in a manner never done before.
App. Br. 21 ( emphasis added).
It is clear that the instant claims are directed to a problem
with a claimed solution that is necessarily rooted in computer
technology, and so are patent eligible under the USPTO
guidelines as well.
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App. Br. 25.
Contrary to Appellants' argument that the invention sets forth "an
improvement to the way the data processing system operates" (App. Br. 19),
we agree with the Examiner's determination that "the claims .... [are] not in
any way [an] improvement to existing technology." Ans. 5.
Rather than providing a technical solution that improves the way a
computer works, Appellants' invention merely improves the abstract idea
directed to offset recognition in geometry5 (i.e., mathematical) models. The
computer is then applied to this abstract idea. This is not enough to
transform an abstract idea into patent-eligible subject matter. See, e.g.,
Alice, 134 S. Ct. at 2360 (explaining that claims that "amount to 'nothing
significantly more' than an instruction to apply the abstract idea ... using
some unspecified, generic computer" "is not 'enough ' to transform an
abstract idea into a patent-eligible invention" (quoting Mayo, 566 U.S. at 77,
79)); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1342 (Fed. Cir. 2017) ("[T]he claim language here provides only a result-
oriented solution, with insufficient detail for how a computer accomplishes
it").
Appellants also overlook that the argued specifics of claim 1 are part
of the judicial exception, not the "significantly more" analysis. The fact that
5 "Geometry" is:
The branch of mathematics that deals with points, lines, angles,
curves, and shapes - their construction, the mathematical
properties they represent, and their relationships in space.
Geometry is an essential part of computer-aided design [CAD]
and graphics programs.
Microsoft Press Computer Dictionary 1991.
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a claimed concept is "[g]roundbreaking, innovative, or even brilliant" does
not "itself satisfy the § 101 inquiry." Ass 'n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. at 591.
C.1.b.
Appellants also contend:
The Examiner's Answer appears to require that the
claimed processes, which improve the way the data processing
system operates to accurately and automatically identify the
offset pairs must the "general performance of a general purpose
CPU." Such a requirement has no basis in the law. Enfish
specifically allows that software can make non-abstract
improvements to computer technology just as hardware
improvements can, and that the relevant enquiry is ask whether
the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea.
Reply Br. 13 ( emphasis added).
A CAD modeling function, contrary to the assertions of
the Examiner's Answer, is not simply a "mathematical concept"
or "data recognition and storage," except in the sense that every
computer-implemented process involves mathematical
operations and data manipulation. This is not, however, what the
claims are directed to.
Reply Br. 15.
Contrary to Appellants' argument, we do not find before us
"non-abstract improvements to computer technology." Reply Br. 13.
Rather, we find abstract improvements to geometry (i.e., mathematics) based
models. A claim directed to a unique and advantageous geometry based
mathematics is nonetheless directed to mathematics and constitutes an
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abstract idea. 6 "[U]nder the Mayo/Alice framework, a claim directed to a
newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility." Genetic Techs. Ltd. v. Merial L.L. C., 818
F.3d 1369, 1376 (Fed. Cir. 2016); see Diamond v. Diehr, 450 U.S. 175, 188-
89 (1981).
C.2.
Appellants further contend:
As illustrated by the lack of any prior-art rejections of the
claims, the claim processes for the intelligently identifying offset
pairs in a CAD model, and the various claimed devices and
systems, are not simply computer-automated processes carried
out in the same way as the prior art. The claimed processes,
devices, and systems are statutory subject matter.
In addition, the operations recited in independent Claim 1
and other claims combine to create an ordered combination that
is not well-understood, routine, or conventional and that is not
previously known to the industry.
App. Br. 28 ( emphasis added).
This argument lacks merit because, even though the Section 101
inquiry and the Section 102/103 inquiry might sometimes overlap, a novel
and nonobvious claim directed to a purely abstract idea is, nonetheless,
6 See Ultramercial, Inc. v. Hulu LLC, 772 F.3d. 709 (Fed. Cir. 2014). In
that case, the patentee argued that its financial arrangement ( a method of
using advertising as an exchange or currency) was distinguishable from the
"routine," "long prevalent," or "conventional" abstract idea in Alice
because it was "directed to a specific method of advertising and content
distribution that was previously unknown." Id. at 714. The court rejected
the patentee's position that "abstract ideas remain patent-eligible under
§ 101 as long as they are new ideas not previously well known, and not
routine activity." Id.
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patent-ineligible. See Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. at 89 (rejecting the suggestion that Sections 102, 103, and 112
might perform the appropriate screening function and noting that in Mayo
such an approach "would make the 'law of nature' exception ... a dead
letter").
C.3.
Appellants furthermore contend:
[T]he instant claims do not preempt the use of "organizing
information through mathematical correlations" or "data
recognition and storage" on the Internet or on generic computer
components performing conventional activities, but are instead
directed to an improvement of specific processes, devices, and
systems.
App. Br. 30 ( emphasis added).
Appellants' argument is not persuasive because although "preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We are
instructed that " [ w ]here a patent's claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework ... , preemption
concerns are fully addressed and made moot." Id.
C.4.
Appellants contend:
While the claim processes can be implemented in a
general-purpose computer to improve those computer
operations, it is long established that "such programming creates
a new machine, because a general purpose computer in effect
becomes a special purpose computer once it is programmed to
perform particular functions pursuant to instructions from
program software." In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir.
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1994). Improvements to operations performed using a general-
purpose computer is an improvement to the special purpose
computer when it is performing the claim processes.
App. Br. 24.
Essentially, Appellants are arguing that when considering particular
abstract claim processes being performed on a computer, the Federal
Circuit's earlier 1994 decision in Alappat trumps the Supreme Court's later
Alice/ Mayo two-step framework. We disagree.
C.5.
Appellants also contend:
Recent PT AB decisions confirm that over-generalized
characterizations of the claims in § 101 rejections are improper.
App. Br. 33 ( citations omitted).
Appellants overlook that the cited PT AB decisions are not binding on
later unrelated decisions.
C.6.
Appellants further contend:
The CAFC has recently clarified that "[t]he question of
whether a claim element or combination of elements is well-
understood, routine and conventional to a skilled artisan in the
relevant field is a question of fact. Any fact, such as this one, that
is pertinent to the invalidity conclusion must be proven by clear
and convincing evidence." Berkheimer v. HP, Inc., [881 F.3d
1360, 1368 (Fed. Cir. 2018).], emphasis added. Further, "the
Supreme Court recognized that in making the § 101
determination, the inquiry 'might sometimes overlap' with other
fact-intensive inquiries like novelty under§ 102." Id.
The claim processes are not taught or suggested by the
prior art, and cannot be considered to be well-understood,
routine, and conventional.
Reply Br. 18-19.
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Again we point out that rather than providing a technical solution that
improves the way a computer works, Appellants' invention merely improves
the abstract idea directed to offset recognition in CAD geometry (i.e.,
mathematical) models. Appellants' Berkheimer argument conflates step 1
and step 2 of the Court's Alice/Mayo two-step framework. The Alice/Mayo
two-step framework looks to whether an additional non-abstract claim
feature (the claim element or combination of elements) in Alice/Mayo step 2
is well-understood, routine and conventional; not whether the abstract CAD
geometry modeling of Alice/Mayo step 1 is well-understood, routine, and
conventional. Appellants' argument is not relevant to the Alice/Mayo two-
step framework.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-6, 8-13, and
15-20 under 35 U.S.C. § 101, as being directed to patent-ineligible subject
matter.
(2) Claims 1-6, 8-13, and 15-20 are not patentable.
DECISION
The Examiner's rejection of claims 1---6, 8-13, and 15-20 under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter, is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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