Ex Parte Ahmed et al

Patent Trial and Appeal Board

Nov 17, 2017

13178739 (P.T.A.B. Nov. 17, 2017)

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.
13/178,739 07/08/2011 Osman Ahmed 2011P11075US 9000
28524 7590 11/21/2017
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
QUIGLEY, KYLE ROBERT
Orlando, EL 32817 ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
11/21/2017 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 OSMAN AHMED and MANFRED JUNG
Appeal 2017-001666
Application 13/178,739
Technology Center 2800
Before PETER F. KRATZ, KAREN M. HASTINGS,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—16 of Application 13/178,739
under 35 U.S.C. §§ 101, 103(a), and 112. Final Act. (Nov. 13,2015)2—18.
Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Siemens Schweiz AG is identified as the real party in interest. Appeal
Br. 3.
Appeal 2017-001666
Application 13/178,739
BACKGROUND
The present application generally relates to “the field of energy
management systems, and more particularly, to a management system
directed to generating and distributing energy allocation goals to a plurality
of nodes within the grid.” Spec. 11.
Claim 1 is representative of the pending claims and is reproduced
below:
1. An arrangement for use in a distributed system for an
energy grid, comprising:
a memory;
a processing circuit coupled to the memory; and
a plurality of destination nodes coupled to the processing
circuit;
wherein the plurality of destination nodes has a desired
aggregate index including information representative of carbon
consumption;
wherein the memory includes index allocation
instructions stored therein; and
wherein the processing circuit, under the control of the
index allocation instructions, is configured to:
calculate a desired destination index for each of the
plurality of destination nodes based on the desired
aggregate index, and consumption goals
committed from a consumer, and communicate
each desired destination index to the corresponding
one of the plurality of destination nodes; and
wherein each of the plurality of destination nodes is
configured to:
receive the desired destination index from the
processing circuit, and display the desired
destination index on a display.
Appeal Br. 17 (Claims App.).
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Application 13/178,739
REJECTIONS
On appeal, the Examiner maintains the following rejections:2 3
1. Claims 1—16 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Final Act. 3^4.
2. Claims 1—7 and 9-14 are rejected under 35 U.S.C. § 103(a) as
obvious over Jones (GB 2461292 B, pub. Dec. 30, 2009) (hereinafter
“Jones”). Id. at 5—15.
3. Claims 8 and 15 are rejected under 35 U.S.C. § 103(a) as
obvious over Jones in view of Crabtree et al. (US 2010/0217651 Al, pub.
Aug. 26, 2010) (hereinafter “Crabtree”). Id. at 16.
4. Claim 16 is rejected under 35 U.S.C. § 103(a) as obvious over
Jones in view of Scaramellino et al. (US 2010/0042453 Al, pub. Feb. 18,
2010) (hereinafter "Scaramellino").
DISCUSSION
Rejection 1. The Examiner rejected claims 1—16 as directed to non-
statutory subject matter. Final Act. 3^4. Specifically, the Examiner
determines that claims 1-16 are directed to the abstract idea of an algorithm
for calculating and generating indices. Id. at 3. In support, the Examiner
asserts that the present claims are comparable to the abstract idea identified
in Electric Power Group, LLC v. Alstom S.AA Answer 3.
2 In the Final Rejection, the Examiner rejected claims 1—16 under 35 U.S.C.
§ 112 12 as indefinite. Final Act. 2—3. This rejection was subsequently
withdrawn and will not be addressed herein. Answer 4—5.
3 830 F.3d 1350 (Fed. Cir. 2016).
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Application 13/178,739
The Examiner further determines that the claims do not include
additional elements that amount to significantly more than an abstract idea
because the additional elements are no more than instructions to implement
the idea on a computer, and/or a recitation of “generic computer structure
that serves to perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the pertinent
industry.” Final Act. 4.
Appellants argue that the Examiner is in error as the claims are
directed to an improvement in power consumption technology rather than an
abstract idea. Appeal Br. 7—9; Reply 3—6. Appellants further argue that “the
claims recite specific steps for calculating the desired destination index,
which transforms any general purpose computer into a specific purpose
computer to perform said calculation.” Appeal Br. 9. Appellants,
attempting to distinguish their claims from those at issue in Electric Power
Group v. Alston S.A., additionally assert that their “claimed embodiment
utilizes data from various nodes to generate new data for use in a
distr[ibu]ted system for an energy grid.” Reply 5 (emphasis in original).
Section 101 defines the scope of patent-eligible subject matter as “any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof.” 35 U.S.C. § 101. To this broad
universe of eligible subject matter, the Supreme Court has long-recognized
an exception: laws of nature, natural phenomena, and abstract ideas are not
patent-eligible because they represent “the basic tools of scientific and
technological work.” Ass ’n for Molecular Pathology v. Myriad Genetics,
Inc., 133 S. Ct. 2107, 2116 (2013) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)). Permitting patent
protection for these ideas could thwart the purpose of the patent laws
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because it “might tend to impede innovation more than it would tend to
promote it.” Alice Corp. Pty. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014) (quoting Mayo, 566 U.S. at 71).
The “framework for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts” comprises two steps. Id. at 2355. The first
step requires us to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If they are, we must then analyze
whether the claim elements, either individually or as an ordered
combination, contain an “inventive concept” that “‘transform[s] the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S.
at 72, 78).
In determining that the claims are directed to an abstract idea, the
Examiner relies upon Electric Power. There, the Federal Circuit determined
certain claims to be directed to an abstract idea where “[t]he focus of the
asserted claims ... is on collecting information, analyzing it, and displaying
certain results of the collection and analysis.” Electric Power, 830 F.3d at
1353. Here, claim 1 recites certain network components and then recites
steps requiring calculation, communication, and display of the “desired
destination index.” This is similar to Electric Power.
Next, the claim as a whole is analyzed to determine whether any
element, or combination of elements, is sufficient to “transform” the claimed
abstract idea into a patent-eligible application. Alice, 134 S.Ct. at 2357. The
Examiner determined that the additional limitations were merely a recitation
of “generic computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional activities
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previously known to the pertinent industry” that did not transform the
abstract idea into a patent-eligible claim. Final Act. 4.
Appellants cite to the portion of Electric Power concerning the second
step of the Alice analysis. Reply 5. There, the Court states that the claims at
issue lack any additional element rendering them patent eligible as they “do
not even require a new source or type of information, or new techniques for
analyzing it. As a result, they do not require an arguably inventive set of
components or methods, such as measurement devices or techniques, that
would generate new data.” Electric Power, 830 F.3d at 1355 (internal
citations omitted). In reliance on this passage, Appellants argue that
“Applicant's claimed embodiment utilizes data from various nodes to
generate new data for use in a distrusted system for an energy grid.” Reply
5 (emphasis in original).
The new data claimed to be generated appears to be the “desired
destination index” which is said to be “based on the desired aggregate index
of the nodes and ‘consumption goals committed from a consumer.’” Id.
The Specification indicates that “the desired aggregate index includes
information representative of carbon consumption.” Spec. 1 8. Thus, the
asserted new data is a value derived from the known carbon content of an
energy source and a consumer’s stated consumption goals. Appellants have
not shown that this is something more than information gathering and
processing.
Accordingly, the claim lacks additional elements sufficient to
transform the otherwise-abstract processes of information collection,
analysis, and display into patent-eligible subject matter and Appellants have
failed to show reversible error in the Examiner’s determination that the
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present claims are ineligible for patent protection as directed to an abstract
idea.
Rejection 2. The Examiner rejected claims 1—7 and 9—14 as obvious
over Jones. Final Act. 5—15.
Appellants allege error in the rejections of claims 1 and 9 on three
bases. First, Appellants argue that Jones does not teach “calculating a
desired destination index for each of the plurality of destination nodes based
on the desired aggregate index, and consumption goals committed from a
consumer.” Appeal Br. 11 (emphasis in original). Second, and in a similar
vein, Appellants argue that Jones does not teach “generating a revised
destination index4 based on the desired destination index and consumption
goals committed from a consumer.” Id. at 12 (emphasis in original).
As a preliminary matter, we construe the term “desired destination
index” and “desired aggregate index.” The Specification provides as
follows: “[t]he processing circuit is configured to calculate a desired
destination index for each of the plurality of destination nodes based on a
desired aggregate index for the plurality of destination nodes, wherein the
desired aggregate index includes information representative of carbon
consumption.” Spec. 1 8 (emphasis added). The Specification further
provides that “[t] he desired index is a desired value (e.g. a set point) for a
parameter defined herein in this exemplary embodiment as a green index.
The green index is a parameter that provides an indication, measure or
approximation of carbon usage.” Id. 126 (emphasis added). Thus, the
“desired destination index” is merely a desired value (related to carbon
4 Claim 16 requires a “revised destination index.”
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consumption) associated with a destination and “a desired aggregate index”
is the sum of such values.
In response to Appellants’ arguments, the Examiner points out certain
portions of Jones indicating that energy policy is set by the administrator of
the system to achieve operational or business goals. Answer 5.
Additionally, the Board notes that Jones includes additional teachings
regarding user input. Jones provides as follows:
In one embodiment the upper limit(s) on the energy
consumption may be determined by the system itself. This
determination may be based upon previous energy consumption
levels. . . . Alternatively the determination may be made
from the entering of relevant parameters by a user.
Jones 7 (emphasis added). Jones further describes certain user inputs in its
Energy Policy Management (EPM) system. Jones states that its EPM
system “defines a target for energy use and attempts to manage the use of
energy within this target. If required, it can force compliance to that target
according to the policy set by the managers/users of the system.” Id. at 17
(emphasis added).
Jones further teaches a “set point” that may be set by the end user.
The set point in EPM, is a control value associated with
every group or circuit that sets the desired lighting level of the
circuits. . . .
The set point value can be set under program control by
the administrator or, can be set by the user locally, using a
dedicated control. . . .
The system allows the set point to be altered by the
user if required. This ensures that the user still has some level
of control which is considered important to the successful
adoption of the system.
Id. at 19 (emphasis added).
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Jones additionally teaches an embodiment that includes calculation of
“the predicted equivalent carbon dioxide level relating to the energy use.
This is called the Carbon at Target Time, (COTT).” Id. at 22. Similarly,
Jones teaches that “[a]ny of these policy strategies can be set in terms of
other energy related parameters besides the energy use, for instance . . .
carbon at target time, (COTT).” Id. at 24.
Jones’ teaching of an upper limit of energy consumption
determination, made by the user’s entry of relevant parameters (Jones 7),
teaches the “consumption goals committed from a consumer” of claim 1.
Similarly, the “set point” of Jones’ EPM (Energy Policy Management) is a
consumption goal from the consumer.
Appellants seek to distinguish Jones as teaching a “top down”
approach which differs from its “bottom up approach.” Appeal Br. 12—13.
As is apparent from the foregoing, Jones teaches some degree of “bottom
up” user input. Further, as both the Examiner and Appellants have noted,
there is no claim limitation including the term “bottom up.”
In addition to the foregoing, we determine that several limitations
comprise non-functional descriptive material. In this regard, the Board has
previously offered as follows:
functional descriptive material consists of data structures or
computer programs which impart functionality when employed
as a computer component. In contrast, nonfunctional descriptive
material refers to data content that does not exhibit a functional
interrelationship with the substrate and does not affect the way
the computing processes are performed.
Ex Parte Michael Harville, & Ramin Samadani, Appeal No. 2009-003693,
2010 WL 581994, at *4 (Feb. 16, 2010); Ex parte Nehls, 88 USPQ2d 1883,
1889 (BPAI 2008) (precedential) (“[T]he nature of the information being
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manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process.”); See also MPEP § 2111.05 (9th
Ed., Mar. 2014) ("[W]here the claim as a whole is directed [to] conveying a
message or meaning to a human reader independent of the intended
computer system, and/or the computer-readable medium merely serves as a
support for information or data, no functional relationship exists.").
Here, the claim terms “desired aggregate index,” “information
representative of carbon consumption,” “desired destination index,” and
“consumption goals committed from a consumer” refer to data content that
does not exhibit a functional interrelationship with the system and does not
affect the way the computing processes are performed.
The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d at 1887-90; Ex parte Curry, 84 USPQ2d 1272 (BPAI2005)
(informative), affd, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36); Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), affd, 191 Fed.
Appx. 959 (Fed. Cir. 2006). Accordingly, we determine the foregoing
limitations to be non-functional descriptive material not entitled to
patentable weight.
Appellants additionally assert that “a person of ordinary skill in the art
would not modify Jones, as suggested by the Examiner, to provide
consumers with a display of their target energy consumption so that they
can modulate their energy consumption so that it is not done automatically.”
Appeal Br. 13. Here, Appellants seem to argue that, because Jones does not
teach “bottom up” consumer level participation, there would be no
motivation to modify Jones to provide consumers with a display of their
target energy consumption. This argument is inconsistent with our
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determinations above. Moreover, it is inconsistent with Jones’ teaching as
follows:
Said system may be arranged to warn of any forecast of
said energy consumption upper limit being exceeded,
particularly where any settings or rules mean that said system is
not able to lower energy consumption sufficiently to prevent said
upper limit being exceeded.
Jones 7 (emphasis added).
To the extent that Appellants intend some other argument, it has not
been adequately articulated. Patent Office rules require that an appeal brief
include the “arguments of appellant with respect to each ground of rejection,
and the basis therefor, with citations of the statutes, regulations, authorities,
and parts of the Record relied on. The arguments shall explain why the
examiner erred as to each ground of rejection contested by appellant.” 37
CFR § 41.37(c)(l)(iv). Any argument failing to comply with the foregoing
will not be considered. Appellants rely upon the same arguments as
presented above with regard to the rejections of claims 2—7 and 10-14.
Appeal Br. 14.
In view of all of the foregoing, Appellants have failed to show
reversible error in the Examiner’s determination of obviousness of claims
1—7 and 9-14 over Jones.
Rejection 3. The Examiner rejected claims 8 and 15 as obvious over
Jones in view of Crabtree. Final Act. 16. Appellants argue that Crabtree
does not remedy the deficiencies of Jones but otherwise rely upon the
arguments presented in regard to claims 1 and 9. As such arguments were
not found to be persuasive, we sustain the rejection of claims 8 and 15.
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Rejection 4. The Examiner rejected claim 16 as obvious over Jones
in view of Scaramellino. Final Act. 16—18. Appellants argue that “Jones
fails to teach that the processing circuit at the management station 120
revises any index, much less generating a revised destination index based on
the desired destination index and consumption goals committed from a
consumer.” Appeal Br. 15 (emphasis in original).
Claim 1 of Scaramellino claims, in part, as follows:
A computerized method for determining greenhouse gas
emissions and energy usage, comprising:
accepting user inputs specific to an end user;
correlating one or more of said user inputs with at
least one of historic data and modeled characteristics
pertaining to greenhouse gas emissions and energy usage to
obtain at least one of greenhouse gas emissions and energy
usage corresponding to said one or more of said user inputs;
and
determining an overall greenhouse gas emissions and
energy usage for said end user based on said greenhouse
emissions and energy usage corresponding to said one or
more of said user inputs.
Scaramellino at 26 (emphasis added).
Claim 1 of Scaramellino requires combining data input by an end user
(consumption goals) with other values such as historic data (destination
index) and then determining overall greenhouse gas emissions (generating a
revised destination index). Accordingly, Scaramellino teaches the claim
limitation at issue.
Moreover, as with claims 1 and 9, the terms “a revised destination
index,” “desired destination index,” and “consumption goals committed
from a consumer” are merely non-functional descriptive material not entitled
to patentable weight.
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Accordingly, Appellants have failed to show reversible error in the
Examiner’s rejection of claim 16.
CONCLUSION
The Examiner’s rejections of claims 1—16 as directed to patent
ineligible subject matter are affirmed. The Examiner’s rejections of claims
1—16 as obvious are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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