Ex Parte Anderson et al

Patent Trials and Appeals Board

Dec 31, 2018

14491379 - (D) (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/491,379 09/19/2014
34431 7590 01/03/2019
HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2200
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Shawn William Anderson
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.
20040/56-13087 9110
EXAMINER
KUAN, JOHN CHUNY ANG
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
mailroom@hfzlaw.com
jflight@hfzlaw.com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAWN WILLIAM ANDERSON and TED DENNIS GRABAU
Appeal2018-005292
Application 14/491,379
Technology Center 2800
Before KAREN M. HASTINGS, RAEL YNN P. GUEST, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant1 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 2-8, 17-20, and 222 under
1 Appellant is the Applicant, Fisher Controls International LLC, which,
according to the Appeal Brief, is the real party in interest. Appeal Brief
(Appeal Br.) 2, filed December 12, 2017.
2 Claims 2-8 and 17-22 remain pending after entry of the after-Final
Amendments submitted on September 14, 2017 and October 5, 2017. See
Advisory Action dated September 27, 2017 and Advisory Action dated
October 16, 2017. Claim 21 has been withdrawn from consideration for
being directed to a non-elected species. Final Office Action (Final Act.) 2,
dated July 14, 2017.
Appeal2018-005292
Application 14/491,379
35 U.S.C. § 101 as being directed to patent ineligible subject matter. 3
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The Inventors disclose that process control devices, such as rotary
control valves, have a flow control member that engages a seal to close a
fluid flow passageway. Spec. ,r 3. According to the Inventors, when the
flow control member engages or disengages the seal, the flow control
member may subject the seal to stress and/or cause wear to the seal, which
can lead to the seal failing during use or being replaced before its useful life
has been consumed. Id. In view of this, the Inventors disclose an invention
for estimating a condition of a seal of a rotary valve, such as estimating the
condition of a seal based upon the torque of an actuator operating the flow
control member of a rotary valve. Id. ,r 13.
Independent claim 6 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.
6. An apparatus, comprising:
a housing; and
a processor positioned within the housing, the processor
to:
determine a seal wearing cycle of a flow control member
of a rotary valve, the seal wearing cycle comprising movement
of the flow control member between a first position in contact
with a seal and a second position;
determine a torque of an actuator operating the flow
control member for the seal wearing cycle;
estimate a condition of the seal based on the torque;
determine a rate of change of the torque; and
determine an estimated remaining number of seal
3 The obviousness-type double patenting rejection, the § 112 ,r 2 rejection,
and the § 103 rejections set forth in the Final Office Action (Final Act. 2--4,
9-18) have been withdrawn by the Examiner. Examiner's Answer (Ans.) 2
dated February 23, 2018.
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Application 14/491,379
wearing cycles until the condition of the seal reaches a
predetermined level based on the torque and the rate of change.
Claim 19 is similarly directed to a tangible machine readable storage
medium having an executable instructions that perform the processor
determinations and estimations of claim 6.
B. DISCUSSION
The first step in analyzing whether a claim is directed to patent-
eligible subject matter is determining whether the claim is directed to one of
the patent-ineligible concepts: laws of nature, natural phenomena, and
abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347,
2355 (2014) (citing Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289 (2012)). If a claim is directed to a patent-ineligible concept,
the second step in the analysis is to determine whether additional elements
of the claim, "both individually and 'as an ordered combination,"'
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297, 1298). Thus,
"[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. at 2357.
Here, the Examiner finds that the claims are directed to an abstract
idea because the claims are directed to using mathematical relations or
algorithms to make the claimed determinations and estimates. Final Act. 4--
9. The Examiner finds the additional recitations of the claims do not amount
to significantly more than the abstract idea because they are recited at a high
level of generality and are not focused on a technological improvement. Id.
at 5-9.
3
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Application 14/491,379
Appellant contends that determining an estimated remaining number
of seal wearing cycles is not an abstract idea that has been previously
recognized by the courts and the claimed invention is not similar to any of
the cases cited by the Examiner. Appeal Br. 12-24; Reply Br. 3--4, 6-12.
stated:
Appellant's arguments are unpersuasive. The Supreme Court has
a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical
formula, computer program, or digital computer. In Gottschalk
v. Benson, we noted: "It is said that the decision precludes a
patent for any program servicing a computer. We do not so
hold." 409 U.S., at 71, 93 S.Ct., at 257. Similarly, in Parker v.
Flook, we stated that "a process is not unpatentable simply
because it contains a law of nature or a mathematical algorithm."
437 U.S., at 590, 98 S. Ct., at 2526.
Diamond v. Diehr, 450 U.S. 175, 187 (1981).
However, the Supreme Court has also explained, "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." Parker v. Flook, 437 U.S. 584, 595 (1978) (internal
quotations omitted).
Here, claim 6 recites, among other things, a housing and a processor
to determine a seal wearing cycle of a flow control member of a rotary valve
by determining a torque of an actuator operating the flow control member
and estimating a condition of the seal based on the torque and determining a
rate of change of the torque, and estimating the remaining number of seal
wearing cycles based on the torque and the rate of change. As indicated by
paragraphs 21, 3 0, 3 3, and 3 5 of the Specification, Appellant's invention
uses algorithms and mathematical relationships to perform the claimed
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Application 14/491,379
determinations and estimations. Therefore, the determinations and
estimations of the processor is configured to make the directed use of
mathematical algorithms to manipulate existing information ( e.g., DVC
pressure measurements to determine torque and rate of change of torque (see
Spec. ,r 21 )) and generate additional information ( e.g., estimates of seal
condition and remaining number of seal wearing cycles), which is an
abstract idea.
Moreover, the Federal Circuit has held that if a method can be
pert"brmed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under§ lOL See
C)'herSource Cmp. v. Retail Decisions, Inc. 1 654 F.3d 13661 1372-1373
(Fed. Cir. 2011) ("[A] method that can be performed by human thought
alone is merely an abstract idea and is not patent~eligibk under§
101."); Gottschalkv. Benson, 409 U.S. 6\ 67 (1972) ("Phenomena of nature
.. ·~ mental processes, and abstract intellectual concepts are not patentable,
as they are the basic tools of scientific and technological work.~'). AppeHant
asserts that the invention of claim 6 '"is not a method that can be performed
rnentally but instead is a particular concrete so1ution to a problem.'' Appeal
Br. 23. However, A.ppe11anfs Specification indicates that Appe11ant's
process may be implemented manually (Le., by a person). Spec. ir 26.
Therefore, we agree with the Examiner that claim 6 is directed to an abstract
idea under step one of the analysis set forth in Alice.
We therefore tum to step two of the analysis under Alice and assess
whether the additional claim limitations, individually and as an ordered
combination, are sufficient to transform the subject matter into patent
eligible subject matter.
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Application 14/491,379
Appellant asserts claim 6 is similar to the claims found patent eligible
in Diamond v. Diehr. Appeal Br. 12-13, 18-20. This argument is also
unpersuasive. As stated by the Examiner (Ans. 16-17), the claims in
Diamond v. Diehr included additional steps other than calculating a cure
time via the Arrhenius equation from a measured mold temperature, namely
providing a computer with the calculated cure time, comparing the
calculated cure time with elapsed time, and automatically opening a mold
press when the calculated cure time and elapsed time are equivalent. See
Diamond v. Diehr, 450 U.S. at 178-179, 187, fn. 5. In contrast, Appellant's
claim 6 lacks additional steps beyond the claimed determinations and
estimations. 4
Appellant also contends claim 6 is directed toward a particular,
concrete solution to a problem. Appeal Br. 13-25; Reply Br. 4--9, 11. The
following summary by the Federal Circuit is relevant to this issue:
As noted by the Supreme Court, "an application of a law of
nature or mathematical formula to a known structure or process
may well be deserving of patent protection." Diamond v. Diehr,
450 U.S. 175, 187, 101 S. Ct. 1048, 67 L.Ed.2d 155 (1981). A
claim may be eligible if it includes additional inventive features
such that the claim scope does not solely capture the abstract
idea. Alice Corp., 573 U.S.--, 134 S. Ct. 2347. But a claim
reciting an abstract idea does not become eligible "merely by
adding the words 'apply it."' Bancorp Servs., LLC v. Sun Life
Assurance Co. of Can. (US.), 687 F.3d 1266, 1276
(Fed.Cir.2012).
4 Appellant further argues claim 6 is analogous to another case before the
Board in which claims were found patent eligible. Appeal Br. 24--25. We
agree with the Examiner that the additional limitations of claim 6 do not add
meaningful additional limitations to the abstract idea it is directed to. Ans.
24.
6
Appeal2018-005292
Application 14/491,379
Digitech lnzage Techs., LLC v. Elecs.jbr Imaging, Inc., 758 F3d 1344, 1350
(Fed. Cir. 2014). The Federal Circuit further stated:
Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. "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." Parker v. Flook,
437 U.S. 584, 595, 98 S. Ct. 2522, 57 L.Ed.2d 451 (1978)
(internal quotations omitted).
Id. at 1351.
This issue was further analyzed by the Federal Circuit in McRO, Inc.
v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). In
McRO, the Federal Circuit stated one should look to whether the clairns
"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." 837 F.3d at 1314. The
Federal Circuit determined "the claims are limited to rules with specific
characteristics" and "[t]he specific, claimed features of these rules allow for
the improvement realized by the invention." Id. at 1313-1314.
Here, the additional elements of claim 6, both individually and as an
ordered combination, do not transform the nature of claim 6 into patent
eligible subject matter. The Examiner finds the additional recitations of
claim 6 are recited with a high level of generality. Final Act. 5---6; Ans. 17.
We agree that the recitations of determining a torque of an actuator
operating the flow control member, estimating a condition of the seal based
on the torque, determining a rate of change of the torque, and determining an
estimated remaining number of seal wearing cycles based on the torque and
the rate of change involve the abstract idea of making these calculations with
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Application 14/491,379
little or nothing more, whether considered individually or as an ordered
combination. Moreover, Appellant's Specification indicates that the
structures recited in claim 6 are generic in nature. See Spec. ,r 26.
Nor does claim 6 recite any rules with specific characteristics.
Although mathematical relationships and algorithms are implicated in the
recitations of claim 6, the recitations do not actually include any particular
rules. Such a level of generality does not limit the claim to rules with
specific characteristics, as in McRO. Indeed, claim 6 is directed to little
more than the implementation of the abstract idea; it embodies the
implementation of an abstract idea via a generic computer as a tool, as
explained by the Examiner. Ans. 6. Therefore, claim 6 is merely directed to
the application of the abstract idea, which is not patent eligible.
Appellant also argues the claimed invention does not give rise to
preemption and does not attempt to broadly capture the underlying
algorithm. Appeal Br. 25-28; Reply Br. 4, 7-8, 12. These arguments are
also unpersuasive. \Vhen discussing exceptions to patent eligibility under§
101, the Supreme Court has stated "the concern that drives this exclusionary
. . ·1 f . "c 11· 1"4 s· C "!"~4 H. pnnnp e as one o pre-empt10n. 0ee .11 1ce, j , . t. at L,j) . _ . owever,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the test for patent eligibility. As
our revievving court has explained, '"[ tJhe Supreme Court has made dear that
the principle of preemption is the basis for the judicial exceptions to
patentability" and '"[ fJor this reason1 questions on preemption are inherent in
and resolved by the§ 101 analysis.~' Ariosa Diagnostics, Inc. v. Sequenmn,
1. 7R8" n.., i 1 ·~71· 1 ·:i~9 en 1 ('' 201, . . . A/' 1· ''4 S (' ..,,, -4) nc., {. r.j( ., ,