Ex Parte Budaraju et al

Patent Trials and Appeals Board

Jun 24, 2019

12818757 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/818,757 06/18/2010
42982 7590 06/26/2019
Rockwell Automation, Inc./FY
Attention: Linda H. Kasulke E-7Fl 9
1201 South Second Street
Milwaukee, WI 53204
FIRST NAMED INVENTOR
Srinivas Budaraju
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.
2009P-138-US
(ALBR:0350)
CONFIRMATION NO.
8479
EXAMINER
JOHNSON, KARA D
ART UNIT PAPER NUMBER
1657
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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):
howell@fyiplaw.com
docket@fyiplaw.com
raintellectualproperty@ra.rockwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRINIVAS BUDARAm and JAMES F. BARTEE
Appeal2018-004303
Application 12/818,757 1
Technology Center 1600
Before RYAN H. FLAX, RACHEL H. TOWNSEND, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for controlling operation of a fermenter, which have been rejected as
directed to patent ineligible subject matter. We have jurisdiction under 35
U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
Appellants' Specification states:
existing methods for determining the fermenter yield suffer
from various disadvantages. For example, some methods
involve offsite measurements, involve infrequent
1 Appellants identify the real party in interest as Rockwell Automation
Technologies, Inc. (Appeal Br. 2.)
Appeal2018-004303
Application 12/818,757
measurements, are impractical for continuous monitoring, are
unreliable, and/or fail to provide yields for individual batches.
(Spec. ,r 2.) Appellants' invention is directed to a process for determining
batch performance characteristics using a process controller and then
controlling equipment used in the fermentation process based on the
determinations made to improve fermenter yield or fermenter efficiency.
Claims 1, 2, 4--11, and 23-34 are on appeal. Claim 1 is representative
and reads as follows:
1. A method for controlling operation of a fermenter
configured to produce a fermenter batch in a biofuel production
plant, comprising:
determining, using a process controller in the biofuel
production plant, a cell mass of a sample of the fermenter batch;
determining, using the process controller, a glucose
equivalent total (GET) of the sample based at least on the cell
mass of the sample;
determining, using the process controller, a starch to
glucose conversion factor (SGCF) based at least on the GET of
the sample;
determining, using the process controller, a total amount
of glucose in the fermenter batch based at least on the SGCF;
determining, using the process controller, a volume of
ethanol in the fermenter batch based at least on the total amount
of glucose and the GET of the sample;
predicting, using the process controller, a fermenter yield
based at least on the volume of ethanol, a fermenter efficiency
based on the fermenter yield or the volume of ethanol, or both;
and
controlling, using the process controller, operation of
equipment in the biofuel production plant based at least in part
upon prediction of the fermenter yield and/ or the fermenter
efficiency to improve the fermenter yield and/ or the fermenter
efficiency.
2
Appeal2018-004303
Application 12/818,757
(Appeal Br. 17.)
The following ground of rejection by the Examiner is before us on
review:
Claims 1, 2, 4--11, and 23-34 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
DISCUSSION
The Examiner determines that "under the broadest reasonable
interpretation[,] the ... claims [ on appeal] are directed to software per se,
which is patent ineligible." (Final Action 4.) The Examiner arrives at this
conclusion based on the fact that the claims recite controlling a fermentation
process "using a process controller," but the Specification does not "require
the process controller to include a computer-readable medium/storage
medium, nor would one of ordinary skill in the art understand a process
controller to be limited to non-software embodiments." (Id. at 3--4.)
The Examiner also contends that "even if the claims and/or
specification were interpreted to require the process controller to include a
computer readable storage readable medium, neither the claims nor
specification require that the computer-readable storage medium be non-
transitory." (Id. at 4.) The Examiner explains that the claims therefore
"may encompass transitory signals ... which are not directed to one of the
categories of statutory subject matter." (Id.) The Examiner, citing MPEP
§ 2106, concludes that "[ c ]laims[, such as those on appeal,] which cover
both statutory and non-statutory embodiments 'embrace[] subject matter that
is not eligible for patent protection and therefore [are] directed to non-
statutory subject matter'." (Id. at 5.)
3
Appeal2018-004303
Application 12/818,757
We disagree with the Examiner's conclusion that the claims are
directed to software per se or transitory signals such that they are claims
directed to non-statutory subject matter. While the Examiner is correct that
computer programs per se and transitory forms of signal transmission per se
are not patent-eligible, this means a product claim to a software program
without at least one structural limitation is patent-ineligible, see Digitech
Image Techs., LLC v. Elects.for Imaging, Inc., 758 F.3d 1344, 1348 (Fed.
Cir. 2014) ("For all categories except process claims, the eligible subject
matter must exist in some physical or tangible form."), and a claim to a
machine-readable medium that includes carrier waves as well as RAM is
patent-ineligible because it covers a claim embodiment to transitory signals
(i.e., carrier waves) in and of themselves, Mentor Graphics Corp. v. EVE-
USA, Inc., 851 F.3d 1275, 1294 (Fed. Cir. 2017); In re Nuijten, 500 F.3d
1346, 1356-57 (Fed. Cir. 2007). Appellants' claims are not directed to
software per se or transitory signals per se.
As Appellants note, each of the independent claims 1, 23, and 29
recites a series of steps including determining information analytics ( e.g.,
"batch performance characteristics" (Spec. ,r 17)) about a sample from a
fermenter batch and controlling operation of equipment in a biofuel
production plant to improve fermenter yield and/or the fermenter efficiency.
(Appeal Br. 3, 10; Reply Br. 2--4.) The process employs the use of a process
controller in the determining steps, the predicting step, and controlling step.
The Specification states that the process controller "includes a computer-
readable storage medium comprising computer code disposed on the
computer-readable storage medium." (Spec. ,r,r 6, 21.) However, such use
of software, which requires input as to analytical measurements, in the
4
Appeal2018-004303
Application 12/818,757
process does not render the claims directed to software per se, nor are the
claims directed to a signal or carrier wave modulated with instruction data
per se. That is, the claims do not cover an embodiment that consists of
disembodied software instructions per se, e.g., software in itself, with no
structural tie to an article of manufacture. Microsoft Corp. v. AT&T Corp.,
550 U.S. 437, 449 (2007) ("Abstract software code is an idea without
physical embodiment .... "). As Appellants explain, the claimed method is
"intimately tied to the recited plant, fermenter, and [computer] controller ...
that implements the recited steps stored in code of the computer." (Reply
Br. 4.) For example, the controller makes a determination of the cell mass
from a sample of the fermenter batch. As the Specification explains, the
sample is obtained from the sample point, and the numerical values required
to make this determination "are empirically determined," i.e., are measured
by experimental tests or observations. (See, e.g., Spec. ,r 26; see also id. ,r,r
18, 22-23.) After a number of calculations are made based on information
obtained from the sample of the fermenter batch, the process controller
effects control of the operation of equipment in the production plant so as to
improve the fermenter yield and/or efficiency. For these reasons, we agree
with Appellants that, even if these claims may involve the use of software or
transitory signals, these claims are not directed to patent ineligible software
per se or transitory signals.
5
Appeal2018-004303
Application 12/818,757
Thus, we do not sustain the Examiner's rejection of claims 1, 2, 4--11,
and 23-34 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter. 2
SUMMARY
We reverse the rejection of claims 1, 2, 4--11, and 23-34 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
REVERSED
2 In the event of further examination and consideration of whether the
claims are directed to patent eligible subject matter under the 2019 Revised
Patent Subject Matter Eligibility Guidance ("Guidance"), 84 Fed. Reg. 50-
57 (January 7, 2019), we note that while the Specification makes clear that
the determining steps involve mathematical concepts (see, e.g., Spec. ,r,r 26-
28), the claims appear to integrate the mathematical concepts into a practical
application in the same way as the claims in Diamond v. Diehr, 450 U.S.
175 (1981). Outside of the mathematical formula, Diehr was directed to a
process that was otherwise eligible subject matter, an industrial process for
the molding of rubber products. Diehr, 450 U.S. at 192-93; see also Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1348 (Fed. Cir. 2017) ("In
terms of the modem day Alice test, the Diehr claims were directed to an
improvement in the rubber curing process, not a mathematical formula.").
Appellants' claims appear to be similarly directed to an industrial process,
fermentation, and control thereof.
6