Ex Parte Civil et al

Patent Trial and Appeal Board

Dec 18, 2017

13409971 (P.T.A.B. Dec. 18, 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.
13/409,971 03/01/2012 Aaron D. Civil AUS920110186US2 8738
133311 7590 12/20/2017
Law Office of Marcia L. Doubet, P.L.
P.O. Box 1087
Lake Placid, EL 33862
EXAMINER
PURI, VENAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/20/2017 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):
mid @ mindspring, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON D. CIVIL, JEFFREY G. KOMATSU,
ANDREW SOON NG YONG LIANG, JOHN M. WARGO,
EMMANUEL YASHCHIN, and PAUL A. ZULPA
Appeal 2016-0027491
Application 13/409,9712
Technology Center 3600
Before MICHAEL C. ASTORINO, MATTHEW S. MEYERS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
1 Our Decision references Appellants’ Specification (“Spec.,” filed Mar. 1,
2012), Appeal Brief (“Appeal Br.,” filed June 26, 2015), and Reply Brief
(“Reply Br.,” filed Jan. 14, 2016), as well as the Examiner’s Final Office
Action (“Final Act.,” mailed Jan. 22, 2015) and Answer (“Ans.,” mailed
Nov. 20, 2015).
2 Appellants identify International Business Machines Corporation (“IBM”)
as the real party in interest. Appeal Br. 4.
Appeal 2016-002749
Application 13/409,971
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1, 4-8, and 10. We have jurisdiction
under § 6(b).
We AFFIRM.
SUBJECT MATTER ON APPEAL
The invention “relates to process control, and deals more particularly
with using hybrid analysis of emerging trends for process control.”
Spec. ^ 2. Claim 1, reproduced below, is the sole independent claim on
appeal and is representative of the claimed subject matter:
Claim 1: A computer-implemented method of analyzing trends
in a process control environment, comprising:
determining, by applying at least one defect-detecting
analysis scheme to first observed process control data for a
process entity, when the process entity exhibits a defect during a
process;
determining, by applying at least one recovery-detecting
analysis scheme to second observed process control data for the
process entity, whether the process entity is recovered from the
defect, further comprising:
determining a point in time (T - M) in the second
observed process control data, wherein: T represents a
current time; the point (T - M) starts a window having
depth M in the second observed process control data, the
window extending backwards from the current time; and
the point (T - M) is determined as a position of a last point
in time at which the second observed process control data
is consistent with the process entity exhibiting the defect;
and
iteratively performing a sequential time-reversed
estimation that analyzes the second observed process
control data for each of (m = 1 to M) successively-longer
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intervals in the window until determining whether the
process entity is recovered from the defect; and
causing the process control environment to stop
performing a previously-initiated remediation effort on the
process entity, responsive to determining that the process entity
is recovered from the defect, wherein the remediation effort was
previously initiated responsive to determining that the process
entity exhibited the defect.
REJECTION
The Examiner rejects claims 1, 4-8, and 10 under 35 U.S.C. § 101 as
non-statutory subject matter.
ANALYSIS
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are
not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct.
2347, 2354 (2014). To “distinguish[] patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts,” the Supreme Court, in Alice, reiterated the
two-step framework previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), which considers, in
the first step, whether a claim is directed to a patent-ineligible concept, e.g.,
an abstract idea, and, if so, considers, in the second step, whether the
elements the claim, individually and as an ordered combination, recite an
inventive concept—an element or combination of elements sufficient to
ensure the claim amounts to significantly more than the abstract idea and
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transform the nature of the claim into a patent-eligible concept. Alice, 134
S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1294, 1296-98).
In rejecting the claims under 35 U.S.C. § 101 as non-statutory subject
matter, the Examiner applies this two-step analysis. Final Act. 5. Under the
first step, the Examiner finds the claims are directed to a mathematical
relationship or formula, which is an abstract idea. Id. Under the second
step, the Examiner finds the claims do not recite additional elements
amounting to significantly more than the abstract idea because the claims do
not recite an improvement to another technology or technical field or an
improvement to the functioning of the computer itself. Id. The Examiner
also finds that the claims do not include meaningful limitations beyond
generally linking the use of the abstract idea to a particular technology, and
that the claims require no more than a generic computer performing generic
computer functions. Id. The Examiner further finds the claims do not recite
specific and non-abstract details performed outside of the computer. Id.
Turning to Appellants’ arguments, initially, we find unpersuasive the
argument that independent claim 1 should not be rejected under 35 U.S.C.
§ 101 for including software recitations. Appeal Br. 26; Reply Br. 10. As
set forth in the Answer, the Examiner is not rejecting independent claim 1
under § 101 because the claim recites software. Ans. 18.
Also as an initial matter, we find unpersuasive Appellants’ arguments
regarding preemption. Namely, Appellants contend that independent
claim 1 recites patent-eligible subject matter under the streamlined eligibility
analysis set forth in the Office’s guidance because the claim does not
preempt others from all use of the mathematical relationship.
Appeal Br. 17-19 (citing 2014 Interim Guidance on Patent Subject Matter
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Eligibility, 79 Fed. Reg. 74618, 74622, 74625 (Dec. 16, 2014)); Reply Br. 7.
Appellants similarly assert that independent claim 1 does not preempt the
field of defect recovery detection. Appeal Br. 26-28; Reply Br. 10.
The Office’s guidance explains that “a streamlined eligibility analysis
can be used for a claim that may or may not recite a judicial exception but,
when viewed as a whole, clearly does not seek to tie up any judicial
exception such that others cannot practice it.” 2014 Interim Guidance,
79 Fed. Reg. at 74625 (emphasis added). As such, the Office’s guidance
does not require a streamlined eligibility analysis, but rather states that the
streamlined analysis can be used. And, as Appellants point out, the result of
the streamlined analysis will always be the same as the result of the full
two-step patent-eligibility analysis. Reply Br. 7.
Moreover, although preemption may be the concern driving the
exclusion of abstract ideas from patent-eligible subject matter, preemption is
not the test for eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability. For this reason, questions on preemption are inherent in and
resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015) (citation omitted). Accordingly, we
consider Appellants’ arguments under the two-step analysis for determining
patent-eligibility under § 101.
Pursuant to the first step of the patent-eligibility analysis, Appellants
contend that independent claim 1, as a whole, is not directed to a
mathematical relationship or formula, but rather to “analyzing process
control data in order to detect recovery from a defect and thus cause the
process control environment to stop performing a previously-initiated
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remediation effort.” Appeal Br. 14 (footnotes omitted). Yet, the analysis of
process control data is the mathematical relationship or formula. In other
words, independent claim 1 requires detecting recovery from a defect and
thereby stopping the remediation effort via the mathematical relationship or
formula, i.e., determining a point in time (T - M) defining a backward
extending window having a depth M and iteratively performing a sequential
time-reversed estimation for each of (m = 1 to M) successively longer
intervals until determining whether the process entity is recovered from the
defect. As such, Appellants’ argument does not apprise us of error in the
Examiner’s characterization of independent claim 1 as directed to a
mathematical relationship or formula.
Appellants also argue that independent claim 1 is not directed to a
mathematical relationship or formula because, similar to the claims in DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
independent claim 1 provides a specific solution to a specific problem that
exists in real-time process control environments. Appeal Br. 15;
Reply Br. 4. We, however, see no parallel between independent claim 1 and
the claims in DDR Holdings.
In DDR Holdings, the Federal Circuit determined that the claims
address the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host’s website after clicking on an
advertisement and activating a hyperlink. 773F.3datl257. The Federal
Circuit, thus, held that the claims are directed to statutory subject matter
because they claim a solution “necessarily rooted in computer technology in
order to overcome a problem specifically ari sing in the realm of computer
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networks,” Id. Notably, the Court did not find the claims to be patent-
eligible merely because they provide a specific solution to a specific
problem; the Court specifically held that the claims address a problem
unique to computer technology.
Even if we agree Appellants that the claimed invention provides a
specific solution to a specific problem in real-time process control
environments, we see no corollary between real-time process control
environments and computer technology. For instance, independent claim 1
does not describe the process, and Appellants’ Specification explains that the
invention addresses a problem associated with supply chains (Spec. ^ 3).
Consequently, Appellants’ reliance on DDR Holdings does not apprise us of
error in the Examiner’s finding that independent claim 1 is directed to a
mathematical relationship or formula.
Appellants further contend there is insufficient support for the
Examiner’s finding that independent claim 1 is directed to an abstract idea.
Appeal Br. 19-20; Reply Br. 7-8. We disagree.
Our reviewing court has explained that when determining whether a
claim is directed to an abstract idea, “the decisional mechanism courts now
apply is to examine earlier cases in which a similar or parallel descriptive
nature can be seen—what prior cases were about, and which way they were
decided.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016). Indeed, courts have held mathematical relationships
or formulas to be abstract ideas. See, e.g., DDR Holdings, 773 F.3d at 1256
(“We know that mathematical algorithms, including those executed on a
generic computer, are abstract ideas.”); see also Parker v. Flook, 98
S. Ct. 2522 (1978) (explaining that mathematical formulas are not
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parent-eligible and holding that a conventional post-solution application
does not transform a claim reciting a mathematical formula into eligible
subject matter). As such, Appellants’ argument does not apprise us of error
in the Examiner’s finding that independent claim 1 is directed to an abstract
idea under the fi rst step of the patent-eligibility analysis.
Appellants additionally argue that the Examiner’s rejection is
insufficient under the second step of the analysis because the Examiner does
not identify which claim limitations are the additional elements, nor explain
why these additional elements do not amount to significantly more than the
abstract idea. Appeal Br. 22-23; Reply Br. 9. Appellants’ argument is not
persuasive.
As set forth the Answer, the Examiner finds that, apart from the
abstract idea of a mathematical relationship or formula, independent claim 1
recites the additional element of “causing the process control environment to
stop performing a previously-initiated remediation effort on the process
entity, responsive to determining that the process entity is recovered from
the defect, wherein the remediation effort was previously initiated
responsive to determining that the process entity exhibited the defect,”
which is a post-solution activity that does not add any meaningful limit on
the use of the equation. Ans. 16. We agree with the Examiner. Causing the
process control environment to stop performing a previously-initiated
remediation effort is simply an instruction to apply the mathematical
relationship to the process control environment. In other words, the claimed
invention uses a mathematical relationship to determine whether a process
entity has recovered from a defect, i.e., been remediated, and then based on
this determination, stops remediation. Such a step is tantamount to adding
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the words “apply it” to the mathematical relationship, which insufficient to
confer patent-eligibility. Alice, 134 S. Ct. at 2358 (“Stating an abstract idea
while adding the words ‘apply if is not enough for patent eligibility.”
(quoting Mayo, 132 S. Ct. at 1294 (internal quotation marks omitted))).
Appellants further argue that independent claim 1 specifies how to
carry out interactions that differ from a routine and conventional approach to
detecting recovery from a defect. Appeal Br. 23-25; Reply Br. 9.
According to Appellants, the claimed steps of determining a point in time
(T - M) defining a backward extending window having a depth M and
iteratively performing a sequential time-reversed estimation for each of
(m = 1 to M) successively longer intervals represents an unconventional
approach to detecting recovery from a defect. Appeal Br. 24-25; Reply
Br. 9. Appellants’ argument is not persuasive of error.
Notwithstanding that “'the § 101 patent-eligibility inquiry and, say,
the § 102 novelty inquiry might sometimes overlap’ ... a claim for a new
abstract idea is still an abstract idea,” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F,3d 1138, 1151 (Fed, Cir, 2016) (quoting Mayo, 132 S, Ct. at
1304). The question in the second step of the patent-eligibility analysis is
not whether a claimed element; is novel, but rather whether the
implementation of the abstract idea involves “more than performance of
'well-understood, routine, [and] conventional activities previously known to
the industry.’” Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (quoting Alice, 134
S. Ct. at 2359). Here, Appellants rely on the alleged novelty of the
mathematical relationship or formula, but do not address the implementation
of it. For example, Appellants do not explain, and we fail to see, how the
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claimed step of causing the process control environment to stop a
previously-initiated remediation effort is something other a well-understood,
routine, and conventional activity.
Appellants further contend that independent claim 1 amounts to
significantly more than the abstract idea because the claimed invention
provides an improvement to process control environments by stopping
remediation efforts in a quicker more cost-effective way. Appeal Br. 24, 25.
As such, Appellants assert independent claim 1 is similar to the claims in
Example 4 in the Office’s guidance (Examples: Abstract Ideas (Jan. 27,
2015), https://www.uspto.gov/sites/default/files/documents/abstract_idea_
examples.pdf). Appeal Br. 32-33. Appellants’ arguments are not
persuasive.
At the outset, we note that alleged benefit is effectuated by the
post-solution activity of causing the process control environment to stop
performing the remediation effort. As the Supreme Court has explained:
The notion that post-solution activity, no matter how
conventional or obvious in itself, can transform an unpatentable
principle into a patentable process exalts form over substance. A
competent draftsman could attach some form of post-solution
activity to almost any mathematical formula; the Pythagorean
theorem would not have been patentable, or partially patentable,
because a patent application contained a final step indicating that
the formula, when solved, could be usefully applied to existing
surveying techniques. The concept of patentable subject matter
under § 101 is not “like a nose of wax which may be turned and
twisted in any direction
Flook, 98 S. Ct. at 2525-26.
Moreover, regardless of whether the improvement is merely the result
of a post-solution activity, we fail to see how the improvement to process
control environments represents a patent-eligible application of the
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mathematical relationship or formula. In Alice, the Supreme Court held that
an improvement to an existing technological process may constitute
significantly more under the second step of the patent-eligibility analysis.
134 S, €t, at 235S. There is no indication, however, that the recited process
control environment is technical. As set forth above, independent claim 1
does not describe the process, and the Specification explains that the
invention addresses a problem associated with supply chains (Spec. ^ 3).
Accordingly, Appellants do not apprise us of error in the Examiner’s finding
that independent claim 1 does not recite additional elements amounting to
significantly more than the abstract idea of a mathematical relationship or
formula.
Additionally, Appellants argue that independent claim 1 is
patent-eligible because it is inextricably tied to computer technology, like
the claims in Example 1 in the Office’s guidance and the claims in
California Institute of Technology v. Hughes Communications, Inc.,
59 F.Supp.3d 974 (C.D. Cal. 2014). Appeal Br. 29-31; Reply Br. 10-12.
Appellants similarly argue that independent claim 1 recites a specific way of
doing something with a computer where the computer plays a significant
part, like the claims in Data Distribution Technologies, LLC v. BRER
Affiliates, Inc., 2014 WL 4162765 (D. N.J. 2014). Appeal Br. 31.
Appellants’ arguments are not persuasive.
Although independent claim 1 is directed to a computer-implemented
method of analyzing trends in a process control environment, process control
is not an issue unique to computers. Also, there is no indication that the
implementation of the recited steps involves something other than generic
computer components performing well-known, routine, and conventional
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computer functions, such as receiving and processing data. To the contrary,
Appellants’ Specification describes that “[tjhese computer program
instructions may be provided to a processor of a general purpose computer,
special purpose computer, or other programmable data processing apparatus
to produce a machine, such that the instructions . . . create means for
implementing the functions/acts.” Spec. ^ 94.
Furthermore, the recitation of a complex time-sensitive operation does
not transform independent claim 1 into a patent-eligible application of the
abstract idea. According to our reviewing court, “the inability for the human
mind to perform each claim step does not alone confer patentability. As we
have explained, The fact that the required calculations could be performed
more efficiently via a computer does not materially alter the patent eligibi
of the claimed subject matter.”’ Fair Warning IP, LLCv. lairic Sys,, Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016) (citingBancorp Servs., L.L.C. v. Sun
Life Assurance Co. of Canada {U.S.J, 687 F,3d 1266, 1278 (Fed. Cir. 2012)).
Consequently, the claimed invention is not inextricably tied to
computer technology, nor does the claimed invention involve a computer is
a significant way. Rather, the claimed invention represents the performance
of an abstract idea on a generic computer, which is not patent-eligible. See,
e.g., DDR Holdings, 773 F.3d at 1256 (“[Tjhese claims [of prior cases] in
substance were directed to nothing more than the performance of an abstract
business practice on the Internet or using a conventional computer. Such
claims are not patent-eligible.”).
Appellants further assert that independent claim 1 is patent-eligible
because, similar to the claims in DDR Holdings, the claimed invention
addresses a business challenge that is particular to the process control
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environment and is necessarily rooted in computer technology.
Appeal Br. 29-30. Appellants’ argument is not persuasive for the reasons
we previously discussed. Namely, we see no corollary between the present
process control environment and computer technology. Also, the claimed
invention is not necessarily rooted in computer technology, but rather
represents the performance of an abstract idea on a generic computer.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s determination that independent claim 1 is patent-ineligible
subject matter. Appellants do not present separate arguments for dependent
claims 4-8, and 10. Appeal Br. 34. Accordingly, we sustain the rejection of
claims 1, 4-8, and 10 under 35 U.S.C. § 101.
DECISION
The Examiner’s decision to reject claims 1, 4-8, and 10 is 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). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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