Ex Parte Colosky

Board of Patent Appeals and Interferences

Aug 17, 2006

10232015 (B.P.A.I. Aug. 17, 2006)

The opinion in support of the decision being entered today
was not written for publication and is not binding precedent of
the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte MARK P. COLOSKY
_____________

Appeal No. 2006-2240
Application No. 10/232,015
Technology Center 3600
______________

ON BRIEF
_______________

Before OWENS, NAPPI and FETTING Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134(a) of the final rejection of claims 1
through 3, 5 through 19 and 21 through 36 claims 4 and 20 have been identified by the examiner
as containing allowable subject matter. For the reasons stated infra we affirm in part the
examiner’s rejection of these claims.
Invention

The invention relates to a system for generating a fault tolerant torque sensor signal. See
page 1 of appellant’s specification. Claims 1 and 36 are representative of the invention and
reproduced below:
1. A method of generating a fault tolerant sensor signal for a motor control
system in a vehicle steering system comprising:

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receiving at least three sensor signals indicative of a sensed parameter;
generating a plurality of parameter pair signals responsive to at least one sensor
signal of said at least three sensor signals;
selecting one parameter pair signal of said plurality of parameter pair signals; and
generating a measured parameter signal responsive to said selecting.

36. A computer data signal embodied in a carrier wave for generating a fault
tolerant sensor signal for a motor control system in a vehicle steering system, said data
signal comprising code configured to cause a controller to implement a method
comprising:
receiving at least three sensor signals indicative of a sensed parameter;
generating a plurality of parameter pair signals responsive to at least one sensor
signal of said at least three sensor signals;
selecting one parameter pair signal of said plurality of parameter pair signals; and
generating a measured parameter signal responsive to said selecting.
.

References

The references relied upon by the examiner are:

Larkin 6,073,262 Jun. 6, 2000

Ng 5,763,793 Jun. 9, 1998

Rejection at Issue
Claims 1 through 3, 5 through 19 and 21 through 36 stand rejected under 35 U.S.C. § 103
(a) as being unpatentable over Larkin in view of Ng, the examiner’s rejection is set forth on
pages 2 and 3 of the final Office action dated April 5, 2004. Throughout the opinion we make
reference to the briefs (dated September 15, 2005 and April 3, 2006), the answer and the final
Office action for the respective details thereof.

Opinion

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We have carefully considered the subject matter on appeal, the rejection advanced by the
examiner and the evidence of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into consideration, in reaching our decision,
appellant’s arguments set forth in the briefs along with the examiner’s rationale in support of the
rejection and arguments in rebuttal set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the examiner’s
rejection and the arguments of appellant and the examiner, and for the reasons stated infra we
will sustain the examiner’s rejection of claims 1 through 3, 5 through 7, 11 through 19, 21, 22,
23 and 27 through 36 under 35 U.S.C. § 103. However, we will not sustain the examiner’s
rejection of claims 8 through 10, and 24 through 26 under 35 U.S.C. § 103. We also enter a new
grounds of rejection under 37 CFR § 41.50(b) against claim 36 as not being directed statutory
subject matter as defined by 35 U.S.C. § 101.

Rejection of claims 1 through 3, 5 through 7, 11 through 19, 21, 22, 23 and 28
through 36.
Appellant argues, on page 5 of the brief, that Larkin does not teach the claimed steps of
“selecting one parameter pair signal of said plurality of parameter pair signals” and “generating a
measured parameter signal responsive to said selecting.” Appellant presents similar arguments
on pages 4 and 5 of the reply brief. Appellant argues that Larkin generates an “Estimate” signal
based upon the summation of the product of each input signal and an proportionality constant.
Appellant asserts that Ng does not teach these limitations. Further, on page 6 of the brief and
pages 5 and 6 of the reply brief, appellant argues that Larkin and Ng could not be combined as
asserted by the examiner as Larkin would be dramatically altered or destroyed if the references
were combined.

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We are not persuaded by appellant’s arguments. Initially we note that claim 1 states
“a method … comprising:” and as such the language of the claim is open ended and does not
preclude additional steps. Thus, we do not find that the scope of the limitation “selecting one
parameter pair signal of said plurality of parameter pair signals” as limited to selecting only one
parameter pair. Rather, we consider the scope of the limitation includes a step where one
parameter pair is selected, however, we do not find a limitation that precludes further selection
of parameter pairs. Similarly, we do not find that the scope of the limitation “generating a
measured parameter signal responsive to said selecting” to be limited to generating a measured
parameter signal to only the one selected parameter pair. Rather, we consider the scope of the
limitation is that the generated measured parameter signal is responsive the selecting step and
does not preclude the generation of measured parameters from also being responsive to other
steps.
Turning to Larkin, we find that Larkin teaches a monitoring system which makes use of
redundant signals representative of a parameter being monitored, thus providing an accurate
estimate of the parameter if one of the sensors is faulty. See column 2, line 66 through column
3, line 4. The system monitors the output of the sensors and generates several difference signals,
the magnitude of which represents the difference between the sensor signals. See column 7,
lines 1 through 18, see also step 74 in Figure 7. The difference signals are then fuzzified to
assign degrees of membership to each of the values. See column 8, lines 41 through 55, also step
76 in Figure 7. We consider the steps of fuzzifying to require selection of an input and
determining the input value’s (a crisp value) degree of membership with each of a series of
rules.1 These fuzzy values and the difference values are used in a de-fuzzification process in
which sums of the product of the values and their degree of membership are used to determine
the estimate of the parameter being monitored by the sensors. Thus, the system provides

1 E.g. for the crisp input of 10, the degree of membership of small is 1.0, the degree of
membership for medium is 0, and the degree of membership for large is 0, or stated differently,
10 is a fully in the fuzzy group small and not in the fuzzy groups for medium or large.

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redundant sensing. See Figure 8 step 86. We also note that the rule methodology to generate an
estimate is ignored if the sensor outputs agree, i.e. the difference signal Diff 12 is small. See
column 9, lines 53 through 60.
We consider the Larkin’s teaching of generating difference variables and fuzzifying them
to disclose the claimed steps of “generating a plurality of parameter pair signals responsive to at
least one sensor signal of said at least three sensor signals; selecting one parameter pair signal of
said plurality of parameter pair signals.” Further, we consider the de-fuzzification process which
produces an estimate of the monitored parameter to meet the claimed step of “generating a
measured parameter signal responsive to said selecting.” Further, we note that Larkin’s teaching
that if the value Diff 12 is small, the remainder of the model, which uses the other difference
signals, can be ignored teaches that the method generates the measured parameter signal based
upon the selection of only one signal.
With regard to the appellant’s arguments that the examiner has not established proper
motivation to combine the references, we are not convinced by applicant’s reasoning. The
examiner states on page 6 of the answer :
Larkin et a1 deals with estimating an actual magnitude of a physical
parameter (e.g., a sensor) in order to isolate fault from the sensor signals in order
to better estimate the actual magnitude of the sensor. Ng et a1 discloses correcting error
of torque sensor, where a pair signals (voltage) is used to correct the torque signal. See
column 3.

Larkin’s system is used with an engine control system and the signals can be of any type
monitored on the engine. Ng teaches a torque sensor, which makes use of two contact tracks.
Ng teaches that by subtractively averaging the output voltages of the two contact tracts the
sensor corrects errors from misalignment. See Ng abstract. Appellant’s argument focuses on Ng
using
two sensors (contact tracts), which produce different polarity signals, and asserting that they are

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not compatible with Larkin’s device. We are not however persuaded by this argument. Ng
teaches a torque sensor where the output is compensated for misalignments. We consider that
one skilled in the art would recognize that the output of Ng’s sensor, not the individual contact
tracts, would be input into Larkin’s system. Whether the contact tracts generate signals of
opposite polarity is of no matter, it is the output of the sensor, which is input into Larkin. The
combination is using multiple of Ng’s torque sensors (i.e. redundant sensors) to provide signals
to Larkin’s monitoring system. Thus, we do not find that the combination destroys the purpose
of the references as asserted by appellant. Accordingly, we are not persuaded of an error in the
examiner’s determination of obviousness and sustain the examiner’s rejection of claim 1.
As appellant has not presented arguments asserting that claims 2, 3, 5 through 7, 11
through 19, 21, 22, 23 and 28 through 36 are separately patentable from claim 1, we sustain the
examiner’s rejection of claims 2, 3, 5 through 7, 11 through 19, 21, 22, 23 and 28 through 36 for
the reasons stated with respect to claim 1.

Rejection of claims 8 through 10, and 24 through 27 under 35 U.S.C. § 103.
Appellant argues, on page 7 of the brief: “neither Larkin or Ng teach or suggest the
limitations of ‘said selecting is responsive to a signal selection and hysteresis process.’”
The examiner responds, on page 7 of the answer: “Larkin et al discloses a process (e.g.
fuzzy logic or weighted function) for selecting a pair of parameter signals from a plurality of
parameter pair signals. The selection process is based on some prescribed rules or conditions.
See columns 3, 5 and 7.”
We disagree with the examiner. Dependent claim 8 recites, “wherein said selecting is
responsive to signal selection and hysteresis process.” Claim 24 contains a similar limitation.
Claims 9 and 25 are dependent upon claims 8 and 24 respectively. Claims 10 and 26, each

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recite a signal selection and hysteresis process.2 We disagree with the examiner’s determination
that Larkin teaches that selection is responsive to a hysteresis process as claimed. While both
appellant’s system and Larkin teach weighted averages in the selecting process, Larkin does not
teach selecting based upon a hysteresis process, i.e. the relationship of the measured ranges to
the resolution of the sensors as described in appellant’s specification on page 14. The examiner
has not asserted, nor do we find that Ng teaches such a selection process. Accordingly, we will
not sustain the examiner’s rejection of claims 8 through 10 and 24 through 26.
Claim 27 is dependent upon claim 17 and does not recite “said selecting is responsive to
a signal selection and hysteresis process” as implied by appellant’s argument grouping claim 27
with claim 8. Accordingly, we do not group claim 27 with claim 8, but rather group claim 27
with claim 1 and sustain the examiner’s rejection of claim 27 for the reasons stated supra with
respect to claim 1.

New Ground of Rejection of claim 36 under 35 U.S.C. § 101 Pursuant to 41.50(b).
First, we must interpret the claims. Claim 36 is directed to a "signal" embodied in a
carrier wave, the signal includes code to implement a method. A man-made signal represents
coded information. A signal can be an abstract quantity describing the information or a physical
quantity (e.g., the fluctuations of an electrical quantity, such as voltage), which can be measured.
See In re Walter, 618 F.2d 758, 770, 205 USPQ 397, 409 (CCPA 1980). The signal of claim 36
is not recited as having any specific physical form, i.e., it is not expressly or impliedly an
electrical or electromagnetic signal or a signal transmitted or stored in a physical medium.
Claim 36 merely recites the abstract properties of the signal. In any case, it is not clear that a
physical signal per se is patentable.

2 We note that the term “said signal selection and hysteresis process” in claims 10 and 26 lacks
antecedent basis.

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We conclude that the signal of claim 36 is nonstatutory subject matter because (1) it is an
abstract idea, and (2) it does not fall within one of the four statutory categories of subject matter
under 35 U.S.C. § 101.
(1) Abstract idea.
One of the three judicially recognized exceptions is an "abstract idea." Diamond v.
Diehr, 450 U.S. 175, 185, 209 USPQ 1, 7 (1981). The signal of claims 36 has no physical
attributes other than being embodied in a carrier wave. The limitations concerning the code
within the signal are interpreted as reciting the type of information contained in the signal, and
not any particular physical properties, such as an electrical signal. Accordingly, the signal of
claims 36 is nonstatutory subject matter as an "abstract idea."
(2) Not within a § 101 category.
The categories of statutory subject matter are "process, machine, manufacture, or
composition of matter." 35 U.S.C. § 101. "[N]o patent is available for a discovery, however
useful, novel, and nonobvious, unless it falls within one of the express categories of patentable
subject matter of 35 U.S.C. § 101." Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483,
181 USPQ 673, 679 (1974).
A "process" is a series of acts and, since claim 36 recites a signal, which contains code to
cause a series of acts and does not actually recite performance of the acts, it is not a process.
The three product classes of machine, manufacture, and composition of matter have
traditionally required physical structure or substance. "The term machine includes every
mechanical device or combination of mechanical powers and devices to perform some function
and produce a certain effect or result." Corning v. Burden, 56 U.S. 252, 267 (1854); see also
Burr v. Duryee, 68 U.S. 531, 570 (1863) (a machine is a concrete thing, consisting of parts or of
certain devices and combinations of devices). In modern parlance, electrical circuits and
devices, such as computers, are referred to as machines. The signal of claim 36 has no concrete
tangible physical structure, and does not itself perform any functions that produce useful,

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concrete and tangible results. Therefore, a signal does not fit within the definition of a
"machine."
A "manufacture" and a "composition of matter" are defined in Diamond v. Chakrabarty,
447 U.S. 303, 308, 206 USPQ 193, 196-97 (1980):
[T]his Court has read the term "manufacture" in accordance with its dictionary definition
to mean "the production of articles for use from raw or prepared materials by giving to
these materials new forms, qualities, properties, or combinations, whether by hand-labor
or by machinery." American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931).
Similarly, "composition of matter" has been construed consistent with common usage to
include "all compositions of two or more substances and ... all composite articles,
whether they be results of chemical union, or of mechanical mixture, or whether they be
gases, fluids, powders or solids." Shell Development Co. v. Watson, 149 F. Supp. 279,
280 (D.C. 1957) (citing 1 A. Deller, Walker on Patents § 14, p. 55 (1st ed. 1937).
[Parallel citations omitted.]

The signal is not composed of matter and is clearly not a "composition of matter."
A "manufacture" is the residual category for products. 1 Chisum, Patents § 1.02[3]
(2004) (citing W. Robinson, The Law of Patents for Useful Inventions 270 (1890)). If a signal
falls within any category of § 101, it must fall within this category. The definition of
"manufacture" from Diamond v. Chakrabarty requires a tangible article prepared from materials.
The other cases dealing with manufactures also require a tangible physical article. The CCPA
held in In re Hruby, 373 F.2d 997, 153 USPQ 61 (CCPA 1967) that there was no distinction
between the meaning of "manufacture" in § 101 and "article of manufacture" in § 171 for
designs. The issue in Hruby was whether that portion of a water fountain which is composed
entirely of water in motion was an article of manufacture. The CCPA relied on the analysis of
the term "manufacture" in Riter-Conley Mfg. Co. v. Aiken, 203 F. 699 (3d Cir.), cert. denied,
229 U.S. 617 (1913), a case involving a utility patent. The CCPA stated in Hruby:
The gist of it is, as one can determine from dictionaries, that a manufacture
is anything made "by the hands of man" from raw materials, whether literally by
hand or by machinery or by art.

373 F.2d at 1000, 153 USPQ at 65. The CCPA held that the fountain was made of the only
substance fountains can be made of--water--and determined that designs for water fountains

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were statutory. Articles of manufacture in designs manifestly require physical matter to provide
substance for embodiment of the design. Since an "article of manufacture" under § 171 has the
same meaning as a "manufacture" under § 101, it is inevitable that a manufacture under § 101
requires physical matter.
Some further indirect evidence that Congress intended to limit patentable subject matter
to physical things and steps is found in 35 U.S.C. § 112, sixth paragraph, which states that an
element in a claim for a combination may be expressed as a "means or step" for performing a
function and will be construed to cover the corresponding "structure, material, or acts described
in the specification and equivalents thereof." "Structure" and "material" indicate tangible things
made of matter, not energy.
The signal of claim 36 does not have any physical structure or substance and does not
fit the definition of a "manufacture" which requires a tangible object. It is further worth
noting that we construe claim 36 to be claiming the signal as it is propagating, and not the
embodiment wherein the signal is stored on a medium, we consider claim 35 to be drawn to
this embodiment. As such the signal of claim 36 is also not a manufacture as it does not exist
as a whole at one time but is rather claiming a stream of information. The signal of claim 36
is considered an "abstract idea," as discussed supra. This analysis is consistent with the
Interim Guidelines for Examination of Patent Applications for Patent Subject Matter
Eligibility, 1300 Off. Gaz. Patent and Trademark Off. (O.G.) 142, 152 (Nov. 22, 2005), in the
section entitled "Electro-Magnetic Signals." Rather than invent reasons why this different
type of subject matter may be statutory and open up a whole new type of subject matter for
patenting, we leave it to our reviewing court, the U.S. Court of Appeals for the Federal
Circuit to make this decision. In summary, the signal of claim 36 is unpatentable subject
matter because it does not fall within any category of § 101.

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Conclusion
In summary, sustain the examiner’s rejection of claims 1 through 3, 5 through 7,
11 through 19, 21, 22, 23 and 27 through 36 under 35 U.S.C. § 103. However, we will
not sustain the examiner’s rejection of claims 8 through 10, and 24 through 26 under
35 U.S.C. § 103. We also enter a new grounds of rejection against claim 36 under
35 U.S.C. § 101. The decision of the examiner is affirmed in part. This decision contains
a new ground of rejection pursuant to 37 CFR § 41.50(b) (effective September 13, 2004,
69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7,
2004)). 37 CFR § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims
so rejected or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

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Appeal No. 2006-2240
Application No. 10/232,015

No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a) (1) (iv).
AFFIRMED-IN-PART; 37 CFR § 41.50(b)

TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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Appeal No. 2006-2240
Application No. 10/232,015

KEITH J. MURPHY
CANTOR COLBURN LLP
55 Griffin Road South
Bloomfield, CT06002

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