Ex Parte Escarcega et alDownload PDFPatent Trial and Appeal BoardAug 21, 201813223546 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/223,546 09/01/2011 92720 7590 HONEYWELL/MUN CK Patent Services 115 Tabor Road P.O. Box 377 MORRIS PLAINS, NJ 07950 08/23/2018 FIRST NAMED INVENTOR John A. Escarcega 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. H0031939-0104 7606 EXAMINER KARIM, ZIAUL ART UNIT PAPER NUMBER 2127 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): patentservices-us@honeywell.com patents@munckwilson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN A. ESCARCEGA, CHARLES Q. ZHEN, and JOSEPH Z. LU Appeal2017-001209 Application 13/223,546 1 Technology Center 2100 Before JEAN R. HOMERE, JOHN A. EV ANS, and JASON J. CHUNG, Administrative Patent Judges. CHUNG, 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 1-20. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. INVENTION The invention is directed to "an apparatus and method for predicting windup and improving process control in an industrial process control system." Spec. ,r 1. Claim 1 is illustrative of the invention and is reproduced below: 1 According to Appellant, Honeywell International Inc. is the real party in interest. App. Br. 2. Appeal2017-001209 Application 13/223,546 1. A method comprising: receiving at an upstream controller an output (OP) value used to implement a manipulated variable, the manipulated variable associated with an industrial process, the OP value comprising an output of a downstream controller; identifying, by the upstream controller, one of multiple regions in a range where the OP value is located; calculating, by the upstream controller, an achievable manipulated variable (MV) limit for the manipulated variable based on the region in which the OP value is located; calculating, by the upstream controller, a setpoint for the manipulated variable based on the region in which the OP value is located; and sending the setpoint to the downstream controller. App. Br. 31 (Claims Appendix). REJECTIONS AT ISSUE Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception to patentable subject matter. Final Act. 3-5. Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Pistikopoulos et al. (US 2005/0107895 Al; published May 19, 2005) (hereinafter "Pistikopoulos") and Boyden et al. (US 7,860,586 B2; issued Dec. 28, 2010) (hereinafter "Boyden"). Final Act. 5-19. We have only considered those arguments that Appellants actually raised in the Briefs. Arguments Appellants could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv). 2 Appeal2017-001209 Application 13/223,546 ANALYSIS Claims 1-20 rejected under 35 U.S.C. § 101 The Examiner concludes claims 1-20 recite a judicial exception to patentable subject matter because they are analogous to Parker v. Flook, 437 U.S. 584 (2009). Final Act. 3. In particular, the Examiner concludes the present claims recite software processing that includes gathering of data and processing of the data. Id. at 4. And the Examiner concludes the present claims do not amount to significantly more than an abstract idea because they recite a generic processor. Id. at 4--5. Appellants argue claims 1-20 are not directed to an abstract idea because they contain elements that one would not perform ordinarily. App. Br. 11-12; Reply 4--5. Appellants also argue the present claims relate to software processing, but recites specific processes that use specific data in a manner never done before to use a manipulated variable associated with an industrial process to adjust a valve. App. Br. 12; Reply 4--5. Further, Appellants argue the present claims amount to significantly more than an abstract idea because the claims recite steps that are not directed towards something that has not existed for a long period of time that is fundamental. App. Br. 13-14; Reply 6-7. Appellants argue the claims do not preempt all forms of software processing. Reply Br. 7. We disagree with Appellants. Following the decision in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (2012)), we analyze claims where the abstract idea judicial exception to the categories of statutory subject matter is at issue using the following two-part analysis set forth in Mayo: 1) determine whether the claim is directed to an abstract idea (Alice 3 Appeal2017-001209 Application 13/223,546 Step 2A); and 2) if an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself (Alice Step 2B). See Alice, 134 S. Ct. at 2350. As to the first part of the analysis, examples of abstract ideas referenced in Alice include: fundamental economic practices; 2 certain methods of organizing human activities; 3 "an idea of itself'; 4 and, mathematical relationships or formulas. 5 Claims that include abstract ideas like these are examined under the second part of the analysis to determine whether the abstract idea has been applied in an eligible manner. As to the second part of the analysis, we consider the claim as a whole by considering all claim elements, both individually and in combination. Id. at 2355. Limitations referenced in Alice that may be enough to qualify as "significantly more" when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples: improvements to another technology or technical field; 6 improvements to the functioning of the 2 Alice Corp., at 2350: e.g., intermediated settlement, i.e., the use of a third party intermediary to mitigate settlement risk. 3 Id. at 2356: e.g., a series of steps instructing how to hedge risk (citing Bilski v. Kappas, 561 U.S. 593, 599 (2010)). 4 Id. at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175 (1853)). 5 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95 (1978)), or a formula for converting binary-coded decimal numerals into pure binary form (Benson, 409 U.S. at 71-72). 6 Id. at 2358: e.g., a mathematical formula applied in a specific rubber molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)). 4 Appeal2017-001209 Application 13/223,546 computer itself; 7 and meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. 8 Limitations referenced in Alice that are not enough to qualify as "significantly more" when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples: adding the words "apply it" ( or an equivalent) with an abstract idea; 9 mere instructions to implement an abstract idea on a computer; 10 or requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. 11 If there are no meaningful limitations in the claim that transform the abstract idea into a patent eligible application such that the claim amounts to significantly more than the abstract idea itself, the claim is directed to patent-ineligible subject matter under 35 U.S.C. § 101. Alice Step 2A On this record, we are not persuaded of error regarding the Examiner's analysis and conclusion that claims 1-20 are directed to an abstract idea. Final Act. 3-5. The present case is similar to Flook. In Flook, the Supreme Court concluded that claims directed to a formula for 7 Id. at 2359. 8 Id. at 2360: noting that none of the hardware recited "offers a meaningful limitation beyond generally linking 'the use of the [ method] to a particular technological environment,' that is, implementation via computers" ( citing Bilski, 561 U.S. at 610-11). 9 Id. at 2357-58. 10 Id.: e.g., simply implementing a mathematical principle on a physical machine, namely a computer (citing Mayo, 132 S. Ct. at 1301). 11 Id. at 2359: e.g., using a computer to obtain data, adjust account balances, and issue automated instructions. 5 Appeal2017-001209 Application 13/223,546 computing an alarm limit are an abstract idea. Parker v. Flook, 437 U.S. at 594--596. With regard to Appellants' argument that the present claims are patent eligible because they recite elements that one would not perform ordinarily (see App. Br. 11-12), Appellants improperly conflate the requirements for eligible subject matter(§ 101) with the independent requirements of novelty (§ 102) and non-obviousness(§ 103). "The 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (stating that, "under the Mayo/Alice framework, a claim directed to a newly discovered law of nature ( or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility"). Because claims 1-20 are directed to an abstract idea, we proceed to step 2B of the Alice, two-part test. Alice Step 2B On this record, we see no error in the Examiner's analysis and conclusion that claims 1-20 recite a generic processor that does not transform the claims into patent-eligible subject matter. Final Act. 4--5. That is, we conclude claims 1-20 require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Alice at 2359. Regarding Appellants' argument that the present claims amount to significantly more than an abstract idea because the claims recite steps that 6 Appeal2017-001209 Application 13/223,546 are not directed towards something that has not existed for a long period of time that is fundamental (see App. Br. 13-14), Appellants improperly conflate the requirements for eligible subject matter(§ 101) with the independent requirements of novelty(§ 102) and non-obviousness (§ 103). "The 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. at 188-89; see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d at 1376 (stating that, "under the Mayo/Alice framework, a claim directed to a newly discovered law of nature ( or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility"). As for Appellants' argument that the claims do not preempt all forms of software processing (see Reply Br. 7), this argument was not proffered in the Appeal Brief and is, therefore, untimely and waived. See 37 C.F.R. § 41.41 (b )(2 ). Nonetheless, while preemption may denote patent ineligibility, its absence does not demonstrate patent eligibility. See FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-ineligible concept, preemption concerns "are fully addressed and made moot" by an analysis under the Mayo/Alice framework. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Appellants do not separately argue dependent claims 2-20 with particularity, but assert the rejections of those claims should be withdrawn for at least the same reasons as argued in independent claim 1. App. Br. 14. Accordingly, for the reasons stated supra, we sustain the Examiner's 7 Appeal2017-001209 Application 13/223,546 rejection of: (1) independent claim 1; and (2) claims 2-20 under 35 U.S.C. § 101. Claims 1-20 rejected under 35 U.S.C. § 103 The Examiner finds Pistikopoulos teaches multiple regions in a range where the OP value is located. Final Act. 6 ( citing Pistikopoulos, Figs. 3 and 18); Ans. 3 ( citing Pistikopoulos, Figs. 3 and 18). In addition, the Examiner finds Pistikopoulos teaches "calculating, by the upstream controller, an achievable manipulated variable (MV) limit for the manipulated variable based on the region in which the OP value is located" recited in claim 1 (and similarly recited in claims 9 and 16). Final Act. 6 ( citing Pistikopoulos ,r,r 213, 234 ); Ans. 3 ( citing Pistikopoulos ,r,r 213, 234 ). Appellants argue Pistikopoulos fails to teach "calculating, by the upstream controller, an achievable manipulated variable (MV) limit for the manipulated variable based on the region in which the OP value is located" as recited in claim 1 ( and similarly recited in claims 9 and 16) because Pistokopoulos' critical regions illustrated in Figures 3 and 18 are unrelated to Pistikopoulos' paragraphs 213 and 234, which teaches a feasibility and stability criteria developed by Chmielewski et al. (hereinafter "Chmielewski"). App. Br. 16-18; Reply Br. 8-9. Further, Appellants argue the Examiner must show that the matrix P, final cost, continuous L yapunov equation, or finite control horizon of Pistikopoulos both: ( 1) represents an achievable MV limit; and (2) is determined based on the region in Figure 3 or Figure 18 where an OP value lies. App. Br. 18. We agree with Appellants. The cited portions of Pistikopoulos teach feasibility and stability criteria developed by Chmielewski. Final Act. 6 ( citing Pistikopoulos 8 Appeal2017-001209 Application 13/223,546 ,r,r 213,234); Ans. 3 (citing Pistikopoulos ,r,r 213,234). The matrix P, final cost, continuous Lyapunov equation, or Chmielewski's finite control horizon of the feasibility and stability criteria is a different embodiment than Pistikopoulos' Figures 3 and 18 (i.e., what the Examiner's alleges teaches multiple regions where the OP value is located). Notably, the heading above paragraph 204 of Pistikopoulos, which pertains to paragraph 213 states "Specific Example." We, therefore, determine the Examiner did not proffer an adequate rationale or explanation as to why one having ordinary skill in the art at the time of the invention would understand Pistikopoulos' Figures 3 and 18 and tum to the "Specific Example" in paragraph 213 that is a different embodiment/example describing Chmielewski' s feasibility and stability criteria to teach the limitation "calculating, by the upstream controller, an achievable manipulated variable (MV) limit for the manipulated variable based on the region in which the OP value is located" ( emphasis added). Rather, the Examiner combines Pistikopoulos' Figures 3 and 18 with Chmielewski's feasibility and stability criteria in an improper conclusory fashion. Final Act. 6; Ans. 3. Significantly, when Appellants argued this point in the Appeal Brief (see App. Br. 16-18), the Examiner proffers a one sentence response reiterating what was stated in the Final Rejection without further rationale/motivation ( compare Final Act. 6 with Ans. 19). Moreover, we determine because the limitation in dispute recites "based on," there must be some nexus between Pistikopoulos' Figures 3 and 18 and Chmielewski' s feasibility and stability criteria to render the limitation anticipated or obvious. We determine the Examiner failed to meets its burden (and made no mention of any rationale/motivation) in 9 Appeal2017-001209 Application 13/223,546 showing how or why a person having ordinary skill in the art at the time of the invention would have combined combines Pistikopoulos' Figures 3 and 18 with Chmielewski' s feasibility and stability criteria. Accordingly, for the reasons stated supra, we sustain the Examiner's rejection of: (1) independent claims 1, 9, and 16; and (2) claims 2-8, 10-15, and 17-20 under 35 U.S.C. § 103. DECISION We affirm the Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 101. We reverse the Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 103(a). Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision to reject all of the pending claims. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation