Ex Parte Escarcega et al

Patent Trial and Appeal Board

Aug 21, 2018

13223546 (P.T.A.B. Aug. 21, 2018)

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).
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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
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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)).
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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.
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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
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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
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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
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,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
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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
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