Ex Parte Hunter et al

Patent Trials and Appeals Board

Jun 25, 2019

13278380 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/278,380 10/21/2011
16275 7590 06/27/2019
HolzerIPLaw, PC
dba Holzer Patel Drennan
216 16th Street
Suite 1350
Denver, CO 80202
FIRST NAMED INVENTOR
Lemna J. Hunter
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.
50574-00009 7488
EXAMINER
KUAN, JOHN CHUNY ANG
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
hiplaw@blackhillsip.com
docket@hpdlaw.com
rholzer@hpdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEMNA J. HUNTER, LEANNE JAURIQUI, and
GREG WEAVER
Appeal2018-007989
Application 13/278,380
Technology Center 2800
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 37 and 60-70 under 35 U.S.C. § 101 as
directed to patent ineligible subject matter. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We REVERSE. 2
1 Appellants identify Vibrant Corporation as the real party in interest
(Appeal Br. 1 ).
2 Our Decision refers to the Specification ("Spec.") filed October 21, 2011,
Appellants' Appeal Brief ("Appeal Br.") filed February 21, 2018, the
Examiner's Answer ("Ans.") dated June 1, 2018, and Appellants' Reply
Brief ("Reply Br.") filed July 31, 2018.
Appeal2018-007989
Application 13/278,380
STATEMENT OF THE CASE
The invention relates to "the field of resonance inspection of parts that
involves exciting a part at a number of different frequencies and obtaining
the frequency response of the part to the various excitations." Spec. 1: 10-
12. Appellants describe a variety of nondestructive testing methodologies
enabling defects to be identified without causing damage to a part, including
by acoustic radiation, which can identify the position, size, and shape of
defects both within the bulk and near the surface of the part. Id. at 1: 15-26.
Appellants disclose that a first manufacturing defect in a first in-service part
may become more evident as the part is put into service. Id. at 9:4--5.
Therefore, Appellants disclose, in one aspect of the invention, a method of
evaluating new production parts by resonance inspection, wherein a
resonance inspection is performed on a first in-service part and a first
manufacturing defect is identified in this part. Id. at 8: 15-19. Data from the
resonance inspection of this part corresponding to the first manufacturing
defect is selected and a new production part sort functionality is updated
based upon this selected data. Id. at 8:19-23. Appellants further disclose
that the sort functionality may be directed to providing the resonance
inspection tool or system with the ability to determine whether an in-service
part should be accepted or rejected after a resonance inspection has been
conducted. Id. at 7: 17-20. Thus, the new production part functionality of
the resonance inspection tool will reject a new production part that has the
first manufacturing defect. Id. at 9:1-3.
Sole independent claim 37, reproduced below from the Claims
Appendix to the Appeal Brief, is illustrative of the subject matter on appeal.
3 7. A method of evaluating new production parts, wherein a
resonance inspection comprises exciting a part at a plurality of
2
Appeal2018-007989
Application 13/278,380
input frequencies and obtaining a frequency response of the part
at said plurality of input frequencies, wherein said method
comprises the steps of:
performing said resonance inspection on a first new
production part using a new production part sort functionality
of a resonance inspection tool;
performing said resonance inspection on a first in-service
part after said resonance inspection has been performed on said
first new production part;
identifying a first manufacturing defect in said first in-
service part;
selecting resonance inspection data from said resonance
inspection on said first in-service part that corresponds with
said first manufacturing defect and that defines selected
resonance inspection data;
generating an updated new production part sort
functionality of said resonance inspection tool based upon said
selected resonance inspection data, wherein said updated new
production part sort functionality is adjusted based upon said
selected resonance inspection data from said resonance
inspection of said first in-service part and where said selected
resonance inspection data corresponds with said first
manufacturing defect; and
performing said resonance inspection on a second new
production part, wherein said resonance inspection of said
second new production part uses said updated new production
part sort functionality of said resonance inspection tool after
said generating step, wherein said first and second new
production parts are in a common part class, and wherein said
first in-service part is in a different part class from said
common part class of said first and second new production
parts.
OPINION
The Examiner maintains the rejection of claims 37 and 60-70 under
35 U.S.C. § 101 as being directed to patent ineligible subject matter.
3
Appeal2018-007989
Application 13/278,380
The Examiner determines that claim 3 7 is directed to an abstract idea
compnsmg:
identifying a first manufacturing defect in said first in-service
part; selecting resonance inspection data from said resonance
inspection on said first in-service part that corresponds with
said first manufacturing defect and that defines selected
resonance inspection data; generating an updated new
production part sort functionality of said resonance inspection
tool based upon said selected resonance inspection data,
wherein said updated new production part sort functionality is
adjusted based upon said selected resonance inspection data
from said resonance inspection of said first in-service part and
where said selected resonance inspection data corresponds with
said first manufacturing defect.
Final Act. 2 (underlining omitted). The Examiner determines that
these limitations are about organizing data through mathematical
correlations or algorithms. Id.
The Examiner finds that claim 3 7 recites the following
additional elements:
performing said resonance inspection on a first new production
part using a new production part sort functionality of a
resonance inspection tool; performing said resonance inspection
on a first in-service part after said resonance inspection has
been performed on said first new production part; performing
said resonance inspection on a second new production part,
wherein said resonance inspection of said second new
production part uses said updated new production part sort
functionality of said resonance inspection tool after said
generating step, wherein said first and second new production
parts are in a common part class, and wherein said first in-
service part is in a different part class from said common part
class of said first and second new production parts.
4
Appeal2018-007989
Application 13/278,380
Final Act. 3 (underlining omitted). The Examiner determines that these
additional elements are insufficient to amount to significantly more than the
judicial exception because the additional elements "are recited at a high level
of generality, well-understood, routine, or conventional to facilitate the
application of the abstract idea." Id. The Examiner considers that the steps
of performing the resonance inspection on a first new production part and a
first in-service part "are necessary for collecting data for the application of
the abstract idea." Id. In addition, the Examiner considers that the step of
performing the resonance inspection on a second new production part using
the updated new production part sort functionality is "a conventional or
well-understood post-solution after obtaining a result of the abstract idea."
Id. at 3--4. The Examiner concludes that, "[ w ]hen considered separately and
in combination, the additional elements do not add significantly more to the
exception." Id. at 4.
Appellants argue that the above analysis "demonstrates that the
claims, at most, involve an abstract idea, but fall short of being 'directed to'
an abstract idea." Appeal Br. 6. Appellants contend that the Examiner's
analysis fails to consider the claims as a whole in considering whether the
claims are directed to an abstract idea. Id. at 6-8. Appellants also argue that
the claims neither recite an abstract idea nor preempt an abstract idea. Id. at
8. Although "Appellant[ s do] not contend that the claim does not involve
mathematical correlations or algorithms or organizing data," Appellants
stress that the claims do not expressly recite organizing data nor specific
mathematical correlations or algorithms. Id. at 9. Appellants also assert that
the claims do not seek to tie up all organization of data through
5
Appeal2018-007989
Application 13/278,380
mathematical correlations or algorithms, but are narrowly focused on a
limited application of data organization and/or mathematical correlations for
nondestructive testing of parts using resonance inspection. Id. at 10.
Appellants further argue that the subject matter of claim 37 is directed
to an improvement in another technology or technical field and is, therefore,
not directed to an abstract idea. Appeal Br. 11. Appellants contend that the
claims provide an improvement to nondestructive part inspection, not merely
an improvement to an algorithm. Id. at 12. In particular, Appellants note
that the Specification illustrates a scenario in which a previous new
production part sort functionality would have passed a new production part
having a defect, but by performing a resonance inspection of an in-service
part with an identified defect, the new production part sort functionality may
be modified so as to identify the defect in subsequently tested new
production parts. Id. Appellants urge that this scenario is an improvement
to the new part testing using resonance inspection because it allows
identified manufacturing defects that occur in in-service parts to be
correlated to resonance data regarding the defects so as to improve
subsequent new part testing. Id. As such, Appellants argue that the claims
here are more like the patent eligible claims of Diehr than the patent
ineligible claims of Flook. Id. at 13-15, discussing Diamond v. Diehr, 450
U.S. 175 (1981) and Parker v. Flook, 437 U.S. 584, 594--95 (1978).
Thus, the issues before us on appeal are whether the claims are
directed to an abstract idea, and if so, whether the claims are directed to an
improvement to another technology or technical field. For the reasons given
in the Appeal and Reply Briefs, and below, we answer these questions in the
negative.
6
Appeal2018-007989
Application 13/278,380
Legal Framework
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "Laws of nature, natural phenomena, and abstract ideas"
are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216
(2014).
In determining whether a claim falls within an excluded category, our
inquiry focuses on the Supreme Court's two-step framework, described in
Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed to."
See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Flook, 437 U.S. at 594--95); and mental processes
(Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be
patent eligible include physical and chemical processes, such as "molding
rubber products" (Diehr, 450 U.S. at 191); "tanning, dyeing, making water-
proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n. 7 ( quoting
Corning v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour
7
Appeal2018-007989
Application 13/278,380
(Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785
(1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
8
Appeal2018-007989
Application 13/278,380
The Office recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"), 84 Fed. Reg. 50.
Under that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental
economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See generally Memorandum.
Analysis
Applying the guidance set forth in the Memorandum, we conclude
under 35 U.S.C. § 101 that claims 37 and 60-70 recite patent-eligible subject
matter.
Revised Step 2A, Prong One-Directed to a Judicial Exception
The Memorandum instructs us first to determine whether each claim
recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The
Memorandum identifies three judicially-excepted groupings:
(1) mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. Id. at 52.
9
Appeal2018-007989
Application 13/278,380
The Examiner does not find, nor do we, that any of the steps of claim 3 7,
alone or in combination, are a mental process or one of certain methods of
organizing human activity. We thus primarily focus here on the first
grouping-mathematical concepts. Appellants do not dispute that the claims
involve mathematical correlations or algorithms or organizing data, but
instead assert that such are not expressly recited in the claims. However,
express recitations are not required for us to find that a claim recites a
mathematical concept. Therefore, we determine that the claims here recite a
mathematical concept given Appellants' concession that the claims
"involve" such.
Nonetheless, as Appellants recognize, a claim that recites a
mathematical concept is not necessarily "directed to" that mathematical
concept. Here, although the claims recite a mathematical concept, the
claims are not directed to a mathematical concept because the claims recite
not only resonance inspection of a new production part and an in-service
part having an identified defect for updating the new production part sort
functionality, they also recite resonance inspection of a subsequent new
production part using the updated new production part sort functionality.
Thus, the claims are directed, not to a mathematical concept, but to a process
of resonance inspection of new production parts utilizing resonance data
correlated to a defect in an in-service part so as to prevent new production
parts having that defect from being placed into service.
Accordingly, we agree with Appellants that the claims are not directed
to a judicial exception to patent eligibility.
Revised Step 2A, Prong Two - Practical Application
10
Appeal2018-007989
Application 13/278,380
Having determined that claims 37 and 60-70 are not directed to a
judicial exception to patent eligibility, we nevertheless look to determine
whether the claims recite "additional elements that integrate the judicial
exception into a practical application." MPEP § 2106.05(a}-(c), (e}-(h);
Memorandum, 84 F.3d at 53-54. Integration into a practical application
requires an additional element or a combination of additional elements in the
claim to "apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the exception."
Memorandum, 84 Fed. Reg. at 53-54; see also id. at 55 (setting forth
exemplary considerations indicative that an additional element or
combination of elements may have integrated the judicial exception into a
practical application).
Here, we find that the additional recited elements of claims 3 7
and 60-70 integrate the judicial exception into a practical application.
Claim 3 7 recites performing a resonance inspection on both a new
production part as well as an in-service part with an identified defect. In
addition, this claim recites performing a third resonance inspection on a
subsequent new production part utilizing a new production part sort
functionality that has been modified using the resonance inspection data
from the in-service part corresponding to the defect. The Specification
discloses that performing a resonance inspection on an in-service part with
an identified defect and modifying the new production sort functionality
with the resonance data corresponding to the defect enables pre-service
identification of parts that may have manufacturing defects that could cause
failure in service. Spec. 9:1-11.
11
Appeal2018-007989
Application 13/278,380
We agree with Appellants that these facts are more akin to Diehr than
to Flook. We note that in Diehr, the claimed invention improved on
conventional rubber-molding processes by constantly monitoring
temperature data from a thermocouple inside the mold and opening the mold
in response thereto in a manner to reduce under- and over-curing problems
in the prior art. Likewise, here, process claim 37 improves on conventional
resonance inspection processes by performing a resonance inspection on
both a new production part as well as an in-service part with an identified
defect, then performing a third resonance inspection on a subsequent new
production part utilizing a new production part sort functionality that has
been modified using the resonance inspection data from the in-service part
corresponding to the defect.
On the other hand, in Flook, the claims recited a method for updating
alarm limits, although those alarm limits were on at least one process
variable involved in a process comprising the catalytic chemical conversion
of hydrocarbons. The Court stated that "[a]n 'alarm limit' is a number."
Flook, 437 U.S. at 585. The Court further stated that "[t]he chemical
processes involved in catalytic conversion of hydrocarbons are well known,
as are the practice of monitoring the chemical process variables, the use of
alarm limits to trigger alarms, the notion that alarm limit values must be
recomputed and readjusted, and the use of computers for 'automatic
monitoring-alarming."' Id. at 594. Flook was simply providing a new and
presumably better method for calculating alarm limit values. Id. Unlike
Flook, claim 37 recites an improvement, not to the calculation of a number,
but to the process of resonance inspection of new production parts using a
new production part sort functionality.
12
Appeal2018-007989
Application 13/278,380
Therefore, we agree with Appellants that claim 3 7 recites an
improvement to another technology or technical field. See MPEP
§ 2106.05(a).
Accordingly, because we determine that claims 37 and 60-70 are not
directed to a judicial exception to patent eligibility and recite an
improvement to another technology or technical field, we need not proceed
to Step 2B of the analysis, i.e., a determination of whether the claims
provide an inventive concept. 84 Fed. Reg. at 56.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 37 and 60-70 under 35 U.S.C. § 101 as directed to patent ineligible
subject matter is reversed.
REVERSED
13