Ex Parte Kar

Patent Trial and Appeal Board

May 22, 2018

13166098 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/166,098 06/22/2011
92720 7590
HONEYWELL/MUN CK
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
05/24/2018
FIRST NAMED INVENTOR
Chinmaya Kar
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.
H0028020-0103 5174
EXAMINER
CHARI OU!, MOHAMED
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
05/24/2018 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 CHINMA YA KAR
Appeal2017-007908
Application 13/166,098
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, 23, and 24, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Opinion, we refer to the Specification filed June 22, 2011 ("Spec.");
the Final Office Action mailed December 22, 2015 ("Final Act."); the
Appeal Brief filed September 6, 2016 ("App. Br."); the Examiner's Answer
mailed February 28, 2017 ("Ans."); and the Reply Brief filed April 28, 2017
("Reply Br.").
2 Appellant identifies Honeywell International Inc. as the real party in
interest. App. Br. 2.
Appeal2017-007908
Application 13/166,098
According to Appellant, the disclosure relates generally to control
systems, and more specifically to a vibration severity analysis apparatus and
method for rotating machinery. Spec. i-f 1. Claim 1, reproduced below from
the Claims Appendix of the Appeal Brief, is illustrative of the claimed
subject matter:
1. A method comprising:
using at least one processing device:
obtaining a baseline vibration level of a machine;
normalizing the baseline vibration level with a specified
threshold value to generate a normalized baseline vibration
level, the specified threshold value based on a type of the
machine;
obtaining a measurement of an operational vibration level
of the machine during its operation;
normalizing the measured operational vibration level
against the normalized baseline vibration level;
identifying at least one indicator of a status of the
machine based on (i) the normalized operational vibration level
and (ii) a relative magnitude of the baseline vibration level and
the specified threshold value; and
determining a condition of the machine based on the at
least one indicator of the status of the machine.
REJECTION
The Examiner maintains and Appellant seeks review of the rejection
of the pending claims under 35 U.S.C. § 101. Final Act. 4; App. Br. 7.
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Application 13/166,098
OPINION
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has "long held that this
provision contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014) (internal quotations and
citation omitted). The Supreme Court reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step "determine[ s] whether the claims at issue are directed to one of
those patent-ineligible concepts"-such as an abstract idea. Id. We
determine whether the claims focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016).
The inquiry ends if the claims are not directed to an abstract idea. If
the inquiry proceeds to the second step, the elements of the claims are
considered "individually and 'as an ordered combination,' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (internal citation
omitted).
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The first-stage inquiry looks at the "'focus' of the claims, their
'character as a who le,"' and, if the second stage is reached, the second stage
inquiry looks at what the claim elements add-whether they identify an
"inventive concept" in the application of the ineligible matter to which the
claim is directed. Elec. Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). Therefore, we look to: (1) whether the claims focus
on a specific means or method that improves the relevant technology, or (2)
are directed to a result or effect that itself is the abstract idea, in which the
claims merely invoke generic processes and machinery. See Enfish, 822
F.3d at 1336.
A. Rejection of claims 1, 2, 5-11, 14-20, and 24
Appellant argues claims 1, 2, 5-11, 14--20, and 24 as a group. App.
Br. 9-16. We select claim 1 as representative of the group. The other
claims in the group will stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner finds that claim 1 is directed to an abstract idea. Final
Act. 4. Specifically, the Examiner finds that the steps of normalizing
vibration levels, identifying an indicator of machine status by comparison,
and determining a condition of the machine based on the indicator are based
on mathematical relationships or rules, which are abstract ideas. Id. The
Examiner finds that the additional "obtaining" steps are extra solution
activities of gathering data. Id. at 5. The Examiner finds that claim 1 's
recitation of "using at least one processing device" requires only a generic
processor and does not meaningfully limit the abstract idea. Id. at 4--5.
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Application 13/166,098
Appellant argues that claim 1 is not directed to an abstract idea,
asserting that the Examiner disregards nearly all elements of claim 1 in a
conclusory manner. App. Br. 9-11. Appellant argues that the steps of
"identifying at least one indicator ... "and "determining a condition of the
machine ... " are not mathematical formulas or procedures for solving a
mathematical problem that are akin to a law of nature. App. Br. 11-12.
Appellant contends that claim 1 "is directed to detecting a condition of a
machine using analysis of measured vibration levels during operation ... ,
which ... is an industrial process and not an attempt to patent a
mathematical relationship." Id. at 13.
We are unpersuaded by Appellant's arguments. We agree with the
Examiner's finding that the "normalizing," "identifying," and "determining"
limitations in claim 1 relate to performing mathematical calculations,
corresponding to concepts court-identified as abstract ideas. See Ans. 3.
Claim 1 is similar to those in In re Meyer, 688 F.2d 789, 792 (CCPA 1982).
There, the court held a process for identifying probable malfunction in a
complex system that included determining whether a response of the
complex system was effective was "an attempt to patent a mathematical
algorithm rather than a process for producing a product as in Diamond v.
Diehr, (450 U.S. 175 ... (1981)." Id. at 794.
Our reviewing court has repeatedly held that information collection
and analysis, including when limited to particular content, is within the
realm of abstract ideas. See, e.g., Elec. Power Grp., 830 F.3d at 1353
(holding that "collecting information, analyzing it, and displaying certain
results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept"); Fair Warning IP, LLC v. Iatric
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Application 13/166,098
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (claims directed to
collecting information and analyzing it according to certain rules were
directed to an abstract idea).
[T]he "directed to" inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether "their character as
a whole is directed to excluded subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016)
(inquiring into "the focus of the claimed advance over the prior art"). The
Background section of Appellant's Specification establishes that vibration
monitoring of rotating machines was known. Spec. i-f 3. Claim 1 is directed
to establishing a number representative of the health or operational status of
a machine. See Spec. i-f 16. Establishing this number is an abstract idea
based on numerical formulas or rules and generated by computations.
With respect to Appellant's argument that the Examiner disregards
nearly all elements of claim 1, we find that the Examiner addresses each
claim element, finding them to be either part of an abstract idea, extra
solution activities of gathering data, or reciting a generic computer
component. See Final Act. 4--5. We note that the Examiner also identifies
the judicial exception and articulates the abstract idea found in claim 1. We
are satisfied that the Examiner's reasoning was sufficiently clear and
specific to provide applicant sufficient notice of the reasons for ineligibility.
See May 2016 USPTO Memorandum (FORMULATING A SUBJECT MATTER
ELIGIBILITY REJECTION AND EVALUATING THE APPLICANT'S RESPONSE TO A
SUBJECT MATTER ELIGIBILITY REJECTION), page 2 ("the rejection ... must
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provide an explanation ... which ... [is] sufficiently clear and specific to
provide applicant sufficient notice of the reasons for ineligibility").
Appellant contends that claim 1, like the claims in McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), uses
limited rules in a process specifically designed to achieve an improved
technological result in a conventional industry practice, and is, therefore, not
directed to an abstract idea. Reply Br. 4. To the contrary, claim 1 is
critically different from those in McRO, which were directed to the physical
display of "lip synchronization and facial expressions" of animated
characters on screens for viewing by human eyes. Id. at 1313. McRO does
not support patent-eligibility for claim 1.
Because we agree with the Examiner, at step one of the Alice analysis,
that the claims are directed to one or more abstract ideas, we tum to the
second step of the Alice analysis, in which we must determine whether the
additional elements of the claims transform them into patent-eligible subject
matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Having concluded that the claims are directed to an abstract idea, the
Examiner also concludes that the additional elements or combinations of
elements beyond the abstract idea do not amount to "significantly more"
than the abstract idea itself, finding "the recitation of a generic processor in
[the] preamble does not constitute meaningful limitations to limit the
abstract idea itself." Final Act. 4.
Appellant argues that the "identifying" and "determining" steps in
claim 1 recite specific features other than what is well understood, routine,
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and conventional, and add significantly more to the alleged abstract idea of
normalizing vibration levels than mere computer implementation. App. Br.
13-15. We disagree. Other than the assertion, Appellant does not explain
how the "identifying" and "determining" steps invoke patent-eligible
concepts. As discussed, supra, we find the "identifying" and "determining"
steps to be, in essence, collecting and analyzing information, which is not
patentable subject matter. See, e.g., Elec. Power Grp., 830 F.3d at 1353
(steps of collecting and analyzing information are directed to a patent-
ineligible concept); Fair Warning IP, 839 F.3d at 1093-94 (claims directed
to collecting and analyzing information were directed to an abstract idea).
Contrary to Appellant's argument, the Examiner identifies elements
recited beyond the judicial exception and explains why they do not add
significantly more to the abstract idea. See App. Br. 14. The Examiner
identifies two "obtaining" steps as "merely insignificant extra solution
activities of gathering data, e.g., reading data from a measurement or from a
vibrational sensor by a processor." Final Act. 5. The Examiner finds that
these limitations do not limit the abstract idea "to be applied with, or by use
of, [a] particular machine." Id. "[I]t is well settled that the prohibition
against patenting abstract ideas cannot be circumvented by limiting the use
of the idea to a particular technological environment or adding insignificant
extra-solution activity." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288, 1310 (Fed. Cir. 2016) (citingBilskiv. Kappas, 561U.S.593,
610-11 (2010)).
Appellant further argues that claim 1 involves an innovation in
computer technology-the ability to automatically determine the condition
of a machine-which reflects an improvement in the functioning of a
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Application 13/166,098
computer and an improvement in another technology by determining a
condition of a machine through vibration information. App. Br. 16.
However, Appellant does not offer any evidence that the computer
implementation improves the functioning of the computer itself. The
Specification does not describe a new computing platform, processor,
memory, database, or new software routines. Instead, the Specification
describes a conventional computer implementation in purely functional
terms, as to hardware, software, and firmware. See, e.g., Spec. ,-r 22. Thus,
claim 1 focuses on an improved mathematical analysis, not an improved
computer, and is not patent-eligible on this basis. See Enfish, 822 F.3d at
1336 (holding claims on an improvement to computer functionality itself
were not directed to an abstract idea).
Although Appellant contends claim 1 is similar to the process in
Diehr (see Reply Br. 10), unlike the invention in Diehr, claim 1 does not
involve any transformation of a physical article "to a different state or
thing." Diehr, 450 U.S. at 191 ("A mathematical formula as such 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"). As the Examiner points out, no action is taken
as a result of the steps of claim 1; no transformation occurs. See Ans. 15.
Appellant's citation to Ex parte Wegman III, 2013-008168, 2015 WL
5578687 (PTAB Sept. 18, 2015) and Ex parte Fuller, 2013-000762, 2015
WL 3467122 (PTAB May 28, 2015) has little bearing on the disposition of
claim 1. See App. Br. 14. These cases are non-precedential decisions in
which different panels of the Board reversed rejections under 35 U.S.C. §
101 under different sets of facts than those here. On the record before us, we
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find claim 1 similar to the claims held ineligible under controlling precedent
(e.g., Benson, Bilski, and Alice) for the reasons above. We sustain the
rejection of claims 1, 2, 5-11, 14--20, and 24 under § 101.
Rejection of claims 3 and 12
Appellant argues patent eligibility of claims 3 and 12 as a group.
App. Br. 17-18. In addition to the arguments discussed above, Appellant
argues that claim 3 is patent eligible under § 101 due to the recitation of
"obtaining the specified threshold value from averaged baseline vibration
levels obtained from multiple machines of a same type." Id. at 17.
Appellant contends that claim 3 is directed to an improvement in another
technology by utilizing a better obtained specified threshold value, and this
amounts to significantly more than patenting a mathematical relationship.
Id. at 18.
The Examiner finds the additional "obtaining" limitation in claim 3 to
be an additional element, which is merely data gathering recited at a high
level of generality, like the "obtaining" limitations in claim 1. Ans. 16.
Appellant's contention that "obtaining" is not simple data gathering is
unpersuasive. See Reply Br. 12. Appellant provides no explanation for how
"obtaining the specified threshold value" is more than data gathering.
Arguments of counsel cannot take the place of factually supported objective
evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
We sustain the rejection of claims 3 and 12 under § 101.
Rejection of claims 4, 13, and 23
Appellant argues patent eligibility of claims 4, 13, and 23 as a group.
App. Br. 18-19. In addition to the arguments put forward for patent
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eligibility of claim 1, Appellant argues that recitation of "wherein
normalizing the baseline vibration level comprises normalizing the baseline
vibration level with the specified threshold value only in response to
determining that the relative magnitude exceeds a second threshold value"
renders claim 4 patent eligible under § 101. Id. at 18. Appellant, therefore,
contends that claim 4 is directed to an improvement in another technology
by limiting when the normalization is performed, and this amounts to
significantly more than patenting a mathematical relationship. Id.
The Examiner finds that the additional element in claim 4 only adds
further details to the algorithm. Ans. 18.
In reply, Appellant merely restates the limitation and reiterates that it
provides significantly more than a mathematical relationship. Reply Br. 13.
As with claim 3, Appellant provides argument, but no explanation of how
the added limitation amounts to "significantly more." This is insufficient to
overcome the Examiner's rejection.
We sustain the rejection of claims 4, 13, and 23 under § 101.
DECISION
The rejection of claims 1-20, 23, and 24 is affirmed.
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) (2015).
AFFIRMED
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