Ex Parte Kolinsky et al

Patent Trial and Appeal Board

Jan 26, 2018

13836701 (P.T.A.B. Jan. 26, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/836,701 03/15/2013 Jan Kolinsky 2012P-240-US
(ALBR:0525)
4716
42982 7590 01/30/2018
Rnrlcwe.11 Automation Tnr /FY
EXAMINER
Attention: Linda H. Kasulke E-7F19
1201 South Second Street
NORTON, JENNIFER L
Milwaukee, WI 53204 ART UNIT PAPER NUMBER
2126
NOTIFICATION DATE DELIVERY MODE
01/30/2018 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):
howell@fyiplaw.com
docket@fyiplaw.com
raintellectu alproperty @ ra.rockwell .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN KOLINSKY, JIRI HANZLIK,
PETR HORACEK, and BIJAN SAYYARRODSARI
(Applicant: Rockwell Automation Technologies, Inc.)
Appeal 2017-006878
Application 13/836,701
Technology Center 2100
Before CARL W. WHITEHEAD JR., HUNG H. BUI, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4—7, 9, 17, 21—24, 26, and 27, constituting all
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b) for independent claims 1,17, and 24.
Appeal 2017-006878
Application 13/836,701
STATEMENT OF THE CASE
Appellants’ invention is directed to a deterministic optimization based
control systems. Spec. 11. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A control method, comprising:
performing, using a control system, an infeasible search
starting at a first point outside a feasible region during a first
portion of a predetermined sample period to determine a first
control trajectory of a plurality of input variables used to
control operation of a plant;
performing, using the control system, a feasible search
starting at a second point inside the feasible region during a
second portion of the predetermined sample period to determine
a second control trajectory of the input variables when the first
control trajectory is not feasible; and
controlling, using the control system, operation of the
plant based on the first control trajectory when the first control
trajectory is feasible and the second control trajectory when the
first control trajectory is not feasible.
REJECTIONS1
(1) Claims 1, 2, 4—7, 9, 17, 21—24, 26, and 27 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Watanabe
et al. (US 6,004,015; issued Dec. 21, 1999) (“Watanabe) and Fuller et al.
(US 2006/0282177 Al; published Dec. 14, 2006) (“Fuller”).
1 Rejections to claims 8, 20, and 25 under 35 U.S.C. § 112 were withdrawn
in the Answer. Ans. 27.
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Application 13/836,701
(2) Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Watanabe, Fuller, and Daniel Axehill,
Applications of Integer Quadratic Programming in Control and
Communication, Linkoping Studies in Science and Technology, 2005
(“Axehill”).
(3) Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Watanabe, Fuller and Yamaoka
(US 2008/0141062 Al; published June 12, 2008) (“Yamaoka”).
ANALYSIS
Dispositive Issue: Did the Examiner err in finding the combination of
Watanabe and Fuller teaches or suggests “performing ... an infeasible
search starting at a first point outside a feasible region during a first portion
of a predetermined sample period to determine a first control trajectory”
(“the infeasible search limitation”) and “performing ... a feasible search
starting at a second point inside the feasible region during a second portion
of the predetermined sample period to determine a second control trajectory
of the input variables when the first control trajectory is not feasible” (“the
feasible search limitation”), as recited in independent claim 1 and
commensurately recited in independent claims 17 and 24?
The Examiner finds Watanabe teaches the feasible search limitation,
stating “the initial solution vectors are outside the range and then a new
solution set is made with vectors that fall within an accepted range.” Final
Act. 6. The Examiner also finds Watanabe teaches the infeasible search
limitation, except the claimed “starting at a first point outside a feasible
region,” stating “an initial search of solution is performed prior to a resetting
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section adjusting values that are outside an accepted range.” Final Act. 6.
The Examiner finds Watanabe teaches “an infeasible search and [a] feasible
search occurring at two different [points in] time.” Ans. 22—23 (citing
Watanabe col. 41,11. 50-59, 64 — col. 42,1. 38). The Examiner further finds
Watanabe teaches from an initial solution vector set (i.e. a first
control trajectory) a new solution set (i.e. a second point) is made
with new vectors that fall within an accepted range based in part
on the removal of initial solution vectors that are outside a range
(i.e. infeasibility), wherein the new vectors are arbitrarily
selected.
Ans. 25—26.
Appellants contend the cited references “do not teach or suggest
dividing a predefined sample period between performing an infeasible
search followed by a feasible search when the infeasible search determines
an infeasible control trajectory.” App. Br. 10. With respect to Watanabe,
Appellants argue “the optimization search is restricted only to solution
vectors within the limited search region” and “[s]ince initiated with only
solution vectors within the limited region . . . Watanabe, at most, appears to
describe a feasible search.” App. Br. 10-11. With respect to Fuller,
Appellants “recognize that Fuller appears to be focused on infeasible search
algorithms” and argue “Fuller, at most, appears to describe an infeasible
search initiated with an infeasible point.” App. Br. 11. According to
Appellants, the “combination of Watanabe and Fuller, at most, appears to
suggest performing a feasible search and performing an infeasible search,”
but does not teach “that a predefined sample period is divided between
performing the infeasible search followed by the feasible search when the
infeasible search determines an infeasible control trajectory.” App. Br. 11.
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We are persuaded by Appellants’ arguments. Watanabe describes “an
initial solution vector set. . . to be adjusted” by way of a main processing
section, which includes, inter alia, a recombination operation section and a
set resetting operation. Watanabe col. 41,1. 64 — col. 42,1. 26, Fig. 32. The
recombination operation section performs “selection of solution vectors and
recombination operations.” Watanabe col. 42,11. 16—18. The set resetting
section resets the solution vector set “by replacing, in the solution vector set
generated by the recombination operation section 1081, the solution vectors
lying outside the limited range set by the update region limiting section 3202
with arbitrary vectors that fall within the limited range.” Watanabe col. 42,
11. 20-26. This is described as an iterative process, used to estimate an
optimal solution vector. Watanabe col. 5,11. 60—64.
The Examiner has not sufficiently explained how Watanabe’s
disclosure teaches or suggests the disputed limitations and how Watanabe is
being applied. For example, Watanabe teaches an initial solution vector set
and a solution vector set generated by the recombination operations. The
resetting operation is performed on the latter solution vector set, not on the
initial solution vector set. However, the claim requires the performance of
the infeasible search and performance of the feasible search on the same set
of variables. In addition, the Examiner has not sufficiently explained how
Watanabe’s replacing vectors lying outside the limited range with arbitrary
vectors that fall within the limited range teaches performing a feasible or
infeasible search as claimed. Moreover, even assuming Watanabe teaches
performing a feasible search and Fuller teaches an infeasible search, the
Examiner has not provided sufficient articulated reasoning with rationale
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underpinnings as to how the references are to be combined to arrive at the
claimed invention.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 17, and 24.2 For the same reasons, we do not sustain
the Examiner’s rejection of dependent claims 2—9, 18—23, and 25—27.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of independent claims 1, 17, and 24 under 35 U.S.C.
§ 101 for failing to recite statutory subject matter.
To determine whether a claim is eligible under § 101, “[w]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept.” Alice Corp. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). If it
is, we then “consider the elements of each claim both individually and ‘as an
ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
78-79 (2012)).
Under the first step of the analysis, we find claims 1,17, and 24 are
directed to an abstract idea because they are directed to the fundamental
process of using mathematical algorithms to control operation of a plant.
See, e.g., Spec. 128 (describing computing trajectories of manipulated
2 In the event of further prosecution, the Examiner may want to consider
whether claims 1,17, and 24 recite a conditional limitation, by virtue of the
limitation “when the first control trajectory is not feasible.” See Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792 (PTAB April 28, 2016)
(precedential).
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variables), 132 (describing using a primal active set method feasible search
strategy and determination of control trajectory), 139 (“the processing
circuitry 34 may utilize various solver methods (i.e., algorithms) to facilitate
determining a control trajectory”), 140 (“FIGs. 5A and 5B depict feasible
search methods (i.e., algorithms) and FIG. 5C depicts an infeasible search
method (i.e., algorithms)”), Figs. 5A—5C, 6. A mathematical formula is a
patent-ineligible abstract idea. Alice Corp., 134 S. Ct. at 2355 (citing Parker
v. Flook, 437 U.S. 584, 59A-595 (1978)).
Under the second step of the analysis, we find none of claims 1,17,
and 24 have any additional elements that amount to significantly more to
transform the abstract idea into a patent-eligible invention. The means to
perform the functions of the claims comprise a control system (claim 1),
memory circuitry (claim 17), and processing circuitry (claims 17 and 24).
See Spec, 35, 36, 39 (“the processing circuitry 34 may utilize various
solver methods (i.e., algorithms) to facilitate determining a control trajectory
26 (i.e., dynamic optimization)”), Figs. 1—3. The introduction of a computer
to implement an abstract idea or mathematical formula principle is not a
patentable application of the abstract idea. Alice Corp., 134 S. Ct. at 2357—
2358 (citing Flook, 437 U.S. at 594). The means are generic, and the
computer implementation here is purely conventional. See Alice Corp., 134
S. Ct. at 2359—2360. In summary, the claims do no more than require
generic computer elements to perform generic computer functions to
perform a mathematical algorithm. Further, the claims do not purport to
improve the functioning of the computer itself, nor do they effect an
improvement in any other technology or technical field. See Alice Corp.,
134 S. Ct. at 2359.
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Accordingly, we enter a new ground of rejection against claims 1,17,
and 24 under § 101 as directed to non-statutory subject matter.
In setting forth this new ground, we only reject independent claims 1,
17, and 24, and leave any potential rejection of dependent claims 2—9, 18—
23, and 25—27 to the Examiner.
DECISION
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1, 2, 4—7, 9,
17, 21—24, 26, and 27 is reversed. However, we enter a NEW GROUND OF
REJECTION against claims 1, 17, and 24 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 prosecution 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. . . .
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01 (9th ed., rev. 07.2015, Nov. 2015).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED
37 C.F.R, $ 41.50(b)
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