Ex Parte Leitch et al

Patent Trial and Appeal Board

Nov 14, 2018

13643886 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/643,886 03/20/2013
136940 7590 11/16/2018
Fluor Coporation
5601 Granite Parkway
Suite 500
Plano, TX 75024
FIRST NAMED INVENTOR
James S. Leitch
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.
l 103US_ 4570-13101 7393
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
dallaspatents@dfw.conleyrose.com
intellectual.property.communications@fluor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES S. LEITCH, DAN SMITH, and
PETERRITCH 1
Appeal2017-004420
Application 13/643,886
Technology Center 3600
Before BRADLEY W. BAUMEISTER, KARA L. SZPONDOWSKI, and
DAVID J. CUTITTA II, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1---6 and 9--22. App. Br. 10-30.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants list Fluor Technologies Corporation as the real party in interest.
Appeal Brief filed July 25, 2016 ("App. Br.") 4.
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Final Action mailed
February 25, 2016 ("Final Act."); the Examiner's Answer mailed November
17, 2016 ("Ans."); and the Reply Brief filed January 17, 2017 ("Reply Br.").
Appeal2017-004420
Application 13/643,886
STATEMENT OF THE CASE
Appellants describe the present invention as follows:
Risk management systems and methods for plant
[ engineering, procurement, construction, comm1ss10ning,
operations, and maintenance (EPCCOM)] are described. The
system comprises a risk management database for storing risk
objects, each object representing a real-world risk mitigation
factor. A risk recommendation engine is communicatively
coupled to the risk management database and is configured to
provide recommendations for mitigating and managing risks as
a function of efficacy attributes of the risk objects. The efficacy
attributes represent the effectiveness of previously implemented
and/or simulated risk mitigation strategies. The efficacy
attributes are preferably multivariable dependent and are defined
by prioritizing and weighing different objectives.
Abstract.
Independent claims 1 and 17, reproduced below with added emphasis,
illustrates the claimed invention:
1. A plant engineering, procurement, construction,
commissioning, operations, and maintenance (EPCCOM) risk
mitigation system, the system comprising:
a risk management database comprising a non-transitory
storage medium having stored therein: (i) a plurality of risk
objects each having a plurality of risk object attributes, wherein
each risk object comprises a digital representation of a real world
risk mitigation factor, and (ii) a plurality of EPCCOM activity
objects each having a plurality of EPCCOM activity object
attributes, wherein each EPCCOM activity object comprises a
digital representation of a real-world EPCCOM activity;
wherein the plurality of risk object attributes includes a
plurality of multi-variable dependent efficacy attributes that
represent prior effectiveness of the associated risk object in
achieving an objective;
a risk recommendation engine comprising distributed
processors and executable software code communicatively
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coupled with the database, wherein the executable software code
when executed on the distributed processors causes the
distributed processors to perform the following steps:
perform a first mapping of the plurality of risk
object attributes to the plurality of EPCCOM activity
object attributes;
generate a plurality of risk mitigation
recommendations using the first mapping;
perform a second mapping of the plurality of multi-
variable dependent efficacy attributes to the plurality of
risk mitigation recommendations;
generate a second plurality of risk mitigation
recommendations as a function of at least one variable
from the plurality of multi-variable dependent efficacy
attributes, wherein the second plurality of risk mitigation
recommendations are not validated;
a risk engine interface coupled with the risk
recommendation engine through which the second plurality of
risk mitigation recommendations is communicated to a user; and
an input device communicatively coupled to the risk
recommendation engine and used by the user to validate the
second plurality of risk mitigation recommendations.
17. A plant engineering, procurement, construction,
commissioning, operations, and maintenance (EPCCOM) risk
mitigation system, the system comprising:
a risk management database comprising a non-transitory
storage medium having stored therein: (i) a plurality of risk
objects each having a plurality of risk object attributes, wherein
each risk object comprises a digital representation of a real world
risk mitigation factor, and (ii) a plurality of EPCCOM activity
objects each having a plurality of EPCCOM activity object
attributes, wherein each EPCCOM activity object comprises a
digital representation of a real-world EPCCOM activity;
wherein the plurality of risk object attributes includes a
plurality of multi-variable dependent efficacy attributes that
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represent prior effectiveness of the associated risk object in
achieving an objective;
a risk recommendation engine comprising distributed
processors and executable software code communicatively
coupled with the database, wherein the executable software code
when executed on the distributed processors causes the
distributed processors to perform the following steps:
perform a first mapping of the plurality of risk
object attributes to the plurality of EPCCOM activity
object attributes;
generate a plurality of risk mitigation
recommendations using the first mapping;
perform a second mapping of the plurality of multi-
variable dependent efficacy attributes to the plurality of
risk mitigation recommendations;
generate a second plurality of risk mitigation
recommendations as a function of at least one variable
from the plurality of multi-variable dependent efficacy
attributes, wherein the second plurality of risk mitigation
recommendations are not validated;
a risk engine interface coupled with the risk
recommendation engine through which the second plurality of
risk mitigation recommendations is communicated to a user;
wherein the second plurality of risk mitigation
recommendations are implemented in one or more units during
construction of the plant.
Claims 1---6 and 9--22 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 14--15.
Claims 1---6, 9-16, and 21 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 15-
16.
Claims 17-22 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 16-17.
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We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
THE 101 REJECTION
Examiner's Determinations
The Examiner determines that claims 1-6 and 9-22 are directed to a
patent-ineligible abstract idea. Final Act. 14--15. More specifically, the
Examiner determines that the claims are directed to a fundamental economic
practice-a series of steps instructing how to generate risk mitigation
recommendations. Id. at 14. The Examiner additionally determines that
"[t]he claims do not include additional elements that are sufficient to amount
to significantly more than the judicial exception because considered
separately and in combination, the generically recited computer elements do
not add meaningful limitations to the abstract idea because they would be
routine in any computer implementation." Id.
Appellants present multiple arguments (App. Br. 10-26; Reply Br. 3-
11 ), which we address individually below.
Principles of Law
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 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. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
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Genetics, Inc., 569 U.S. 576, 589 (2013)). Accordingly, in applying the
§ 101 exception, the Supreme Court cautioned:
[W]e must distinguish between patents that claim the
"'buildin[g] block[ s]"' of human ingenuity and those that
integrate the building blocks into something more, thereby
"transform[ing]" them into a patent-eligible invention. The
former "would risk disproportionately tying up the use of the
underlying" ideas, and are therefore ineligible for patent
protection. The latter pose no comparable risk of pre-emption,
and therefore remain eligible for the monopoly granted under our
patent laws.
Alice, 134 S. Ct. at 2354--55 (all brackets in original except first set)
(internal citations omitted).
In Alice, the Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the analysis, we
determine whether the claim at issue is "directed to" a judicial exception,
such as an abstract idea. Id. at 2355. If not, the inquiry ends. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claim is
determined to be directed to an abstract idea, then we consider under step
two whether the claim contains an "inventive concept" sufficient to
"transform the nature of the claim into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quotations and citation omitted).
In considering whether a claim is directed to an abstract idea under
step one, we acknowledge, as did the Supreme Court, that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
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phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We therefore look to
whether the claim focuses on a specific means or method that improves the
relevant technology or is instead directed to a result or effect that, itself, is
the abstract idea and merely invokes generic processes and machinery. See
Enfzsh, 822 F.3d at 1336.
In the second step of the Alice analysis, if applicable, we must
consider whether the claim contains an element or a combination of
elements that is sufficient to transform the nature of the claim into a patent-
eligible application. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714
(Fed. Cir. 2014); Alice, 134 S. Ct. at 2355.
In applying step two of the Alice analysis, we must
"determine whether the claim[] do[es] significantly more than
simply describe [the] abstract method" and thus transform the
abstract idea into patentable subject matter. We look to see
whether there are any "additional features" in the claim[] that
constitute an "inventive concept," thereby rendering the claim[]
eligible for patenting even if [it is] directed to an abstract idea.
Those "additional features" must be more than "well-understood,
routine, conventional activity."
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) ( citations omitted). A claim that "merely require[ s] generic
computer implementation[] fail[ s] to transform [an] abstract idea into a
patent-eligible invention." Alice, 134 S. Ct. at 2357.
Central to our analysis herein is the fundamental principle that the
Alice framework must be applied to the claims, as properly construed. As
our reviewing court has stated, "The § 101 inquiry must focus on the
language of the Asserted Claims themselves." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016); see also Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345
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(Fed. Cir. 2013) (admonishing that "the important inquiry for a§ 101
analysis is to look to the claim"); Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1346 (Fed. Cir. 2014)
(focusing on "whether the claims of the asserted patents fall within the
excluded category of abstract ideas") ( emphasis added)).
These principles are based on long-established jurisprudence that "[i]t
is the claims [that] define the metes and bounds of the invention entitled to
the protection of the patent system." In re Warmerdam, 33 F.3d 1354, 1360
(Fed. Cir. 1994) (citing Zenith Lab. Inc. v. Bristol-Myers Squibb Co., 19
F.3d 1418, 1424 (Fed. Cir. 1994)).
Arguments and Analysis
Appellants assert that in concluding "the generically recited computer
elements do not add meaningful limitations to the abstract idea because they
would be routine in any computer implementation," the Examiner erred
because the conclusion is not in accordance with the USPTO' s supplemental
guidelines. App. Br. 13-14 (citing Final Action 14). Appellants support this
assertion with three underlying arguments. Id. at 14--15.
Appellants' first argument is that "the Examiner provides no guidance
as to which 'particular' claim limitations are routine as required by the
supplemental guidelines. The Examiner simply lumps all claim elements
together as routine without identifying the 'particular' claim limitations
[that] are routine." Id. at 14. This argument is unpersuasive. It is
reasonably clear the Examiner's position is that the claimed database, risk
recommendation engine, risk engine interface, and input device are the claim
elements that the Examiner determines to be well-understood, routine, and
conventional computer components.
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Appellants next argue that the Examiner fails to explain "which courts
have recognized any of Appellants' claim elements are routine." App.
Br. 14. Appellants continue,
Id.
For example, both Appellants' claims 1 and 17 recite the risk
mitigation engine:
1) performs a first mapping of the plurality of risk
object attributes to the plurality of EPCCOM activity
object attributes;
2) generates a plurality of risk mitigation
recommendations using the first mapping;
3) performs a second mapping of the plurality of
multi-variable dependent efficacy attributes to the
plurality of risk mitigation recommendations; and
4) generates a second plurality of risk mitigation
recommendations as a function of at least one variable
from the plurality of multi-variable dependent efficacy
attributes.
The Examiner has not identified which courts have found
performing first mappings and second mappings and generating
first and second pluralities of risk mitigation recommendations
as well-understood, routine, and conventional.
This argument is unpersuasive because it improperly conflates the
first and second steps of the Alice analysis. The question under step two of
the Alice analysis is not whether the courts have found the steps of mapping,
generating, and communicating recommendations to be well understood,
routine, and conventional. Those aspects of the steps are directed to the
underlying abstract idea. The relevant question for step two is whether the
computer components that perform these abstract ideas were well-known,
routine and conventional.
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Appellants thirdly argue
the Examiner has only alleged that the claimed elements are
routine; whereas, the guidelines require a finding that a claim
element is well-understood, routine and conventional. That is,
in addition to finding a claim element is routine, the Examiner
must find the claim element is also well-understood and
conventional. Not only has the Examiner ... not presented any
evidence or support that Appellants' claims are routine, the
Examiner has not set forth any evidence or support that the claim
elements are also well-understood and conventional.
Id. at 14--15.
This argument is unpersuasive because we understand the Examiner
to be using the term "routine" as shorthand for the full phrase, "well-
understood, routine, and conventional." Furthermore, Appellants cite to no
legal authority for the proposition that determining a claim element to be
"well-understood, routine, and conventional" requires the Examiner to make
three separate showings. To the contrary, the Federal Circuit has explained
that whether a claim element is well-understood, routine, and conventional is
a single inquiry. Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed.
Cir. 2018) ("The question of whether a claim element or combination of
elements is well-understood, routine, and conventional to a skilled artisan in
the relevant field is g_ question of fact." ( emphasis added)). Nor do
Appellants proffer any objective definitions or distinctions that supposedly
exist among these three terms.
In Section IV.A.3 .b) of their Appeal Brief, Appellants argue two
reasons why claims 1-6 and 9-16 are patent eligible. App. Br. 15-18. First,
Appellants argue that "[ c ]laim 1 's distributed processors amount to an
improvement to the functioning of the claimed system." Id. at 15 ( emphasis
omitted). Appellants allege that "those skilled in the art would recognize
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that reciting distributed processors for operation of the risk recommendation
engine in claim 1 amounts to an improvement of the claimed system over a
risk recommendation engine [that] operates with a processor (previously
claimed)." Id. at 16. Appellants argue that "[t]he Examiner provides no
evidence that distributed processors do not improve the functioning of a
computer." Id.
This argument is unpersuasive. The Examiner cites to paragraph 26
of Appellants' Specification, inter alia, to support the conclusion that using
distributed processors, as well as single processors, was well-known,
routine, and conventional, and that such use would not constitute a technical
improvement within the meaning of Alice's step-two inquiry. Final Act. 6
("there is no teaching above of an improved distributed database or engines,
only contemplation. Therefore Applicant is not inventing or improving
distributed computing. Applicant is using existing computing technology.").
The Examiner, therefore, finds Appellants' claim is limited to performing an
abstract idea on distributed processors that are well-understood, routine, and
conventional means for processing data.
Paragraph 26 of Appellants' Specification reads as follows:
[0026] Risk recommendation engine 115 can comprise a central
processing unit (CPU) and executable software code, or any
other device and/or combination of devices suitable for analyzing
and processing digital data on a database. While engine 115 is
shown as a single unit in Figure 1, distributed engines are also
contemplated.
The Specification's cursory reference to distributed engines
reasonably indicates that at the time of the invention, single processors and
distributed processors were art-recognized functionally equivalent well-
understood, routine, and conventional means for processing data.
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Appellants fail to identify any limitation, other than the distributed
processors, that is not merely part of the abstract idea identified by the
Examiner. See generally App. Br.; Reply Br.
Appellants also argue that that claims 1-6 and 9-16 are patent eligible
because "[ c ]laim 1 recites a transformation of the second plurality of
recommendations from a non-validated state to a validated state." App.
Br. 17. Appellants further argue the Board precedent supports Appellants'
position that transformation of data cannot render a claim patent eligible. Id.
(citing PNC Bank v. Secure Axcess, CBM2014-00100 at 24 (PTAB Sept. 9,
2014).
Appellants' arguments are unpersuasive. As a threshold matter, the
reasoning set forth in the PNC Bank opinion, being non-precedential and
unrelated to the present appeal, is not binding on the present Panel. But
even more significantly, the facts of PNC Bank are not similar to those of the
present case.
PNC Bank dealt with using an authenticity key on an authentication
host computer to transform "received data" into "formatted data." Id. at 5.
In contrast, claim 1 sets forth that the input device is used merely to validate
the second plurality of risk mitigation recommendations. Changing the state
of the recommendation from not-yet-validated to validated does not entail
transforming the recommendation, itself, from one form to another form.
The claimed validation entails transforming the characterization of the
recommendation-transforming an intangible property of the
recommendation.
In Section IV.A.3 .c) of their Appeal Brief, Appellants argue three
reasons for why claims 17-22 are patent eligible. App. Br. 18-26.
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Appellants first argue that "[ c ]laim 1 7 is modeled after a claim found
patent eligible in Diamond v. Diehr[, 450 U.S. 175 (1981)] and after claims
endorsed by the US PTO as patent eligible." Id. at 18 ( emphasis omitted).
According to Appellants,
[ c ]laim 17 improves plant EPCCOM via implementation
of the second plurality of risk mitigation recommendations in one
or more units during construction of the plant; similar to how the
claims in Diamond v. Diehr and endorsed by the USPTO
improved precision rubber molding by implementing an
algorithm during operation of a rubber-molding press. See July
2015 Update Appendix J: Examples at pages 14--19 (USPTO
July 30, 2015).
App. Br. 18. This argument is unpersuasive.
The present claims are not, in fact, analogous to those of Diehr. Diehr
recited a method of operating a rubber-mold press with the aid of a digital
computer that entailed ( 1) monitoring curing parameters of the press, such as
temperature and time, and (2) opening the press automatically upon the
occurrence of a designated condition. See App. Br. 19 (reproducing claim 1
of Diehr). Claim 2 of Diehr similarly recites a computer readable medium
programmed with computer executable instructions for performing the
method of claim 1. See App. Br. 19 (reproducing claim 2 of Diehr).
Appellants' independent claim 1 7, in contrast, does not recite a
method of constructing a plant. Claim 1 7, instead, recites a system
comprising (1) a database, (2) a risk recommendation engine, and (3) a risk
engine interface for communicating risk mitigation recommendations to a
user. Restated, claim 17 is directed to a system that recommends a plan for
constructing one or more units of a plant.
For example, the final limitation of claim 17 recites "wherein the
second plurality of risk mitigation recommendations are implemented in one
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or more units during construction of the plant." This final recitation is not
directed to one of the claimed system's structural components. The final
limitation recites an intended later use of the generated risk
recommendations that the risk engine interface communicates to the user.
Appellants next contend that "plant EPCCOM and plant construction
are technical fields and should not be analogized with fields like the
financial services industry where claims have been previously held patent
ineligible." App. Br. 22; see generally id. at 22-24. Appellants further
argue that the totality of features in claim 1 7 improves another technology or
technical field, namely, plant EPCCOM." Id. at 24; see generally id. at 24--
26.
These arguments are unpersuasive because, as we explained, claim 17
does not recite a method of constructing a plant. The claim recites a system
for generating a plan for how to reduce risk when constructing a plant.
Therefore, we agree with the Examiner that the invention is directed toward
a business or economic practice. See Final Act. 11-13. We also agree with
the Examiner that the claimed distributed processors are insufficient to
amount to significantly more than the judicial exception. Final Act. 6, 14.
For the foregoing reasons, we sustain the rejection of independent
claims 1 and 17 under 35 U.S.C. § 101 for being directed to patent-ineligible
subject matter. We likewise sustain the rejection of claims 2---6, 9-16, and
18-22, which Appellants do not argue separately. See App. Br. 18, 25, 26.
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THE 112(a) REJECTION
Findings and Contentions
The Examiner finds that Appellants' originally filed Specification
provides insufficient written description for claim 1 's recitation of
"distributed processors," as recited in claims 1-6, 9-16, and 21. Final
Act. 15-16. According to the Examiner, Appellants' Specification only
provides support for distributed database configurations and distributed
engines. Id. at 16 ( citing Spec. ,r,r 24, 26); Ans. 33. The Examiner clarifies
the reasoning further in the Examiner's Answer:
The specification ... teaches "distributed engines." It is further
pointed out that claim 1 has "executable software code when
executed on the distributed processors causes the distributed
processors to perform the following steps: ... [,]" which requires
software code (singular) on distributed processors (plural)
where [as] the specification [ sets forth that] "recommendation
engine 115 can comprise a central processing unit ( CPU) and
executable software code ... [,]" therefore requiring code for at
least each processor. Engines therefore comprise at least both
code and a processor and is why the claim should be "distributed
engines" as taught.
Ans. 34--35.
Appellants note that the Specification's description, as filed, is
presumed to be adequate (App. Br. 28) and that the Examiner has the initial
burden to establish a reasonable basis to challenge the adequacy of the
written description (id. at 27). Appellants argue that the Examiner's only
basis for maintaining the rejection is the Specification's lack of express
disclosure of the term "distributed processors." Id. Appellants point out that
a Specification need not recite claim language in haec verba. Id. ( citing
MPEP 163.02). "Appellants contend 'executable software code' as recited
in claim 1 is adequate as encompassing software code coupled with each of
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the distributed processes, consistent with the description in
paragraphs [0024] and [0026]." Reply Br. 12. Appellants assert that the
Examiner therefore has failed to establish the Specification lacks written-
description support for "distributed processors." App. Br. 27.
Analysis
Paragraph 26 of Appellants' Specification reads as follows with added
emphasis:
[0026] Risk recommendation engine 115 can comprise a central
processing unit (CPU) and executable software code, or any
other device and/or combination of devices suitable for
analyzing and processing digital data on a database. While
engine 115 is shown as a single unit in Figure 1, distributed
engines are also contemplated.
This passage indicates that the risk recommendation engine 115 can
be comprised of a CPU and software or a combination of other devices.
Spec. ,r 26. The passage expressly states that the engine may be a distributed
engine. Id. One reasonably may infer that substituting distributed engine
for a single engine requires plural processors, each with its own set of
software. It would be unclear how else the engine could be distributed.
It is unclear to us, then, what additional subject matter claim 1 allegedly
encompasses by virtue of reciting distributed processors as opposed to
reciting distributed engines. The Examiner does not provide a reasonable
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explanation of how an engine comprising distributed processors is broader in
scope than a distributed engine.
Accordingly, we do not sustain the rejection of claims 1---6, 9-16,
and 21 under 35 U.S.C. § 112(a) for lacking adequate written description.
THE 112(b) REJECTION
Claim 17
Like independent claim 1, independent claim 1 7 also is directed to an
EPCCOM risk mitigation system implemented in a plant during plant
EPCCOM. App. Br. 35. Claim 17 also is similar in scope to that of claim 1,
the relevant difference being that instead of the final limitation setting forth
an input device (see claim 1 ), claim 17 recites "wherein the second plurality
of risk mitigation recommendations are implemented in one or more units
during construction of the plant." Id. at 36 (emphasis added).
Findings and Contentions
The Examiner rejects claims 17-22 as being indefinite for failing to
particularly point out and distinctly claim the subject matter that the inventor
regards as the invention. Final Act. 16-1 7. The Examiner's basis for this
rejection is as follows:
Claim 17 has "recommendations are implemented in one or more
units during construction of the plant" where implemented in
units is indefinite. There is no basis or teaching in the disclosure
of implementing recommendations in units[.] [T]herefore[,]
units could be something that does not make sense[,] such as
inside a unit of a building.
Final Act. 16.
The Examiner further explains, "Appellant above is arguing that one
or more units is the portion of the plant being constructed. The term
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'portion' however is itself a relative term that would render the claim
indefinite." Ans. 37. The Examiner then summarizes, "The Examiner
respectfully maintains recommendations in one or more units is indefinite
and Appellant's use of 'portion[,]' as argued[,] is also indefinite as a relative
term." Id. at 38.
Appellants argue, inter alia, "those skilled in the art are informed with
reasonable certainty that 'one or more units' is the portion of the plant being
constructed and in which the second plurality of recommendations are
implemented." App. Br. 30. Appellants further argue that because the
meaning of the claim terms is reasonably clear, claims 17-22 are not
indefinite. Id.
Analysis
To the best that the Examiner's reasoning can be followed, we
understand the Examiner's position to be that the claims are indefinite
because they recite using the invention in constructing at least a portion of
the entire plant. We do not understand why this would prevent one of
ordinary skill from being on notice as to the metes and bounds of claim
protection being sought.
Likewise the fact that the claim recites applying the invention in
constructing at least a portion ( or "unit") of the overall plant is a matter of
breadth-not ambiguity. The claim reasonably indicates that the invention
can be used for constructing either only some portion of the plant or for
constructing the entire plant. The breadth of a claim is not to be equated
with indefiniteness. In re Miller, 441 F.2d 689,693 (CCPA 1971).
Because the Examiner has not established why one of ordinary skill
would fail to be reasonably apprised of the metes and bounds of claim
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protection being sought, we do not sustain the rejection claims 17-22 under
35 U.S.C. § 112(b ).
CONCLUSIONS
The Examiner's decision rejection claims 1---6 and 9-22 under
35 U.S.C. § 101 is sustained.
The Examiner's decision rejection claims 1---6, 9-16, and 21 under
35 U.S.C. § 112(a) is not sustained.
The Examiner's decision rejection claims 17-22 under 35 U.S.C.
§ 112(b) is not sustained.
DECISION
The Examiner's decision rejecting claims 1---6 and 9-22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
19