Ex Parte MacArthur et al

Patent Trial and Appeal Board

Jan 2, 2018

13324853 (P.T.A.B. Jan. 2, 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.
13/324,853 12/13/2011 J. Ward MacArthur H0031407-0104 6547
(HWEL01-314
92720 7590
HONEYWELL/MUNCK
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
TURK, NEIL N
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
01/04/2018 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 @ honey well, com
patents @ munckwilson. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. WARD MACARTHUR, SACHINDRA K. DASH, and
RAVI K. BHASKAR
Appeal 2017-001392
Application 13/324,853
Technology Center 1700
Before CHUNG K. PAK, N. WHITNEY WILSON, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s decision to finally reject claims 1—
20, which constitute all the claims pending in this application. 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
1 In our Decision, we refer to the Specification filed December 13, 2011
(“Spec.”); Final Office Action dated September 24, 2015 (“Final Act.”);
Appeal Brief dated February 29, 2016 (“App. Br.”); Examiner’s Answer to
the Appeal Brief dated October 7, 2016 (“Ans.”); and Reply Brief dated
November 2, 2016 (“Reply Br.”).
2 Appellants identify Honeywell International Inc. as the real party in
interest. App. Br. 2.
Appeal 2017-001392
Application 13/324,853
For the reasons set forth below, we AFFIRM-IN-PART and enter a
NEW GROUND OF REJECTION.
The Claimed Invention
Appellants’ disclosure relates to a method and apparatus for pH
control treatment plants and other systems. Spec. 12. The claimed method
includes obtaining a nonlinear model that represents a pH of a material in a
process to be controlled. Id. 1 6; Abstract.
Claims 1 and 8 are illustrative of the claimed subject matter on appeal
and are reproduced below from the Claims Appendix to the Appeal Brief:
1. A method comprising:
obtaining, by at least one computer processing device, a
nonlinear model that represents a pH of a material in a process
to be controlled, the model generated using an orthonormal bases
function that captures dynamics of the process and an ordinal
spline bases function that captures static nonlinearities of the
process; and
performing, by the at least one computer processing
device, non-linear model predictive control of the process using
the model,
wherein performing the non-linear model predictive
control comprises:
receiving sensor measurements identifying the pH
of the material from a pH sensor;
predicting, using the model, how changes to at
least one manipulated variable associated with the process
affect the pH of the material, and
generating, using the sensor measurements, one
or more control signals configured to modify the at least one
manipulated variable in order to keep the pH of the material at
a setpoint or within a specific range of the setpoint by controlling
at least one actuator in the process.
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Application 13/324,853
App. Br. 22 (Claim App’x) (key disputed claim language italicized and
bolded).
8. An apparatus comprising:
at least one memory configured to store a nonlinear
model that represents a pH of a material in a process to be
controlled, the model associated with an orthonormal bases
function that captures dynamics of the process and an ordinal
spline bases function that captures static nonlinearities of the
process; and
at least one computer processing device configured to
perform non-linear model predictive control of the process
using the model, wherein the at least one computer processing
device is configured to perform the non-linear model predictive
control by:
receiving sensor measurements identifying the pH
of the material from a pH sensor;
predicting, using the model, how changes to at
least one manipulated variable associated with the process
affect the pH of the material, and
generating, using the sensor measurements, one
or more control signals configured to modify the at least one
manipulated variable in order to keep the pH of the material at
a setpoint or within a specific range of the setpoint by controlling
at least one actuator in the process.
App. Br. 24 (Claims App’x) (key disputed claim language italicized and
bolded).
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—7 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter (“Rejection 1”). Ans. 3; Final Act.
2.
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Application 13/324,853
2. Claims 1—20 are rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA, the applicant regards as the
invention (“Rejection 2”). Ans. 6; Final Act. 5.
OPINION
Rejection 1
Claims 1—7
Appellants argue claims 1—7 as a group. We select claim 1 as
representative of this group and claims 2—7 stand or fall with claim 1. 37
C.F.R. §41.37(c)(l)(iv).
The Examiner determines that Appellants’ claimed invention is
unpatentable under 35 U.S.C. § 101 because it is directed to non-statutory
subject matter. Ans. 3—5, 8—9. In particular, the Examiner determines that
the claims are drawn to the abstract concept of comparing new and stored
information and using rules to identify options and the recited steps do not
amount to significantly more than the concept. Id. at 9 (citing Alice Corp.
Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014)).
Appellants argue that the Examiner’s rejection should be reversed
because the Examiner erred in concluding that the claims are directed to
non-statutory subject matter. App. Br. 11. In particular, Appellants argue
that: (1) the Examiner applies the incorrect test for subject matter eligibility
{id. at 11); (2) claim 1 is not directed to any judicial exception (id. at 12); (3)
claim 1 is tied to another statutory class, i.e., a machine that includes a
computer processing device (id. at 13); and (4) claim 1 transforms the
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Application 13/324,853
underlying subject matter by generating one or more control signals to
control at least one actuator in a process in order to control the pH of a
material (id. at 14).
We do not find Appellants’ arguments persuasive of reversible error
in the Examiner’s rejection.
35 U.S.C. § 101 provides that “[wjhoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title,” but “[ljaws of
nature, natural phenomena, and abstract ideas are not patentable.” Ass ’n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)
(internal quotation marks and citation omitted).
The Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank
International, 134 S. Ct. 2347 (2014) identifies a two-step framework for
determining whether claimed subject matter is judicially-excepted from
patent eligibility under § 101. According to Alice step one, “[w]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355.
Step two of the Alice framework is “a search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. at 2355 (alteration in original)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1294 (2012)).
In applying step two, we must determine whether there are any
“additional features” in the claims that constitute an “inventive concept,”
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Alice, 134 S. Ct. at 2357, and whether those “additional features” amount to
more than merely “well-understood, routine, conventional activity” Mayo,
132 S. Ct. at 1298.
Beginning with the first step, we look at claim 1 to determine whether
it is directed to an abstract idea. Claim 1 recites a method comprising the
following steps: (1) “obtaining, by at least one computer processing device,
a nonlinear model that represents a pH of a material in a process to be
controlled”; (2) “performing, by the at least one computer processing device,
non-linear model predictive control of the process using the model”; (3)
“predicting, using the model, how changes to at least one manipulated
variable associated with the process affect the pH of the material”; and (4)
“generating, using the sensor measurements, one or more control signals
configured to modify the at least one manipulated variable.” App. Br. 22
(Claims App’x).
Based on the language of the claim and the Specification, we
determine that claim 1 is, at its core, directed to the abstract idea of
collecting, analyzing, and mathematically manipulating data using a law of
nature (a nonlinear model). See Intellectual Ventures ILLC v. Capital One
Financial Corporation, 850 F.3d 1332, 1340 (Fed. Cir. 2017) (holding
claims ineligible under § 101 where the “concept related to the collection,
display, and manipulation of data”); Elec. Power Grp. v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (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”).
The fact that the data being collected and processed relates to a
nonlinear mathematical model (a law of nature) that represents a pH of a
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material in a process to be controlled, as opposed to some business method,
and the claimed method may be implemented using a computer does not
render the claim patent-eligible or the underlying idea any less abstract. See
Alice, 134 S. Ct. at 2358 (“the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention”).
Unlike the claims found non-abstract in prior cases, Appellants’
claimed invention is directed to data collection, analysis, and manipulation
and does not recite an improvement to a particular computer technology.
See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016) (finding claims not abstract because they “focused on
a specific asserted improvement in computer animation”).
Moreover, as the Examiner finds (Ans. 3—4), the steps of claim 1
could conceivably be performed using mental steps, pen, and paper (e.g.,
performing calculations based on a nonlinear mathematical model). See
Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (claims directed to an abstract idea, where “with the exception of
generic computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human, mentally
or with pen and paper.”).
Turning to the second step of Alice, we find claim 1 does not contain
an inventive concept sufficient to “‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 134 S. Ct. at 2355.
We determine that each of the steps of claim 1, considered both
individually and as an ordered combination, is conventional, and does not
amount to significantly more than the implementation of the abstract idea of
collecting, analyzing, and mathematically manipulating data. See Alice, 134
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S. Ct. 2357 (finding “conventional steps” insufficient to supply an
“inventive concept”).
In particular, we find that the steps of “obtaining ... a nonlinear
model that represents a pH of a material in a process”; “using the model” to
predict “how changes . . . associated with the process affect the pH of the
material”; and “generating, using sensor measurements, . . . control signals”
are nothing more than routine and conventional techniques known and
applied in the field of process control. See, e.g., Spec. Tflf 4, 37—38, 44, 144.
Pre- or post-solution activities that are “purely ‘conventional or
obvious,’... ‘can[not] transform an unpatentable principle into a patentable
process.’” Mayo Collaborative Services, 132 S. Ct. at 1298—99 (citing
Parker v. Flook, 437 U.S. 584, 589-90 (1978)). Similar to Mayo, the steps
in this case are nothing more than an instruction to gather data for the
applicable law of nature (a nonlinear model that represents a pH of a
material) and apply the law of nature to conventional post solution activities.
Thus, we are persuaded that claim 1 is directed to an abstract idea
involving a law of nature and fails to recite an inventive concept sufficient to
transform the abstract idea into patent-eligible subject matter.
Accordingly, we affirm the Examiner’s rejection of claims 1—7 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claim 8
Although claim 8 is directed to an “apparatus,” which includes a
memory and a computer processing device, the claim recites limitations
nearly identical to claim 1. Compare claim 8 (App. Br. 24) with claim 1
(App. Br. 22).
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Application 13/324,853
In particular, like claim 1, claim 8 recites at least one computer
processing device configured to (1) “perform non-linear model predictive
control of the process using the model”; (2) “predicting, using the model,
how changes to at least one manipulated variable associated with the process
affect the pH of the material”; and (3) “generating, using the sensor
measurements, one or more control signals configured to modify the at least
one manipulated variable.” App. Br. 24 (Claim App’x). Similar to the
“obtaining” a nonlinear model step of claim 1, claim 8 also recites “at least
one memory configured to store a nonlinear model that represents a pH of a
material in a process to be controlled.” Id. at 24.
For principally the same reasons discussed above with respect to
claim 1, we determine that claim 8 is likewise directed to the abstract idea of
collecting, analyzing, and mathematically manipulating data using a law of
nature and does not contain an inventive concept sufficient to transform the
nature of the claim into a patent-eligible application. Alice, 134 S. Ct. at
2355; see also Intellectual Ventures I, 838 F.3d at 1340 (holding that
method, systems, and apparatus claims of a patent “ineligible under § 101
for reciting similar data manipulation steps”).
The fact that claim 8 recites “at least one memory configured to store
a nonlinear model” and “at least one computer processing device configured
to perform nonlinear model predictive control,” without more, does not
render the claim patent-eligible. See Alice, 134 S. Ct. at 2358. Indeed, these
elements are nothing more than generic computer components and do not
supply an inventive concept. See Alice, 134 S. Ct. at 2359.
Moreover, as previously discussed above regarding claim 1,
considering the “using the model,” “predicting,” and “generating”
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limitations of claim 8 as an ordered combination, we find that they amount
to nothing significantly more than an apparatus for implementing the
abstract idea of collecting, analyzing, and mathematically manipulating data
using generic computer technology. Id. at 2359-60.
Claims 9—20
Because claims 9—20 recite and/or are based upon principally the
same limitations as claims 1 and 8, we determine that claims 9—20 are
likewise directed to the abstract idea of collecting, analyzing, and
mathematically manipulating data and fail to recite an inventive concept
sufficient to transform the abstract idea into patent- eligible subject matter.
Alice, 134 S. Ct. at 2355; see also Intellectual Ventures /, 838 F.3d at 1340.
Accordingly, for principally the same reasons previously discussed
above in affirming the Examiner’s § 101 rejection of claims 1—7 (Rejection
1) and claim 8, we also reject claims 9—20 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Rejection 2
Because claims 1—20, which constitute all the claims pending in this
Appeal, have already been determined to be directed to non-statutory subject
matter under 35 U.S.C. § 101, we exercise our discretion and decline to
reach the merits of the Examiner’s remaining rejection of claims 1—20 under
35 U.S.C. § 112 for indefmiteness (Rejection 2). In re Basell Poliolefine,
547 F.3d 1371, 1379 (Fed. Cir. 2008) (“Having concluded that the Board
properly affirmed the rejection of claims 1-52 of the '687 patent based on
obviousness-type double patenting in view of the '987 patent, we need not
address the remaining issues raised by Basell regarding the §§ 102(b) and
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103(a) rejections, as well as the additional double patenting rejections.”);
Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC having
decided a dispositive issue, there was no need for the Commission to decide
other issues decided by the presiding officer).
DECISION
In view of the foregoing, we affirm the Examiner’s rejection of claims
1—7 under 35 U.S.C. § 101 as being directed to non-statutory subject matter
(Rejection 1) and enter a New Ground of Rejection against claims 8—20
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
We also designate our affirmance of the rejection of claims 1—7 under
35 U.S.C. § 101 as containing a New Ground of Rejection because our
reasons for affirmance contain additional fact findings not discussed by the
Examiner.
This decision contains a new ground 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 the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground 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
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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.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART AND NEW GROUND OF REJECTION ENTERED
PURSUANT TO 37 C.F.R, $ 41.50(b)
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