Ex Parte Olsson et al

Patent Trial and Appeal Board

May 16, 2018

13189844 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/189,844
13235 7590
Steven C. Tietsworth
3855 Ruffin Road
San Diego, CA 92123
07/25/2011
05/18/2018
FIRST NAMED INVENTOR
Mark S. Olsson
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.
SEEK 09-084-204 1037
EXAMINER
QUIGLEY, KYLE ROBERT
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
05/18/2018 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):
tietsworth@cox.net
steven.tietsworth@seescan.com
susan.hammons@seescan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKS. OLSSON, RAY MEREWETHER,
PAUL G. STUART, MICHAEL J. MARTIN,
CHRISTOPH H. MAIER, and AMOS H. JESSUP
Appeal2017-004471
Application 13/189 ,844
Technology Center 2800
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision rejecting claims 1 and 3-25, which constitute all the
claims pending in this application. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, the real party in interest is SeeScan, Inc. Appeal
Br. 1.
2 Our decision refers to the Specification (Spec.) filed July 25, 2011, the
Examiner's Final Office Action (Final) dated December 4, 2015, Appellants'
Appeal2017-004471
Application 13/189,844
STATEMENT OF THE CASE
The invention relates to methods for locating buried or otherwise
inaccessible pipes and other conduits, cables, conductors, and inserted
transmitters. Spec. i-f 3.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A graphical user interface (GUI) display method in a portable
locator system for locating a utility line coupled to a phase-
encoded modulated electromagnetic (EM) reference signal, the
method comprising the steps of:
measuring, at the locator system, a three dimensional
magnetic field generated at least in part based on the phase-
encoded modulated EM reference signal;
determining a current flow based on the measured
magnetic field;
determining a direction of the current flow based on the
phase-encoding of the modulated EM reference signal; and
displaying, on the GUI, a representation of the direction of
the current flow.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection:
1. Claims 1 and 3-24 under 35 U.S.C. § 101 as directed to non-
statutory subject matter;
Appeal Brief (Appeal Br.) filed September 6, 2016, the Examiner's Answer
(Ans.) dated November 18, 2016, and Appellants' Reply Brief (Reply Br.)
filed January 18, 2017.
2
Appeal2017-004471
Application 13/189,844
2. Claims 1, 3, 14, 24, and 25 under 35 U.S.C. § 102(b) as
anticipated by Waite; 3,4
3. Claims 11-13, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Waite; and
4. Claims 17-23 under 35 U.S.C. § 103(a) as unpatentable over
Waite in view of Olsson. 5
ANALYSIS
Rejection of Claims 1 and 3-24 under 35 USC§ 101
To determine whether subject matter is patentable under 35 U.S.C. §
101, the Supreme Court has set forth a two part test "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014). The first
step in the analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts," such as an abstract idea. Id.
(citation omitted). For computer-related technologies, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities" (which would be eligible
subject matter) or instead "on a process that qualifies as an 'abstract idea' for
which computers are invoked merely as a tool" (which would be ineligible
subject matter). Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36,
1338 (Fed. Cir. 2016) (emphasis added). "If the claims are not directed to an
abstract idea [or other patent-ineligible concept], the inquiry ends. If the
3 Waite et al., US 2005/0096879 Al, published May 5, 2005 ("Waite").
4 The Examiner has withdrawn claims 7-10 from this ground of rejection
(Ans. 3).
5 Olsson et al., US 2004/0070399 Al, published April 15, 2004 ("Olsson").
3
Appeal2017-004471
Application 13/189,844
claims are 'directed to' an abstract idea, then the inquiry proceeds to the
second step of the Alice framework." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016). Moreover, the Federal
Circuit has recognized "that defining the precise abstract idea of patent
claims in many cases is far from a 'straightforward' exercise." Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150 (Fed. Cir. 2016)
(quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014)). In view of this, the Federal Circuit has defined the "'basic
thrust"' of a claim, something that is wholly consistent with the description
of an invention, to determine what abstract idea the claim may be directed
to. 839 F.3d at 1150-51.
The Examiner finds claim 1 is directed to an abstract idea, particularly
"of an algorithm for measuring and determining a direction of a signal
flow". Final 3. The Examiner further notes that the courts have identified
mathematical algorithms as a type of abstract idea. Ans. 5, citing Diamond
v. Diehr, 450 U.S. 175 (1981) and Electric Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016). In addition, the Examiner finds that
performance of the recited algorithm does not improve the underlying
functionality of a computer used in its performance, but instead the results
from the performance of the algorithm are merely displayed. Ans. 7.
Moreover, the Examiner finds that, unlike Diamond, the claims recite neither
any particular machine nor any particular improvement to a specific
technological field. Id. at 5.
Appellants argue that the claims are not directed to an abstract idea,
asserting that an algorithm is not an abstract idea, but a specific process for
generating a result. Appeal Br. 3. Appellants acknowledge that an abstract
4
Appeal2017-004471
Application 13/189,844
idea per se may not be patentable, but contend that "a particular process for
making a measurement or generating some other output using an algorithm
is clearly patentable." Id., citing Diamond v. Diehr supra. Appellants assert
that Diamond held that "while mathematical formulas in the abstract are not
patentable, a process for generating a particular result is patent eligible." Id.
Appellants urge that the claims here are directed to a method to generate a
particular output, "which in this case does not reflect an actual physical
phenomenon but rather a metaphorical representation (i.e., the concept of
'current direction')." Id. Appellants further urge that current direction, in
the context of both this case and in Waite, is a metaphor for modeling
crosscoupling of AC signals between underground conductors ... and as
such is a tool for modeling the underground layout of multiple crosscoupled
connectors, not simply a measurement of a 'law of nature' or a 'natural
phenomenon."' Id. at 4.
Appellants further argue that the Examiner's rejection fails the Alice
and Enfzsh tests. Appeal Br. 4, citing Alice v. CLS Bank supra and Enfzsh v.
Microsoft supra. Appellants contend that the claims satisfy step one of the
Alice test because they are directed to "an improved way of determining
information about a buried utility and its associated underground
environment using the metaphorical construct of 'current direction.'" Id.
Appellants further assert that the claims "provide improvements in the
technology of providing a visual representation of detected buried utilities
and their environment by using an improved method of determining and
displaying the 'current direction."' Id.
5
Appeal2017-004471
Application 13/189,844
Under step one of the Alice framework, we note, claims 1 and 3 recite
a measurement step, two steps of determining a current flow and a direction
of current flow, and a display step. Appellants disclose a cycle-skipping
phase-encoding method "for encoding and transmitting relative phase
information," preferably by "periodically phase-flipping an altemating-
current (AC) drive waveform by dropping half-cycles at predetermined
intervals." Spec. i-f 158. Appellants further disclose "an exemplary
mathematical method by which a cycle-skipping technique can be used to
calculate phase and current direction." Id. i-f 160. However, although much
of this mathematical method is used to produce the half-cycle modulation
patterns, i.e. a phase-encoded modulated EM reference signal, claims 1 and
3 do not recite any step of producing or generating this phase-encoded
modulated EM reference signal.
The first step of the methods of claims 1 and 3 is merely a data
gathering step for providing data on which the algorithm's mathematical
operations are performed to determine current flow and the direction of
current flow as seen in Figure 18F. Spec. i-f 160. Figures 18A-18F, and in
particular, Figure 18F, depict the "exemplary mathematical method" or
algorithm for using the cycle-skipping technique to calculate phase and
current direction. Id. Once the algorithm is performed, the final step of
claims 1 and 3 merely displays the results on a display. See also id. at i-fi-1
161-162. "Information as such is an intangible" and, regarding the first step
of Alice, our reviewing court has "treated collecting information, including
when limited to particular content (which does not change its character as
information), as within the realm of abstract ideas." Electric Power, 830
F.3d at 1353. Similarly, the Federal Circuit "treat[s] analyzing information
6
Appeal2017-004471
Application 13/189,844
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Id. at 1354; see also Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
("Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible.").
The claim language, in light of the Specification, thus supports the
Examiner's determination that the claims are directed to the abstract idea of
"an algorithm for determining a direction of current flow." Indeed, courts
have regarded algorithms performing mathematical operations in various
forms as abstract ideas. See Diamond v. Diehr supra (the Arrhenius
equation); Gottschalk v. Benson, 409 U.S. 63 (1972) (an algorithm for
converting binary coded decimal to pure binary); Mackay Radio, 306 U.S.
86 (1939) (a formula describing certain EM standing wave phenomena);
Parker v. Flook, 98 U.S. 2522 (1978) (a formula for computing an alarm
limit); In re Grams, 888 F.2d 835 (Fed. Cir. 1989) (an algorithm for
calculating parameters indicating an abnormal condition); In re Abele, 684
F.2d 902 (CCPA 1982) (calculating the difference between local and
average data values). Therefore, we are not persuaded that the Examiner
erred in determining claims 1 and 3 are directed to an abstract idea under
step one of the Alice framework.
If a claim is directed to a patent-ineligible concept, the second step in
the analysis is to determine whether additional elements of the claim, "both
individually and 'as an ordered combination,"' "'transform the nature of the
claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting
7
Appeal2017-004471
Application 13/189,844
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66,
78-79 (2012)). Thus, 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
78). In other words, the second step is to "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. (citing Mayo, 566 U.S. at 72-73).
Here, the Examiner finds claims 1 and 3 do not recite additional
elements sufficient to transform the abstract idea into patent eligible subject
matter. Ans. 3. In particular, the Examiner finds that these claims recite
elements that amount to no more than "mere instructions to implement the
idea on a computer, and or recitation of generic computer structure that
serves to perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the pertinent
industry (i.e., the displaying of the direction of current flow)." Id.
Appellants argue that even if the claims are directed to an abstract
idea, the claims nevertheless satisfy the second step of the Alice test, because
the claims "can be considered as an improvement in how a computer
processor determines information about a buried utility and its associated
environment by providing an improved method of computation in
calculating utility position through use of the metaphorical concept of
'current direction."' Id. at 5.
As discussed above, claims 1 and 3 recite additional elements/steps of
measuring, at a portable locator system, a three-dimensional magnetic field
generated at least in part based on the phase-encoded modulated EM
8
Appeal2017-004471
Application 13/189,844
reference signal and displaying, on a graphical user interface (GUI) a
representation of the direction of current flow. As indicated above, the
remaining determining steps represent the algorithm or abstract idea of
determining current flow and direction of current flow from the
measurement from the reference signal by the performance of a series of
mathematical operations. The measurement step is merely a data gathering
step for the algorithm, which itself is insufficient to transform the algorithm
into a patent-eligible invention. The display step merely displays the results
of performance of the algorithm and is insufficient post-solution activity that
does not transform the algorithm into a patent-eligible invention. See
Electric Power Group, 830 F.3d at 1355; In re Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716 (Fed. Cir. 2014); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011); Grams supra.
Further, even taken as an ordered combination of elements, claims 1 and 3
merely recite a necessary data gathering step, the algorithm for manipulating
that data via two determination steps, and a display step for displaying the
results of the algorithm.
Appellants attempt to distinguish over Electric Power by asserting
that their claims "are used to aid in finding information about buried utilities
based on electronic machine detection and processing of signals emitted
from the utility and have nothing to do with measuring instantaneous current
direction." Reply Br. 3. However, Appellants' claimed method uses a
portable locator system which has not been recited with any particularity.
Appellants disclose that portable locators are known in the art. Spec. i-f 9.
Further, claims 1 and 3 do not recite, as part of the method, the production or
generation of the reference signal that is to be measured in the claimed
9
Appeal2017-004471
Application 13/189,844
method. More importantly, the claims in Electric Power, similarly to claims
1 and 3 here, included data gathering steps, an algorithm for processing the
gathered data, and display steps for displaying the results of thereof. We,
therefore, are not persuaded that the claims here distinguish from those in
Electric Power in a manner such that this decision would not assist in
guiding our decision here.
As such, we are unable to identify an 'inventive concept,' i.e., an
element or combination of elements that is 'sufficient to ensure that the
claimed methods in practice amount to significantly more than a claim upon
the abstract idea itself. Therefore, we are not persuaded that the Examiner
erred in determining claims 1 and 3 fail to recite additional elements or an
ordered combination of elements which identify an inventive concept or are
sufficient to transform the otherwise ineligible abstract idea into a patent
eligible invention under step two of the Alice framework.
Appellants further assert that various dependent claims relate to
different advantageous ways of processing phase-encoded signals (for
claims 2, 4, and 6) and novel ways of presenting the determined information
to a user (for claims 18-20). Appeal Br. 5. However, Appellants merely
repeat the limitations of these claims and do not explain with any
particularity how these claims do not fail the Alice test for the same reasons
as presented for claims 1 and 3. Appellants' unexplained arguments provide
no basis to reject the Examiner's findings on those points. See 37 C.F.R.
§ 41.37(c)(l)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.");
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that "the
Board reasonably interpreted Rule 41.37 to require more substantive
10
Appeal2017-004471
Application 13/189,844
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art"); see also In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellants do not separately argue any of the remaining claims.
Accordingly, we sustain the Examiner's rejection of claims 1 and 3-24 as
directed to non-statutory subject matter under 35 U.S.C. § 101.
Rejection of Claims 1, 3, 14, 24, and 25 under 35 USC§ 102(b)
The Examiner finds Waite discloses a GUI display method in a
portable locator system for locating a utility line as recited in claims 1 and 3,
including measuring a three-dimensional magnetic field generated at least in
part based on a phase-encoded modulated EM reference signal, determining
current flow and direction of current flow, and displaying a representation of
the direction of current flow on the GUI. Final 4--6. With regard to the
measuring of the three-dimensional magnetic field, the Examiner finds that
such fields are inherently three-dimensional. Id. at 4--5; see also Ans. 10. In
addition, the Examiner finds that modulation of a signal from 100 MHz to
99 MHz would equate to removal of one or more whole or fractional cycles.
Ans. 13.
Appellants argue that the Examiner's findings are factually incorrect
in that, while the magnetic field may be three-dimensional, measurement of
such a signal by magnetic field sensing is not inherently done in three
dimensions. Appeal Br. 6. Appellants contend that coil antennae, such as
described in Waite, only sense magnetic field components in a single
dimensional axis and Waite only measures two discrete magnetic field
components. Id. at 6-7. According to Appellants, "[ t ]hree dimensional
11
Appeal2017-004471
Application 13/189,844
magnetic field measurement and signal processing as done in the locator art,
and in particular as described in Waite, is not three-dimensional." Id. at 6.
Appellants disclose a three-dimensional magnetic field sensor having three
substantially identical EM field sensors to enable measure each of the three
axes of the magnetic field. Id. at 6-7.
Appellants' argument is not persuasive of reversible error in the
Examiner's rejection. We note, as did the Examiner (Ans. 10), that claims 1
and 3 do not recite measuring each of the three dimensional components of
the magnetic field. Instead, claims 1 and 3 recite measuring the three-
dimensional magnetic field which, from a broadest reasonable interpretation,
includes measurement of a single dimensional component of the magnetic
field. Because Appellants concede that magnetic fields are three-
dimensional and that Waite measures two dimensional components of the
magnetic field, the Examiner's finding that Waite measures a three-
dimensional magnetic field is supported on the record.
Appellants next argue that the Examiner also erred in finding that
Waite's method uses a phase-encoded modulated reference signal. Appeal
Br. 7. Appellants contend that Waite uses a modulated FM reference signal
with a phase reference defined at the transmitter. Id. Appellants attempt to
contrast phase-encoded modulation (PM) from frequency modulation (FM),
asserting that PM relates to changing the phase angle of a single-frequency
signal and whose instantaneous frequency is essentially the same at any
point in time. Id. Appellants assert that FM, on the other hand, relates to a
varying frequency signal whose instantaneous frequency at any instant is
different. Id.
12
Appeal2017-004471
Application 13/189,844
This argument is also not persuasive of reversible error. We note that
Appellants fail to address the Examiner's finding that frequency modulation
produces a reference signal that is phase encoded where whole cycles have
been removed, e.g., moving from 100 MHz to 99 MHz removes one whole
cycle per unit of time. See Ans. 13. Further, as the Examiner finds, Waite
teaches that the transmitter 802 generates the reference signal which is a
"signal select modulated FM signal with a phase reference." Final 4; Waite
i-f 86. Moreover, we note that the methods of claims 1 and 3 do not include a
step of generating a phase-encoded modulated EM reference signal, only
that the method measure a three-dimensional magnetic field generated at
least in part based on this signal. Therefore, Appellants attempt to
distinguish a PM signal from an FM signal, even if correct, is not germane to
the rejection of claims 1 and 3. Appellants fail to demonstrate that any
difference in a PM reference signal versus the FM reference signal in Waite
would render Waite incapable of performing the utility line locating method.
To the contrary, that one or more whole or fractional cycles are removed
from the reference signal would not appear to render Waite's method
inoperable because Waite teaches determination of signal direction is based
on use of a signal with a phase reference. Thus, even though Appellants
argue that Waite fails to teach intentional removal of whole or fractional
cycles (Appeal Br. 8), this argument is not persuasive for the reasons given
by the Examiner and above.
Appellants next argue that Waite fails to describe generating a phase-
encoded modulated signal as required by claims 24 and 25. Appeal Br. 11.
Claim 24 depends from claim 1 and further requires a step of generating the
phase-encoded modulated EM signal, and claim 25 depends from claim 24.
13
Appeal2017-004471
Application 13/189,844
The Examiner finds that Waite discloses generating a signal that has a
defined phase reference and that this signal is frequency modulated. Ans.
14. As such, the Examiner determines that Waite's generated signal is a
phase-encoded modulated signal, even though the signal is not phase
modulated. Id. Appellants do not respond to or otherwise address the
Examiner's findings with regard to claims 24 and 25. Therefore,
Appellants' argument is not persuasive of reversible error in the Examiner's
rejection of claims 24 and 25 based on Waite.
Appellants do not argue claim 14 separately. Accordingly, we sustain
the Examiner's rejection of claims 1, 3, 14, 24, and 25 under 35 U.S.C. §
102(b) as anticipated by Waite.
Rejections of Claims 11-13and15-23 under 35 US.C. § 103(a)
Appellants do not argue or otherwise address these rejections.
Accordingly, for the reasons given above and in the Final Office Action, we
sustain these rejections.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner's Answer, the decision of the
Examiner rejecting claims 1 and 3-24 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).
AFFIRMED
14