Ex Parte S et al

Patent Trial and Appeal Board

Jul 13, 2018

13362585 (P.T.A.B. Jul. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/362,585 01/31/2012 Anandamurugan S
144467 7590 07/17/2018
Mintz Levin/GE
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.
254162 I
047079-391F01US
EXAMINER
9359
One Financial Center suoLo, JANET L
Boston, MA 02111
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
07/17/2018 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):
ipdocketingbos@mintz.com
GPO.mail@GE.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANANDAMURUGAN S, MATTHIAS JOBST, and
JEROME POIRIER
Appeal2017-008962
Application 13/362,585 1
Technology Center 2800
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, Jr., Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's final rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 General Electric Company is identified as the real party in interest. Appeal
Br. 3.
Appeal2017-008962
Application 13/362,585
THE INVENTION
Claims 1 and 2, reproduced below, are illustrative of the subject
matter on appeal.
1. A system for calibrating comprising:
an ultrasonic wedge having a back wall;
a probe comprising a phased array transducer, wherein
the probe is mounted to a probe interface wall of the ultrasonic
wedge; and
an ultrasonic inspection station connected to the probe by
a probe cable, wherein the ultrasonic inspection station
comprises a display, a microprocessor, a memory coupled to the
microprocessor, and one or more executable instructions stored
in the memory and configured to be executed by the processor,
the executable instructions including instructions for:
displaying a first ultrasonic signal gate on the display,
wherein the first ultrasonic signal gate is based on a theoretical
Z distance between a first transducer element of the phased
array transducer of the probe and a back wall of the ultrasonic
wedge, and a theoretical Z distance between a last transducer
element of the phased array transducer of the probe and the
back wall of the ultrasonic wedge;
locating a second ultrasonic signal gate above a start of
the first ultrasonic signal gate;
firing an ultrasonic signal from each of the transducer
elements;
identifying each of the transducer elements that did not
trigger the first ultrasonic signal gate as dead transducer
elements; and
identifying each of the transducer elements that triggered
the first ultrasonic signal gate and also triggered the second
ultrasonic signal gate as dead transducer elements.
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2. A method for calibrating an ultrasonic wedge and a probe
having a phased array transducer, the method comprising the
steps of:
automatically determining an ultrasonic signal
acquisition width based on a first plurality of theoretical
parameters of the ultrasonic wedge and the phased array
transducer of the probe; and
automatically determining a location of a first ultrasonic
signal gate based on a second plurality of theoretical parameters
of the ultrasonic wedge and the phased array transducer of the
probe.
Appeal Br. 2 25-26 (Claims Appendix).
Independent claim 1 is directed to a system for calibrating comprising
identifying dead transducer elements from a first ultrasonic signal gate based
on a first and second "theoretical Z distance." Independent claims 2 and 13
are similarly directed to methods of calibrating which comprise determining
a location of an ultrasonic signal gate based on theoretical parameters.
Appellants argue claims 1, 2, and 13 as a group (Appeal Br. 9-15).
2 Citations are to Final Rejection ("Final"), mailed 2/11/2016, to the
Corrected Appeal Brief, filed 10/24/2016 ("Appeal Br."), the Examiner's
Answer ("Ans."), mailed 3/7/2017 and to the Reply Br. ("Reply Br."), filed
5/8/2017.
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Application 13/362,585
REJECTIONS AND REFERENCES
The Examiner maintains the following rejections on appeal:
1. Claims 1-203 are rejected under 35 U.S.C. § 101.
2. Claims 2, 3, and 6 are rejected under 35 U.S.C. § I02(b) over
Buttram, (U.S. Patent Publication No. 2007 /0000328 Al, published Jan. 4,
2007) ("Buttram").
3. Claims 7, 13, and 17-19 are rejected under 35 U.S.C. § I03(a)
over Buttram in view of Simard et al., (U.S. Patent Publication
2010/0242613 Al, published Sept. 30, 2010) ("Simard").
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After considering
the evidence presented in this Appeal and each of Appellants' arguments, we
are not persuaded that Appellants identify reversible error. Thus, we affirm
3 Appellants' statement that "[c]laims 1-20 stand rejected under 35 U.S.C.
§ 101, with claims 1, 4--5, 8-12, 14--16, and 20 only rejected on this ground"
(Appeal Br. 9) is understood to mean that Appellants and the Examiner were
in agreement that all of claims 1-20 were rejected under 101. See also
Appeal Br. 9 (addressing "the rejection of claims 1-20 under 35 U.S.C.
101") and Ans. 3 (stating "[c]laims 1-20 stand rejected under 35 U.S.C.
101").
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Application 13/362,585
the Examiner's rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Rejection 1, Section 101
With respect to this rejection, Appellants argue independent claims 1,
2, and 13 as a group. Appeal Br. 9--15. We therefore limit our discussion to
claim 1. Claims 2 and 13 stand or fall with that claim. 37 C.F.R.
§ 4I.37(c)(l)(iv) (2013).
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 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. In that regard, the Examiner
determined that the claims are directed to performing mathematical
calculations to identify and calculate parameters, locations, and gates, and
therefore concluded that the subject matter of the claims is directed to the
judicial exception of abstract ideas. Ans. 3-5; Final 3-5.
Appellants challenge the Examiner's articulation of what the claims are
directed to by arguing that the Examiner fails to analyze each claim as a
whole, but the challenge is unfounded. See Appeal Br. 12-13; Reply Br. 2-
3. For example, the fact that the preamble of the claims indicates they are
drafted for calibrating is not dispositive. The question is what the claims are
"directed to."
[T]he "directed to" inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether "their
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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, 2016 WL 1393573, at *5 (Fed. Cir. 2016)
(inquiring into "the focus of the claimed advance over the prior
art").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
this, there appears to be no dispute as Appellants admit that "the claims are
directed to a specific application of the mathematical operations" (Appeal
Br. 14). "The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas v. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)). "In determining the eligibility of respondents' claimed process for
patent protection under § 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
As set out in the Background section of Appellants' Specification, it
was well known to calibrate a probe and ultrasonic wedge combination
(i1i15-6). The claims are directed to determining values for a first ultrasonic
signal gate and identifying dead transducer elements, wherein both steps are
based on calculations using theoretical parameters. The Specification
clarifies that the theoretical parameters comprise numerical values, such as a
theoretical distance of a transducer element or theoretical offset for the
ultrasonic wedge, that are inputted into specific equations as part of the
calibration process (Spec. ,r 25). In addition, the Specification repeatedly
discloses that by calculating the equations using the theoretical parameters,
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the invention "simplifies the calibration process" by determining the
ultrasonic signal acquisition parameters without "the need for an inspection
technician" (i-f 26). Accordingly, the claims as a whole, in light of the
Specification, are directed to performing mathematical calculations using
theoretical parameters to simplify the calibration process of a probe, which
is consistent with the Examiner's position that the claim is directed to
mathematical calculations (Final 3-5; Ans. 3--4).
Step two 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."' Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)). In this regard, the Examiner determined that, generically linking
the use of a judicial exception to a particular technological environment or
field of use (such as improving ultrasonic inspection technology) is
insufficient because there are no additional elements that "that are sufficient
to amount to significantly more than the judicial exception because the only
additional elements ... are all generic elements or conventional equipment
required by the claimed abstract idea at a high level of generality" (Final 3).
The Specification does not support Appellants' argument that the
additional elements comprise significantly more than the abstract idea of
performing mathematical calculations as part of a calibration process. The
claims employ conventional devices (ultrasonic wedge, ultrasonic
transducers, back wall, probe, ultrasonic inspection station) for their
common functions. The Specification discloses that ultrasonic wedges
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attached to back walls, probes and ultrasonic transducers are conventional
components of an ultrasonic testing/inspection system (i1i13-5). In addition,
the Background of the Specification discloses that many of the steps in the
claims, such as determining signal width and determining when transducer
elements are not operating properly (i.e., dead or alive) are well known steps
for performing a calibration procedure (i-f 5 disclosing determining ultrasonic
signal acquisition width when testing pipe welds) and conventionally
performed by an inspection technician (i-f 6). Simply adding that the
conventional steps are "automatically" determined in the claims without
further specifying the entity performing the steps or the application of such
determinations beyond what is already established as conventional is
insufficient to amount to significantly more than the abstract idea. Cf Alice,
134 S. Ct. 2358 ( citation omitted). "[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention. Stating an abstract idea 'while adding the words "apply
it"' is not enough for patent eligibility." Id.
The Appellants further argue that the claims comprise significantly
more than simple calculations because they "improve the technology of
ultrasonic inspections by improving the calibration of the wedge and probe
using the results of these allegedly mathematical steps" (Appeal Br. 14)
( emphasis omitted). Appellants, however, do not persuasively argue why
the additional elements of the claim (beyond calculating) are not routine or
conventional. Each of the steps of the claims comprise generating
mathematical values (i.e., displaying first signal gate based on theoretical
distances, locating a second gate above the first gate and identifying dead
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transducer elements). The claims do not disclose any application or further
use after generating the mathematical values/gate and identifying the dead
transducer elements. Therefore, the claims do not disclose using the results
of the calculations from generating the gate and identifying the dead
elements for any improvement or application beyond the calculation of
additional math. This supports the Examiner's finding that the
determinations/calculations made in the claims "are not further used to
feedback data and carry out a calibration." (Ans. 4). Accordingly,
Appellants' arguments that the claims comprise significantly more than the
abstract idea are not persuasive.
In addition, we agree that Parker v. Flook, 437 U.S. 584 (1978),
referenced by the Examiner (Final 10; Ans. 3), supports the Examiner's
conclusion that a preponderance of the evidence shows that the limitations in
Appellants' claims are directed to an abstract idea and are non-statutory.
Similar to Appellants' claims, the claims and Specification in Flook
disclosed monitoring operating conditions such as temperature, pressure and
flow rates and generating an alarm when any of the operating conditions
exceed a predetermined alarm limit. Flook, 437 U.S. at 586. The Court
based its determination that the claims were non-statutory in Flook upon
their conclusion that "[r]espondent's application simply provides a new and
presumably better method for calculating alarm limit values," citing "'if a
claim is directed essentially to a method of calculating, using a mathematical
formula, even if the solution is for a specific purpose, the claimed method is
nonstatutory.' In re Richman, 563 F.2d 1026, 1030 (1977)." Id. at 595-596.
Therefore, the limitations of Appellants' claims are non-statutory because,
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like the claims in Flook, the limitations of Appellants' are directed to
mathematical calculations using theoretical parameters to determine values
of ultrasonic signal gates and identify dead transducer elements.
For the foregoing reasons, Appellants have not shown error in the
Examiner's Alice step two determination that the claims do not include an
element or combination of elements sufficient to ensure that in practice they
amount to significantly more than to be upon the ineligible concept itself.
The remaining arguments have been carefully considered but are
unpersuasive as to error in the rejection.
The rejection of claims 1-20 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is sustained.
Rejection 2, Section 102
A preponderance of the evidence supports the Examiner's finding that
the claimed subject matter of representative claim 1 is anticipated within the
meaning of§ 102 in view of the applied prior art of Buttram. Accordingly,
we will sustain all of the Examiner's rejections for essentially those reasons
expressed in the Answer, including the Examiner's Response to Argument
section, and we add the following primarily for emphasis.
"[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope,
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a broad construction during prosecution creates no unfairness to the
applicant or patentee." Id.
Appellants argue that independent claim 2 and dependent claims 3 and
6 are not anticipated by Buttram because "the Examiner has failed to explain
how Buttram's general description teaches the specific recitation in claim 2
of 'automatically determining an ultrasonic signal acquisition width"'
(Appeal Br. 17-18; Reply Br. 4--5).
Appellants' arguments are unpersuasive. There is no dispute between
Appellants and the Examiner that the Specification defines the width as
comprising the distance or time between the times an acquisition starts and
stops (i-f 25). The Examiner properly explains that Buttram teaches width by
disclosing calculating a tip depth from the time it takes for sound to start
(i.e., time of acquisition) to travel to the crack tip and back (i.e., stop) at a
specified arrival time (Buttram ,r 18). Appellants do not provide any
persuasive reasoning or evidence why the claimed width is not encompassed
by Buttram's calculation of the tip depth.
Appellants further argue that Buttram does not teach "determining a
location of a first ultrasonic signal gate based on a second plurality of
theoretical parameters" as recited in claim 2, because "the Examiner
acknowledges that the Application describes the first ultrasonic signal gate
as being based on two theoretical Z distances" while "at best Buttram
teaches determining a single distance between two elements" (Reply Br. 4)
( emphasis omitted). A preponderance of the evidence does not support
Appellants' arguments. Claim 2 does not require two theoretical Z
distances. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (it is well
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established that limitations not appearing in the claims cannot be relied upon
for patentability). The Examiner only discusses the cited portion of the
Specification (i-f 10) as an example to illustrate the Examiner's point that the
Specification does not provide an explicit definition for the claim phrase
"location of a first ultrasonic signal gate" (Ans. 6). Neither the Specification
nor the claims actually require the first ultrasonic signal gate to be based on
two different theoretical Z distances. 4 Claim 2 requires only that the
location value be "based on a second plurality of theoretical values."
Because the Specification does not provide a specific definition for "location
of a first ultrasonic signal gate" and only discloses determining the
difference in distances between a transducer element and a wall of the
wedge, the Examiner properly interpreted the claim term to encompass the
difference between a height of a transducer of a probe and the wall of the
wedge (Ans. 6). The Examiner finds that "h" in Figure 9 of Buttram teaches
calculating a difference between the height of the transducer (i.e., one value)
and a wall of the wedge (a second theoretical value). Id. Therefore, a
preponderance of the evidence supports the Examiner's position that
4 While claim 1 and paragraph 10 of the Specification disclose "one
embodiment" in which the first ultrasonic signal gate is based on "a
theoretical Z distance between a first transducer element ... and a back
wall" and "a theoretical Z distance between a last transducer element ... and
the back wall," neither claim 1 or the cited portion of the Specification
disclose that the first transducer element is distinct from the last transducer
element (i.e., there could be only one transducer element which is both the
first and last) or that the two theoretical Z distances are actually distinct and
different from one another. In addition, only independent claim 1 discloses
that the first ultrasonic signal gate is based on the theoretical Z distances and
the claim at issue in this rejection is independent claim 2.
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Buttram properly anticipates the claim limitation by teaching determining a
location, or difference, based upon a plurality of theoretical values.
Accordingly, we affirm the Examiner's anticipation rejection.
Rejection 3, Section 103
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we find that the preponderance of the
evidence supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. We sustain the
Examiner's§ 103 rejections because we are unpersuaded of error in the
Examiner's determination of obviousness essentially for the reasons set out
by the Examiner in the Answer.
We add the following primarily for emphasis.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
With respect to rejection 3, Appellants do not offer any new
arguments with respect to dependent claim 7 (Appeal Br. 20), therefore
claim 7 stands or falls with independent claim 2 which was affirmed in
rejection II. Appellants argue claims 13 and 17-19 as a group (Appeal Br.
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20-23), therefore those claims stand or fall together. 37 C.F.R.
§ 4I.37(c)(l)(iv) (2013).
Appellants' arguments regarding claims 13 and 17-19 are
unpersuasive. Appellants argue that the claims were improperly rejected
because Buttram does not teach determining parameters based on an
operating status of the transducer elements. The Examiner, however,
correctly points out that the claims only require determining parameters
based on time of flight. In re Self, 671 F .2d at 1348 (it is well established
that limitations not appearing in the claims cannot be relied upon for
patentability). In addition, Appellants argue that the secondary reference
Simard fails to teach the claim limitations "determining at least one actual
parameter" and "determining a location of a first ultrasonic signal gate;"
however, the Examiner cited the primary reference (rather than Simard) as
disclosing that limitation. In response to Appellants' arguments against the
references individually, one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413,426 (CCPA 1981); In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Consequently, a
preponderance of the evidence supports the Examiner's position that claims
13 and 17-19 were properly rejected over Buttram in view of Simard.
The remaining arguments have been carefully considered but are
unpersuasive as to error in the rejection.
Because Appellants have failed to identify harmful error, we sustain
the Examiner's rejection of claims 7, 13, and 17-19 as unpatentable over
Buttram in view of Simard.
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DECISION
For the above reasons, the Examiner's rejections of claims 1-20 are
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 )(iv).
AFFIRMED
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