Ex Parte Santinato et al

Patent Trial and Appeal Board

Apr 24, 2017

12886618 (P.T.A.B. Apr. 24, 2017)

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.
12/886,618 09/21/2010 MATTEO SANTINATO PAT-IT20020023-U S -CNT 1885
173 7590 04/26/2017
WHIRLPOOL CORPORATION - MD 3601
2000 NORTH M63
BENTON HARBOR, MI 49022
EXAMINER
ALLEN, AKIBA KANELLE
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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):
whirlpool_patents_co@whirlpool.com
mike_lafrenz @ whirlpool .com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTEO SANTINATO,
ETTORE ARIONE, and GIORGIO BRAGHINI
Appeal 2015-0073211
Application 12/886,6182
Technology Center 3600
Before BIBHU R. MOHANTY, MATTHEW S. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 2—6, 8, 9, 11—16, and 18—27. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
January 5, 2015), and Reply Brief (“Reply Br.,” filed July 31, 2015), the
Examiner’s Supplemental Answer (“Ans.,” mailed June 17, 2015) and Final
Office Action (“Final Act.,” mailed July 22, 2014).
2 Appellants identify Whirlpool Corporation as the real party in interest
(Appeal Br. 2).
Appeal 2015-007321
Application 12/886,618
CLAIMED INVENTION
Appellants’ claims relate generally “to an electronic system for
power/energy consumption management of one or more domestic
appliances, which is routinely informed on actual energy tariff through a
network control unit” (Spec. 2).
Claims 18, 19, and 20 are the independent claims on appeal. Claim
18, reproduced below with bracketing matter added, is illustrative of the
subject matter on appeal:
18. An electronic system for power consumption
management of a domestic appliance having a working cycle,
said domestic appliance selected from the group comprising a
clothes washing machine, a clothes dryer, a dishwasher, a
refrigerator, a freezer, or an ice maker, the system comprising:
[a] a user interface displaying:
[b] the working cycle;
[c] a plurality of switch-on times for the domestic
appliance comprising at least a current switch-on time and
at least one future switch-on time for the working cycle;
and
[d] a current energy cost of executing the working
cycle corresponding to the current switch-on time and a
future cost of executing the working cycle corresponding
to each of the at least one future switch-on times based on
actual energy information to define corresponding pairs of
switch-on time and energy cost; and
[e] a selector key coupled with the user interface and
configured to select one of the plurality of pairs of switch-
on time and corresponding energy cost;
[f] wherein a user is able to select a desired switch-
on time for the domestic appliance from the plurality of
pairs of switch-on time and corresponding energy cost
based on a user's cost preference.
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Application 12/886,618
REJECTIONS
Claims 11—16 and 19 are rejected under 35U.S.C. § 101 as being
directed to non-statutory subject matter.3
Claims 2, 4—6, 8, 18—21, and 23—26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dinkin (US 6,591,253 Bl, iss. July 8, 2003)
and Schweickart (US 6,252,883 Bl, iss. June 26, 2001).
Claims 3, 9, 11—16, 22, and 27 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Dinkin, Schweickart, and Ehlers (US 2004/0133314
Al, pub. July 8, 2004).
ANALYSIS
Non-Statutory Subject Matter
Independent claim 19 and dependent claims 1116
Appellants argue claims 11—16 and 19 as a group (see Reply Br. 1 4).
We select independent claim 19 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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.
The “directed to” inquiry [] cannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and
actions involves a law of nature and/or natural phenomenon—
after all, they take place in the physical world. See Mayo, 132
3 The Examiner entered this rejection as a new ground in the Answer (see
Ans. 4).
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S. Ct. at 1293 (“For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas.”) Rather, the “directed to” inquiry applies a stage-
one filter to claims, considered in light of the specification, based
on whether “their 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”).
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “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, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
In rejecting claims 11—16 and 19, the Examiner finds
the claims are directed to allowing consumers to execute a
working cycle through selection of a cost/time pair, which is
considered to be an abstract idea inasmuch as such activity is
considered both a fundamental economic practice and a method
of organizing human activity by providing an opportunity for
parties to enter into a specified agreement.
(Ans. 5). The Examiner also finds that “[t]he elements of the processes of
the invention, when taken in combination, together do not offer substantially
more than the sum of the functions of the elements when each is taken
alone” {id. at 6), and “[t]he elements together execute in routinely and
conventionally accepted coordinated manners and interact with their partner
elements to achieve an overall outcome which, similarly, is merely the
combined and coordinated execution of generic computer functionalities
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which are well-understood, routine and conventional activities previously
known to the industry” (id. at 6—7).
Appellants argue that independent claim 19 is not directed to an
abstract idea; but rather, claim 19 “relates to providing a process by which a
user can select a time to start a working cycle of a domestic appliance based
on pairs of switch-on time and cost values” (Reply Br. 2). We cannot agree.
According to the Specification, “[d]aily energy demand isn’t flat;
peaks of energy are generated during the day which creates variable demand
and increases a utility company's charge to consumers” (Spec. 4). The
Specification proposes that “it would be advantageous to design a new
generation of appliances that are able to manage power consumption with
different tariffs on the base of signed power supply contract” (id. | 5), and
identifies an “object of the present invention is to make the user aware of
potential energy cost savings in selecting different delayed switch-on times
for each appliance” (id. 1 6). The Specification describes achieving this by
“add[ing] minimal modifications to [a] standard user interface” (id. | 59)
whereby
[pjressing the ‘selector’ key on the appliance, the display scrolls
through a variety of opportunities showing the corresponding
charges (Euro, $/cent or other currency). The user accepts a
selection by pressing the usual ‘start’ key. The appliance will
start its working based on the time (the input can be a delay time
or the time on which the appliance has to start actually its
program) and corresponding charge that was displayed.
(Id. 1 60).
Under step one of the framework set forth in Alice, we agree with the
Examiner that the invention is drawn to an abstract idea inasmuch as it
“provides] an opportunity for parties to enter into a specified agreement”
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(Ans. 5), which in this case provides a user with the opportunity to, e.g.,
“select a time to start a working cycle of a domestic appliance based on pairs
of switch-on time and cost values” (Reply Br. 2). In making this
determination, we note that the steps recited in independent claim 19 involve
nothing more than providing data, displaying data, i.e., “pairs of switch-on
time and energy cost,” and “providing for a selecting of one of the pairs”
utilizing a user interface with “minimal modifications to [a] standard user
interface” (see Spec. 1 59).
In this regard, we find the steps of independent claim 19 are similar to
the steps that the Federal Circuit determined were patent ineligible in
Electric Power Grp. LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). In
Electric Power, the method claims at issue were directed to performing real­
time performance monitoring of an electric power grid by collecting data
from multiple data sources, analyzing the data, and displaying the results.
Elec. Power Grp. LLC, 830 F.3d at 1351—52. The Federal Circuit held that
the claims were directed to an abstract idea, explaining that “[t]he advance
they purport to make is a process of gathering and analyzing information of
a specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.” Elec.
Power Grp., 830 F.3d at 1354.
More recently, the concept of “using an electronic device to obtain
clinical trial data that would otherwise be collected by pen-and-paper diary,
and analyzing the data to decide whether to prompt action” was found to be
an abstract idea. eResearchTechnology, Inc. v. GRF, Inc., 186 F. Supp. 3d
463, 473 (W.D. Pa. 2016), affd., No. 2016-2281, 2017 WL 1033672 (mem.)
(Fed. Cir. Mar. 17, 2017) (citing OIP Techs., Inc. v. Amazon.com, Inc., 788
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F.3d 1359, 1361—62 (Fed.Cir.2015) (Finding a method comprising (1)
testing prices, (2) gathering statistics about how customers reacted to the
prices, (3) using that data to estimate outcomes, and (4) acting on estimated
outcomes (i.e., automatically selecting and offering new prices based on
estimated outcome) to be directed to the abstract idea of price optimization.);
see also Intellectual Ventures ILLC v. Erie Indem. Co., 2015 U.S. Dist.
LEXIS 129153, at *94 (finding a method of “gathering, storing, and acting
on data based on predetermined rules” to be directed to an abstract idea).
Accordingly, we find that independent claim 19 involves nothing
more than providing data, displaying data, selecting data — activities
squarely within the realm of abstract ideas. See, e.g., Elec. Power Grp.,
LLC, 830 F.3d 1353—54 (when “the focus of the asserted claims” is “on
collecting information, analyzing it, and displaying certain results of the
collection and analysis,” the claims are directed to an abstract idea).
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) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S Ct. 1289, 1294
(2012)).
And, similar to the situation in Electric Power, we find nothing
sufficient to remove the claims from the class of subject matter ineligible for
patenting. As the court explained in Electric Power, “merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
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category of abstract ideas.” Elec. Power Grp., 830 F.3d at 1355.
Furthermore, pairing a plurality of switch-on times and corresponding
energy costs does not add inventiveness because it too requires the
application of conventional, well-known analytical steps. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.Cir.2014) (“[T]he claimed
sequence of steps comprises only ‘conventional steps, specified at a high
level of generality,’ which is insufficient to supply an ‘inventive concept.’”)
(citing Alice, 134 S. Ct. at 2357) (internal citations omitted). And, there is
no indication in the record that any specialized computer hardware or other
“inventive” computer components are required. As noted above, the
Specification describes “add[ing] minimal modifications to [a] standard user
interface” (Spec. 1 59).
Appellants also argue that the claims are patent-eligible because they
require “a specific set of domestic appliances that have a working cycle and
steps such as displaying on a user interface and providing for a selecting of
one of the pairs of switch-on time and corresponding energy cost so that the
working cycle may be executed for the corresponding energy cost” (Reply
Br. 4).
Although the Supreme Court has described “the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption,” A lice, 134 S. Ct. at 2354,
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
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Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). Although “preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Id.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 19 and claims 11—16 which fall with
independent claim 19.
Obviousness
Independent claim 18 and dependent claims 4 6 and 8
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 18 under 35 U.S.C. § 103(a) because Dinkin,
upon which the Examiner relies, fails to disclose or suggest limitations [c]
and [d] of independent claim which recite generally “a user interface
displaying”
a plurality of switch-on times for the domestic appliance
comprising at least a current switch-on time and at least one
future switch-on time for the working cycle and a current energy
cost of executing the working cycle corresponding to the current
switch-on time and a future cost of executing the working cycle
corresponding to each of the at least one future switch-on times
based on actual energy information to define corresponding pairs
of switch-on time and energy cost and further fails to disclose a
user interface displaying the working cycle of the appliance and
the pairs of switch-on times and corresponding energy costs.
(Appeal Br. 11).
The Examiner maintains that the rejection is proper, and cites Dinkin
at column 3, lines 29—39; column 3, line 66 through column 4, line 3;
column 4, lines 10—19; column 4, lines 58 through column 5, line 1; claim
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12; and Figures 1 and 2, as disclosing the argued limitations (see Final Act.
3—6; see also Ans. 19—21). However, we agree with Appellants that there is
nothing in the cited portions that discloses or suggests the argued limitations.
In making this determination, we note that Dinkin is directed to a
“system for real time pricing of fine-grained resources which permits
efficient and intelligent multi-parameter purchasing/consumption of fine­
grained resources” (Dinkin, col. 1,11. 13—16). Dinkin discloses that a “user
may program a time schedule, temperature set points or the like into central
processing unit 12 in its embodiment as a home computer or into the central
processing unit portion of a controller associated with a so-called ‘smart
house’” (id. at col. 4,11. 15—19). Dinkin further discloses that its system
“determine[s] the current and likely future price of various goods or services
by utilizing a sophisticated pricing algorithm in combination with
communications containing current pricing for those goods or service from
one or more source” (id. at col. 4,11. 53—57; see also id. at col. 4,11. 25—51).
Next, Dinkin discloses
the periodic usage or consumption of those utilities is scheduled
by central processing unit 12, based upon the real time pricing,
both current and predicted. In this manner, for example, it may
be possible to utilize central processing unit 12 to vary the start
time for an appliance, such as a dishwasher, until such time as
the cost of water and electricity reach a daily minimum.
(Id. at col. 4,11. 58—64). Thereafter, Dinkin discloses that “the HVAC
system and appliance systems are controlled utilizing central processing unit
12 in accordance with the schedule determined above” (id. at col. 5,11. 12—
15).
We have reviewed the cited portions of Dinkin and agree with
Appellants that none of the cited portions of Dinkin discloses or suggests the
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argued limitations. In particular, we fail to see, and the Examiner does not
adequately explain how, Dinkin’s disclosure regarding “the prompting of a
user for a desired HVAC/appliance schedule” (Ans. 20 (citing Dinkin, col. 4,
11. 10-19)) discloses or suggests the argued limitations. Instead, we agree
with Appellants that “[t]he cited portions of Dinkin et al. '253 relied on in
the rejection relate to a system by which the central processing unit 12
automatically decides which appliances to run and when based on a
predetermined schedule that is based on current and future real time pricing”
(Appeal Br. 12). We also agree with Appellants that the “interface means,”
relied on by the Examiner (see Ans. 20 (citing Dinkin, claim 12)), “is not a
user interface displaying a working cycle of the appliance” (Appeal Br. 13—
14).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 18 under 35 U.S.C. § 103(a) as unpatentable over
Dinkin and Schweickart. For the same reasons, we also do not sustain the
Examiner’s rejection of dependent claims 4—6 and 8 which depend from
independent claim 18.
Independent claims 19 and 20, and dependent claims 21 and 23—26
Independent claims 19 and 20 include limitations substantially similar
to independent claim 18’s limitations [c] and [d] discussed above.
Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of independent claims 19 and 20, and claims 21 and 23—26 that
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depend therefrom, for the same reasons set forth above with respect to
independent claim 18.
Dependent claims 3, 9, 11—16, 22, and 27
Claims 3, 9, 11—16, 22, and 27 depend, directly or indirectly, from one
of independent claims 18—20, and thus, incorporate limitations [b] and [c]
recited in independent claim 18 or the similar limitations recited in
independent claims 19 and 20. The Examiner’s rejection with respect to
Ehlers, in combination with Dinkin and Schweickart does not cure the
above-discussed shortcomings of Dinkin and Schweickart identified by
Appellants. Thus, we do not sustain the Examiner’s rejection of dependent
claims 3, 9, 11—16, 22, and 27 under 35 U.S.C. § 103(a) for the same reasons
set forth above with respect to independent claim 18.
DECISION
The Examiner’s rejection of claims 11—16 and 19 under 35 U.S.C.
§ 101 is sustained.
The Examiner’s rejections of claims 2—6, 8, 9, 11—16, and 18—27
under 35 U.S.C. § 103(a) are reversed.
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-IN-PART
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