Ex Parte Seyhan et al

Patent Trial and Appeal Board

Dec 11, 2018

13651515 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/651,515 10/15/2012
28524 7590 12/13/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Tolga Han Seyhan
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.
2011 P24849USO 1 8974
EXAMINER
WU,RUTAO
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOLGA HAN SEYHAN and AMIT CHAKRABORTY
Appeal2017-008209
Application 13/651,515
Technology Center 3600
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JOHN A. EVANS, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action rejecting claims 1-14, 24, and 25, which are
all the pending claims on appeal. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 The real party in interest is Siemens Aktiengesellschaft. App. Br. 2.
Appeal2017-008209
Application 13/651,515
STATEMENT OF THE CASE
Appellants' Specification describes methods and systems for
"reduction of power consumption using incentives." Spec. 1:9-10. Claim 1
is illustrative of Appellants' invention, as reproduced below:
1. A method for reducing an amount of power
consumed comprises:
reading, by a computer system, loads from meters of
customers, wherein the meters are smart meters in
communication via a network and are configured to detect the
load a corresponding one of the customers has used during a
given time period;
predicting, by the computer system, a future total load
from the read loads;
determining, by the computer system, whether the future
total load exceeds a threshold value;
sending, by the computer system, a request message
including terms to each of the customers when the future total
load exceeds the threshold value; and
adjusting, by the computer system, an electric bill of each
customer for a period of time based on whether the
corresponding customer adhered to the corresponding terms,
wherein the terms for each customer includes an amount
the corresponding customer is estimated to profit during the
period for adhering to the terms, and wherein the estimated
amount is ((re+ m-r') * P' * L1t), wherein re is a current rate, m
is a minimum reduction in rate that is likely to cause the
corresponding customer to agree to the terms, P' is a desired
power level, L1t is the period of time, and r' is a discounted rate
for power for the period that is lower than the current rate,
wherein the minimum reduction in rate for each customer
is estimated using historical responses of the corresponding
customer.
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Application 13/651,515
Examiner's Rejection
Claims 1-14, 24, and 25 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to patent-ineligible subject matter. Final
Act. 4.
PRINCIPLES OF LAW
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court has long held that "[l]aws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
"The 'abstract ideas' category embodies 'the longstanding rule that ' [ a ]n
idea of itself is not patentable.'"' Id. at 2355 ( quoting Gottschalk v. Benson,
409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court 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 (2012)). 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. (citing Mayo, 566 U.S. at
77-78).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination'" to determine whether there are additional
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elements that "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 79, 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. (alteration in original) ( quoting Mayo, 566 U.S. at 72-
73). An "inventive concept" requires more than "well-understood, routine,
conventional activity already engaged in" by the relevant community. Rapid
Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016)
( quoting Mayo, 566 U.S. at 79-80). But "an inventive concept can be found
in the non-conventional and non-generic arrangement of known,
conventional pieces." Bascom Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). Under step two, "an inventive
concept must be evident in the claims." RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
The prohibition against patenting an abstract idea "'cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
ANALYSIS
The Examiner determines claims 1-14, 24, and 25, "considering the
elements thereof both individually and as an ordered combination," are
directed to "a judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without significantly more." Final Act. 4 (citing Alice).
In particular, the Examiner finds that the abstract idea underlying these
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claims is "the series of steps instructing how to incentivize reduced power
consumption, which is a method of organizing human activity and an idea of
itself and thus an abstract idea." Id. The Examiner also finds additional
elements recited in the claims do not amount to significantly more than the
judicial exception because "the recited computer, processor, and smart meter
are generic computer structure that serve to perform generic computer
functions that are well-understood, routine, and conventional activities
previously known to the pertinent industry. Final Act. 4; see Spec. 6-7, 16-
17.
Appellants present several arguments against the 35 U.S.C. § 101
rejection. App. Br. 7-15. First, Appellants contend the claims are "limited
to a specific process and system that does not preempt approaches with a
different structure or different techniques." Id. at 9. Appellants also
contend, similar to the claims in Enfish, their claims involve specific
algorithm that "improves technology functionality, which supports a finding
that the pending claims qualify as statutory subject matter." Id. at 10.
Relying again on the decision in Enfish, Appellants assert the Examiner has
not considered the claims as a whole and has overlooked the "described
improvements or benefits," which provide "a technological solution" for
solving the technological problem (i.e., the cost of external supply of power
vs. the cost of locally generated power) described in Appellants' disclosure
in the "Background of the Invention" section. Id. at 12-13. Appellants also
contend the claims recite significantly more than an abstract idea because the
claims describe a specific way "a computer system that interfaces with
'smart meters' (i.e., technology outside of the computer system)." Id. at 14.
In that regard, although Appellants acknowledge the recited computer
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system is generic, Appellants assert one of ordinary skill in the art would
clearly understand "that the combination of a computer system interacting
with a smart meter is substantially more than a generic computer structure"
and "that the recited novel and non-obvious steps/features of predicting,
determining, sending, and adjusting based on the loads read from the smart
meter is substantially more than the alleged abstract idea." App. Br. 15.
We are not persuaded by Appellants' arguments. Instead, we observe
the Examiner has provided a comprehensive response to Appellants'
arguments supported by a preponderance of evidence. Ans. 2---6. As such,
we adopt the Examiner's findings and explanations provided therein. Id.;
Final Act. 4.
Alice Step One
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants' claims are directed to an abstract idea of
"instructing how to incentivize reduced power consumption, which is a
method of organizing human activity and an idea of itself." Ans. 3--4.
Independent claim 11 is directed to "a computer system comprising a
memory for storing a computer program and a processor for executing the
computer program" that performs functions similar to those recited in claim
1. All the steps recited in Appellants' claim 1, including, for example: (i)
"reading, ... , loads from meters of customers," (ii) "predicting, ... , a future
total load from the read loads," (iii) "determining, ... , whether the future
total load exceeds a threshold value," (iv) "sending, ... , a request message
including terms ... when the future total load exceeds the threshold value"
(v) and "adjusting, ... , an electric bill of each customer ... based on
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whether the corresponding customer adhered to the corresponding terms,"
are directed to an abstract idea. As stated by the Examiner, these steps:
[ A ]re steps of organizing human activities because they
describe creating contractual relationships and managing
transactions. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (holding claims directed to creating
contractual relationships were an abstract idea); Accenture
Glob. Servs. v. Guidewire Software, Inc., 728 F.3d 1336, 1344-
47 (Fed. Cir. 2013) (holding generating rule-based tasks was an
abstract idea). In combination they merely describe the
information collection, terms calculation, and contract
execution steps of incentivizing reduced power consumption.
Ans. 4--5. The Examiner further characterizes the claimed steps as:
[I]deas of themselves because they describe data collection and
processing. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359 (Fed. Cir. 2015) (holding a method and media for
automatic pricing in electronic commerce amounted to an
abstract idea); Content Extraction and Transmission LLC v.
Wells Fargo Bank, NA., 776 F.3d 1343 (Fed. Cir. 2014)
(holding scanning and information processing methodology
was an abstract idea). In combination they merely describe the
data collection, analysis, and output steps of incentivizing
reduced power consumption.
Id. at 5---6.
We agree with the Examiner and further note our reviewing court
finds an abstract idea in "analy::ing i11:formation by steps people go through
in their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category." See Elec. Power Grp.
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). See also Bascom,
827 F.3d at 1349-52; cf Spec. 16-17 (describing the claimed operation can
be implemented, for example, by one or more appropriately programmed
general purpose computers); Cyberfone Sys., LLC v. CNN Interactive Grp.,
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Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014) (nonprecedential) ("using
categories to organize, store, and transmit information is well-established").
Similarly, all the additional steps executed by claims 2-7 are abstract
processes of receiving, analyzing, and transmitting data.
Contrary to Appellants' argument that the Examiner's analysis is
based on an oversimplified interpretation of the claims, which are focused
"on a technological solution," (App. Br. 11-13 (citing Enfish)), the claims in
the present application fail to recite the technical details that describe the
alleged technical improvement of "using data provided by smart meters in
order to provide improved communications with customers that achieve a
reduction in power consumption as measured by such smart meters." See
also Reply Br. 2. Instead, the claims merely recite the abstract idea of
obtaining a load information from meters of customers, processing the
information for predicting future loads and determining the excess usage,
and adjusting the electric bill.
Alice Step Two
Turning to the second step of the Alice inquiry, we find nothing in
Appellants' claims that adds anything "significantly more" to transform
them into a patent-eligible application of the abstract idea. Alice, 134 S. Ct.
at 2357. The claimed steps are ordinary steps in data collection and analysis
and are recited in an ordinary order.
We are not persuaded by Appellants' unsupported attorney argument
that the claims represent a technical improvement because the claims specify
a specific way of interaction with smart meters ( e.g., "the recited
steps/features are carried out by a computer system that interfaces with
'smart meters' (i.e., technology outside of the computer system)." App. Br.
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14. Appellants do not persuasively explain how the claims or Specification
provide specific, technical improvements. Rather, as the Examiner points
out, the disclosed types of computers and addition of hardware components
(i.e., smart meters) do not add meaningful limitations to the abstract idea.
Ans. 6. Indeed, the Specification supports the finding that the claimed
system is implemented on a general purpose computer, as understood by one
of ordinary skill in the art. See Spec. 6-7, 16-18; see also App. Br. 15
( citing Spec. 6-7, 16-17). Thus, the Specification does not describe the
system as made up of special-purpose or specially configured computer
components, but rather, as a general-purpose computer that includes generic
components. As a result, nothing recited by the claims "offers a meaningful
limitation beyond generally linking 'the use of the [ method] to a particular
technological environment,' that is, implementation via computers." Alice,
134 S. Ct. at 2360 (quoting Bilski, 561 U.S. at 610-11). Additionally, the
claims' invocation of computers does not transform the claimed subject
matter into patent-eligible applications. Elec. Power Group, 830 F .3d at
1355. As in Electric Power Group, the claims at issue do not require any
nonconventional computer, network, or smart meters, or even a "non-
conventional and non-generic an-angement of known, conventional pieces,"
but merely call for performance of the claimed exception processing
functions "on a set of generic computer components." id. at 1355.
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice, 134 S. Ct. at 2358; see id. at 2359 (concluding
claims "simply instruct[ing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer" are not patent-eligible);
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see also Accenture, 728 F.3d at 1345 (claims reciting "generalized software
components arranged to implement an abstract concept [ of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer" are not patent-eligible); Elec. Power
Group, 830 F.3d 1351 (rejection affirmed for a method of performing real-
time performance monitoring of an electric power grid because "the claims
do not go beyond requiring the collection, analysis, and display of available
information in a particular field ... over conventional computer and network
technology").
Preemption
Appellants' argument that the claims are not directed to an abstract
idea because the claims do not "preempt approaches with a different
structure or different techniques" and are, therefore, patentable, is also
unpersuasive. See App. Br. 9. Lack of preemption does not make the claims
any less abstract. See buySAFE, 765 F.3d at 1355 (collecting cases);
Accenture, 728 F.3d at 1345; Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility"). Accordingly, we agree with the Examiner
that the claims do not recite an "inventive concept" sufficient to transform
the abstract idea into patent-eligible subject matter.
Novelty
With regard to Appellants' argument that the pending claims are
patent-eligible because there are no obviousness or novelty rejections of the
claims, (see App. Br. 14; Reply Br. 3), Appellants improperly conflate the
requirements for eligible subject matter ( § 101) with the independent
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requirements of novelty(§ 102) and non-obviousness(§ 103). "The
'novelty' of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the§ 101 categories of possibly patentable subject matter." Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981); see also Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (stating that, "under the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility").
CONCLUSION
Because Appellants' claims 1-14, 24, and 25 are directed to a patent-
ineligible abstract concept and do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of these claims under 35 U.S.C. § 101 as being directed to non-
statutory subject matter in light of Alice and its progeny.
DECISION
We affirm the Examiner's rejection of claims 1-14, 24, and 25.
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).
AFFIRMED
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