Ex Parte Vaswani et al

Patent Trial and Appeal Board

Dec 15, 2017

12783206 (P.T.A.B. Dec. 15, 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.
12/783,206 05/19/2010 Raj Vaswani 0072045-000279/SSN-149.1 6204
95240 7590 12/19/2017
Silver Spring Networks, Inc.
c/o Buchanan Ingersoll & Rooney PC
PO Box 1404
Alexandria, VA 22313-1404
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/19/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJ VASWANI and SEAN M. FITZGERALD
Appeal 2016-005717
Application 12/783,2061
Technology Center 3600
Before CHARLES J. BOUDREAU, AMBER L. HAGY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1, 2, and 4—78, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to calculating a carbon credit according to
energy usage and energy generation. Spec. Abstract.
Claim 1 is illustrative and reproduced below:
1 According to Appellants, the real party in interest is Silver Spring
Networks, Inc. App. Br. 2.
Appeal 2016-005717
Application 12/783,206
1. A method, comprising:
receiving, in a computing device, information identifying
amounts of electrical energy consumed at a site during plural
respective intervals of time;
retrieving carbon impact information that corresponds to
generation of electrical energy consumed during each of the
respective intervals of time, wherein different ones of said
intervals of time may have different energy generation sources
associated with them; and
for each of the plural intervals of time, calculating, in the
computing device, a carbon credit based on the retrieved carbon
impact information for that interval of time, and the received
electrical energy consumption information associated with that
same interval of time.
Rejections
Claims 1,2, and 4—78 stand rejected under 35U.S.C. § 101 as being
directed to patent-ineligible subject matter. Non-Final Act. 3—5.
Claim 39 stands rejected under 35U.S.C. § 112, second paragraph as
indefinite. Non-Final Act. 5—6.
Claims 1, 4-S, 10, 11, 13-19, 38, 39, 4A46, 55-57, 66, 77, and 78
stand rejected under 35 U.S.C. § 102(e) as anticipated by Forbes et al.
(US 7,715,951 B2; May 11, 2010). Non-Final Act. 6-42.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Forbes and Sterling et al. (US 4,317,175; Feb. 23, 1982).
Non-Final Act. 42-44.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Forbes and McConnell et al. (US 2008/0255899 Al; Oct. 16,
2008). Non-Final Act. 44-49.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Forbes and Dikeman (US 2008/0183523 Al; July 31, 2008).
Non-Final Act. 49.
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Claims 20-29, 40-43, 47—54, 58—65, and 67—76 stand rejected under
35 U.S.C. § 103(a) as obvious over Forbes. Non-Final Act. 50-58.
Claims 30-37 stand rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Forbes and Margolis et al. (US 7,636,681 B2; Dec. 22,
2009). Non-Final Act. 58-68.
Claims 1, 2, 4—9, 15, 16, and 21—78 stand rejected under 35 U.S.C.
§ 103(a) and America Invents Act (AIA) § 14 as obvious over Forbes.
Non-Final Act. 68—70.
ISSUES
1. Did the Examiner err in concluding claims 1, 2, and 4—78 are
directed to patent-ineligible subject matter?
2. Did the Examiner err in concluding the limitation “relatively
high and low” renders claim 39 indefinite?
3. Did the Examiner err in finding Forbes disclosed calculations
based on the “generation of electrical energy,” as recited in claim 1?
4. Did the Examiner err in finding Forbes disclosed a “display,” as
recited in independent claim 19?
5. Did the Examiner err in finding claims 1,2, 4—9, 15, 16, and
21—78 are directed to a tax strategy under AIA § 14?
ANALYSIS
Rejection under § 101
A) Claims 1, 2, 4^37, and 46—65
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
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obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[l]aws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). Thus, “a new mineral discovered in the earth or a new
plant found in the wild is not patentable subject matter. Likewise, Einstein
could not patent his celebrated law that E=mc2; nor could Newton have
patented the law of gravity. Such discoveries are ‘manifestations of. . .
nature, free to all men and reserved exclusively to none.’” Diamond v.
Chakrabarty, 447 U.S. 303, 309 (1980) (alteration in original) (quoting I dink
Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948)). To
determine patentable subject matter, the Supreme Court has set forth a
two-part test.
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014).
“The inquiry often is whether the claims are directed to ‘a specific means or
method’ for improving technology or whether they are simply directed to an
abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that “all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas” {Mayo, 566 U.S. at 71), and “describing the
claims at... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
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Instead, “the claims are considered in their entirety to ascertain 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).
In the second step, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has “described step two of this analysis as 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. (quotation omitted).
Here, we agree with the Examiner that the claims “merely recite
receiving information and performing a calculation. As such, this falls under
the category of mathematical relationships/formulas, [] which is an abstract
idea.” Ans. 3. The Supreme Court has held that “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.”
Parker v. Flook, 437 U.S. 584, 595 (1978) (quoting In re Richman, 563 F.2d
1026, 1030 (CCPA 1977)). Here, claim 1 is directed to a calculation. The
only steps in claim 1 recite “receiving” and “retrieving” data, and then
“calculating” a carbon credit based on that data. Thus, claim 1 can be
summarized by the following formula:
The total carbon credit (“C”) equals the sum for every time
period (“t”) of energy consumed (“£)”) multiplied by the carbon
impact of energy generated for that time period (“//’).
t
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The calculation must be performed “in a computing device,” but the
Supreme Court is clear that “simply implementing a mathematical principle
on a physical machine, namely a computer, [is] not a patentable application
of that principle.” Mayo, 132 S. Ct. at 1301. Contrary to Appellants’
argument, this is neither a technical problem nor a technical solution. App.
Br. 12—13. We agree with the Examiner that the claim does not provide any
technological improvement to the generic computing device. Ans. 6.
Appellants argue that basing the calculation on the impact of energy
generation rather than energy consumption provides “a new and useful end.”
App. Br. 10—11. However, we agree with the Examiner (Ans. 5) 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.”
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016);
Diamond v. Diehr, 450 U.S. 175, 188—89 (1981). “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.
Ct. 2107,2117 (2013).
Appellants also argue the claims do not preempt all carbon credit
calculations because they are limited to calculations based on energy
generation. App. Br. 11—12. “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). “Where a patent’s claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
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moot.” Id. Similarly, the Supreme Court has instructed that “limiting the
use of an abstract idea to a particular technological environment” cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Alice, 134 S. Ct. at 2358 (quotation omitted).
Indeed, apart from the technological environment, the claims on
appeal are directed merely to a calculation. As in Parker v. Flook, “putting
the formula to the side, there [is] no ‘inventive concept’ in the claimed
application of the formula.” Mayo, 132 S. Ct. at 1299.
Accordingly, we sustain the Examiner’s rejection under § 101 of
claim 1, as well as of claims 2, 4—37, and 46—65, which Appellants argue are
patentable for similar reasons. See App. Br. 10; 37 C.F.R. § 41.37(c)(l)(iv).
B) Claims 38—45 and 66—78
In addition to relying again on their arguments with respect to claim 1,
Appellants further contend claim 38 amounts to “significantly more”
because it recites “automatically controlling the operation of at least one
electricity-consuming device at said site, based upon said calculated value.”
App. Br. 14. We agree with the Examiner, however, that this additional step
“does not amount to significantly more than an abstract idea since this is still
a generic device performing generic functions.” Ans. 7. For example, the
claim does not recite any technological improvement regarding what the
device is, how it is controlled, or even what it should do based on the
calculated value. Thus, we are not persuaded claim 38 provides
“significantly more” within the meaning of Alice. See 134 S. Ct. at 2355.
Accordingly, we sustain the Examiner’s rejection under § 101 of
claim 38, as well as of claims 39-45 and 66—78, which Appellants argue are
patentable for similar reasons. App. Br. 14—15; 37 C.F.R. § 41.37(c)(l)(iv).
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Rejection under § 112
A) Claim 39
Claim 39 depends from claim 38 and further recites “said device is
controlled on the basis of historical data relating to periods of relatively high
and low calculated values.”
Appellants argue claim 39 is not indefinite because “claim 39 is
reciting that the control of the device is based on historical data relating to
periods of high and low calculated values relative to that device.” App. Br.
15—16. “For example, high and low calculated values for an electrical can
opener may be significantly different than high and low calculated values for
a large circular saw.” Id. at 16.
We agree with the Examiner, however, that Appellants’ argument is
not commensurate with the scope of the claims as written. Although
“‘relatively high and low’ could mean relative to the device,” it could also
be referring to any device or the system as a whole. Ans. 8. We also agree
that “[t]he term relatively is not defined by the claim” and “the specification
does not provide a standard for ascertaining the requisite degree.” Id.
Accordingly, we sustain the Examiner’s rejection of claim 39 under
§112, second paragraph.
Rejection under § 102
A) Claims 1, 4-7, 10, 11, 13-18, 38, 39, 44-45, 57, 66, 77, and 78
Claim 1 recites “retrieving carbon impact information that
corresponds to generation of electrical energy consumed during each of the
respective intervals of time” and “calculating, in the computing device, a
carbon credit based on the retrieved carbon impact information.”
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Appellants argue that the prior art “Forbes is basing the calculation off
of power that is saved” whereas “the present claims recite calculating carbon
credit based on the generation of energy actually consumed.” App. Br. 17—
18. Yet Appellants have not sufficiently addressed Forbes’ disclosure in the
alternative that “[ejmbodiments of the present invention monitor and
calculate precisely how many kilowatts (or carbon credits) are being
generated or saved.” Forbes 5:49—52 (emphasis added); see also Non-Final
Act. 7 (citing same); Ans. 8 (same). Thus, Forbes is not limited to
calculating energy saved, but also discloses calculating energy generated.
Accordingly, we sustain the Examiner’s rejection under § 102 of
claim 1, as well as of claims 4—7, 10, 11, 13—18, 38, 39, 44^46, 55—57,2 66,
77, and 78, which Appellants argue are patentable for similar reasons. See
App. Br. 17; 37 C.F.R. § 41.37(c)(l)(iv).
B) Claim 8
Claim 8 recites “calculating ... at least one a carbon credit based on
multiple retrieved carbon impact information . . . wherein the calculation
includes applying the carbon impact information to the energy usage
information.”3
Appellants argue “Forbes is . . . concerned with power that is not
being used, whereas the present claims recite calculating impact based on a
result of used electrical energy.” App. Br. 19. We agree with the Examiner
2 In the event of further prosecution, and in line with the Examiner’s
objection (Non-Final Act. 3), Appellants may wish to consider amending the
limitation in claim 57 of “during each of the plural respective the given
intervals”.
3 We agree with the Examiner’s objection to the phrase “at least one a” in
claim 8. Non-Final Act. 3.
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that this is not persuasive for the same reasons discussed for claim 1. Ans.
10; Forbes 5:49-52 (“calculate precisely how many kilowatts ... are being
generated . . . per customer”); see also Forbes 6:36—39 (“a current sensor on
each smart appliance or within each smart breaker may measure the amount
of current consumed by each monitored device”).
Accordingly, we sustain the Examiner’s rejection of claim 8 under
§102.
C) Claims 19, 46, 55, and 56
Claim 19 recites “a display that presents an environmental incentive
value.” Claim 46 similarly recites “displaying, on a display device, an
indication of [a] calculated value at [a] site.”
For the display, the Examiner relies solely on Forbes’ “smart device
interface.” Ans. 11; Non-Final Act. 26—27. We agree with Appellants,
however, that Forbes’ smart device interface is not a display. App. Br. 20—
21. Instead, Forbes discloses that “the smart device interface 324 is a
modem.” Forbes 13:57—59.
Accordingly, we are constrained to reverse the Examiner’s rejection
under § 102 of claims 19 and 46, as well as of claims 55 and 56, which
depend from claim 46. See App. Br. 20; 37 C.F.R. § 41.37(c)(l)(iv).
Rejections under §103
A) Claim 2
Appellants argue “Sterling fails to remedy the deficiencies of Forbes”
with respect to claim 1, from which claim 2 depends. App. Br. 21.
However, we are not persuaded Forbes is deficient for the reasons above.
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Accordingly, we sustain the Examiner’s rejection of claim 2 under
§103.
B) Claim 9
Appellants argue “McConnell fails to remedy the deficiencies of
Forbes” with respect to limitations of independent claim 9 that are similar to
those argued with respect to claim 1. App. Br. 23. However, we are not
persuaded Forbes is deficient for the reasons above.
Accordingly, we sustain the Examiner’s rejection of claim 9 under
§103.
C) Claim 12
Appellants argue “Dikeman fails to remedy the deficiencies of
Forbes” with respect to claim 10, from which claim 12 indirectly depends.
App. Br. 24. However, we are not persuaded Forbes is deficient for the
reasons above.
Accordingly, we sustain the Examiner’s rejection of claim 12 under
§ 103.4
D) Claims 20—29 and 47—53
Similar to claim 19, claims 20—29 and 47—53 recite or depend from a
claim reciting a display. The Examiner relies solely on Forbes’ smart device
interface for the claimed display, yet as discussed above the smart device
interface is a modem, not a display. Forbes 13:57—59. The Examiner has
4 In the event of further prosecution and in line with the Examiner’s
objection (Non-Final Act. 3), Appellants may wish to amend “the calculated
environmental doesn’t” in claim 12 to be “the calculated environmental
incentive doesn’t”.
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not set forth an alternative explanation why a display would have been
obvious in Forbes.
Accordingly, we are constrained to reverse the Examiner’s rejection
of claims 20—29 and 47—53 under § 103.
E) Claims 30—37
Appellants argue “Margolis fails to remedy the deficiencies of
Forbes” with respect to limitations of independent claims 20, 32, and 36
similar to those argued with respect to claim 1. App. Br. 27. However, we
are not persuaded Forbes is deficient for the reasons above.
Accordingly, we sustain the Examiner’s rejection of claims 30—37
under § 103.
F) Claims 40—43, 54, 58—65, and 67—76
Appellants argue dependent claims 40-43, 54,5 58—65, and 67—76 are
non-obvious for the same reasons independent claims 38, 57, and 66 are not
anticipated by Forbes. App. Br. 26. However, we are not persuaded Forbes
is deficient for the reasons above.
Accordingly, we sustain the Examiner’s rejection of claims 40-43, 54,
58—65, and 67—76 under § 103.
Rejection under § 103 andAIA § 14
A) Claims 1, 2, 4—9, 15, 16, and 21—78
According to the Examiner, claim 1 “has been interpreted as a strategy
for reducing, avoiding or deferring tax liability (‘tax strategy’) pursuant to
5 In the event of further prosecution, the Examiner may wish to consider
whether claim 54 is indefinite under § 112, second paragraph for lack of
antecedent basis for “said indication.”
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Section 14 of the Leahy-Smith America Invents Act.” Ans. 11. We agree
with Appellants, however, that “[n]one of the rejected claims are directed to,
nor otherwise recite, a strategy for reducing, avoiding or deferring tax
liability.” App. Br. 28. At best, the claims recite a method or apparatus for
calculating a carbon credit, but the Examiner has not explained how the
claims recite what to do with that carbon credit to reduce, avoid, or defer tax
liability.
Accordingly, we reverse the Examiner’s alternative rejection under
§ 103 and AIA § 14 of claims 1, 2, 4—9, 15, 16, and 21—78.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
(1) claims 1, 2, and 4—78 under § 101; (2) claim 39 under § 112, second
paragraph; (3) claims 1, 4—8, 10, 11, 13—18, 38, 39, 44-45, 57, 66, 77, and
78 under § 102; and (4) claims 2, 9, 12, 30-37, 40-43, 54, 58—65, and 67—76
under § 103.
We reverse the Examiner’s decision rejecting (A) claims 19, 46, 55,
and 56 under § 102; (B) claims 20—29 and 47—53 under § 103; and
(C) claims 1, 2, 4—9, 15, 16, and 21—78 under § 103 and AIA § 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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