Ex Parte Welch et alDownload PDFPatent Trial and Appeal BoardMay 9, 201613003891 (P.T.A.B. May. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/003,891 01/13/2011 WilliamJ. Welch 54549 7590 05/11/2016 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 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. PA-8921UAA; 67097-1127US1 CONFIRMATION NO. 2816 EXAMINER STIFTER JR, TERENCE E ART UNIT PAPER NUMBER 2865 NOTIFICATION DATE DELIVERY MODE 05/11/2016 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): ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM J. WELCH, RAHUL DEVJANI, CHRISTOPHER B. GARRITY, and PAUL RAYMOND SCHIED Appeal2014-005058 Application 13/003,891 Technology Center 2800 Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and JAMES C. HOUSEL, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C. § 134( a) of a final decision of the Primary Examiner to reject claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appellants state that "United Technologies Corporation" is the real party in interest (Appeal Brief entered September 12, 2013, hereinafter "Appeal Br.," 1 ). Appeal2014-005058 Application 13/003,891 BACKGROUND The subject matter on appeal relates to a method, a computer readable medium, and a computer system for quantifying an improvement of gas turbine engine operation as a result of cleaning the engine (Specification, hereinafter "Spec.," Abst.; iii! 3-5). Representative claim 1 is reproduced from page i of the Appeal Brief (Claims Appendix) as follows: 1. A method comprising the step of: quantifying an improvement in a gas turbine engine operation after a cleaning of the engine due to the cleaning utilizing a computer. THE REJECTIONS The Examiner rejected the claims as follows: I. Claims 1-8 under 35 U.S.C. § 101, as not directed to patent eligible subject matter; and II. Claims 1-16 [sic, l-17]under 35 U.S.C. § 103(a) as being unpatentable over Asplund et al. ("Asplund")2 and Bush· 3, 4 ' (Examiner's Answer entered October 23, 2013, hereinafter "Ans.," at 2; Final Office Action entered March 8, 2013, hereinafter "Final Act.," at 2- 12.) 2 US 2006/0048796 Al published March 9, 2006. 3 US 5,835,879 issued November 10, 1998. 4 In the heading of this 35 U.S.C. § 103(a) rejection in the Final Rejection and the Examiner's Answer, the Examiner did not include claim 17; however, the omission appears to have been inadvertent because a fair reading of the reasons in support of the rejection reasonably indicates claim 17 was also rejected under 35 U.S.C. § 103(a) as being unpatentable over Asplund and Bush. 2 Appeal2014-005058 Application 13/003,891 DISCUSSION We affirm these rejections for essentially the reasons set forth in the Examiner's Answer. Nevertheless, we add the following comments primarily for emphasis. I In arguing for the reversal of Rejection I, the Appellants argue claims 1-8 together, focusing only on claim 1. Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv), we confine our discussion to representative claim 1. Claims 2-8 stand or fall with claim 1. The Examiner found that the subject matter of claim 1 is "directed to an abstract idea" (Final Act. 2). Specifically, the Examiner found that the claims are "directed to methods which are not tied to a specific machine or apparatus, and do not result in a transformation" and the claimed method can "be performed on either a general-purpose computing device or even as a mental process" (id.). As for the claim requirement "utilizing a computer," the Examiner found such a requirement does not set forth "specific steps as to how the computer implements the method nor does it show the extent to which (how) the computer imposes meaningful limits on the execution of the claimed method steps" and therefore concluded that the computer may be "nominally, insignificantly, or tangentially related to the performance of the steps, e.g. data gathering" (id. 2-3) (emphasis omitted). The Appellants argue that "[t]he computer recited in claim 1 is not a general-purpose computing device as it is programmed to perform the specific step of quantifying improvement in gas turbine engine operation" (Appeal Br. 4). The Appellants also contend that the method step, as recited 3 Appeal2014-005058 Application 13/003,891 in claim 1, is "not a mental processes [sic] nor is it an abstract idea" because a "user can physically execute the method of claim 1 using the computer" (id.). We disagree with the Appellants. To determine whether an invention claims ineligible subject matter, we apply the two-step test first introduced in Mayo Collaborative Servs. V. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) and further explained in Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014). The first step requires a determination as to whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea. See Alice, 134 S. Ct. at 2355. Secondly, we must "examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Id. at 2357 (quoting Mayo 132 S. Ct. at 1294, 1298). On the first step, we conclude that the Appellants' claim, directed to quantification of an improvement in a gas turbine engine operation, is a comparison between the operation of the engine before and after cleaning for discerning any improvement to the engine operation. The Appellants proffer no persuasive argument against the Examiner's finding that the recited quantification step is nothing more than a mere mathematical comparison of two obtained values-i.e., a mathematical operation that amounts to an abstract idea. Thus, we agree with the Examiner (Ans. 2), and hold the claimed "quantifying" falls under the "abstract idea" umbrella. As articulated in Alice, once we determine the claims encompass a patent-ineligible concept, the inquiry then requires a determination if the claims include an "'inventive concept' sufficient to transform' the claimed abstract idea into a patent-eligible application" 134 S. Ct. at 2357. But the 4 Appeal2014-005058 Application 13/003,891 mere addition of purely conventional steps does not add a sufficient inventive concept to transform an abstract idea into patent eligible subject matter. Id. at 2357-2358. The claims here recite "quantifying an improvement ... utilizing a computer," which the Appellants argue brings the claims into patent eligible subject matter because "[t]he computer recited in claim 1 is not a general-purpose computing device as it is programmed to perform the specific step of quantifying improvement in gas turbine engine operation" (App. Br. 4). We disagree. Just as the general computer implementation fell short in Alice, we conclude that method claim 1, which merely requires a generic utilization of a computer, fails to transform the abstract idea into a patent- eligible invention. As properly reasoned by the Examiner, "the scope of the claim includes embodiments in which the involvement of the computer may be merely[,] nominally, insignificantly, or tangentially related to the performance of the steps, such as when it is utilized to gather data or display the result" (Ans. 3), and thus we find the utilization of the computer in the claims is a conventional or insignificant activity relative to the novel feature (i.e., the abstract idea). Here, we find that claim 1 is not limited to a method involving a computer programmed to perform the quantification as argued by Appellants (App. Br. 4). But even if we read such into the claim, we find such a requirement also falls short of an inventive concept sufficient to transform an abstract idea into a patent-eligible method. As articulated in Alice, a claim including "a generic computer to perform generic computer functions" is not a sufficient inventive concept to transform a claimed abstract idea into a patent eligible claim. 134 S. Ct. at 2357. Therefore, consistent with the 5 Appeal2014-005058 Application 13/003,891 holding of Alice, we find the alleged computer program amounts to a purely conventional step that "amount[ s] to 'nothing significantly more' than an instruction to apply the abstract idea ... using some unspecified, generic computer." Id. (quoting Mayo 132 S. Ct. 1289). Therefore, in view of the above analysis, we hold that claim 1 does not recite an "inventive concept" sufficient to "transform" the claimed subject matter into a patent-eligible application of the abstract idea, and thus we find claims 1-8 do not comply with 35 U.S.C. § 101.5 II In arguing for the reversal of Rejection II, the Appellants argue claims 1-17 together, although additional arguments are provided under two separate headings for claims 3, 11, and 15 and claim 7 (Br. 7). We confine our discussion to claim 1, which we select as representative pursuant to 3 7 C.F.R. § 41.37(c)(l)(iv) and address claims 3, 7, 11, and 15 only to the extent they have been argued separately in accordance with the rule. The Examiner found that "Asplund discloses an improvement in a gas turbine engine operation after a cleaning of the engine due to the cleaning" (Final Act. 3). The Examiner determined Asplund does not disclose a "method of quantifying said improvement in engine operation" in the manner as recited by the claims (id.). The Examiner further found, however, 5 Should there be further prosecution of this application, the Examiner may wish to consider if Alice extends the 35 U.S.C. § 101 analysis to claims 9 and 13. See Alice, 134 S. Ct. at 2357, finding the system and computer readable medium claims are patent ineligible under Section 101 because the "system and media claims add nothing of substance to the underlying abstract idea." 6 Appeal2014-005058 Application 13/003,891 that "Bush discloses an apparatus for indicating fuel efficiency and quantifies an improvement of engine operation" (id., internal citations omitted). Based on these findings, the Examiner concluded that a person ordinary skill in the art would have found it obvious to "to indicate changes in fuel efficiency due to cleaning the engine thereby quantifying the improvement said cleaning of the engine had on engine operation, and to utilize a computer to render aspects of this process more efficient and reliable." (id. at 4). The Appellants contend that it would not have been obvious to modify Asplund with Bush (Appeal Br. 5). In support of this, the Appellants do not contend that "engines can benefit from being cleaned periodically is new" nor that "determining and displaying the operating characteristics of an engine is new," but argue that "the prior art does not disclose a method for isolating and quantifying an improvement in gas turbine engine operation that has been realized due to cleaning the engine" (id. at 6). With respect to Bush, the Appellants additionally argue that "[i]t would be impossible for the system of Bush to indicate changes in fuel efficiency due to cleaning the engine" because "the system calculates fuel efficiency based on only ground speed and fuel flow rate, neither of which is directly and predictably related to the cleanliness of the engine" and alternatively because "fuel efficiency data is constantly discarded in the system of Bush" (id., internal citations omitted) We have considered fully the Appellants' arguments based on their proffered analyses of the Asplund and Bush references and the Examiner's interpretation of the teachings; however, we find that Appellants' arguments fail to reveal any reversible error in the Examiner's factual findings, 7 Appeal2014-005058 Application 13/003,891 analysis, and conclusions of obviousness. The test of obviousness is not whether an express suggestion of the claimed invention is present in any or all references but rather what the references taken collectively would have suggested to those of ordinary skill in the art presumed to be familiar with them. In re Rosselet, 347 F.2d 847, 851(CCPA1965); In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). Additionally, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("the mere absence from the prior art of a teaching or a limitation recited in the patent at issue is insufficient for a conclusion of nonobviousness"). Consistent with the Examiner's finding (Ans. 3), Asplund discloses cleaning an engine to remove the different types of fouling can "reduce the negative effects of the fouling effects to aero engine performance such as increased fuel consumption" ( f 18). Additionally, the Appellants admit that periodic washing of engines is known to translate into better fuel efficiency (Spec. iJ 3). Given these facts, we find it reasonable to conclude that one of ordinary skill in the art would have recognized a correlation between increased fuel consumption and fouling of an aero engine such that cleaning the engine will have a direct effect in decreasing fuel consumption, thereby increasing fuel efficiency. Additionally, as found by the Examiner, Bush discloses "an apparatus for indicating fuel efficiency in an aircraft" and quantifies changes in fuel efficiency resulting from changes in aircraft operation (col. 1, 11. 34-3 5, 47-49). Bush explicitly discloses quantifying the effect a change in aircraft operation has on the fuel efficiency of the engine by comparing the fuel 8 Appeal2014-005058 Application 13/003,891 efficiency before and after the change in operation (col 4, 11. 32-44). Taking these disclosures in combination with Asplund, discussed supra, we find it reasonable to conclude that it would have been obvious to a person of ordinary skill to quantify the benefits attributed to cleaning by comparing the fuel efficiency before and after the cleaning operation. PerfectWeb Techs., Inc. v. InfoUSA, Inc. 587 F.3d 1324, 1329 (Fed. Cir. 2009) (an analysis of obviousness "may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion"). Further, the Appellants do not assert, much less establish, that the proposed modification would have been beyond the capabilities of a person of ordinary skill in the art. Absent evidence that the modification would have been beyond the level of the ordinary skill, we "take account of the inferences and creative steps that a person of ordinary skill in the art would employ" in reaching a conclusion of obviousness. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). See also id. at 421 ("[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.") and at 420 ("[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle."). In this regard, the Appellants' arguments are also ineffective because they fail to address the rationale provided by the Examiner for combining Bush and Asplund-namely, "to indicate changes in fuel efficiency due to cleaning the engine thereby quantifying the improvement said cleaning of the engine had on engine operation, and to utilize a computer to render aspects of this process more efficient and reliable" (Final Act. 4). We find that the Examiner provided a sufficient reason for combining the references 9 Appeal2014-005058 Application 13/003,891 in the manner claimed, and the Appellants' mere assertions to the contrary are insufficient to identify a reversible error. See Ex parte Belinne, No 2009-004693, 2009 WL 2477843 (BPAI 2009) (informative) ("[W]e find that the Examiner has made extensive specific fact finding ... with respect to each of the argued claims. Appellants' argument ... repeatedly restates elements of the claim language and simply argues that the elements are missing from the reference. However, Appellants do not present any arguments to explain why the Examiner's explicit fact finding is in error"). See also 37 C.F.R. § 41.37( c )(1 )(vii) (noting that an argument that merely points out what a claim recites is unpersuasive). We are also unpersuaded by the Appellants' individual arguments with respect to Bush because each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As we found supra, when a parameter directly affects the fuel efficiency, Bush discloses quantifying the fuel efficiency change attributed to that parameter by measuring and comparing the fuel efficiency before and after a change in such a parameter. For the reasons set forth supra, combining such a teaching with Asplund to quantify the fuel efficiency change attributed to the cleaning would have been within the level of the ordinary skill in the art. Additionally, we are unpersuaded that Bush requires the fuel efficiency data to be constantly discarded. Contrary to the Appellants' belief, Bush explicitly discloses "fuel efficiency of the aircraft is calculated and stored" (col. 4, 11. 32-33). The Appellants list dependent claims 3, 7, 11, and 15 separately; however, the Appellants present no additional substantive arguments and, 10 Appeal2014-005058 Application 13/003,891 therefore, we maintain the rejection of these claims for substantially the same reasons as set forth above with respect to claim 1. SUMMARY Rejections I and II are affirmed. Therefore, the Examiner's final decision to reject claims 1-17 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ). AFFIRMED 11 Copy with citationCopy as parenthetical citation