Ex Parte Woodcock et al

Patent Trial and Appeal Board

Jun 11, 2013

10763127 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/763,127 01/22/2004 Joel Woodcock NSD2003-001 4196
26353 7590 06/11/2013
WESTINGHOUSE ELECTRIC COMPANY, LLC
1000 Westinghouse Drive
Suite 141
Cranberry Township, PA 16066
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
06/11/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte JOEL WOODCOCK, 7
ROBERT K. PERDUE, 8
CLARK W. MYCOFF, 9
THEODORE A. MEYER, 10
AND 11
RICARDO LLOVET 12
___________ 13
14
Appeal 2011-004425 15
Application 10/763,127 16
Technology Center 3600 17
___________ 18
19
20
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 21
MEREDITH C. PETRAVICK, Administrative Patent Judges. 22
FETTING, Administrative Patent Judge. 23
DECISION ON APPEAL 24
Appeal 2011-004425
Application 10/763,127
2

1
STATEMENT OF THE CASE1 2
3
Joel Woodcock, Robert K. Perdue, Clark W. Mycoff, Theodore A. Meyer, 4
and Ricardo Llovet (Appellants) seek review under 35 U.S.C. § 134 of a 5
final rejection of claims 1-10, the only claims pending in the application on 6
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 7
The Appellants invented a way of characterizing the potential financial 8
benefit to a facility such as a nuclear power plant facility that would result 9
from a number of input operational parameters that each have an 10
uncertainty (Specification 1:11-14). 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 1, which is reproduced below [bracketed matter and some 13
paragraphing added]. 14
1. A method of 15
employing a computer 16
in characterizing a number of potential financial benefits 17
to a facility, 18
each potential financial benefit resulting from the 19
potential performance 20
of one of a number of groups of possible activities 21
on the facility, 22
the method comprising: 23
[1] determining a number of goals, 24
the achievement or partial achievement of which 25

1 Our decision will make reference to the Appellants’ Appeal Brief
(hereinafter “App. Br.,” filed July 1, 2010) and the Examiner’s Answer
(hereinafter “Ans.,” mailed October 14, 2010).
Appeal 2011-004425
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would affect a financial status of the facility; 1
[2] identifying for each goal 2
a corresponding group of activities, 3
each identified activity affecting 4
in some fashion 5
achievement of the goal; 6
and 7
[3] for each group of activities, 8
employing the computer 9
in determining a probability distribution 10
on net present savings 11
that corresponds with implementation of the 12
group of activities 13
and 14
outputting the probability distribution on net present 15
savings. 16
The Examiner relies upon the following prior art: 17
Klimasauskas US 6,110,214 Aug. 29, 2000
Gray US 2003/0093347 A1 May 15, 2003
Claims 1-3 and 7-10 stand rejected under 35 U.S.C. § 102(b) as 18
anticipated by Klimasauskas. Ex. Ans. 3. 19
Claims 4-6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over 20
Klimasauskas and Gray. Ex. Ans. 7. 21
ISSUES 22
The issues of obviousness and anticipation turn primarily on whether 23
Klimasauskas describes the probability distributions recited in limitation [3]. 24
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Klimasauskas 5
01. Klimasauskas is directed to “for optimizing manufacturing 6
processes, and particularly, to a system for modeling and 7
optimizing the maintenance of semiconductor processing 8
equipment.” Klimasauskas 1:12-15. 9
02. Klimasauskas’ referral to a “fuzzy PLS analyzer” is to a “fuzzy 10
partial least squares analyzer.” “In FIG. 8, data are processed by a 11
number of primary analyzers or PLS outer transforms 370, 380 12
and 390. These transforms decompose a multivariate regression 13
problem into a number of univariate regressors. Each regressor is 14
implemented by a small fuzzy single input single output model or 15
analyzer in this method. The fuzzy analyzer has no local minima 16
or other ill-conditioning problems.” Klimasauskas 10:34-42. 17
03. Klimasauskas makes no mention of probabilities or probability 18
distributions. 19
20
Gray 21
04. Gray is directed “to modeling economic and financial risk using 22
financial engineering tools, contingent claims, and macro-23
financial risk analysis.” Gray ¶ 0002. 24
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05. Gray describes the prior art of “[m]odern risk management models 1
(e.g., ‘value-at-risk’ model) that are designed to assess portfolio 2
risk based on assumptions/forecasts about the likelihood of 3
outcomes.” Although Gray goes on to describe existing 4
methodologies as having recently proven ineffective in “warning 5
risk managers and top managers of growing vulnerabilities” these 6
“failings of such models may be due to faulty assumptions” rather 7
than the use of probability distribution models per se. Gray ¶ 8
0005. 9
06. In Gray, “‘[a]sset’ can refer to the property and/or resources of 10
one or more economic entities, which can have a cash value and 11
can be used to pay the debts of the economic entity. ‘Expected 12
asset value’ can refer to the mean asset value at a time in the 13
future, and the distribution of an asset can refer to the probability 14
that an asset will have a certain value at a certain point in the 15
future. ‘Debt’ can refer to an obligation of one economic entity 16
to pay another economic entity.” Gray ¶ 0018 (emphasis added). 17
ANALYSIS 18
We are persuaded by the Appellants’ argument that 19
Klimasauskas includes no disclosure whatsoever of 20
characterizing for a set of maintenance activities a probability 21
distribution on net present savings. 22
App. Br. 3. Klimasauskas makes no mention of probabilities or 23
probability distributions. Examiner apparently relied on the “P” in “PLS” of 24
Klimasauskas as standing for probability. It stands for “partial” as in 25
“partial least squares.” 26
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CONCLUSIONS OF LAW 1
The rejection of claims 1-3 and 7-10 under 35 U.S.C. § 102(b) as 2
anticipated by Klimasauskas is improper. 3
The rejection of claims 4-6 under 35 U.S.C. § 103(a) as unpatentable 4
over Klimasauskas and Gray is improper. 5
NEW GROUNDS OF REJECTION 6
The following new ground of rejection is entered pursuant to 7
37 C.F.R. § 41.50(b). Independent claim 1 and dependent claims 9 and 10 8
are rejected under 35 U.S.C. § 103(a) as unpatentable over Klimasauskas 9
and Gray. 10
As to claim 1, it is uncontested that Klimasauskas describes the 11
remaining limitations beyond a probability distribution, as the remaining 12
limitations are no more than business planning, routinely performed by 13
every publically held company and most privately held companies beyond 14
the structure of a proprietorship. We adopt the Examiner’s findings 15
regarding Klimasauskas as to those limitations. 16
Further, assigning a probability distribution to the financial results of 17
such activities to quantify both upside and downside risk of results is also 18
routine, just not described by Klimasauskas, but as described by Gray. As 19
Gray is simply describing routine financial risk analysis, it was predictable 20
to apply such analysis to Klimasauskas. 21
Claims 9 and 10 further recite identifying for each goal a set of activities 22
which together comprise a strategy for achieving the corresponding goal, 23
and the activities of at least one of the sets of activities together having a 24
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synergy. As both a strategy and a synergy are simply perceptual attributes in 1
the mind of the beholder, these limitations are deserving of no patentable 2
weight. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). 3
The following new ground of rejection is entered pursuant to 4
37 C.F.R. § 41.50(b). Independent claim 1 and dependent claims 2 to 10 are 5
rejected under 35 U.S.C. § 101(a) as unpatentable for being non-statutory 6
abstract subject matter. 7
These claims are to characterizing a number of potential financial 8
benefits to a facility. Claim1is independent. Claim 1 recites steps including. 9
determining goals, identifying activities, and determining probability 10
distributions. 11
The Supreme Court recently held that claims that explained the basic 12
concept of an activity (hedging) would allow the Appellant to pre-empt the 13
use of this approach in all fields, and would effectively grant a monopoly 14
over an abstract idea. Bilski v. Kappos, 130 S.Ct. 3218, 3231 (June 2010). 15
Abstract ideas are not patent eligible. Id. at 3225. 16
Claim 1 does no more than lay out the concept of determining 17
probability distributions for activities. The claims neither refer to a specific 18
machine by reciting structural limitations to any apparatus, nor recite any 19
specific operations would cause a machine to be the mechanism to determine 20
or identify information. Indeed to determine and identify requires no 21
machine, only the conscious thought of the one controlling the operation. 22
Absent any specific structural limitations on how one acts to perform these 23
steps, these claims recite no more than the abstract concept of determining 24
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probability distributions for activities. As in Bilski, a patent including these 1
claims would allow the Appellant to pre-empt the use of this approach in all 2
fields, and would effectively grant a monopoly over an abstract idea. 3
As to the “employing a computer”, 4
even if some physical steps are required to obtain information 5
from the database (e.g., entering a query via a keyboard, 6
clicking a mouse), such data-gathering steps cannot alone 7
confer patentability 8
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. 9
Cir. Aug. 16, 2011) (citation omitted). Simply using some computer in 10
some undefined manner alone cannot confer patentability. More recently, 11
claims were held to be non-statutory where 12
the claims here recite only that the method is “computer aided” 13
without specifying any level of involvement or detail. The fact 14
that certain algorithms are disclosed in the specification does 15
not change the outcome. In considering patent eligibility under 16
§ 101, one must focus on the claims. This is because a claim 17
may “preempt” only that which the claims encompass, not what 18
is disclosed but left unclaimed. 19
Dealertrack Inc. v Huber, 674 F.3d 1315, 1334 (Fed Cir 2012). 20
Subsequently, in Bancorp Services, L.L.C. v. Sun Life Assur. Co. of 21
Canada (U.S.), 687 F.3d 1266, 1278, (Fed Cir, 2012), the court found that 22
“the interchangeability of certain mental processes and basic digital 23
computation . . . help[s] explain why the use of a computer in an otherwise 24
patent-ineligible process for no more than its most basic function—making 25
calculations or computations—fails to circumvent the prohibition against 26
patenting abstract ideas and mental processes,” holding that using a 27
computer to accelerate an ineligible mental process does not make that 28
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process patent-eligible, but to salvage an otherwise patent-ineligible process, 1
a computer must be integral to the claimed invention, facilitating the process 2
in a way that a person making calculations or computations could not. The 3
court provided a bottom line analysis that when the insignificant computer-4
based limitations are set aside from those claims that contain such 5
limitations, the question under § 101 reduces to an analysis of what 6
additional features remain in the claims. 7
The court also found that where the only difference between the claims 8
is the form in which they were drafted, the district court correctly treated the 9
system and method claims at issue in this case as equivalent for purposes of 10
patent eligibility under § 101. 11
Dependent claims 2 and 7-10 simply add further steps of determining, 12
identifying, and characterizing similar to the steps in claim 1. Dependent 13
claims 2-6 also perform model simulation using a computer, but as Bancorp 14
Services held, simply using a computer to speed up what can be performed 15
mentally or with paper and pencil is insufficient to confer patentability. 16
DECISION 17
The rejection of claims 1-10 is reversed. 18
The following new grounds of rejection are entered pursuant to 19
37 C.F.R. § 41.50(b). 20
Independent claim 1 and dependent claims 9 and 10 are rejected 21
under 35 U.S.C. § 103(a) as unpatentable over Klimasauskas and 22
Gray. 23
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10

Independent claim 1 and dependent claims 2 to 10 are rejected 1
under 35 U.S.C. § 101(a) as unpatentable for being directed toward 2
non-statutory abstract subject matter. 3
This Decision contains new rejections within the meaning of 37 C.F.R. § 4
41.50(b) (2011). 5
Our decision is not a final agency action. 6
37 C.F.R. § 41.50(b) provides that Appellants, WITHIN TWO 7
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 8
the following two options with respect to the new rejection: 9
(1) Reopen prosecution. Submit an appropriate amendment of 10
the claims so rejected or new evidence relating to the claims 11
so rejected, or both, and have the matter reconsidered by the 12
Examiner, in which event the proceeding will be remanded 13
to the Examiner. . . . 14
(2) Request rehearing. Request that the proceeding be reheard 15
under § 41.52 by the Board upon the same record. . . . 16
. 17
REVERSED; 41.50(b) 18
rvb 19