Ex Parte Yuan et al

Patent Trial and Appeal Board

Apr 28, 2014

12077279 (P.T.A.B. Apr. 28, 2014)

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.
12/077,279 03/18/2008 Chao Yuan 2007P07856US01 5787
28524 7590 04/29/2014
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
CHERRY, STEPHEN J
ART UNIT PAPER NUMBER
2863
MAIL DATE DELIVERY MODE
04/29/2014 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
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHAO YUAN, CLAUS NEUBAUER,
and HOLGER HACKSTEIN
____________

Appeal 2012-001381
Application 12/077,279
Technology Center 2800
____________

Before TERRY J. OWENS, PETER F. KRATZ, and JEFFREY T. SMITH,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-3, 5-10, 12-15, and 17-19. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a method for machine
condition monitoring or machine fault detection, an apparatus for machine
condition monitoring, and a machine readable medium having stored
program instructions for carrying out machine monitoring or fault detection.

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Claims 1, 8, and 13 are illustrative and reproduced below:
1. A method of machine condition monitoring comprising:
comparing, at a machine condition monitoring system, a condition
signal pattern received from a monitored machine to a plurality of known
signal patterns; and
determining, at the machine condition monitoring system, a machine
condition pattern rule for the monitored machine based at least in part on the
comparison of the condition signal pattern to one of the plurality of known
signal patterns, wherein determining a machine condition pattern rule
comprises:
determining a matching score based on the comparison of the
condition signal pattern to one of the plurality of known signal patterns;
determining a signal pattern duration of the condition pattern
signal; and
defining the machine condition pattern rule as a multipartite
threshold rule with a first threshold based on the determined matching score
and a second threshold based on the determined signal pattern duration.

8. An apparatus for machine condition monitoring comprising:
means for comparing a condition signal pattern of a monitored
machine to a plurality of known signal patterns; and
means for determining a machine condition pattern rule based for a
monitored machine at least in part on the comparison of the condition signal
pattern to one of the plurality of known signal patterns, wherein the means
for determining a machine condition pattern rule comprises:
means for determining a matching score based on the
comparison of the condition signal pattern to one of the plurality of known
signal patterns;
means for determining a signal pattern duration of the condition
pattern signal; and
means for defining the machine condition pattern rule as a
multipartite threshold rule with a first threshold based on the determined
matching score and a second threshold based on the determined signal
pattern duration.

13. A machine readable medium having program instructions stored
thereon, the instructions capable of execution by a processor and defining
the steps of:
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comparing a condition signal pattern of a monitored machine to a
plurality of known signal patterns; and
determining a machine condition pattern rule for the monitored
machine based at least in part on the comparison of the condition signal
pattern to one of the plurality of known signal patterns, wherein determining
a machine condition pattern rule comprises:
determining a matching score based on the comparison of the
condition signal pattern to one of the plurality of known signal patterns;
determining a signal pattern duration of the condition pattern
signal; and
defining the machine condition pattern rule as a multipartite
threshold rule with a first threshold based on the determined matching score
and a second threshold based on the determined signal pattern duration.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Slates US 2004/0158435 A1 Aug. 12, 2004

The Examiner maintains the following ground of rejection:
Claims 1-3, 5-10, 12-15, and 17-19 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Slates.
We reverse the stated rejection and enter new grounds of rejection as
set forth below.
The Examiner bears the initial burden of presenting a prima facie case
establishing the non-patentability of the rejected claims. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
It is well settled that a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently, in order to
anticipate a claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
We focus on the rejected method claims in deciding this appeal as to
the Examiner’s anticipation rejection over Slates. In this regard, both
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Appellants and the Examiner take the position that their opposing arguments
set forth with respect to the method claims apply as their opposing
contentions respecting the commonly rejected apparatus and medium claims
on appeal (App. Br. 13-15; Ans. 15). Moreover, certain argued limitations
set forth in the method claims correspond with certain functional limitations
of the apparatus claims and the functional instruction limitations of the
medium claims.
Slates is directed to a transducer fault detection system and method
wherein the transducer outputs signals corresponding to the movement of a
mechanical system target, and wherein the transducer output is transformed
into a rate of change or slew rate for monitoring the output in the form of a
slew rate measurement, which slew rate is compared with a known value and
correlated with a fault, when indicated, so as to detect faults in the
transducer (¶¶ 0006- 0012; Fig. 2). In another embodiment, Slates describes
transforming the transducer signals into digitized voltage measurements,
calculating a time duration in which the transformed voltage values remain
within a specified window of values or otherwise remains at, above, or
below a defined value, and, based thereon, determining if a correlation with
a “NOT OK” condition exists, and associating such a condition with a fault
condition (¶¶ 0009, 0013; Fig. 3).
All of the anticipatorily rejected methods require a comparison of a
machine condition signal pattern to a plurality of known signal patterns as
part of the claimed methods (see independent claims 1 and 6).1

1 The rejected apparatus and medium claims include corresponding
apparatus/instruction features pertaining to a comparison of a machine
condition signal pattern with a plurality of known signal patterns.
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In maintaining the stated anticipation rejection, the Examiner
employs the language of Appellants’ claim 1 in referring to paragraphs
0029, 0030, 0052, and 0024, and drawing Figure 5 of Slates as allegedly
describing a method of machine condition monitoring corresponding to
Appellants’ claim, including comparing a machine condition signal pattern
to one of a plurality of known signal patterns (Ans. 4-5). Similarly, the
Examiner employs the language of Appellants’ claim 6 and refers to
paragraphs 0024, 0029, and 0030, and drawing Figures 1 and 5 of Slates as
allegedly describing a method for detecting fault conditions in a monitored
machine, including “detecting at a machine condition monitoring system a
fault condition in the monitored machine based at least in part on the
comparison of the received machine condition signal pattern to one of the
plurality of known condition signal patterns and the comparison of the
duration of the received machine condition signal patterns to the duration of
the one of the plurality of known signal patterns (‘435, par. 30, with specific
faults depicted in fig. 5)” (Ans. 6).
However and as argued by Appellants (App. Br. 6-10, 12, and 13;
Reply Br. 2-6), the Examiner has not carried the burden in the stated
rejection to establish that the referenced disclosures of Slates furnish an
anticipating description of Appellants’ claimed subject matter, including a
machine condition monitoring or fault detecting method, wherein
comparison of a machine condition signal pattern to a plurality of known
signal patterns is part of the claimed method. The Examiner has not
established that Slates’ description of a transducer fault detection system and
method wherein the transducer outputs signals corresponding to the
movement of a mechanical system target, and wherein the transducer output
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is transformed into a rate of change or slew rate for monitoring the output in
the form of a slew rate measurement, which slew rate is compared with a
known value and correlated with a fault, when indicated, to detect faults in
the transducer and/or Slates’ description of an embodiment wherein
transducer signals are transformed into digitized voltage measurements that
are correlated with defined faults serves to describe a process in accordance
with Appellants’ claim 1 (Ans. 5-6; Slates, ¶¶ 0024, 0029, 0030, 0052; Figs.
5-7).
In particular, Appellants’ claim 1 method requires that a conditioned
signal pattern received from a monitored machine is compared with a
plurality of known signal patterns to determine a machine condition pattern
rule comprising a first threshold based on a determined matching score of a
received condition signal pattern with one of the plurality of signal patterns
and a second threshold based on a determined signal pattern duration. The
rejection position articulated by the Examiner does not detail how the
referenced disclosures of Slates describe such a method.
Nor has the Examiner carried the burden, in the stated rejection, to
establish that the referenced disclosures of Slates, including those
disclosures pertaining to transforming transducer signals into a rate of
change or slew rate for monitoring the output in the form of a slew rate
measurement, which slew rate is compared with a known value and
correlated with a fault, describes a process that anticipates claim 6 and/or
how the cited to disclosures of Slates pertaining to an embodiment wherein
transducer signals are transformed into digitized voltage measurements that
are correlated with defined faults describes a method in accordance with
rejected claim 6 (Ans. 5-6; Slates, ¶¶ 0024, 0029, 0030, 0052; Figs. 5-7)).
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Appellants’ claim 6 method requires that a conditioned signal pattern
received from a monitored machine is compared to a plurality of known
signal patterns for detecting fault conditions in a monitored machine,
including “detecting at the machine condition monitoring system a fault
condition in the monitored machine based at least in part on the comparison
of the received machine condition signal pattern to one of the plurality of
known condition signal patterns and the comparison of the duration of the
received machine condition signal patterns to the duration of the one of the
plurality of known signal patterns” (Claim 6; Ans. 6; Slates, ¶ 30; Fig. 5).
As argued by Appellants, the Examiner has not established that
Slates’ disclosed use of transducer output transformed into slew rates and/or
transducer measurements/signals transformed into digitized voltage
measurements in combination with a time duration of a succession of the
digitized voltage measurement information that remain within a defined
voltage window for correlation with defined faults or for narrowing down
causes of defined faults comprises a description of a method in accordance
with Appellants’ claim 6 (App. Br. 12-13; Slates, ¶¶ 0024, 0029, 0030,
0052; Figs. 1 and 5-7).
On this record, we reverse the Examiner’s anticipation rejection as to
all of the commonly rejected claims.

New grounds of rejection
Indefiniteness Rejection
The language of a claim satisfies § 112, ¶ 2 only if “one skilled in the
art would understand the bounds of the claim when read in light of the
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specification.” Exxon Research & Eng’g Co. v. United States, 265 F.3d
1371, 1375 (Fed. Cir. 2001).
Claims 8 through 12 are drawn to apparatus and include means-plus-
function limitations. Claim 8, the sole independent claim among these
apparatus claims, is drawn to an apparatus for machine condition monitoring
that comprises five listed elements. All of the listed elements of claim 8 are
drafted as means-plus-function limitations.
It is well settled that when the claimed elements are defined by
means-plus-function limitations, we must interpret them as being limited to
the corresponding structures described in the specification and the
equivalents thereof consistent with 35 U.S.C. § 112, 6th paragraph. In re
Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). The
specification must disclose the corresponding structures of the claimed
means-plus-function limitations in such a manner that one skilled in the art
would know and understand what structures correspond to the claimed
means-plus-function limitations. Atmel Corp. v. Information Storage
Devices Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999). The structures disclosed
in the specification, for example, are considered “corresponding” to the
means-plus-function limitations “if the specification or prosecution history
clearly links or associates that structure to the function recited in the claim.
This duty to link or associate structure to function is the quid pro quo for the
convenience of employing § 112, ¶ 6.” B. Braun Med., Inc. v. Abbott Labs.,
124 F.3d 1419, 1424 (Fed. Cir. 1997).
At the time of the filing of this appeal and according to 37 C.F.R.
§ 41.37(c)(1)(v), the Appellants were required to identify “every means plus
function and step plus function as permitted by 35 U.S.C. [§] 112, sixth
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paragraph,” and set forth “the structure, material, or acts described in the
specification as corresponding to each claimed function . . . with reference to
the specification by page and line number, and to the drawing, if any, by
reference characters” in the Summary of Claimed Subject Matter section of
their Brief.
Here, Appellants have identified computer 600 including processor
602 that can execute computer program instructions, which instructions may
be loaded into a memory 606, as the corresponding structure described in the
subject Specification for every one of the five means-plus-function
limitations of independent claim 8 (App. Br. 3; Fig. 6; Spec. ¶¶ 0045 and
0046). The subject Specification further provides that “embodiments of the
present invention are not limited to any specific combination of hardware,
firmware, and/or software” and that “it would be understood by one of
ordinary skill in the art that the invention as described herein could be
implemented in many different ways using a wide range of programming
techniques as well as general purpose hardware sub-systems or dedicated
controllers” (Spec. ¶ 0047).
However, the mere identification of a computer that can execute
instructions via a processor that receives program instructions hardly spells
out and delineates or links distinctly described structures and materials to
each of the recited means-plus-function limitation elements of independent
claim 8 that correspond to each of the separately recited claim elements. See
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir.
2009); Aristocrat Techs. Austl. Pty, Ltd. v. Int'l Game Tech., 521 F.3d 1328,
1333 (Fed. Cir.2008) (“For a patentee to claim a means for performing a
particular function and then to disclose only a general purpose computer as
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the structure designed to perform that function amounts to pure functional
claiming. Because general purpose computers can be programmed to
perform very different tasks in very different ways, simply disclosing a
computer as the structure designated to perform a particular function does
not limit the scope of the claim to ‘the corresponding structure, material, or
acts’ that perform the function, as required by section 112 paragraph 6.”).
Indeed, identifying the same disclosed structure as the structure that
corresponds to each every one of the five claimed elements of claim 8 is
tantamount to indicating that claim 8 is a single means claim, which is
contraindicated by 35 U.S.C. § 112, sixth paragraph.
In addition, Appellants generally identify some Specification
disclosures pertaining to method claim 1 as providing disclosure that can be
linked to or correspond with the functions specified in the several means-
plus-function elements of claim 8 (App. Br. 3; Spec. ¶¶ 0031-0039; Fig. 5).
But, Appellants have failed to detail which disclosures pertaining to the
method of claim 1 and the claimed element functions are so linked as to
delineate particular disclosed structures that correspond to each and every
one of the particular means-plus-function limitations of the claim 8
apparatus.
Accordingly, we reject claims 8 through 12 under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.

Ineligible Subject Matter Rejections
Claims 1-5 are drawn to a method of machine condition monitoring
and claims 6 and 7 are drawn to a method for detecting fault conditions in a
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monitored machine wherein substantially all of the method steps could be
performed mentally, with paper, or with a computer. For instance, the steps
of claim 1 are steps of comparing, determining, determining, determining,
and defining. The steps of claims 6 are steps of receiving, determining,
comparing, comparing, and detecting.
35 U.S.C. §101 limits the subject matter that is eligible for patenting
to certain listed categories.
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101.
Thus, “no patent is available for a discovery, however useful, novel,
and nonobvious, unless it falls within one of the express categories of
patentable subject matter of 35 U.S.C. § 101.” Kewanee Oil Co. v. Bicron
Corp., 416 U.S. 470, 483 (1974). “Phenomena of nature, though just
discovered, mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work.”
Gottschalk v. Benson, 409 U.S. 63, 67 (1972). Therefore, another limitation
on the expressed categories of patentable subject matter of 35 U.S.C. § 101
is that “[t]he laws of nature, physical phenomena, and abstract ideas have
been held not patentable.” Diamond v. Chakrabarty, 447 U.S. 303, 309
(1980).
Our reviewing court has stated that "regardless of what statutory
category (‘process, machine, manufacture, or composition of matter,’
35 U.S.C. § 101) a claim's language is crafted to literally invoke, we look to
the underlying invention for patent-eligibility purposes." CyberSource
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Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011). "That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson." CyberSource, at 1375.
Yet, an application of a law of nature or abstract idea to a known
structure or process may be deserving of patent-eligibility. Diamond v.
Diehr, 450 U.S. 175, 187 (1981). The key question is, therefore, whether
the claims do significantly more than simply describe the law of nature or
abstract idea. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1297 (2012). In this regard, the U.S. Supreme Court explained
that "post-solution activity" cannot make a process patentable as follows.
"The notion that post-solution activity, no matter how conventional or
obvious in itself, can transform an unpatentable principle into a patentable
process exalts form over substance. A competent draftsman could attach
some form of post-solution activity to almost any mathematical formula
. . . ." Parker v. Flook, 437 U.S. 584, 591 (1978).
“[T]he machine-or-transformation test is a useful and important clue,
an investigative tool, for determining whether some claimed inventions are
processes under § 101.” Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010).
Here, we conclude that that the subject matter of claims 1 through 7
encompasses an abstraction and/or a mental process. More specifically, the
claimed steps can be performed in the human mind or by a human using a
pen and paper, and/or otherwise represent an ineligible abstraction. The
method of claims 1-7 are not tied to a particular machine or transformation
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by the recitation of “at a machine condition monitoring system”. 2 As
indicated in the subject Specification, the signal data gathered can be
obtained from virtually any type of machinery and can involve virtually any
type of machine parameter(s) and the pattern rules that are defined/created in
the claimed methods are not tied to particular post solution activity in
performing the claimed process (Spec. . ¶¶ 0002-0010, 0018, 0026, and
0049). Moreover, the identification of a machine condition monitoring
system as a location where the method steps are performed does not
transform an otherwise patent ineligible process into a patent eligible
process.
Claims 13-19 are directed to a machine readable medium that has
program instructions stored thereon.
The Specification describes the "machine readable medium" in a non-
exclusionary manner so as to embrace information stored and conveyed by a
signal or other communications medium. Spec. ¶¶ 0045 and 0047. Thus,
claims 13-19 encompass a transitory, propagating signal containing
information and are not limited to a tangible medium within one of the
statutory classes of 35 U.S.C. § 101.
In this regard and as we indicated above, 35 U.S.C. §101 limits the
subject matter that is eligible for patenting to certain listed categories.
A transitory, propagating signal is not a “process, machine,
manufacture, or composition of matter.” Those four categories define the

2 The Examiner ceased to maintain a previously instituted rejection of an
earlier version of claims 1-7 subsequent to the entry of claim amendments
that provided the claim language “at a machine condition monitoring
system” (see page two of the Final Rejection mailed October 30, 2009 and
the amendments submitted January 05, 2010 and June 14, 2010).
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explicit scope and reach of subject matter patentable under 35 U.S.C. § 101;
thus, such a signal cannot be patentable subject matter. In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007). “If a claim covers material not found
in any of the four statutory categories, that claim falls outside the plainly
expressed scope of § 101 even if the subject matter is otherwise new and
useful.” Id. at 1354. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB
2013) (precedential).
Furthermore and even if claims 13-19 were presently considered (or
subsequently amended before the Examiner) to encompass only non-
transitory signals, we observe that the nominal recitation of “a machine
readable medium” would not serve to permit these claims to pass muster
under 35 U.S.C. § 101. This is because claims 13-19 are directed to
computer-readable functions (code) stored on a medium.
When these claims are analyzed in terms of their underlying
invention,3 we again conclude that the scope of the recited steps covers
functions that can be performed in the human mind or by a human using a
pen and paper and represent an abstraction (e.g., see claim 13 “determining a
matching score based on the comparison of the condition signal pattern to
one of the plurality of known signal patterns”). Therefore, we conclude that
non-patentable mental processes or abstractions fall within the scope of the
subject matter of claims 13-19.
Accordingly, we reject claims 1-7 and 13-19 as being drawn to subject
matter that is not eligible for patent protection under 35 U.S.C. § 101.

3 See Cybersource, 654 F.3d at 1375.

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DECISION/ORDER
The decision of the Examiner to reject claims 1-3, 5-10, 12-15, and
17-19 under 35 U.S.C. § 102 (b) as being anticipated by Slates is reversed.
A new rejection of claims 8 through 12 under 35 U.S.C. § 112, second
paragraph and a new rejection of claims 1-7 and 13-19 under 35 U.S.C. §
101 have been entered under 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
REVERSED, 37 C.F.R. § 41.50(b)

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