Ex Parte YUAN et alDownload PDFPatent Trial and Appeal BoardJan 31, 201813745299 (P.T.A.B. Jan. 31, 2018) Copy Citation 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. 02-1005 5515 EXAMINER LEE, PAUL D ART UNIT PAPER NUMBER 2862 MAIL DATE DELIVERY MODE 13/745,299 01/18/2013 74878 7590 01/31/2018 02MICRO INC C/O MURABITO, HAO & BARNES LLP TWO NORTH MARKET STREET THIRD FLOOR SAN JOSE, CA 95113 Yi YUAN 01/31/2018 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 YI YUAN, YINGGUO ZHANG, ZHIBIN HUA, HUA-YI WANG, and PING LIU Appeal 2017-005010 Application 13/745,2991 Technology Center 2800 Before GEORGE C. BEST, WESLEY B. DERRICK, and JENNIFER R. GUPTA, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the maintained final rejection under 35 U.S.C. § 101 of claims 1-3, 6, 10, 11, 14—17, and21—30 as directed to non-statutory subject matter. We have jurisdiction under 35 U.S.C. §6. We AFFIRM. 1 The Appellant is the Applicant, 02Micro Inc., which also is identified as the real party in interest. Appeal Br. 1. Appeal 2017-005010 Application 13/745,299 THE INVENTION The subject matter of the claims on appeal relates to devices for receiving a parameter indicative of battery status and calculating remaining battery capacity, and methods for estimating remaining battery capacity. Specification filed January 18, 2013 (“Spec.”), Abstract, | 5. Claims 1, 10, 14, 23, and 27 are independent claims. Claims 1 and 23 are directed to devices with a battery monitor, a processor, and a display screen. In claim 1, the monitor is configured to monitor a charging current; in claim 23, a battery voltage. Claim 10 is directed to a method of estimating a remaining capacity of a battery comprising monitoring a battery voltage, calculating a calibrated capacity ratio, and displaying the calibrated capacity ratio. Claims 14 and 27 are directed to host devices comprising a screen, and a memory coupled to the host device comprising computer- readable instructions, which, if executed, cause the host device to calculate a calibrated capacity ratio and to control the screen to display the calibrated capacity ratio in percentage form to a user. While claim 14 recites “a host device operated to control charging of a battery,” no recited element alters the charging current delivered to the battery as the claim is directed instead to calculating a calibrated capacity ratio and displaying that ratio to a user. Claim 1, reproduced below, is representative. 1. A device comprising: a battery monitor configured to monitor a charging current of a battery to generate first information in digital form indicative of said charging current if said battery monitor is coupled to said battery; a processor, coupled to said battery monitor, configured to receive said first information in digital form, configured to calculate a calculated remaining capacity of said battery and 2 Appeal 2017-005010 Application 13/745,299 calculate a calculated capacity ratio of said calculated remaining capacity to a capacity reference of said battery, configured to compare said charging current with a current reference to generate a first comparison result based on said first information in digital form, configured to compare said calculated capacity ratio with a ratio reference to generate a second comparison result, configured to set an amount according to said first and second comparison results, configured to provide a calibrated remaining capacity by increasing said calculated remaining capacity by said amount if said charging current is less than said current reference and if said calculated capacity ratio is less than said ratio reference, and configured to calculate a calibrated capacity ratio in percentage form of said calibrated remaining capacity to said capacity reference; and a screen, coupled to said processor, configured to receive said calibrated capacity ratio from said processor and display said calibrated capacity ratio to a user. Appeal Brief filed November 1, 2016 (“Appeal Br.”), 28. DISCUSSION2 We have reviewed the ground of rejection set forth by the Examiner, Appellant’s arguments, and the Examiner’s response. On this record, we are unpersuaded that the Examiner erred reversibly in determining that the claims do not comply with 35 U.S.C. § 101. We add the following. 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, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not 2 In this discussion, we refer to the Specification, the Final Office Action mailed June 7, 2016 (“Final Act.”), the Appeal Brief, and the Examiner’s Answer mailed December 9, 2016 (“Ans.”). 3 Appeal 2017-005010 Application 13/745,299 patentable. See, e.g., Alice Corp. PtyLtd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014). In Alice, the Court reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Labs, Inc., 566 U.S. 66 (2012), in which it is first determined whether the claims at issue are directed to one of those patent-ineligible concepts and then, if it is, to determine whether there are additional elements that ‘“transform the nature of the claim’” into a patent-eligible application of the otherwise ineligible concepts. Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78). Claims directed to, or reciting, systems are also ineligible under § 101 if the hardware recited by the claims add nothing of substance to the underlying abstract idea. Alice, 134 S. Ct. at 2360. “Information as such is an intangible” and, regarding the first step of Alice, our reviewing court has “treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citations omitted). Similarly, the Federal Circuit “treat[s] analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Id. at 1354; see also Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”). Regarding the second Alice/Mayo step, an inventive concept that transforms an abstract idea into a patent-eligible invention “may arise in one or more of the individual claim limitations or in the ordered combination of 4 Appeal 2017-005010 Application 13/745,299 the limitations.” BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) {citing Alice, 134 S. Ct. at 2355); see also Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (contrasting cases in which the claims were determined to be eligible from those that were ineligible). In Amdocs, the Federal Circuit determined that the claims were patent-eligible and explained that the claims were tied to a specific structure of various components and required those components to operate in an unconventional manner to achieve an improvement in computer functionality. Amdocs, 841 F.3d at 1300-1301. Here, the Examiner determines the claims are directed to non- statutory subject matter because each independent claim, and the dependent claims depending thereon, are directed to an abstract idea (Final Act. 2—6) and the claims do not include additional elements sufficient to amount to significantly more than the judicial exception (id. at 6—7). Regarding the Alice!Mayo first step, the Examiner finds The . . . limitations such as calculating a calculated remaining capacity, calculating a calculated capacity ratio, providing a calibrated remaining capacity by increasing or decreasing the calculated remaining capacity, decreasing a value of first and second voltage references, increasing or decreasing a value of a ratio reference, and calculating a calibrated capacity ratio of said calibrated remaining capacity to said capacity reference, etc., are limitations that amount to the calculating of mathematical relationships/formulas, which have been found to be abstract idea. Final Act. 5. The Examiner similarly finds The . . . limitations such as comparing the charging current to a current reference, or comparing a battery voltage to a voltage reference to generate a first comparison result, comparing said calculated capacity ratio with a ratio reference to generate a second comparison result, and setting an amount according to 5 Appeal 2017-005010 Application 13/745,299 said first and second comparison results, amount to an idea ‘of itself that can be performed mentally abstract, such as comparing information regarding a sample or test subject to control or target data . . . collecting and comparing known information . . . and comparing new and stored information and using rules to identify options. Final Act. 5—6. Regarding the Alice!Mayo second step, the Examiner finds that “[t]he claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception” because “the receiving, processing, and storing of data . . . [are] well understood, routine, and conventional functions” and “[mjerely linking the use of [subject matter falling withinjthe judicial exception to the field of batteries . . . does not add something significantly more to the judicial exception.” Final Act. 7. The Examiner further finds the instant claims to be like those in Electric Power and ineligible for the same reasons. Ans. 38—39. The Examiner highlights that our reviewing court “held ‘systems and methods for performing real-time performance monitoring of an electric power grid by collecting data from multiple data sources, analyzing the data, and displaying the results’ ineligible under 35 U.S.C. § 101.” Ans. 38—39 (quoting Elec. Power, 830F.3datl351). Appellant proffers arguments separately as to each independent claim (Appeal Br. 8—22), as well as to each of the independent claims as a group (id. at 22—26). The separately proffered arguments, however, are the same arguments as to each of the independent claims. Our discussion, set forth in relation to the arguments as to claim 1, applies, in like manner, to each of the independent claims. 6 Appeal 2017-005010 Application 13/745,299 Appellant contends that independent claim 1 is directed to a statutory category of invention, i.e., a machine. Appeal Br. 8. Appellant’s contention fails because the issue is that, under the Alice!Mayo first step, the subject matter falls within the judicial exception. Further, we determine that the claims are, as explained by the Examiner, directed to the abstract idea of calculating a calibrated capacity ratio. Appellant contends that even if directed to an abstract idea, claim 1 as a whole amounts to significantly more than an abstract idea such that it is patentable. Appeal Br. 8—10. Appellant argues that the calculating and comparing functions for which the processor is configured amount to “additional features allowing] a battery’s remaining capacity to be more accurately determined.” Appeal Br. 8. Appellant also contends the invention “simplifies the process of estimating the remaining capacity of a battery.” Appeal Br. 8—9. Appellant’s arguments are not persuasive because the further elements are merely mathematical formulas and relationships and, as such, constitute ineligible subject matter. See, e.g., Alice, 134 S. Ct. at 2354. These further elements are properly identified by the Examiner as aspects of the abstract idea. Ans. 4—5. As succinctly stated by the Examiner, even if better than previous methods, “a new and improved mathematical formula/algorithm is still an abstract idea (judicial exception).” Ans. 5. Further, however useful the calculations obtained may be, their value or usefulness is not dispositive of patent eligibility. Parker v. Flook, 437 U.S. 584, 594-95 (1978) (determining claims to “a new and presumably better method for calculating alarm limit values,” which were of undisputed usefulness, to be directed to nonstatutory subject matter). 7 Appeal 2017-005010 Application 13/745,299 Appellant argues that “[cjlaim 1 is not directed to performing operations (mathematical operations) on a computer alone . . . [and] that the abstract idea is applied with a particular machine (a combination of the battery monitor and the processor).” Appeal Br. 9. Appellant’s arguments are not persuasive of reversible error because the subject matter of claim 1 is not directed to improving the function of the processor (computer), but rather to the computation (and display) of a calibrated capacity ratio. As such, the computer is used to perform a function commonly performed by generic computers, that is, to conduct a mathematical operation. Cf. Bancorp Servs., L.L.C. v. Sun LifeAssur. Co. of Can. (U.S.), 687 F.3d 1266, 1277—'78 (citing Gottschalkv. Benson, 409 U.S. 63, 67 (1972)) (a computer used “for its most basic function, the performance of repetitive calculations”). Further, contrary to Amdocs and BASCOM, both discussed above, the instant claims’ limitations give rise to neither specific structure of components carrying out the method, nor require those components to operate in an unconventional manner to achieve an improvement in computer functionality. Amdocs, 841 F.3d at 1300-1301; BASCOM, 827 F.3d at 1349. As to the combination of battery monitor and processor rising to a particular machine, the claim lacks the necessary specificity for these elements, or the combination, to be significantly more than the abstract idea itself where “[t]he battery monitor is only generically described to perform the data gathering” and, as discussed above, the processor “amounts to nothing more than a generic computer for implementing the mathematical principle” of the identified abstract idea. Ans. 5—6. 8 Appeal 2017-005010 Application 13/745,299 Appellant argues that the battery monitor configured to monitor a charging current and generate information in digital form and the processor, in concert with the monitor and screen, configured to “transform a monitored charging current into a calibrated capacity ratio . . . effect a transformation of a particular article (a monitored charging current) into a different thing (a calibrated displayed value of a capacity ratio in percentage form).” Appeal Br. 9-10; see also Appeal Br. 22—23. Appellant’s argument is not persuasive of reversible error because, as noted by the Examiner (Ans. 6—7), the monitored charging current is not transformed, but is instead measured and the measurement (data) is used in a mathematical formula/algorithm to calculate a calibrated capacity ratio, which is then displayed. Further, as highlighted by the Examiner’s comparison to Diamond v. Diehr, 450 U.S. 175 (1981), claim 1 does not include any step that applies the calculated capacity ratio to transform any article to a different state or thing. Ans. 6—7. The measurement of battery characteristics, whether it is charging current (or battery voltage) to obtain measured values, including in digital form, is no more than a measurement. Ans. 37. Appellant argues that “[cjlaim 1 addresses the improvement of estimating a remaining capacity of a battery” and includes “meaningful limitations that add more than generally linking the use of an abstract idea to a computer or to the field of batteries, because they improve the accuracy of estimating a remaining capacity of a battery with a claimed solution that is necessarily rooted in computer technology.” Appeal Br. 10; see also Appeal Br. 23—24. Appellant contends that “these [meaningful] limitations are specific limitations other than what is well-understood, routine and 9 Appeal 2017-005010 Application 13/745,299 conventional in the field . . . evidenced by the lack of any prior art rejections, and [that] they confine claim 1 to a particular useful application.” Appeal Br. 10; see also Appeal Br. 23. Appellant’s arguments are not persuasive of reversible error. As discussed above, however useful the calculation obtained and displayed may be, its value or usefulness is not dispositive of patent eligibility. Parker v. Flook, 437 U.S. at 594-95. As to Appellant’s contention that the limitations are, effectively, novel and nonobvious, the analysis in the second step of the Alice!Mayo framework is not an evaluation of novelty or non-obviousness, but rather, a search for “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.’” Alice, 134 S. Ct. at 2355. Further, the novelty or non-obviousness of the claims does not necessarily flow from what the claim adds to the abstract idea. Cf. Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“[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.”). Thus, even if novel, subject matter falling within judicial exceptions are patent ineligible absent further elements amounting to significantly more that transforms them into eligible subject matter. The elements Appellant contends are not conventional do not, accordingly, transform the ineligible subject matter, because they are not something more than, but are, rather, part of the ineligible concept. Appellant’s separately repeated arguments, as to claim 10 (Appeal Br. 11—13), claim 14 (id. at 13—16), claim 23 (id. at 16—19), and claim 27 (id. at 19-22), are likewise unpersuasive. 10 Appeal 2017-005010 Application 13/745,299 Appellant further argues that in determining and then displaying a calibrated capacity ratio in percentage form to a user, the “features can help a user of a device ... to know the more accurate value of the relative state of charge of the battery . . . [and, thus, the claimed subject matter has] effected [a] real-world application.” Appeal Br. 24. Appellant’s argument is not persuasive of reversible error because, as discussed above, however useful the provided and displayed data is, the collection of data, calculation of further data from collected data, and then display of the calculated result is not sufficient to transform the ineligible abstract idea identified into eligible subject matter. See Parker v. Flook, 437 U.S. at 594-95; Elec. Power, 830 F.3d at 1353. Appellant further contends that “processes [recited in the claims] cannot be carried out manually.” Appeal Br. 24. Even if, arguendo, Appellant’s contention is correct, it is not persuasive because the processor is used to perform a function commonly performed by generic computers, that is, to conduct mathematical operations to manipulate collected information to generate additional information. See Elec. Power, 830 F.3d at 1353; Digitech, 758 F.3d at 1351. Appellant further contends that the recited devices are configured to monitor a specific parameter, i.e., a charging current (claim 1 and 14) or battery voltage (claims 10, 23, and 17), and are configured to generated information indicative of the parameter in digital form. Appeal Br. 25. Appellant also argues that this “amounts to significant extra-solution activity to the judicial exception.” Appeal Br. 25—26. Appellant’s argument is not persuasive because the identified abstract idea requires the charging current input (claims 1 and 14) or the battery 11 Appeal 2017-005010 Application 13/745,299 voltage input (claims 10, 23, and 27), and the requisite elements to measure these (and express them in digital form) are not described in such detail that they amount to anything more than generic elements to implement the abstract idea. The claims, accordingly, give rise to neither specific structure of the components, nor require the components to operate in an unconventional manner to achieve an improvement in function of the device. Amdocs, 841 F.3d at 1300-1301; BASCOM, 827 F.3d at 1349. On this record, accordingly, we determine the claims are directed to the abstract concept of calculating a calibrated capacity ratio. Further, also as explained above, we determine nothing in the claims that transform the nature of the claims into patent-eligible application of the otherwise ineligible concepts. We, therefore, sustain the Examiner’s rejection of the claims under 35 U.S.C. § 101. DECISION The Examiner’s decision rejecting claims 1-3, 6, 10, 11, 14—17, and 21-30 1 is AFFIRMED. 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)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation