Gary W. Atkinson et al.

Patent Trials and Appeals Board

Sep 13, 2019

14182747 - (D) (P.T.A.B. Sep. 13, 2019)

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.
14/182,747 02/18/2014 Gary W. Atkinson 67108-423PUS1;815529USNP 6489
46368 7590 09/13/2019
CARLSON, GASKEY & OLDS, P.C./Alcatel-Lucent
400 W MAPLE RD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
ISLAM, MOHAMMAD K
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
cgolaw@yahoo.com
nokia.ipr@nokia.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GARY W. ATKINSON and DAYU HUANG
____________

Appeal 2018-008745
Application 14/182,747
Technology Center 2800
____________

Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants2 request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–20. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 This Decision includes citations to the following documents:
Specification filed February 18, 2014 (“Spec.”); Final Office Action mailed
January 5, 2018 (“Final Act.”); Appeal Brief filed June 20, 2018 (“Appeal
Br.”); Examiner’s Answer mailed August 9, 2018 (“Ans.”); and Reply Brief
filed September 7, 2018 (“Reply Br.”).
2 Appellants identify Alcatel-Lucent USA, Inc. as the real party in interest.
(Appeal Br. 2.)
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I. BACKGROUND
The subject matter on appeal relates to temperature estimation, and in
particular to estimating temperatures at a plurality of sites based on
temperature information from measurement stations. (Spec. ¶ 1.)
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A method of estimating a temperature for at least one of a
plurality of sites based on temperature information from at least
one of a plurality of temperature measurement stations, the
method comprising an estimator device:
clustering the plurality of sites into a plurality of clusters;
determining a centroid for each cluster;
associating each centroid with a measurement station;
assigning one of a preselected plurality of estimating
techniques respectively to the measurement stations, wherein
the assigned estimating technique provides a temperature
estimate at the measurement station that is more accurate than
others of the preselected plurality of estimating techniques for
the measurement station, and wherein lapse rate is a parameter
of the assigned estimating technique; and
estimating a temperature at the at least one of the plurality of
sites using the estimating technique assigned to the
measurement station associated with the centroid of the cluster
including the at least one of the plurality of sites.

App. Br. 11 (Claims Appendix).

II. REJECTION ON APPEAL
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. (Final Act. 11–17.)
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III. DISCUSSION
We limit our discussion largely to claim 1, which is sufficient for
disposition of this appeal.
1. The Examiner’s Position
The Examiner determined “claims 1–20 are directed to an abstract
idea related to (a) Collecting information, analyzing it, and outputting
certain results of the collection and analysis . . . and idea itself and
Mathematical Relationships/formulas.” (Final Act. 12 (emphasis in
original).) The Examiner determined independent claims 1, 9, and 17
recited additional elements beyond the abstract ideas including a temperature
estimating device (claims 1 and 9), data storage (claim 9), a processor (claim
9), and computer-executable instructions (claim 17). (Id. at 15.) The
Examiner stated these limitations:
are nothing more than generally linking the use of the
abstract idea to a particular technological environment or field
of use, [which] amount(s) to no more than: . . . recitation of a
generic system of temperature estimation system, recited at a
high level of generality and not narrowing the claims to a
particular application of the abstract idea.
(Id.)
The Examiner further stated: “In summary, [the] claims are drawn to
an abstract idea requiring no more than a generic computer to perform
generic computer function that are well-understood, routine and
conventional activities previously known to the industry.” (Id.)
2. Appellants’ Principal Contentions
Appellants argue the Examiner “has not properly identified the core
concept at issue in the claims” and “oversimplifies each element of the
independent claims in an effort to characterize them as ‘mathematical
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relationships / formulas,’ ‘analysis and algorithm,’ ‘algorithm,’ etc.”
(Appeal Br. 5, 8.) Appellants argue the “core concept of claim 1 is
temperature estimation for a site that is part of a cluster based on a
measurement station associated with a centroid of the cluster, which is more
specific than the broad generalizations presented by the Examiner.” (Id. at
6.) Appellants argue that under step 2A, the claim as a whole must be
analyzed, and none of the cases cited by the Examiner “indicate that
temperature estimation for a site that is part of a cluster based on a
measurement station associated with a centroid of the cluster is an abstract
idea under step 2A.” (Id. at 7.) Appellants argue the claims include new
techniques and a new estimator device, which are novel and impart subject
matter eligibility to the claims. (Id. at 7–8.) Appellants do not concede the
claims are directed to an abstract idea, and argue the “assigning” and
“estimating” steps recited in the claims provide a technical benefit of
providing reasonably accurate temperature information when it is
impractical to obtain actual temperature measurements at sites of interest,
which are novel and amount to “significantly more”. (Id. at 8–9.)
Appellants argue “clustering the plurality of sites into a plurality of
clusters,” “determining a centroid for each cluster,” and “associating each
centroid with a measurement station” amount to more than abstract ideas.
(Id. at 9.)
3. Opinion
For the reasons discussed below, we agree with Appellants that the
claimed subject matter has not been shown to be patent-ineligible as directed
to a judicial exception without reciting significantly more.
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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 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “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.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
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The PTO recently published revised guidance on the application of
§ 101 with regard to the first step of the Alice/Mayo test (i.e., Step 2A of the
USPTO’s Subject Matter Eligibility Guidance as incorporated into M.P.E.P.
§ 2106). USPTO’s January 7, 2019, 2019 Revised Patent Subject Matter
Eligibility Guidance (“Revised Guidance”). 84 Fed. Reg. 50 (Jan. 7, 2019).
Thus, under Step 1 of the Guidance, as revised, we determine whether the
claimed subject matter falls within the one of the four statutory categories:
process, machine, manufacture, or composition of matter. Step 2A of the
Guidance is two-pronged, under which we look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See 84 Fed. Reg. at 54–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then, under Step
2B, look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. at 56.
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Initially, there does not appear to be a dispute that claims 1–20 fall
within one of the four statutory categories of invention under Step 1 of the
Guidance, where claims 1–8 recite a method, and claims 9–20 recite a
device. (Final Act. 11; Appeal Br. 4.) Accordingly, we turn next to Step
2A(1) of the Revised Guidance.
Under Step 2A(1) we find that claim 1 recites a judicial exception in
the form of mathematical concepts and mental processes. Specifically,
claim 1 recites “estimating a temperature for at least one of a plurality of
sites based on temperature information from at least one of a plurality of
temperature measurement stations” and “estimating a temperature at the at
least one of the plurality of sites using the estimating technique assigned to
the measurement station associated with centroid of the cluster including the
at least one of the plurality of sites.” According to the Specification,
estimation may be performed using the following equation reproduced
below:

where θ*(r,t) is the estimate of the ambient temperature at location of
interest r at time t, N(r,t) is the set of measurement stations in and around
region R, wn(r,t) is the weight assigned to the temperature measured at the
nth station, θn(t) is the ambient temperature measured at time t at the nth
station, ß(r,t) is the lapse rate of decrease of temperature at location r at time
t, and z is elevation. (Spec. 11–12 ¶¶ 50–58, 39.3) Claim 1 recites
“clustering the plurality of sites into a plurality of clusters.” According to

3 The Specification contains two paragraphs labeled 39. Here, we refer to
paragraph 39 on page 12, ll. 17–18.)
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the Specification, “clustering comprises: determining a set of parameters that
affect ambient temperature at the sites” and “clustering the sites together that
have related parameters.” (Spec. ¶ 5.) Claim 1 recites “determining a
centroid for each cluster,” which according to the Specification corresponds
to approximating a positional average of a majority of sites within a cluster
or evaluating a parameter or parameters that are most likely to impact the
similarity of ambient temperature at the sites of that cluster. (Spec. ¶ 37.)
Claim 1 recites “assigning one of a preselected plurality of estimating
techniques respectively to the measurement stations, wherein the assigned
estimating technique provides a temperature estimate at the measurement
station that is more accurate than others of the preselected plurality of
estimating techniques for the measurement station, and wherein lapse rate is
a parameter of the assigned estimating technique.” According to the
Specification, this step involves applying different estimating techniques and
then determining which technique provides the lowest average error for that
particular station. (Spec. ¶¶ 43–49.)
Thus, claim 1 recites a judicial exception in the form of mathematical
concepts and mental processes.
As a result, we now turn to Step 2A(2) of the Revised Guidance to
determine whether the claims integrate the judicial exception into a practical
application. Diehr, 450 U.S. at 187 (“A claim drawn to subject matter
otherwise statutory does not become nonstatutory simply because it uses a
mathematical formula.”). We determine that claim 1 recites additional
elements or steps–associating each centroid with a measurement station–
that integrate the mathematical concepts or mental processes into a practical
application directed to an improved temperature estimating method that
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overcomes problems in prior art techniques. As explained in the
Specification (Spec. ¶ 2), “[m]ost ambient temperature information is
regionally based and assumes a general uniformity across a wide ranging
area” and “time resolution of such temperatures is often based on periods of
a day or half-day interval.” The Specification explains “[m]ore specific
temperature information could be obtained by deploying more sensors and
gathering temperature information from them more often but there are
practical and economic limitations on such an approach.” (Spec. ¶ 3.) The
Specification explains that such limitations include situations where “the
necessary capital investment often would outweigh the potential benefits that
could be obtained with such an approach.” (Id.)
Given that the claimed invention including the mental processes
provides a solution to the problem in the prior art of providing accurate
temperature estimation, we determine that the claimed subject matter
integrates the judicial exceptions into a practical application that results in an
overall improvement in temperature estimation technology. Diehr 450 U.S.
at 187 (“[O]ne does not need a ‘computer’ to cure natural or synthetic
rubber, but if the computer use incorporated in the process patent
significantly lessens the possibility of ‘overcuring’ or ‘undercuring,’ the
process as a whole does not thereby become unpatentable subject matter.”)
(emphasis added); but see Flook, 437 U.S. at 595–96 (merely reciting a new
and presumably better method for calculating an alarm limit as part of a
catalytic conversion process with no improvement to the catalytic process
itself rendered a claim to such process patent-ineligible).
That is, the claimed subject matter integrates the judicial exceptions
into a practical application that results in an overall improvement by
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specifically providing a method of estimating temperature that is practically
integrated into temperature measurement stations. In particular, the
estimation method recites the determined centroids of the plurality of sites
clustered into a plurality of clusters are associated with a measurement
station, and a temperature is estimated using the particular estimating
technique assigned to the measurement station. Because our analysis under
Step 2A of the Revised Guidance is dispositive, we need not consider Step
2B of the guidance.
As our analysis for claim 1 is also pertinent to the other independent
claims (namely, claims 9 and 17), which contain the same or similar
limitations, we do not sustain the rejection as maintained against all claims
on appeal.
IV. SUMMARY
The Examiner’s final decision to reject claims 1–20 is reversed.

REVERSED