General Electric Company

Patent Trials and Appeals Board

Dec 23, 2020

2020002574 (P.T.A.B. Dec. 23, 2020)

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.
15/225,110 08/01/2016 Kudum Shinde 283619-US-1 1073
124150 7590 12/23/2020
Hanley, Flight & Zimmerman, LLC
150 S. Wacker Dr.
Ste. 2200
Chicago, IL 60606
EXAMINER
AFZALI, SARANG
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
12/23/2020 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):
OC.Prosecution@ge.com
mailroom@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUDUM SHINDE
Appeal 2020-002574
Application 15/225,110
Technology Center 3700
Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and
JEREMY M. PLENZLER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 12 and 14–19.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM and ENTER A NEW GROUND OF REJECTION.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as General Electric
Company. Appeal Br. 3.
2 Claims 1–11 have been withdrawn from consideration, and claim 13 has
been canceled. Amdt. filed Mar. 15, 2019.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “the design of an aft extension
case for an aircraft engine and more specifically to a method for reducing
distortions created by the split flanges used to assemble the aft extension
case.” Spec. ¶ 1. Claim 12, reproduced below, is illustrative of the claimed
subject matter:
12. A method of manufacturing an annular case such that
distortion due to operational conditions is reduced, the method
of manufacturing comprising the steps of:
identifying a distortion-shape of a base configuration of
the annular case as it would occur by modeling operational
conditions;
identifying a counter-distortion-shape which is the
geometric difference between a predetermined base pattern and
the distortion-shape;
designing a base-counter-distortion-shape such that the
base-counter-distortion-shape includes pseudo-flanges; and
creating a modified-base-configuration by adding the
pseudo-flanges to the base configuration design positioned in
locations analogous to that in the base-counter-distortion-shape;
manufacturing the annular case according to the
modified-base-configuration.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Burdgick US 5,605,438 Feb. 25, 1997
Seeley US 6,691,019 B2 Feb. 10, 2004
Bacic US 9,657,587 B2 May 23, 2017
LeBlanc US 2016/0146033 A1 May 26, 2016

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REJECTIONS
Claims 12 and 14–16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Burdgick and Seeley.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Burdgick, Seeley, and Bacic.
Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Burdgick, Seeley, and LeBlanc.
OPINION
Claim Construction
We begin our analysis by construing the language of claim 12.
The first step of the method of claim 12 is “identifying a distortion-
shape of a base configuration of the annular case as it would occur by
modeling operational conditions.” Appeal Br. 10 (Claims App.). In the
context of science and technology, “modeling” means developing a theory or
prediction, generated based on known scientific concepts and principles, of
how something (in this case, an annular case) will behave under given
conditions (such as operating conditions of an aircraft engine). “Modeling”
can be very simplistic or extremely intricate and complicated. Appellant’s
Specification does not expressly limit the “modeling” to any particular type
of modeling, but gives “finite element-based modeling” as an example of
modeling methods that can be used to determine the distortion-shape of the
base configuration of the annular case. Spec. ¶ 12. Finite element-based
modeling is a series of mathematical calculations that predict quantitatively
the state (i.e., location, temperature, stress, strain, or the like) of each of a
plurality of discrete locations on a structure (such as an annular case)
resulting from input parameters such as temperature, pressure, stress, strain,
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etc., to simulate operating conditions of the structure, with the results of
these calculations for the plurality of locations being used to generate a
visual representation of the structure as it will exist (for example in a
distorted or deformed state) under the operating conditions. Although the
Specification provides the example of finite element-based modeling, the
“modeling” recited in the claim could be a much simpler set of equations or
calculations used to identify a general expected distortion shape of the
annular case.
A more simplistic type of modeling would be a sketch made by a
person of ordinary skill in the art, familiar with the effects of operating
conditions on the structure, as well as the basic scientific principles
describing how such structures will behave when subjected to such operating
conditions, showing the shape the structure (i.e., the annular case) will
assume under the operating conditions. For example, a person having
ordinary skill in the field of gas turbine design having a general
understanding that an annular turbine case (stator) formed in two semi-
cylindrical halves assembled together using split flanges would be distorted
into an elliptical shape under operating conditions because of the split
flanges could easily visualize the distortion-shape (i.e., ellipse). See Spec.
¶¶ 10, 13.
The second step of the method of claim 12 is “identifying a counter-
distortion-shape which is the geometric difference between a predetermined
base pattern and the distortion-shape.” Appeal Br. 10 (Claims App.). In the
example given in Appellant’s Specification, in which the distortion-shape is
an ellipse, the “counter-distortion-shape” is an ellipse with the minor and
major axes reversed from the minor and major axes of the distortion-shape
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ellipse. See Spec. ¶ 11. In other words, this step, in essence, is identifying a
counter-distortion shape that counteracts, or cancels out, the distortion
reflected in the distortion-shape, so that the resulting shape would be the
shape of the base configuration.
The next step of claim 12 is “designing a base-counter-distortion-
shape such that the base-counter-distortion-shape includes pseudo-flanges.”
Appeal Br. 10 (Claims App.). This step amounts to conceiving of a shape
including pseudo-flanges in locations that will cause the structure (i.e., the
casing), in operational conditions, to distort in accordance with the counter-
distortion shape in order to effectively counteract or cancel the distortion
that results in operational conditions in the absence of such pseudo-flanges.
In the example discussed in the Specification, the base-counter-distortion
shape includes diametrically opposed pseudo-flanges at locations shifted 90o
relative to the split-flanges. See Spec. ¶ 13.
The next step of claim 12 is “creating a modified-base-configuration
by adding the pseudo-flanges to the base configuration design positioned in
locations analogous to that in the base-counter-distortion-shape.” Appeal
Br. 10 (Claims App.). This step entails combining together the base
configuration and the base-counter-distortion-shape to create a shape having
pseudo-flanges that will help counteract the distortion that would otherwise
occur during operational conditions. In the example discussed in the
Specification, this modified-base-configuration has both the split-flanges at
which the semi-cylindrical halves are attached together and the pseudo-
flanges at locations at which they will help counteract the distortion that
would be caused by the presence of the split-flanges when the case is
subjected to operational conditions.
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The last step of claim 12 is “manufacturing the annular case according
to the modified-base-configuration.” Appeal Br. 10 (Claims App.). This
step simply applies the result obtained from the earlier steps to the
manufacturing process. Neither claim 12 nor the Specification specifies any
details or manufacturing steps of the actual manufacturing.
Obviousness—Burdgick and Seeley
Appellant presents arguments for independent claim 12, and states
that “[t]he patentability of claims 14–16 is not separately argued.” Appeal
Br. 7–9. We decide the appeal of this rejection on the basis of claim 12, and
claims 14–16 stand or fall with claim 12. See 37 C.F.R. § 41.37(c)(1)(iv)
(permitting the Board to select a single claim to decide the appeal as to a
single ground of rejection of a group of claims argued together).
The Examiner finds that Burdgick discloses a method of
manufacturing an annular case such that distortion due to operational
conditions is reduced, substantially as recited in claim 12. Final Act. 2–3.
The Examiner finds, in pertinent part, that Burdgick “would necessarily need
to know and teach what the desired undistorted annular case is and what the
amount of distortion and shape and size of the pseudo flange[s] have to be.”
Id. at 3. Thus, according to the Examiner, Burdgick
implicitly teach[es] the steps of identifying a distortion-shape of
a base configuration of the annular case as it would occur in
operation, identifying a counter-distortion-shape which is the
geometric difference between a predetermined base pattern and
the distortion-shape; designing a base-counter-distortion-shape
such that the base-counter-distortion-shape includes pseudo-
flanges; creating a modified-base-configuration by adding the
pseudoflanges to the base configuration design positioned in
locations analogous to that in the base-counter-distortion-shape
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and manufacturing the annular case according to the modified-
base-configuration.
Id.
The Examiner finds that Burdgick does “not explicitly teach the step
of modeling operational conditions.” Final Act. 4. The Examiner also finds,
however, that Burdgick “explicitly teach[es] that the ribs are designed to
counteract the distortion caused in operational condition[s].” Id.
The Examiner finds that Seeley evidences that it was known to model
“a variety of operating conditions in order to control distortion of a turbine
casing resulting from thermal stresses.” Final Act. 4. Thus, the Examiner
determines it would have been obvious to use Burdgick’s implicit teachings
of identifying a distortion-shape, identifying a counter-distortion-shape,
designing a base-counter-distortion-shape including pseudo-flanges, and
creating a modified-base-configuration by adding the pseudo-flanges to the
base configuration design “to provide the most enhanced and effective
distortion control system that would minimize the distortion of the casing
during the operating condition[s].” Id. at 4. Additionally, the Examiner
determines it would have been obvious to provide Burdgick’s method
with the step of modeling operational conditions, as taught by
Seeley . . . , as an effective means of identifying, determining[,]
and designing the shapes and locations of pseudo-flanges in a
precise and repeatable manner that would counteract and
minimize the distortion of the casing during the operating
condition[s,] thus improving the engine’s productivity and
efficiency.
Id. at 4–5.
Appellant contends that Burdgick “teaches a turbine casing having
ribs[,] not a method of manufacturing an annular case.” Appeal Br. 7.
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Appellant also contends that the Examiner’s position that Burdgick would
necessarily need to know and teach what the desired undistorted case is, as
well as the amount of distortion and shape and size of the pseudo-flanges,
and the Examiner’s findings regarding the implicit teachings of Burdgick,
are “the very definition of ‘impermissible hindsight.’” Id. at 7–8. Appellant
argues that “[t]to assume that the case of Burdgick is manufactured in
exactly the same way as is disclosed in . . . Appellant’s application would be
to assume that there is only one way to manufacture an annular case” and
submits that “[s]uch a conclusion is wholly unsupported and impermissible.”
Id. at 8.
In response, the Examiner emphasizes that claim 12 only recites one
manipulative step of manufacturing an annular case based on a design
configuration and that “[t]he remainder of the claimed steps of identifying,
creating[,] and designing could have very well been conceived in the mind
of . . . Appellant and Burdgick as well.” Ans. 4. Appellant does not dispute
the Examiner’s analysis of claim 12 in this regard. See Reply Br. 3. Further,
the Examiner points out that Burdgick teaches forming the annular casing by
securing casing halves to one another at splitline flanges and disposing at
least one axially extending rib on each casing half at a circumferential
location intermediate the splitline flanges. Ans. 4 (citing Burdgick 2:29–41).
The Examiner notes, additionally, that Burdgick’s technical field
“particularly relates to a distortion control system for use in turbine and
compressor housings to significantly reduce out-of-roundness caused by
internal pressure and/or thermal gradients in the housing material.” Id.
(citing Burdgick 1:6–11). The Examiner posits that, in arriving at the
solution of providing one or more axially extending ribs along the outer
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surface of each casing half, “Burdgick must have wrestled with the idea of
how to provide some mechanism to determine where the most critical
distortions of the casing are and how to prevent that from occurring.” Id.
Thus, the Examiner determines that
Burdgick or any other one of ordinary skill in the art would
have found it necessary and imperative to go through the
exercise of identifying the location and type of the distortion
and what remedy was needed to minimize the distortion in
order to maintain the shape of the casing close to [its] original
and undistorted condition.
Id. at 4–5. For the reasons that follow, the Examiner’s position is well
founded.
Burdgick’s invention is directed to controlling distortion “in turbine
and compressor housings to significantly reduce out-of-roundness caused by
internal pressure and/or thermal gradients in the housing material.”
Burdgick 1:7–10. Burdgick explains that typical turbine and compressor
housings comprise upper and lower halves connected to one another along a
horizontal plane by vertical bolts extending through enlarged splitline
flanges, and that the large mass of the splitline flange causes it to respond
thermally at a slower rate than the balance of the housing, thus resulting in
distortion of the housing. Id. 1:18–25. Further, Burdick teaches, a large
thermal gradient through the flange causes the flange to pinch inwards due
to thermally induced axial strain. Id. 1:25–28. Additionally, Burdick
explains that internal casing pressure also causes distortion, and that,
because of offset between the centerline of the boltholes and the main
portion of the turbine casing, “a moment is introduced by the hoop field
stress transferred through the bolts, causing the splitlines to deflect radially
inwardly.” Id. 1:28–34. This description by Burdgick of the distortion that
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will occur identifies, at least broadly, a distortion-shape of a base
configuration of the annular case as it would occur during operational
conditions. Further, despite the Examiner’s finding that Burdgick does not
explicitly teach modeling operational conditions (Final Act. 4), this
description strikes us as modeling operational conditions, at least in a broad
sense, consistent with the broad disclosure and recitation of “modeling,” as
discussed above. Nevertheless, to the extent that one might construe
“modeling” as requiring more than what Burdgick teaches, the Examiner
relies on Seeley for such modeling, as discussed above.
Burdgick discloses that by locating circumferentially extending rib 44
about the casing halves, “the distortion of the casing half caused by internal
pressure is significantly reduced.” Burdgick 4:24–27. Additionally,
Burdgick discloses providing three axially extending ribs 46 spaced
circumferentially from one another, with the ribs substantially matching “the
stiffness and much of the thermal mass of the horizontal flange.”
Burdgick 4:48–51. In other words, Burdgick discloses providing ribs 44 and
46 to counter the distortion that would result without these ribs. Although
Burdgick may not express it in precisely such language, in arriving at this
solution, Burdgick implicitly identifies the type of counter-distortion
necessary to reduce or counteract the distortion that would otherwise result
to the casing under operational conditions. Counter-distortion may be
thought of in terms of counter forces/stresses/strains, or a counter-distortion
shape, and it would have been obvious for one of ordinary skill in the art to
visualize it either way. Thus, it would have been obvious to one of ordinary
skill in the art to visualize, or identify, a counter-distortion-shape necessary
to resist, or counter, the distortion described by Burdgick in order to arrive at
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the structural solution of circumferentially extending ribs and axially
extending ribs that Burdgick describes, especially in light of Burdgick’s
description of the distortion in terms of shape, as discussed above (e.g., “out-
of-roundness” and “pinch”).
Burdgick’s design including the circumferentially extending ribs and
axially extending ribs to resist or counter the distortion of the base
configuration discloses designing a base-counter-distortion-shape as recited
in claim 12. Further, adding these ribs on Burdgick’s casing, which includes
the casing halves connected at splitline flanges, constitutes creating a
modified-base-configuration including pseudo-flanges as recited in claim 12.
Finally, the actual process of manufacturing the annular case in
accordance with Burdgick’s disclosure fully satisfies the step of
“manufacturing the annular case according to the modified-base-
configuration” as recited in claim 12. Although we appreciate that Burdgick
focuses primarily on the structure of the casing, rather than the process for
manufacturing the casing, a person having ordinary skill in the art would
certainly have inferred from Burdgick’s disclosure that the annular casing
described by Burdgick is to actually be manufactured.
Appellant does not identify any flaw in the Examiner’s reasoning or
point to any knowledge relied on by the Examiner that was gleaned only
from Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of the invention, thereby failing to support
Appellant’s hindsight assertion. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
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time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”).
For the reasons discussed above, the Examiner’s conclusion of obviousness
takes into account only knowledge that was within the level of ordinary skill
in the art and does not include knowledge gleaned only from Appellant’s
disclosure.
Appellant submits that “Seeley is not directed to the manufacture of
an annular case with reduced distortion” and, in fact, focuses “on controlling
distortion in existing annular cases by monitoring and controlling
temperature distribution within the annular case.” Appeal Br. 8. This
argument does not identify a deficiency in the rejection. It is of no moment
that Seeley teaches controlling distortion by monitoring and controlling
temperature distribution within the casing rather than by providing
additional structure, such as pseudo-flanges or ribs. The Examiner does not
rely on Seeley for any teachings directed to manufacturing or re-designing
the casing. Rather, the Examiner relies on Seeley only “to teach a
mechanism [(i.e., modeling)] that identifies and determines the locations of
an annular case that undergo distortion during operational conditions.”
Ans. 6. Appellant does not persuasively contest the Examiner’s findings or
reasoning in this regard.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 12. Accordingly, we sustain the rejection of claim 12, and
of dependent claims 14–16, which fall with claim 12, as unpatentable over
Burdgick and Seeley.
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Obviousness—Burdgick and Seeley, further in view of either Bacic or
LeBlanc
In contesting the rejections of claims 17–19, Appellant relies solely on
the arguments presented for claim 1. See Appeal Br. 9 (stating that the
patentability of claims 17–19 is not argued separately from claim 12).
Accordingly, for the reasons discussed above, we sustain the rejection of
claims 17 and 18 as unpatentable over Burdgick, Seeley, and Bacic, and the
rejection of claim 19 as unpatentable over Burdgick, Seeley, and LeBlanc.
Patent Eligibility—New Ground of Rejection
Principles of Law Pertaining to Patent Eligibility
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court 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.”).
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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 of rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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 176; 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.”).
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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.
On January 7, 2019, the PTO issued revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (hereinafter “2019 Eligibility Guidance”). The
2019 Eligibility Guidance includes steps 2A and 2B. Under Step 2A, Prong
One, of the guidance, we first look to whether the claim recites any judicial
exceptions, including certain groupings of abstract ideas (i.e., mathematical
concepts, certain methods of organizing human activities such as a
fundamental economic practice, or mental processes). See id. at 54.
If a claim recites a judicial exception, we proceed to Step 2A, Prong
Two, and determine whether the claim recites additional elements that
integrate the judicial exception into a practical application. See id.; see also
MPEP § 2106.05(a)–(c), (e)–(h).
Only if a claim both recites a judicial exception and fails to integrate
the judicial exception into a practical application, do we proceed to Step 2B
of the guidance. At this step, we determine whether the claim adds a
specific limitation beyond the judicial exception that is not “well-
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understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See 2019 Eligibility Guidance, 84 Fed. Reg. at 56. In doing so,
we consider the elements of the claim both individually and as “an ordered
combination.” See Alice, 573 U.S. at 217 (stating that “we consider the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements “transform the nature of the
claim” into . . . an ‘“inventive concept”’—i.e., 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’”); see
also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349–50 (Fed. Cir. 2016) (explaining that, even in claims reciting only
“generic computer, network and Internet components, none of which is
inventive by itself,” “an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces”
under step two of the Alice framework).
Analysis
Step 2A, Prong One — Recitation of Judicial Exception
As should be clear from our discussion of claim 12 above, the two
identifying steps, the designing step, and the creating step all encompass
mental processes (i.e., concepts performed in the human mind, including
observations or evaluations), which is one of the groupings of abstract ideas
specifically enumerated in the 2019 Eligibility Guidance. See 84 Fed. Reg.
at 52. The “identifying . . . by modeling” step can also be considered a
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mathematical concept (i.e., mathematical calculations, in the case of, for
example, finite element-based modeling). See id.
Claims 14–19 depend from claim 12.3 Similar to claim 12, the steps
of “modeling a base configuration as it would occur under operational
conditions” recited in claim 14 and “quantifying the distortion-shape”
recited in claim 15 encompass either mental processes (a concept performed
in the human mind, in the case of simplistic modeling as discussed above) or
mathematical concepts (i.e., mathematical calculations, in the case of, for
example, finite element-based modeling). These are both groupings of
abstract ideas explicitly enumerated in the 2019 Eligibility Guidance. See
84 Fed. Reg. at 52.
The step of “designing a base configuration” of claim 16 and the step
of “identifying pinch points that occur under operational conditions between
the annular case and the rotor” of claim 17 are mental processes. Similarly,
the step of “preparing a polar plot identifying a radial location of the pinch
points” recited in claim 18 encompasses a mental process. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011)
(stating that “[i]t is clear that unpatentable mental processes are the subject
matter of claim 3. All of claim 3’s method steps can be performed in the
human mind, or by a human using a pen and paper.”). Claim 19 does not
further define the method.

3 Claim 14 recites that it depends from claim 13. Claim 13, however, has
been cancelled as noted above. For purposes of this appeal, we understand
claim 14 as depending from claim 12.
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Step 2A, Prong Two — Practical Application
Following the 2019 Eligibility Guidance, having found that claims 12
and 14–19 recite a judicial exception, namely, mental processes and/or
mathematical concepts, we are instructed next to determine whether the
claim recites “additional elements [that] integrate the exception into a
practical application” (see MPEP § 2106.05(a)–(c), (e)–(h)). See 2019
Eligibility Guidance, 84 Fed. Reg. at 54. This evaluation requires us to
determine whether an additional element or a combination of additional
elements in the claim applies, relies on, or uses the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the
exception. Id. If the recited judicial exception is integrated into a practical
application, the claim is not “directed to” the judicial exception. Id.
The only additional element recited in claims 12 and 14–19 is the step
of “manufacturing the annular case according to the modified-base-
configuration” recited in claim 12. This step, which recites manufacturing
only nominally, in essence, merely recites applying the abstract idea in
manufacturing an annular case (i.e., a technological field) and constitutes
insignificant post-solution activity. Thus, this limitation does not integrate
the judicial exception into a practical application. The prohibition against
patenting an abstract idea “cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11
(2010) (citing Diehr, 450 U.S. at 191–92).
Claims 14–18 do not recite anything beyond the abstract ideas noted
above. Claim 19’s recitation limiting the abstract idea to “a high pressure
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19
compressor” also fails to provide a practical application because it, too,
simply attempts to limit the claim to a particular field.
Accordingly, the claims are directed to abstract ideas.
Step 2B — Inventive Concept
Because we determine that claims 12 and 14–19 fail to recite
additional elements that integrate the judicial exception into a practical
application, in accordance with the 2019 Eligibility Guidance, we next
consider whether the claims add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field or
instead “simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.” See 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
As noted above, the only additional element in claims 12 and 14–19 is
a nominal step of “manufacturing the annular case according to the
modified-base-configuration.” The claims do not specify any new or novel
aspect of the manufacturing step itself, nor does the Specification describe
any details of the manufacturing step, much less give any indication that the
annular case is manufactured using manufacturing techniques that are not
well-understood, routine, and conventional in the field.
Thus, claims 12 and 14–19 fail to recite an inventive concept that
transforms the claims into a patent-eligible application of the abstract idea.
Accordingly, pursuant to 37 C.F.R. § 41.50(b), we reject claims 12 and
14–19 as not being directed to patent eligible subject matter under
35 U.S.C. § 101.
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CONCLUSION
The Examiner’s rejections of claims 12 and 14–19 under
35 U.S.C. § 103 are AFFIRMED, and we enter a NEW GROUND OF
REJCTION of claims 12 and 14–19 as not being directed to patent eligible
subject matter under 35 U.S.C. § 101.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
12, 14–16 103 Burdgick, Seeley 12, 14–16
17, 18 103 Burdgick, Seeley,
Bacic
17, 18
19 103 Burdgick, Seeley,
LeBlanc
19
12, 14–19 101 Eligibility 12, 14–19
Overall
Outcome
12, 14–19 12, 14–19

FINALITY OF DECISION
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 “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, 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 prosecution
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21
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)