Google LLC

Patent Trials and Appeals Board

Dec 30, 2021

2022001044 (P.T.A.B. Dec. 30, 2021)

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.
16/654,978 10/16/2019 Jim Gao 16113-8298001 6061
26192 7590 12/30/2021
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
COLE, BRANDON S
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
12/30/2021 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JIM GAO, CHRISTOPHER GAMBLE, AMANDA GASPARIK,
VEDAVYAS PANNEERSHELVAM, DAVID BARKER,
DUSTIN REISHUS, ABIGAIL WARD, JERRY LUO, BRIAN KIM,
MARK SCHWABACHER, STEPHEN WEBSTER,
TIMOTHY JASON KIEPER, DANIEL FUENFFINGER, and
ZAKEREY BENNETT
_____________

Appeal 2022-001044
Application 16/654,978
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, NORMAN BEAMER, and
MICHAEL CYGAN, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–20, which constitute all the claims pending in this application. See
Appeal Br. 1. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is
Goggle LLC. See Appeal Br. 1.

Appeal 2022-001044
Application 16/654,978

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STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s claimed subject matter relate generally
to “integrating machine learning into control systems.” See Spec. 1.
Representative Claim 1
1. A method comprising:

receiving, from a machine learning system and by a control
system for a controllable facility, an optimal controllable
facility setting slate that the machine learning system predicts
will optimize an efficiency of the controllable facility, wherein
the optimal controllable facility settings slate defines a
respective setting for each of a plurality of controllable facility
controls;

[L1] determining, by the control system for the controllable
facility, whether the respective settings defined by the optimal
controllable facility setting slate as predicted by the machine
learning system will result in unstable conditions in the
controllable facility; and

[L2] in response to determining that the respective settings
defined by the optimal controllable facility setting slate will not
result in unstable conditions in the controllable facility,
adopting the respective settings defined by the optimal
controllable facility setting slate.

Appeal Br. 14. Claims App. (emphasis added regarding disputed dispositive
limitation).

2 We herein refer to the Final Office Action, mailed August 24, 2020 (“Final
Act.”); the Appeal Brief, filed July 1, 2021 (“Appeal Br.”); the Examiner’s
Answer, mailed October 6, 2021 (“Ans.”); and the Reply Brief (“Reply
Br.”), filed December 6, 2021.
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Application 16/654,978

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Prior Art Evidence Relied Upon by the Examiner
Name Reference Date
Sustaeta et al. (“Sustaeta”) US 2009/0204267 A1 Aug. 13, 2009
Abramovitz et al.
(“Abramovitz”) US 2014/0149477 A1 May 29, 2014
Asati et al. (“Asati”) US 2016/0281607 A1 Sept. 29, 2016
Wang et al. (“Wang”) US 2017/0220974 A1 Aug. 3, 2017

Rejections
Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis
A 2, 3 112(b) Indefiniteness
B 1, 2, 4–8, 11,
15–20
102(a)(2) Wang
C 3 103 Wang, Abramovitz
D 9 103 Wang, Sustaeta
E 10, 12–14 103 Wang, Asati

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Application 16/654,978

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ISSUES AND ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We review appealed rejections for reversible error based upon
the arguments and evidence Appellant provides for each issue identified by
Appellant. See 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner
had failed to make a prima facie case, “it has long been the Board’s practice
to require an applicant to identify the alleged error in the examiner’s
rejections.”)). “[A]ll that is required of the office to meet its prima facie
burden of production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of [35 U.S.C.] § 132.”
Jung, 637 F.3d at 1363.
To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are forfeited
or waived.3 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv) (2019). Throughout this

3 See In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020)
(some internal citation omitted):
It is well established that “[w]aiver is different from
forfeiture.” United States v. Olano, 507 U.S. 725, 733 (1993).[]
“Whereas forfeiture is the failure to make the timely assertion of
a right, waiver is the ‘intentional relinquishment or abandonment
of a known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458,
464 (1938)) (additional citations omitted). The two scenarios can
have different consequences for challenges raised on appeal, id.
at 733–34, and for that reason, it is worth attending to which label
is the right one in a particular case.
(internal citations omitted).
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opinion, we give the claim limitations the broadest reasonable interpretation
(“BRI”) consistent with the Specification. See In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). We highlight and address specific findings and
arguments for emphasis in our analysis below.

Rejection A under 35 U.S.C. § 112(b) of Dependent Claims 2 and 3
Appellant advances no arguments rebutting the Examiner’s legal
conclusion of indefiniteness for claims 2 and 3, based upon insufficient
antecedent basis. See Final Act. 2. Arguments not made are waived or
forfeited. See, e.g., 37 C.F.R. § 41.37(c)(1)(iv); see also Google Tech.
Holdings, 980 F.3d at 862. Accordingly, we sustain pro forma the
Examiner’s Rejection A under 35 U.S.C. § 112(b) of dependent claims 2
and 3.
Rejection B of Independent Claim 1 under 35 U.S.C. § 102 over Wang
Based on Appellant’s arguments and our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the appeal of anticipation Rejection B of claims
1, 2, 4–8, 11, and 15–20, on the basis of representative claim 1.4
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps. First, we must interpret the claim language,
where necessary. Because the PTO is entitled to give claims their broadest

4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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reasonable interpretation, a court’s review of the Board’s claim construction
is limited to determining whether it was reasonable. Morris, 127 F.3d at
1055. Secondly, the Board must compare the properly construed claim to a
prior art reference and make factual findings that “each and every limitation
is found either expressly or inherently in [that] single prior art reference.” In
re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Anticipation of a patent
claim requires a finding that the claim at issue “reads on” a prior art
reference. See Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed
Cir. 1999).
Based upon Appellant’s arguments, we focus our analysis on the
argued claim 1 limitations L1 and L2. Appellant’s arguments in the Briefs
present the following issues.
Issues: Did the Examiner err by finding that Wang expressly or
inherently discloses the disputed limitations L1 and L2:
[L1] determining, by the control system for the controllable
facility, whether the respective settings defined by the optimal
controllable facility setting slate as predicted by the machine
learning system will result in unstable conditions in the
controllable facility; and

[L2] in response to determining that the respective settings
defined by the optimal controllable facility setting slate will not
result in unstable conditions in the controllable facility,
adopting the respective settings defined by the optimal
controllable facility setting slate.
Claim 1 (emphasis added).
Appellant asserts that claim 1 limitations L1 and L2 are not disclosed
by the cited Wang reference. See Appeal Br. 7–13; Reply Br. 2–7.
We disagree with Appellant’s arguments. To the extent consistent
with our analysis below, we adopt as our own: (1) the findings and reasons
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set forth by the Examiner in the action from which this appeal is taken (Final
Act. 3–4), and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief.5 See Ans. 16–19.
For the additional reasons discussed below, on this record we are not
persuaded of error regarding the Examiner’s finding of anticipation for
independent claim 1 over Wang.
“Determining” Limitation L1 of Claim 1
As an initial matter of claim construction, we conclude that the claim
term “optimal controllable facility setting slate” comprises data that is
broadly defined in the “receiving” step of claim 1: “wherein the optimal
controllable facility settings slate defines a respective setting for each of a
plurality of controllable facility controls.” (emphasis added).
Although the phrase “the control system for the controllable facility”
is recited in step L1, we note that these claim terms find antecedent basis in
the “receiving” step of claim 1. Based upon our review of the record, we
agree with the Examiner’s findings that the “controllable facility” of claim 1
reads on Wang’s “manufacturing facility” (¶ 15) and the “control system”
reads on Wang’s “system 100” (¶ 14; Fig. 1).
The Examiner maps limitation L1 to Wang, at paragraphs 5 and 14.
See Final Act. 3. In the Answer, the Examiner finds the claimed “unstable

5 See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed.
Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate
the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13
(Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not
expressly make any independent factual determinations or legal
conclusions,” because it had expressly adopted the examiner’s findings).
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conditions” read on a system failure or malfunction, as disclosed in
paragraph 28 of Wang.
Turning to the evidence, Wang describes in pertinent part: “with
respect to machine resources, techniques are described for predicting
whether and when a machine will malfunction.” Wang ¶ 5 (emphasis
added). Similarly, Wang at paragraph 28, describes: “the loss rate predictor
120 may be configured to predict a quantity of time until a particular
machine resource, or component thereof, experiences a specific type or
extent of failure or malfunction.” (emphasis added). Given these
descriptions, we find a preponderance of the evidence supports the
Examiner’s finding of anticipation.
Therefore, given the evidence cited in Wang by the Examiner, we
find that Wang discloses limitation L1 of claim 1: “determining, by the
control system for the controllable facility, whether the respective settings
defined by the optimal controllable facility setting slate as predicted by the
machine learning system will result in unstable conditions in the
controllable facility.” (emphasis added).
Conditional Limitation L2 of Claim 1
Regarding the “in response to determining” conditional limitation L2
of method claim 1, we have reviewed the Examiner’s detailed responses to
the arguments presented by Appellant. See Ans. 18–19. We also have
reviewed Appellant’s rebuttals in the Reply Brief (pp. 5–6). The Examiner
specifically reads the claim 1 step L2 language (settings that will “not result
in unstable conditions”) on the improved activities described in paragraph 6
of Wang. See Ans. 19.
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We disagree with Appellant’s arguments, because we are bound by
the controlling holding of Ex parte Schulhauser, Appeal No. 2013-007847,
2016 WL 6277792, at *9 (PTAB, Apr. 28, 2016) (precedential) (holding
“The Examiner did not need to present evidence of the obviousness of the
remaining method steps of the claim that are not required to be performed
under a broadest reasonable interpretation of the claim”); see also Ex parte
Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4-5 (BPAI Jan. 27,
2011).
Applying the binding authority of Schulhauser here,6 the Examiner
need not present evidence of the obviousness of the disputed conditional
method step L2, because step L2 is not required to be performed under the
broadest reasonable interpretation of method claim 1.7

6 Schulhauser is binding authority on all Administrative Patent Judges at the
Board under SOP2, under the Director’s statutory authority to provide
“policy direction and management supervision for the Office.” 35 U.S.C.
§ 3(a)(2)(A). We note the limited holding of Schulhauser applies only to
two specific categories of claims: method claims and means-plus-function
claims, and each category is treated differently. Here, the holding of
Schulhauser is inapplicable to system claim 15, computer program product
claim 18, and device claim 20.   We address these independent claims infra.  

7 See, also e.g., Applera Corp. v. Illumina, Inc., 375 Fed. App’x. 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming a district court’s interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration
Forum, Inc., 243 Fed. App’x. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is
of course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.”).
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But we also agree with and adopt the Examiner’s finding (Ans. 18–
19) that conditional limitation L2 is disclosed by Wang’s description at
paragraph 6, which we find discloses an improved state that is not an
unstable condition, within the meaning of claim 1. For these reasons, we
discern no error in the Examiner finding of anticipation for conditional step
L2 of claim 1.
We note that remaining independent claims 15, 18, and 20 recite
similar language of commensurate scope. We agree with and adopt the
Examiner’s finding of anticipation for remaining independent claims 15, 18,
and 20, even though the holding of Schulhauser is inapplicable to system
claim 15, computer program product claim 18, and device claim 20. See
supra n.6.
Accordingly, for at least the aforementioned reasons, we sustain the
Examiner’s Rejection B of independent representative claim 1. Regarding
the remaining grouped claims 2, 4–8, 11, and 15–20, also rejected under
anticipation Rejection B, we sustain the rejection of these claims (not argued
separately) for the reasons discussed above, and based upon the legal
doctrines of waiver or forfeiture. See, e.g., 37 C.F.R. § 41.37(c)(1)(iv); see
also Google Tech. Holdings, 980 F.3d at 862.

Rejections C, D, and E Remaining Dependent Claims 3, 9, 10, and 12–14
Appellant advances no arguments rebutting the Examiner’s legal
conclusion of the obviousness for the remaining dependent claims rejected
under Rejections C, D, and E. Arguments not made are waived or forfeited.
See, e.g., 37 C.F.R. § 41.37(c)(1)(iv); see also Google Tech. Holdings, 980
F.3d at 862.
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CONCLUSIONS
The Examiner did not err in concluding that claims 2 and 3 are
indefinite under 35 U.S.C. § 112(b).
The Examiner did not err in finding that claims 1, 2, 4–8, 11, and
15–20 are anticipated by Wang under 35 U.S.C. § 102(a)(2).
The Examiner did not err in concluding that claims 3, 9, 10, and
12–14 are obvious over the cited combinations of references.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/B
asis Affirmed Reversed
2, 3 112(b) Indefiniteness 2, 3
1, 2, 4–8,
11, 15–20 102(a)(2) Wang
1, 2, 4–8,
11, 15–20
3 103 Wang, Abramovitz 3
9 103 Wang, Sustaeta 9
10, 12–14 103 Wang, Asati 10, 12–14
Overall
Outcome 1–20

TIME PERIOD FOR 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)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED