Google LLCDownload PDFPatent Trials and Appeals BoardDec 30, 20212022001044 (P.T.A.B. Dec. 30, 2021) 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. 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 2 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. Appeal 2022-001044 Application 16/654,978 3 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 Appeal 2022-001044 Application 16/654,978 4 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). Appeal 2022-001044 Application 16/654,978 5 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). Appeal 2022-001044 Application 16/654,978 6 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 Appeal 2022-001044 Application 16/654,978 7 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). Appeal 2022-001044 Application 16/654,978 8 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. Appeal 2022-001044 Application 16/654,978 9 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.”). Appeal 2022-001044 Application 16/654,978 10 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. Appeal 2022-001044 Application 16/654,978 11 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 Copy with citationCopy as parenthetical citation