Ilya William. Slutsker et al.

Patent Trials and Appeals Board

Sep 16, 2019

14216148 - (D) (P.T.A.B. Sep. 16, 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.
14/216,148 03/17/2014 Ilya William Slutsker O17.2P-15469-US03 5524
490 7590 09/16/2019
VIDAS, ARRETT & STEINKRAUS, P.A.
Richard A. Arrett
8050 Washington Ave. S.
SUITE 100
Eden Prairie, MN 55344
EXAMINER
KNOX, TYLER W
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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):
mail@vaslaw.com
rarrett@vaslaw.com
rleaf@vaslaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ILYA WILLIAM SLUTSKER, SASAN MOKHTARI,
GUILLERMO IRISARRI, and TAN TRONG DANG1
________________

Appeal 2018-004061
Application 14/216,148
Technology Center 3600
________________

Before JASON V. MORGAN, ADAM J. PYONIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–36. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Summary of the disclosure
The Specification discloses “optimally assigning energy generation
and procurement resources whereby information needed to calculate an

1 Appellant is the applicant and real party in interest, Open Access
Technology, Inc. Appeal Br. 3.
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optimal-cost generation plan is obtained by a database connected to [a]
calculation module.” Abstract.
Representative claims (key limitations emphasized)
1. A method for determining a profit-maximizing plan
comprising the steps of:
incorporating a plurality of inputs relating to a plurality of
parameters of the plan to be maximized, the plurality of inputs
being automatically retrieved from a database;
incorporating one or more constraints to limit the profit-
maximizing plan based on said plurality of inputs;
testing all possible combinations of said plurality of inputs,
within said one or more constraints, to develop one or more
profit-maximizing plans using a computer program;
selecting one of the one or more profit-maximizing plans.
6. The method of claim 1, wherein said list of one or more
profit-maximizing plans includes some non-profit-maximizing
plans for non-cost-based considerations.
13. A method of determining a profit-maximizing energy-
generation plan comprising:
determining an amount of additional generation above currently
considered plans, and
developing a list of generation units capable of contributing to
said additional generation.
Rejections
The Examiner rejects claims 1–36 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 14–23.
The Examiner rejects claims 1–5, 9–12, 19–23, and 27–30 under
35 U.S.C. § 102(b) as being anticipated by Murakami et al. (US 2004/
0215545 A1; published Oct. 28, 2004) (“Murakami”). Final Act. 24–35.
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The Examiner rejects claims 13–18 and 31–36 under 35 U.S.C.
§ 102(b) as being anticipated by Lof et al. (US 2002/0194113 A1; published
Dec. 19, 2002) (“Lof”). Final Act. 35–41.
The Examiner rejects claims 6–8 and 24–26 under 35 U.S.C. § 103(a)
as being unpatentable over Murakami and Lof. Final Act. 42–46.
35 U.S.C. § 101
Principles of law
To be statutorily patentable, the subject matter of an invention must be
a “new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in § 101, including: (1) laws of nature; (2) natural phenomena; and
(3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions “from those that claim patent-
eligible applications of those concepts.” Id. at 217 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
evaluation follows a two-part analysis: (1) determine whether the claim is
directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so,
then determine whether any element, or combination of elements, in the
claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See id. at 217–18.
The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
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(January 7, 2019) (“Memorandum”). Under that guidance, we first 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) (see id. at 54 (step 2A, prong
one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
See Memorandum, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then 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 Memorandum, 84 Fed. Reg. at 56.
Memorandum step 2A, prong one
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner determines that claim 1 recites “‘fundamental
economic practices’ and ‘certain methods of organizing human activity.’”
Final Act. 18; see also Ans. 4. We agree with the Examiner because claim 1
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recites “incorporating a plurality of inputs relating to a plurality of
parameters of the plan to be maximized,” “incorporating one or more
constraints to limit the profit-maximizing plan based on said plurality of
input,” “testing all possible combinations of said plurality of inputs, within
said one or more constraints,” and “develop[ing] one or more profit-
maximizing plans.” Put plainly, the claim recites modeling plans to
determine, given possible inputs and known constraints, the best (i.e., the
“profit-maximizing”) plans. We agree with the Examiner that such
modeling represents a fundamental economic practice. Maximizing profit is
another form of risk management because—whether through avoiding lost
revenues or through avoiding unnecessary expenses—maximizing profit
represents minimizing the risk that profits that could have been earned are
left unrealized. Alice, 573 U.S. at 219 (citing Bilski v. Kappos, 561 U.S.
593, 620 (2010)). Thus, like mitigation of settlement risk or hedging,
developing profit-maximizing plans is a fundamental economic practice—
i.e., a certain method of organizing human activity that is abstract. See
Memorandum, 84 Fed. Reg. at 52.
Appellant argues the “Examiner has artificially attached pure
economic result incentive[s] to” the benefits of the claimed invention. Reply
Br. 5. Appellant argues that benefits such as “error reduction,” “grid
reliability,” and “grid resiliency” are possible through use of the claimed
invention. Id.; see also Appeal Br. 8 (“[t]he invention allows users to set
trade parameters as needed and quickly and efficiently execute trades in an
error-free mode”). Appellant does not provide persuasive support showing
that a fundamental economic practice that has non-economic benefits ceases
to be a fundamental economic practice. Moreover, the additional benefits
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Appellant identifies are either tangential to the abstract idea of developing
profit-maximizing plans (i.e., a fundamental economic practice) or merely
represent other forms of profit maximization (e.g., maintaining a more
robust infrastructure can minimize long-term maintenance costs and avoid
having to incur the costs associated with consumer discontent).
Appellant also contends the Examiner erred because “claim 1 requires
‘the step for creating a template for an energy trade’ which is a concrete
action and not a mere abstract idea.” Appeal Br. 7; see also Reply Br. 2
(“templates for an energy trade are suggested in the enablement”).
Appellant’s argument is unpersuasive, at least because claim 1 fails to recite
any step for creating a template for an energy trade. See Ans. 3–4.
Unclaimed embodiments suggested by the disclosure do not suffice to make
a claim non-abstract. Cf. Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1338–39 (Fed. Cir. 2017) (citing
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017))
(the innovative concept for an invention must be in found in “the claim—as
opposed to something purportedly described in the specification”).
Memorandum step 2A, prong two
Appellant’s argument that claim 1 is patent-eligible because “[a]ctual
energy (like electricity) is being physically moved around from one region to
another as a result of [the claimed] steps and actions” (Appeal Br. 7; see also
Reply Br. 3–4 (citing Spec. ¶¶ 19, 22)) may be relevant to the question of
whether additional elements of claim 1 integrate the underlying abstract idea
into a practical application. See, e.g., Memorandum, 84 Fed. Reg. at 55
(additional elements may integrate an abstract idea into a practical
application if they reflect “an improvement in the functioning of a computer,
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or an improvement to other technology or technical field” or “a
transformation or reduction of a particular article to a different state or
thing”). The Examiner, however, correctly notes that movement of
electricity is not recited in claim 1. See Ans. 3. Claim 1 merely recites
“selecting one of the one or more profit-maximizing plans” without reciting
what happens as a result of that selection. Without more, such selection
merely “adds insignificant extra-solution activity to the” abstract idea, thus
failing to integrate the abstract idea into a practical application. See
Memorandum, 84 Fed. Reg. at 55.
Memorandum step 2B
The Examiner determines that claim 1 does “not include additional
elements that are sufficient to amount to significantly more than the judicial
exception.” Final Act. 19. In particular, the Examiner determines that claim
1 and other claims recite “the use of components such as a ‘computer
program,’ ‘system,’ ‘computer,’ and ‘memory,’” such that the recitations of
such components represent “generic computer components executing
generic functions previously . . . well-known to those of ordinary skill in the
art.” Id. at 21.
The Examiner’s determinations are reasonable and supported by
broad, generic descriptions of computer technologies in the Specification.
See, e.g., Spec. ¶ 50, Fig. 6. Moreover, Appellant does not provide
persuasive arguments or evidence rebutting the Examiner’s determinations.
Therefore, we agree with the Examiner that the additional elements of claim
1, either individually or in combination, fail to make claim 1 amount to
significantly more than the underlying abstract idea to which claim 1 is
directed. See Final Act. 19.
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Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 1, and claims 2–36, which Appellant does not argue separately.
Appeal Br. 7–8.
35 U.S.C. § 102(B)—CLAIMS 1–5, 9–12, 19–23, AND 27–30
In rejecting claim 1 as being anticipated by Murakami, the Examiner
finds that Murakami’s demand data inputting unit, which is depicted as
being connected to database 1000, discloses a “plurality of inputs being
automatically retrieved from a database.” Final Act. 25 (citing Murakami
Fig. 6).
Appellant acknowledges that Murakami does teach the “connection of
a power trading risk management system to a data base” (Reply Br. 7), but
argues that Murakami suggests “that data retrieved are individual amounts,
suggesting to a reader that data is not repetitiously or automatically retrieved
by the embodiment that Appellant believes [the] Examiner meant to cite”
(id. (citing Murakami ¶ 103)). That is, Appellant argues “Murakami does
not teach automatic retrieval of data, nor is any trigger, manual or automatic,
suggested by the enablement.” Id.; see also Appeal Br. 6–7.
Appellant’s arguments are unpersuasive because the disputed
recitation of claim 1, given its broadest reasonable interpretation in light of
the Specification, does not require the use of triggers for the automatic
retrieval of a plurality of inputs from a database. The Specification at best
discloses that automatically retrieving inputs from a database could
encompass having a “module automatically select[] which Inputs 104 are
relevant to calculating the generation plan and retrieve[] them.” Spec. ¶ 30.
Not only does this disclosure fail to define automatic retrieval as requiring
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the use of triggers, but the disputed recitation does not limit claim 1 to this
particular embodiment.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(b) rejection
of claim 1, and claims 2–5, 9–12, 19–23, and 27–30, which Appellant does
not argue separately. Appeal Br. 10.
35 U.S.C. § 103(A)—CLAIMS 6–8 AND 24–26
In rejecting claim 6, which depends from claim 1, as obvious, the
Examiner finds that Lof’s disclosed benefit of being able to assure “partners
in a power production system that the contracted power will in fact be
delivered on schedule and in the appropriate quantity despite the fact that the
output from the renewable power production facility is subject to
meteorologically-induced variations” (Lof ¶ 59) teaches or suggests wherein
said list of one or more profit-maximizing plans includes some non-profit-
maximizing plans for non-cost-based considerations (Final Act 42 (citing
Lof ¶ 59); see also Ans. 6).
Appellant contends the Examiner erred because the claimed
“invention is concerned with ‘non-cost based considerations’” (Appeal Br.
12) and “[m]eteorologically-induced variation cannot function as species to
the genus of non-cost-based considerations” because Lof mentions “meeting
the terms of ‘contracted power’” (Reply Br. 9). Meteorological
considerations (as well as considerations such as reliability), however, are
examples of non-cost-based considerations. Even if the potential impact of
such considerations can be quantified as potential costs (e.g., the cost of
securing power that is not affected by fluctuations in the weather or the cost
of losing customers who cannot abide by an unreliable provider of
electricity), Lof teaches or suggests handling these considerations directly
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rather than merely handling the potential impacts in terms of cost. See Lof
¶ 59.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 6, and claims 7, 8, and 24–26, which Appellant does not argue
separately. Appeal Br. 12.
35 U.S.C. § 102(B)—CLAIMS 13–18 AND 31–36
In rejecting claim 13 as being anticipated by Lof, the Examiner finds
that Lof’s disclosure of buying power to meet obligations for a wind farm or
set of wind farms discloses developing a list of generation units capable of
contributing to said additional generation. Final Act. 35–36 (citing Lof
¶ 132, Fig. 19); see also Ans. 7–8. Appellant contends the Examiner erred
because Lof “only matches bids and offers that meet various criteria. The
buyer never sees a list prior to the deal closing.” Appeal Br. 11.
Appellant’s argument is unpersuasive because, as the Examiner
correctly notes, claim 13 “does not recite a limitation wherein a buyer [wind
farm] must view a list prior to a deal closing.” Ans. 8 (alteration in
original). That is, Appellant’s argument is not commensurate with the scope
of the claimed invention.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(b) rejection
of claim 13, and claims 14–18 and 31–36, which Appellant does not argue
separately. Appeal Br. 11.
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DECISION
We affirm the Examiner’s decision rejecting claims 1–36.
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.
§ 41.50(f).
AFFIRMED