International Business Machines Corporation

Patent Trials and Appeals Board

Nov 20, 2020

2020000293 (P.T.A.B. Nov. 20, 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.
14/109,407 12/17/2013 Bradley Eck YOR920130809US1 9208
48915 7590 11/20/2020
CANTOR COLBURN LLP-IBM YORKTOWN
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
HINZE, LEO T
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
11/20/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRADLEY ECK
and SERGIY ZHUK
____________

Appeal 2020-000293
Application 14/109,407
Technology Center 2800
____________
Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 8, 10, 11, 13, and 14 of Application
14/109,407. Final Act. (January 25, 2018). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies International Business Machines, Inc. as
the real party in interest. Appeal Br. 1.
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Application 14/109,407
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I. BACKGROUND
The ’407 Application describes systems and methods for estimating
the average velocity of a flowing fluid mixture from periodic observations of
the concentration of a reacting constituent of the mixture. Spec. ¶ 1. The
Specification explains that flow measurement devices can be inconvenient
and expensive to use. Id. ¶ 2. As result, flow meters can be very sparsely
distributed in water distribution systems. Id. ¶ 7. In such systems, however,
measurements of chlorine concentration and other water quality parameters
are more common. Id. According to the Specification,
[i]n many real-world’s fluid-handling systems, the volumetric
flow rate of the fluid as well as the concentration of one or
more constituents of the fluid are of interest. Conventionally,
flow rate in constituent concentrations have been individually
measured by separate, dedicated measurement devices. By
inferring the fluid flow rate from observed concentrations of a
reacting constituent of the fluid, an embodiment of the present
invention may provide an estimate of the volumetric flow rate
without necessitating a dedicated flow measurement device.
Id. ¶ 16.
Claim 8 is representative of the ’407 Application’s claims and is
reproduced below from the Response to Notification of Non-Compliant
Appeal Brief (“Claims Appendix”), filed September 6, 2018.
8. A system for determining a fluid flow velocity,
comprising:
a concentration sensor; and
an assimilative flow estimator comprising a processor
configured to:
receive, from the concentration sensor, observations
corresponding to a concentration of a constituent of a
flowing fluid mixture, and
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compute a final estimate of an average velocity of the
flowing fluid mixture based at least in part on the
observations;
wherein the constituent is undergoing a chemical
reaction and the computing implements a reactive
transport model comprising the following partial
differential equation:
, , ,
wherein u is the velocity of the flowing fluid
mixture, C(x,t) is the concentration of the reacting
constituent at a location, x, and time, t, and the
concentration decays according to the first order
constant, K;
wherein the concentration sensor is configured to
sense a measured concentration of the reacting
constituent at a location along a travel path of the
flowing fluid mixture and send the measured
concentration to the assimilative flow estimator,
wherein the measured concentration is one of the
observations, the concentration sensor being
configured to couple to a conduit of a fluid flow
system;
wherein leakage detection is enabled by the
average velocity of the flowing fluid mixture.
Claims App. 2.
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 8, 10, 11, 13, and 14 are rejected under 35 U.S.C. § 101 as
being directed to a judicial exception, namely the abstract ideas of
data per se and mathematical algorithms. Final Act. 5; Answer 3.2
2. Claims 8, 13, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Applicant’s Admitted Prior Art
(“AAPA”), Biswas,3 and Langowski.4 Final Act. 7.
3. Claims 10 and 11 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of AAPA, Biswas, Langowski, and Liu.5 Final
Act. 14.

2 The Examiner’s Answer restates this ground of rejection in a manner said
to be compliant with the Office’s guidance regarding Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018). The Examiner designated the restated
rejection under 35 U.S.C. § 101 as a New Ground of Rejection. Answer 3.
In the Reply Brief, Appellant did not request that prosecution be reopened
but merely argued against the rejection on the merits.
3 Pratim Biswas et al., A Model for Chlorine Concentration Decay in Pipes,
27 Water Res. 1715 (1993).
4 Rafal Langowski & Mietek A. Brdys, Monitoring of Chlorine
Concentration in Drinking Water Distribution Systems Using an Interval
Estimator, 17 Int’l J. Appl. Math. Comput. Sci. 199 (2007).
5 US 7,299,140 B2, issued November 20, 2007.
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III. DISCUSSION
A. Rejection of claims 8, 10, 11, 13, and 14 under 35 U.S.C. § 101 as
directed to an abstract idea
1. Legal Standard
a) § 101 Caselaw
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. 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 Court’s two-part 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof 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
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 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. (citation omitted)
(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 recites an abstract idea, we turn to the second part 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
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implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
b) USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.6 The Manual of
Patent Examining Procedure (“MPEP”) now incorporates this revised
guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev.
June 2020).7
Under MPEP § 2106, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (“Step 2A, Prong Two”).8
MPEP § 2106.04(a)) and § 2106.04(d).

6 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
7 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
8 “Examiners evaluate integration into a practical application by (a)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,9 do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional activity” in the field; 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.10
MPEP § 2106.05(d).
2. Analysis
Claim 8 is the only independent claim before us. Claims 10, 11, 13,
and 14 depend, directly or indirectly, from claim 8. Appellant argues for
reversal of the rejection under 35 U.S.C. § 101 without differentiating
between any the appealed claims. Appeal Br. 4–8. We, therefore, select
claim 8 as representative of the claims subject to this ground of rejection. 37
C.F.R. § 41.37(c)(1)(iv) (2015).

individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
9 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not
directed to an abstract idea under part one of the Alice framework, we do not
need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
10 This corresponds to Alice part two where it is determined whether the
claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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a) Step 1
Claim 8 is directed to a system comprising a concentration sensor and
an assimilative flow estimator. The assimilative flow estimator further
comprises a processor. Thus, claim 8 is directed to a machine. Machines are
one of the statutory categories of patent-eligible subject matter. See 35
U.S.C. § 101. Claim 8, therefore, passes step 1 of the test for patent-eligible
subject matter.
b) Step 2A, Prong 1
In this step, we look to see whether the claim recites any of the
judicial exceptions to patentable subject matter such as an abstract idea.
Guidance, 84 Fed. Reg. at 52. The caselaw has identified three types of
abstract ideas that constitute judicial exceptions to patentable subject matter:
(1) mathematical concepts or equations,
(2) methods of organizing human activity, including:
a. fundamental economic principles or practices;
b. commercial or legal interactions such as agreements in
the form of contracts marketing or sales activities or
behaviors, and business relations; and
c. managing personal behavior or relationships or
interactions between people such as social activities,
teaching, and following rules or instructions
and
(3) mental processes.
Id.
The Examiner found that claim 8 recites the abstract ideas of data per
se and mathematical algorithms. Answer 4. In particular, the Examiner
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found that the claim’s limitations describe “concepts which correspond to
concepts identified as abstract ideas by the courts.” Id. (citing Digitech
Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) (data per se); Diehr, 450 US at 185 (mathematical
algorithms); Flook, 437 US at 594–95 (formula for computing an alarm
limit); In re Grams, 888 F.2d 835 (Fed. Cir. 1989) (algorithm for calculating
parameters indicating an abnormal condition); Elec. Power Grp., LLC v.
Alstom, 830 F.3d 1350 (Fed. Cir. 2016) (collecting and analyzing
information, and displaying results of analysis)).
We agree with the Examiner that claim 8 recites mathematical
concepts or equations. Specifically, claim 8 recites a processor configured to
receive data and compute an estimate of the average velocity of a flowing
fluid mixture by solving a partial differential equation set forth in the claim.
Mathematical equations such as the partial differential equation set forth in
claim 8 are one of the judicially-created categories of exemptions from
patentable subject matter. Guidance, 84 Fed. Reg. at 52.
c) Step 2A, Prong 2
Because claim 8 recites an abstract idea in the form of a mathematical
equation, we next inquire whether the claim recites additional elements that
integrate the mathematical equation into a practical application. Guidance,
84 Fed. Reg. at 51. When the claim recites a judicial exception and fails to
integrate that exception into a practical application, the claim is “directed to”
the judicial exception. Id.
In rejecting claim 8, the Examiner found that claim 8 does not include
additional elements that are sufficient to amount to significantly more than
the judicial exception. Ans. 4–6.
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We disagree with the Examiner. In this case, we determine that claim
8 contains additional elements that successfully integrate the judicial
exception—here, a mathematical equation—into a practical application. In
particular, claim 8 recites limitations confining the use of the claimed
machine to leak detection in a fluid control system. For example, claim 8
specifies that leakage detection must be enabled by the average velocity of
the flowing fluid mixture. This represents an improvement in the field of
leak detection in fluid control systems.
When claim 8 is considered as a whole, we determine that the reactive
transport model defined by the equation set forth in claim 8 is integrated into
a practical application by the other limitations in claim 8. Thus, claim 8 is
directed to patent eligible subject matter, and we need not proceed to Step
2B.
d) Conclusion
For the reasons set forth above, we determine that claim 8 has
incorporated the mathematical equation into a practical application. We,
therefore, find that the claim is directed to patent eligible subject matter and
not to a judicial exception. Accordingly, we reverse the rejection of claims 8,
10, 11, 13, and 14 under 35 U.S.C. § 101.
B. Rejection of claims 8, 13, and 14 over the combination of AAPA,
Biswas, and Langowski
Appellant argues for reversal of this rejection based upon the
limitations of claim 8. Appeal Br. 8–14. Claims 13 and 14 are said to be
nonobvious based upon their dependencies from claim 8. Id. We, therefore,
choose claim 8 as representative of the claims subject to this ground of
rejection. We shall limit our discussion accordingly.
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In rejecting claim 8, the Examiner found that the AAPA describes or
suggests a system for determining a fluid flow velocity comprising a
concentration sensor and a processor configured to receive observations
corresponding to the concentration of a constituent of a flowing fluid
mixture from the concentration sensor. Final Act. 8. The Examiner further
finds that AAPA does not describe an assimilative flow estimator configured
to compute a final estimate of the average velocity of the flowing fluid
mixture based at least in part on the observations received from the
concentration sensor by using a reactive transport model comprising the
partial differential equations set forth in claim 8. Id.
The Examiner also found that Biswas describes a system comprising
an assimilative flow estimator based upon a mathematical model developed
the disclosed by Biswas. Id. at 9. The Examiner further found that Biswas’s
assimilative flow estimator can receive a plurality of observations
corresponding to a concentration of the reactive constituent of a flowing
fluid mixture and can compute a final estimate of an average velocity based
at least in part on the observations. Id. at 9–10.
The Examiner further found that Langowski teaches a transport model
defined by the equation set forth in claim 8. Id. at 11.
We reverse the rejection of claim 8 as obvious over the combination
of AAPA, Biswas, and Langowski.
Appellant argues that Biswas describes a model for using a known
flow velocity to determine chlorine concentration. Appeal Br. 8. According
to Appellant, Biswas never describes or suggests solving for the flow
velocity based upon the measured chlorine concentration values. Id. at 8–9.
Thus, Appellant argues that the Examiner’s suggestion that the equations
disclosed in Biswas could be rearranged to solve for the flow velocity based
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upon the measured chlorine concentration values is contrary to Biswas’s
intent. Id. at 9–10 (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)).
This is not a persuasive argument. We agree with the Examiner that
once a mathematical equation expressing a relationship between various
quantities has been derived, rearranging equation to solve for any of its
inputs is consistent with the intended use of the equation.
In this case, however, we reverse the Examiner’s rejection of claim 8
because the Examiner has failed to explain why a person having ordinary
skill in the art would have been motivated to combine Biswas with AAPA in
the manner proposed by the Examiner in the absence of the disclosure
provided by the ’407 Application’s Specification.
While the Examiner is entitled to use the Specification as a source for
admissions regarding the content of the prior art, use of the Specification as
a source of admissions regarding the thinking of a person having ordinary
skill in the art prior to the date of the invention is necessarily more limited.
For example, the ’407 Application’s Specification describes the state of the
art prior to the invention:
Some existing water distribution systems include
relatively few sensors. This sparsity is especially prevalent for
flow meters, because these often are expensive to install and
costly to maintain. Flow meters often are available only at the
inlet to a relatively expansive metered area of a distribution
system. Even in cases where individual consumers have flow
meters, sampling rates generally have low temporal resolution.
The general lack of available flow measurement make it
difficult to evaluate usage and locate leakage. Nevertheless, in
many water distribution systems, measurements of water
quality parameters, such as chlorine concentration, have
become more common.
Spec. ¶ 7.
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Based on this disclosure, the Examiner correctly found the Appellant
had admitted that chlorine concentration sensors were more common than
flow meters in prior art water distribution systems.
Neither the quoted passage nor any other portion of the
Specification’s Background section, however, describes the use of chlorine
concentration measurement to determine average flow velocity. There is no
evidence in this record that this idea was part of the prior art. Rather, the
record evidence suggests that the concept of using the time dependent
concentration of a reacting constituent of a flowing fluid to estimate the
fluid’s average flow velocity originated with the ’407 Application’s
inventors.
Because the Examiner has not provided a reason from a source other
than the Specification that a person having ordinary skill in the art would
have combined AAPA and Biswas, we reverse the rejection of claim 8 as
obvious. Thus, we also reverse the rejection of claims 13 and 14.
C. Rejection of claims 10 and 11 over the combination of AAPA, Biswas,
Langowski, and Liu
Claims 10 and 11 are asserted to be nonobvious based upon their
dependencies from claim 8. Appeal Br. 14. Because we have reversed the
rejection of claim 8 as obvious, we also reverse the rejection of claims 10
and 11 as obvious over then combination of AAPA, Biswas, Langowski, and
Liu.
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IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Basis Affirmed Reversed
8, 10, 11, 13, 14 101 Ineligible Subject Matter 8, 10, 11, 13, 14
8, 13, 14 103 AAPA, Biswas, Langowski 8, 13, 14
10, 11 103 AAPA, Biswas, Langowski. Liu 10, 11
Overall Outcome 8, 10, 11, 13, 14
REVERSED