International Business Machines Corporation

Patent Trials and Appeals Board

May 26, 2020

14790056 - (D) (P.T.A.B. May. 26, 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.
14/790,056 07/02/2015 GREGORY J. BOSS END920080356US2_IEN106631 8179
26681 7590 05/26/2020
DEPT. IEN
DAUGHERTY & DEL ZOPPO CO., L.P.A.
38500 CHARDON ROAD
WILLOUGHBY HILLS, OH 44094
EXAMINER
ROTARU, OCTAVIAN
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/26/2020 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):
adelzoppo@DD-IPLAW.COM
info@DD-IPLAW.COM
pdaugherty@DD-IPLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY J. BOSS, ALFRED JAMES BRIGNULL,
MICHELE PALLADINO BRIGNULL, RICK A. HAMILTON II,
RUTHIE D. LYLE, and ANNE R. SAND
Appeal 2019-001511
Application 14/790,056
Technology Center 3600
Before JOYCE CRAIG, SCOTT E. BAIN, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
CRAIG, 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 1–20. See Final Act. 1. We have
jurisdiction 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. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to conservation modeling engine tools for
planning enterprise-wide conservation initiatives. Spec. ¶ 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer implemented method for conservation plan
modeling, the method comprising executing on a processor:
determining a plurality of different conservation plans for
a region for a future time period as a function of a determined
rate of change of availability of a resource identified for
conservation, wherein the plurality of conservation plans
includes a first plan that has a least implementation cost relative
to implementation costs of a second plan and a third plan of the
plurality of conservation plans, the second plan that has a fastest
time for implementation relative to times for implementation of
the first plan and the third plan, and the third plan that conserves
a most amount of the resource identified for conservation relative
to amounts of the resource identified for conservation that are
conserved by the first plan and the second plan;
optimizing the first, second and third plans via a method
selected from the group consisting of a greedy algorithm, a
penalty method algorithm and a cooperative optimization;
predicting via a Monte Carlo algorithm future values of
the availability of the resource identified for conservation at an
execution time of the first, second and third plans; and
modifying the optimized first, second and third plans to
meet a threshold as a function of the predicted future values.
REJECTIONS
Claims 1–20 stand rejected on the ground of nonstatutory double
patenting as unpatentable over claims 1–22 of US 9,098,820 B2. Final Act.
21.
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Claims 1–20 stand rejected under 35 U.S.C. 101 because the claimed
invention is directed to a judicial exception without significantly more. Final
Act. 22–31.
Claims 1, 4, 6–9, 12, 14, 15, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Doherty et al.,
“Establishing the Role that Wind Generation May Have in Future
Generation Portfolios,” IEEE Transactions on Power Systems, Vol. 21, No.
3, pp.1415–22, Aug. 2006 (“Doherty”), and Walker (US 2011/0227417 A1,
published Sept. 22, 2011). Final Act. 32–43.
Claims 2, 3, 10, 11, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Doherty, Walker, and
Witters (US 2008/0303348 A1, published Dec. 11, 2008). Final Act. 44–47.
Claims 5, 13, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Doherty, Walker, and Billinton et al.,
“Capacity Expansion of Small Isolated Power Systems Using PV and Wind
Energy,” IEEE Transactions on Power Systems, Vol. 16, No. 4, pp. 892–97,
Nov. 2001 (“Billinton”). Final Act. 48–49.
ANALYSIS
Rejection of Claims 1–20 on Ground of Nonstatutory Double Patenting
The Examiner rejected claims 1–20 on the ground of nonstatutory
double patenting as being unpatentable over the claims of US Patent No.
9,098,820 B2. Final Act. 21. In the Final Action, the Examiner indicated that
the nonstatutory double patenting rejection “is held in abeyance as requested
by Applicant.” Final Act. 2 (emphasis omitted).
Appellant does not address the obviousness-type double patenting
rejection in the Appeal Brief. We note that the Examiner initially applied the
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obviousness double patenting rejection in an Office Action dated September
15, 2017, but Appellant did not petition or dispute the new ground of
rejection. Consequently, Appellant has waived any arguments to the ground
of rejection in the Final Action. 37 C.F.R. § 41.37(c)(1)(iv). Appellant has
shown no error in the obviousness-type double patenting rejection.
Therefore, we pro forma sustain the obviousness-type double patenting
rejection because Appellant has not disputed the rejection of claims 1–20
based upon obviousness-type double patenting.

Rejection of Claims 1–20 under 35 U.S.C. § 101
Appellant argues (Appeal Br. 4–11) the Examiner’s rejection of claim
1 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter is in
error. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
37 C.F.R. § 41.37(c)(1)(iv). Appellant argues claims 1–20 as a group.
Appeal Br. 4. Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we
decide the § 101 rejection of claims 1–20 based on representative claim 1.
Principles of Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
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
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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.
Alice, 573 U.S. 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,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(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
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
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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 “directed to” 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.
(alterations in original) (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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
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internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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 (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 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, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. at 54–55.
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Step 1
Claim 1, as a method claim, falls within the process category of
§ 101. See 2019 Revised Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§§ 2106.03, 2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to “resource
conservation modeling,” which the Examiner determined is a fundamental
economic practice, is a certain method of organizing human activity, and
involves mental processes and, thus, an abstract idea. Final Act. 22, 24, 25
(emphasis omitted). The Examiner identified the “determining,”
“optimizing,” “predicting,” and “modifying” steps, as recited in claim 1, as
part of the recited abstract idea. Id. at 22–23 (emphasis omitted).
Consistent with Appellant’s description of the claims (see, e.g., Spec.
¶¶ 4–5), we find that the limitations summarized above describe mental steps
that fall into the mental processes category of abstract ideas. See
2019 Revised Guidance, 84 Fed. Reg. at 52. The Office Guidance explains
that “mental processes” include acts that people can perform in their minds
or using pen and paper, even if the claim recites that a generic computer
component performs the acts. See 2019 Revised Guidance, 84 Fed. Reg. at
52 n.14 (emphasis omitted) (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”); see
also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
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being performed by a human, mentally or with pen and paper.”), quoted in
2019 Revised Guidance, 84 Fed. Reg. at 52 n.14.
Under the broadest reasonable interpretation of the “determining,”
“optimizing,” “predicting,” and “modifying” limitations, the steps
characterize evaluations or judgments, which fall within the category of
mental processes. In particular, the steps involve an evaluation or judgment
to determine and optimize conservation plans, predict future values of the
availability of a resource, and modify the conservation plans accordingly.
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we determined that claim 1 recites a patent-ineligible
concept, we next determine whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
2019 Revised Guidance 84 Fed. Reg. at 55 n.24. In claim 1, the additional
elements include the limitation “processor.”
The Examiner determined that the additional limitation is not
sufficient to amount to significantly more than the judicial exception
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because the “processor” amounts to no more than recitation of “generic,
ubiquitous computer structure” recited at a high level of generality. Final
Act. 27. We agree with the Examiner.
Appellant argues that the use of generic computer components within
claimed subject matter is not dispositive of patent eligibility because claimed
database software implemented on a generic computer system (apparently
citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)), a
claimed content filtering system implemented by software on a generic
server for filtering content retrieved from an Internet computer network
(apparently citing BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016)), and a claimed method for an
automatic use of limited rules of a particular type in a specifically designed
process executed on a generic computer (apparently citing McRO, Inc. v.
Bandai Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016)) are patent
eligible under § 101. Appeal Br. 5.
We disagree with Appellant that under the holding in Enfish, our
decision would be different. Appeal Br. 5. That is, we are unpersuaded by
the Appellant’s implicit and conclusory argument that its claims are directed
to an improvement in computer technology like that of the claim at issue in
Enfish and, therefore, are patent eligible. In Enfish, the invention at issue
was directed at a wholly new type of logical model for a computer database:
a self-referential table that allowed the computer to store many different
types of data in a single table and index that data by column and row
information. Enfish, 822 F.3d at 1330–32. In finding the claims “not directed
to an abstract idea,” but “to a specific improvement to the way computers
operate,” the Federal Circuit noted that “the claims are not simply directed to
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any form of storing tabular data, but instead are specifically directed to a
self-referential table for a computer database.” Enfish, 822 F.3d at 1336–37
(emphasis omitted). We find nothing in the claims before us arising to this
level of technical improvement in the claimed “processor,” as found in
Enfish. Instead, we find the claims are focused on “economic or other tasks
for which a computer is used in its ordinary capacity.” Enfish, 822 F.3d at
1336.
Appellant argues that, “[w]hether or not the additional elements in the
claim recite generic computer network or Internet components, the elements
in combination amount to significantly more because of the non-
conventional and non-generic arrangement that provide a technical
improvement in the art.” Appeal Br. 7 (citing BASCOM; MPEP 2106.05(d))
(emphasis omitted). We fail again to see how the instant claims are similar
to those in BASCOM. There, an intermediary is inserted between two
otherwise conventional computer nodes to move the location where a
process is otherwise ordinarily executed. In BASCOM, “the patent
describe[d] how its particular arrangement of elements is a technical
improvement over prior art ways of filtering . . . content.” BASCOM, 827
F.3d at 1350.
Likewise, in McRO, the patent-eligible claim focused on a specific
asserted improvement in computer animation. McRO, 837 F.3d 1299. The
claims in McRO recited a “specific . . . improvement in computer animation”
using “unconventional rules that relate[d] sub-sequences of phonemes,
timings, and morph weight sets.” McRO, 837 F.3d at 1302–03, 1307–08,
1314–15. In McRO, “the incorporation of the claimed rules, not the use of
the computer,” improved an existing technological process. Id. at 1314.
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Appellant does not direct us to any evidence that the claimed steps
correspond to unconventional rules. See Appeal Br. 8.
Appellant further argues that claim 1 provides advantages over the
prior art. Appeal Br. 8. Appellant provides examples of descriptions in the
Specification in support of this argument. Id.
We agree with the Examiner that the claims here do not recite a
technical improvement. See Ans. 9–12. The claims do not recite the
“resource conservation module,” alleged by Appellant as an improvement.
Indeed, nothing in claim 1 improves the functioning of the computer, makes
it operate more efficiently, or solves any technological problem. See Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384–85 (Fed. Cir. 2019).
Rather, the claim simply “includes instructions to implement an abstract idea
on a computer” and “does no more than generally link the use of a judicial
exception to a particular technological environment or field of use.” 2019
Revised Guidance, 84 Fed. Reg. at 55.
Appellant also argues in a conclusory manner that the claims recite
specific steps rather than mere results, as in Finjan, Inc. v. Blue Coat Sys.,
Inc., 879 F.3d 1299 (Fed. Cir. 2018). Appeal Br. 9.
Appellant’s reliance on Finjan is misplaced. In Finjan, the claims
were directed to an improvement in computer functionality. The Finjan
claims employed “a new kind of file that enables a computer security system
to do things it could not do before,” namely, tailoring access for different
users and identifying threats before a file reaches a user’s computer. Finjan,
879 F.3d at 1305. Claim 1 before us, on the other hand, uses generic
computer components and generic computer functionality to determine,
optimize, and modify conservation plans.
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Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in these cases.
Claim 1 as a whole merely uses instructions to implement the abstract idea
on a computer or, alternatively, merely uses a computer as a tool to perform
the abstract idea. Here, the additional limitation(s) do not integrate the
judicial exception into a practical application. More particularly, the claims
do not recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Rather, claim 1 recites an abstract ideas as identified in Step 2A(i), supra,
and none of the limitations integrates the judicial exception into a practical
application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
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claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner determined that the “processor” additional element in
claim 1 is well-understood, routine, and conventional. Ans. 23–25 (citing
Spec. ¶¶ 46, 49, 50, 56, 57). Appellant, however, argues the Examiner has
not satisfied the requirement to provide evidence that each additional
element represents well-understood, routine, conventional activity, as set
forth in the Berkheimer Memo.4 Appeal Br. 9–10; Reply Br. 4.
We are not persuaded by Appellant’s argument. Appellant does not
direct our attention to anything in the Specification that indicates the recited
processor performs anything other than well-understood, routine, and
conventional functions, such as receiving and modifying data, looking up
data in a database, executing commands, and storing data in a database. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That
a computer receives and sends the information over a network—with no
further specification—is not even arguably inventive”); In re TLI Commc’ns
LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives
data, extracts classification information from the received data, and stores
the digital images insufficient to add an inventive concept); Alice, 573 U.S.
at 225–26 (receiving, storing, sending information over networks
insufficient to add an inventive concept).

4 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” (Apr. 19, 2018).
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Moreover, because the Specification describes the additional element
in general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellant’s
Specification, as cited above. See Berkheimer Memo5 § III.A.1; Spec. ¶¶ 46,
49, 50, 56, 57. We conclude claim 1 does not have an inventive concept
because the claim, in essence, merely recites computer-based elements along
with no more than mere instructions to implement the identified abstract idea
using the computer-based elements.
Because claim 1 is directed to a judicial exception, without
significantly more, we sustain the Examiner’s § 101 rejection of independent
claim 1 and grouped claims 2–20, not argued separately with particularity.

Rejection of Claims 1–20 Under 35 U.S.C. § 103(a)
We have reviewed the rejections of claims 1–20 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s arguments are not persuasive of error. We agree with and
adopt as our own the Examiner’s findings of facts and conclusions as set
forth in the Answer (Ans. 28–29) and in the Action from which this appeal

5 A specification that describes additional elements “in a manner that
indicates that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well-
understood, routine, and conventional.
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was taken (Final Act. 32–49). We provide the following explanation for
emphasis.
Independent Claims 1, 9, and 15
With respect to independent claims 1, 9, and 15, Appellant contends
the cited portions of Doherty and Walker do not teach or suggest
“determining a plurality of different conservation plans for a region for a
future time period as a function of a determined rate of change of availability
of a resource identified for conservation,” as recited in the independent
claims. Appeal Br. 12. Appellant argues that the cited portions of the prior
art relied on by the Examiner “are not mapped to the specific limitations at
issue, and generally fail to combine to present a coherent teaching that is
relevant to the claim limitations at issue.” Id. at 13 (emphasis omitted).
Appellant further argues that Table I of Doherty does not teach determining
a plurality of different conservation plans, but is instead merely a listing of
different power generating plant types. Id.
We are not persuaded that the Examiner erred. The Examiner did not
rely solely on Table I of Doherty as teaching the disputed limitation, but
rather found that Doherty provides numerous examples of determining
energy conservation plans as “a function of a determined rate of change of
availability of a resource identified for conservation.” Ans. 28 (emphasis
omitted). Specifically, the Examiner found:
Doherty starts at p.3 ¶1 - 1st column Section D, by
determining for the proposed all-Ireland system 2020 of Table
I, Table V, Figs. 3-5 plans of specific types installed capacity,
costs, availability etc., that are being determined as a function
of annual average percentage growth of 3% for electric load in
Ireland on specific ranges, and multiplied to determine a
median value for each 500 MW bin.
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Doherty also discloses at p.4 ¶3, that the Ireland 2020
portfolio makes up 10101 MW of dispatch-able generation,
which approximates a determined peak load rate of 108% above
100%, with a determined loss of load LOLE = 8 hours per year.
. . . [W]ith the capacity of each energy generation technology
once again disclosed at Table V as a function of resource
availability at p.7 2nd column last ¶ before the Conclusion
section.
Doherty also teaches at Table 1 -> 9th column the
calculated percentage availability rates for each conservation
plans: Coal PF and Coal IGC each at a rate of 84%, Peat FB at
a rate of 87%, OCGT at a rate of 92%, CCGT at a rate of 88%,
Biomass % Biogas 1, 2, 3, each at an availability rate of 78%,
which, must not exceed by the energy that is needed to be
served at p.5 equation (4) and paragraph above it. . . .
Ans. 28–29 (emphasis omitted) (some formatting added).
Appellant has not rebutted persuasively the Examiner’s findings.
Rather, Appellant argues in a conclusory manner that the Examiner relies on
teachings in Doherty “that are not apparent, expressed or inherent via review
of the citations.” Reply Br. 6. Rule 41.37, however, “require[s] more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
The Doherty reference is directed to long-term generation resource
planning through “analysis of generation economics, load and wind
generation characteristics, generation adequacy, and plant utilization” as part
of establishing the role that wind generation may have in future generation
portfolios.” Doherty at 1 (emphasis omitted); see Reply Br. 5. Applying a
broad, but reasonable, interpretation of “conservation plan,” the Examiner
found that Doherty teaches determining energy conservation plans (power
generation portfolios) of specific types (A, B, C, D, E) (see Doherty 7, Table
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V) that include installed capacity, costs, efficiency, availability etc.,
(Doherty 2, Table I; Doherty 7, Table V). Ans. 28. Additionally, the
Examiner found that Doherty teaches that the conservation plans are “for a
region” (Ireland) and “for a future time” (the year 2020), as the claims
require. (Doherty 2, Table I; Doherty 3, § D).
The Examiner found that energy conservation plans in Doherty are
determined “as a function of a determined rate of change of availability of a
resource identified for conservation,” as the claims require. Ans. 28. In
particular, the Examiner found that Doherty teaches, in the ninth column of
Table I, the calculated percentage of availability of each resource (energy
generation technology/plant type) as follows: Coal PF and Coal IGC each at
a rate of 84%, Peat FB at a rate of 87%, OCGT at a rate of 92%, CCGT at a
rate of 88%, Biomass & Biogas 1, 2, 3, each at an availability rate of 78%.
Ans. 28 (citing Doherty 2, Table I). In addition, the Examiner found that
Doherty teaches an assumed average annual load growth of 3%. Id. (citing
Doherty 3, § D).
The Examiner further explained that the combination of energy
generation technologies must not exceed the amount of energy needed. Ans.
28 (citing Doherty 5, equation (4) and text above). Specifically, the
Examiner found that Doherty teaches an algorithm that uses the availability
of each energy generation technology when determining the amount of
energy served by each energy generation technology in each conservation
plan. Ans. 28 (citing Doherty 5, equation (4) and associated text). In the text
accompanying equation (4), Doherty teaches that “[t]he energy served by
each generation technology must not be greater than the installed capacity of
that technology multiplied by its availability in hours per year.” Doherty 5.
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In light of the Examiner’s findings, and the lack of persuasive
arguments by Appellant, we agree with the Examiner that Doherty teaches
or suggests the disputed limitation “determining a plurality of different
conservation plans for a region for a future time period as a function of a
determined rate of change of availability of a resource identified for
conservation,” as recited in the independent claims.
In addition to the findings based on Doherty, discussed above, the
Examiner also found:
Walker also teaches at Figs. 2a–2f & Figs. 3–12 noting
determining different renewable energy conservation plans 201,
202, 203, 204, 205a, 205b as a function of a percentage rate of
change availability of the resource identified for conservation at
the horizontal axis of Figs. 2a–2f and Figs. 3–10. For example
Walker recognizes at Figs. 2b–2d (i.e. horizontal axis impact on
the size of box) and their associated ¶ [0029], ¶ [0034], ¶ [0039]
that certain resources are available for only a percentage
amount of time, such as solar energy would be available not for
entire day due to darkness, while wind is also not available all
the time.
Ans. 29 (emphasis omitted).
In response, Appellant argues that “Walker elements 201, 202, 203,
204, 205a and 205b may not be reasonabl[y] construed as ‘conservation
plans.’” Reply Br. 7 (emphasis omitted). Appellant also argues that “[t]he
‘horizontal axes’ of [Walker’s] Fig. 2a, 2b, 2c, 2d, 2e, and 2f are time
values: contrary to the assertion of the examiner, they unambiguously fail to
teach ‘a percentage rate of change of availability of the resource identified
for conservation.’” Id.
To the extent the Examiner made additional, overlapping findings
based on Walker to bolster the Examiner’s findings based on Doherty, the
additional findings are not required for the Examiner’s ultimate conclusion
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of obviousness. Moreover, Appellant’s arguments directed to Walker are
conclusory, merely reciting the claim limitation, the teachings of Walker,
and stating that the two are not the same. Reply Br. 7. Rule 41.37 “require[s]
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.” Lovin, 652 F.3d at 1357. For example, Appellant
has not persuaded us that the Examiner’s interpretation of “conservation
plan” is overly broad, unreasonable, or inconsistent with the Specification.
Appellant points to no definition of “conservation plan” in the Specification,
and we find none. Moreover, Appellant merely quotes from paragraph 34 of
Walker in arguing the Examiner erred in finding that Walker teaches
“conservation plans.” Reply Br. 7. Similarly, Appellant merely compares the
horizontal axes of Walker’s figures to the claim language, stating the two are
not the same. Id.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Doherty and Walker teaches or suggests the
disputed limitation.
For the first time in the Reply Brief, Appellant argues that the
Examiner erred because Doherty does not teach:
wherein the plurality of conservation plans includes a first plan
that has a least implementation cost relative to implementation
costs of a second plan and a third plan of the plurality of
conservation plans, the second plan that has a fastest time for
implementation relative to times for implementation of the first
plan and the third plan, and the third plan that conserves a most
amount of the resource identified for conservation relative to
amounts of the resource identified for conservation that are
conserved by the first plan and the second plan,
as recited in independent claims 1, 9, and 15. Reply Br. 5.
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Appellant has waived this argument because it was presented for the
first time in the Reply Brief, without a showing of good cause. See 37 C.F.R.
§ 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative opinion) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”). We note,
however, that the Examiner made specific findings with regard to first,
second, and third plans, as recited in claims 1, 9, and 15. See Final Act. 33.
Appellant has not persuasively rebutted those findings by the Examiner.
Thus, even if Appellant’s new argument were timely, we are not
persuaded that the Examiner erred in finding that Doherty teaches or
suggests the “wherein” limitation disputed in the Reply Brief,
as recited in claims 1, 9, and 15.
Accordingly, we sustain the Examiner’s § 103(a) rejection of
independent claims 1, 9, and 15, as well as the Examiner’s § 103(a)
rejection of dependent claims 2–8, 10–14, and 16–20, not argued separately
with particularity. See Appeal Br. 14.

DECISION
We affirm the decision of the Examiner rejecting claims 1–20.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–20 Nonstatutory double
patenting
1–20
1–20 101 Eligibility 1–20
1, 4, 6–9,
12, 14, 15,
18, 20
103(a) Doherty, Walker 1, 4, 6–9,
12, 14, 15,
18, 20

2, 3, 10, 11,
16, 17
103(a) Doherty, Walker,
Witters
2, 3, 10,
11, 16, 17

5, 13, 19 103(a) Doherty, Walker,
Billinton
5, 13, 19
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED