Philip John. Kaufman et al.

Patent Trials and Appeals Board

Aug 2, 2019

12429881 - (D) (P.T.A.B. Aug. 2, 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.
12/429,881 04/24/2009 Philip John Kaufman 2009P-089-US
(ALBR:0442)
1948
42982 7590 08/02/2019
Rockwell Automation, Inc./FY
Attention: Linda H. Kasulke E-7F19
1201 South Second Street
Milwaukee, WI 53204
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
docket@fyiplaw.com
howell@fyiplaw.com
raintellectualproperty@ra.rockwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PHILIP JOHN KAUFMAN and
MARCIA ELAINE WALKER
____________________

Appeal 2017-011004
Application 12/429,8811
Technology Center 3600
____________________

Before BETH Z. SHAW, MICHAEL J. ENGLE, and
PHILLIP A. BENNETT, Administrative Patent Judges.

BENNETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4–12, 16, 17, and 19–23. Claims 2, 3, 13–15, and 18
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants’ Brief (“App. Br.”) identifies Rockwell Automation
Technologies, Inc. as the real party in interest. App. Br. 2.
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CLAIMED SUBJECT MATTER
The claims are related to collecting data relating to sustainability,
energy consumption, or emissions from manufacturing components in an
industrial setting, and suggesting adjustments to the operation of those
components based on analysis and optimization which, if implemented,
improve sustainability, reduce energy demand, or reduce emissions. See
Spec. Abstract. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An energy demand management and services system,
comprising an industrial automation controller that comprises:
a functional module comprising at least one processor and
a memory configured to retain instructions carried out by the
processor, the instructions comprising:
an acquisition component that, in operation, obtains at
least one utilization data element initially generated in the
industrial automation controller via a communication network
coupled to the functional module, wherein the utilization data
elements are instances of discrete data pertaining to at least one
of sustainability, energy consumption, or emissions by at least
one of manufacturing elements or facility elements controlled by
the industrial automation controller, and wherein the utilization
data elements include various granularities of data types
represented therein;
an analysis component that, in operation, employs the
utilization data elements to at least one of forecast the
sustainability, energy consumption, or emissions, determine at
least one trend for the sustainability, energy consumption, or
emissions, or identify logical data relationships for the
sustainability, energy consumption, or emissions;
an optimization component that generates and causes the
industrial automation controller to implement at least one
suggestion for improving sustainability, reducing energy
demand, or reducing emissions based on at least one of the
utilization data elements, forecasts, trends, or logical data
relationships using the communication network, wherein the at
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least one suggestion comprises increasing or decreasing
production by the manufacturing elements or the facility
elements; and
an interface component that, in operation, causes an
interface of the industrial automation controller to display
representations of at least one of the utilization data elements,
forecasts, trends, or relationships, wherein the industrial
automation controller is coupled to the communication network.
App. Br. 21 (Claims Appendix).

REJECTION
Claims 1, 4–12, 16, 17, and 19–23 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 2–24.

ANALYSIS
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept” (id. at 216–18), and, in this case, the inquiry
centers on whether the claims are directed to an abstract idea. If the initial
threshold is met, we then move to the second step, in which we “consider the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step as a search for “an ‘inventive
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concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–
73).
The USPTO has published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
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 Guidance, 84 Fed. Reg. at 52.
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Examiner’s Findings and Conclusion
In the first step of the Alice inquiry, the Examiner determines the
claims are directed to “the management of energy sustainability, usage, or
emission, specifically, the collection of information pertaining to energy
sustainability, usage, or emission, analyzing the collecting information,
proposing an optimization plan based on the analysis, and providing the
proposal.” Final Act. 3. The Examiner also characterizes the claims as
being directed to “the abstract idea of the management of energy
sustainability, usage, or emission, specifically, collecting energy usage
related information and determining how to make better use of the energy.”
Final Act. 4. The Examiner concludes that this claimed concept is an
abstract idea because:
[T]he claimed invention is directed to a method of organizing
human activities and an idea of itself because the claimed
invention is directed to concepts relating to interpersonal and
intrapersonal activities, such as managing transactions between
people, satisfying legal obligations, and managing human mental
activity (providing an optimization plan to a user in order to
inform the user of how to better control energy sustainability,
usage, or emission); an idea standing alone such as an
uninstantiated concept, plan or scheme, as well as a mental
process (thinking) that can be performed in the human mind, or
by a human using pen and paper; collecting and comparing
known information (energy sustainability, usage, or emission);
comparing data to determine a risk level (determining how much
energy is being used or emitted in order to determine if the
energy use should be optimized); comparing new and stored
information and using rules to identify options (collecting
current information and determined goal in order to provide an
optimization plan to make better use of energy usage); data
recognition and storage (storage and retrieval of energy
sustainability, usage, or emission, which results in it being
method of organizing human activities and an idea of itself[)].
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Final Act. 3–4.
Turning to Alice step 2, the Examiner determines that the claims do
not include sufficient additional elements under the second step of the Alice
inquiry “because the [additional elements in the] claim recite[] generic[]
computer elements (e.g. a computing device) which do not add a meaningful
limitation to the abstract idea because they would be routine in any computer
implementation.” Final Act. 9. The Examiner further reasons that:
[T]he claimed invention does not further or improve upon the
technology or the technical field as merely having a general
purpose device to perform the steps of the abstract idea is nothing
more than having the general purpose device perform the well-
understood, routine, and conventional activities already known
in energy management, which results in the claimed invention
not amounting to being “significantly more” than the judicial
exception.
Final Act. 9. The Examiner further explains that the claims do not provide a
technological improvement:
[T]he claimed invention is not “deeply rooted in the technology”
since: 1.) humans have, for some time, long[] been known to
perform the well-understood, routine, and conventional activities
in the field of energy management, e.g., gathering the necessary
information pertaining to the specifics of the energy usage so as
to determine an optimization plan; and 2.) the well-understood,
routine, and conventional activities of the abstract idea does not
change, alter, or improve upon how the technology, i.e. the
computing device, fundamentally functions. The invention
further fails to improve upon the technical field (energy
management) because merely using the general purpose device
to perform the well-understood, routine, and conventional
activities of the energy management and that such use of the
technology has been held to not be an “inventive concept” as the
general purpose device is being used for the very purpose that
such device are known to be used for, e.g. more efficient, faster,
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and etc. (See applicant’s specification ¶ 21, 23, 29, 30, 31, 50,
51, 52, 55, 57, 64) Looking at the limitations as an ordered
combination adds nothing that is not already present when
looking at the elements taken individually. There is no indication
that the combination of elements improves the functioning of a
computer or improves any other technology. Their collective
functions merely provide conventional computer
implementation.
Final Act. 9–10. The Examiner further explains:
[From] the specification it is clear that the invention describes
the computing components/environment as either performing
basic computing functions such as sending and receiving data, or
performing functions “known” in the art. In other words, the
claimed functions are “‘well-understood, routine[] activit[ies]’
previously known in the industry.” [Alice, 134 S. Ct.] at 2359
(quoting Mayo, 132 S. Ct. at 1294). That is to say, the computing
components/environment simply provide the environment in
which the abstract idea of energy management is carried out.
Final Act. 19–20.
Appellants’ Contentions
Appellants present arguments under both steps of the Alice inquiry.
App. Br. 9–14, Reply Br. 2–5 (step 1 arguments); App. Br. 14–19, Reply
Br. 5–11 (step 2 arguments). First, Appellants assert that the Examiner’s
characterization of the claims is incorrect, and that the claims are correctly
characterized as being
directed towards functional modules for industrial controllers
that are capable of retrieving data elements associated with
sustainability, energy consumption, or emissions from facility or
manufacturing elements via a communication network,
producing trends, tendencies, and forecasts using the retrieved
data elements, and changing the production of facility elements
via optimizations that are based on the trends, tendencies, and
forecasts as well as on the retrieved data elements.
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Final Act. 10. Appellants further argue the independent claims are not
abstract because “the claims also include increasing or decreasing the
production by facility and manufacturing elements. This increase or
decrease in production corresponds to an adjustment to a system or a device
of an industrial manufacturing environment.” App. Br. 11. Appellants also
assert the claims are eligible under McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299 (Fed. Cir. 2016) because the “claims are directed to a
combined order of specific rules that renders information into a specific
format.” App. Br. 12.

Our Review
Applying the Guidance, we are not persuaded by Appellants’
arguments. The Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Guidance
identifies three judicially-excepted groupings: (1) mathematical concepts,
(2) certain methods of organizing human activity such as fundamental
economic practices or managing personal behavior or relationships or
interactions between people, and (3) mental processes. Guidance, 84 Fed.
Reg. at 52. We focus our analysis on the third grouping—mental processes.
Claim 12 recites the following limitations: (1) “obtain[ing] at least one
utilization data element . . . wherein the utilization data elements are
instances of discrete data pertaining to at least one of sustainability, energy
consumption, or emissions by at least one of manufacturing elements or

2 We analyze claim 1 in evaluating this rejection. Appellants’ arguments are
made to the claims as a group, so we treat claim 1 as representative. 37
C.F.R. § 41.37(c)(1)(iv).
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facility elements,” (2) “employ[ing] the utilization data elements to at least
one of forecasts the sustainability, energy consumption, or emissions,
determine at least one trend for the sustainability, energy consumption, or
emissions, or identify a logical data relationships for the sustainability,
energy consumption, or emissions,” (3) “generat[ing] . . . at least one
suggestion for improving sustainability, reducing energy demand, or
reducing emissions based on at least one of the utilization data elements,
forecasts, trends, or logical data relationships . . . wherein the at least one
suggestion comprises increasing or decreasing production by the
manufacturing elements or the facility elements.” App. Br. 21 (Claims
Appendix).
We conclude that these limitations, under their broadest reasonable
interpretation, recite abstract mental processes under the Guidance. A claim
recites a mental process when the claim encompasses acts people can
perform using their minds or pen and paper. See, e.g., CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011)
(determining that a claim whose “steps can be performed in the human mind,
or by a human using a pen and paper” is directed to an unpatentable mental
process). This is true even if the claim recites that a generic computer
component performs the acts. See, e.g., Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims
that required the use of a computer and still found that the underlying,
patent-ineligible invention could be performed via pen and paper or in a
person’s mind.”); see also Guidance, 84 Fed. Reg. at 52 n.14 (“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
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mental processes category unless the claim cannot practically be performed
in the mind.”). Here, limitation (1), which recites obtaining usage
information, could be performed by observation. Similarly, limitations (2)
and (3) which recite analyzing the information and coming up with a
suggested improvement, are also actions that are readily performed by a
person in their mind. For example, a person can (1) mentally observe how
much wood was used to make a fire in a fireplace, (2) mentally calculate
whether that was more or less wood than the last fire or alternately mentally
forecast how much wood will be consumed in the next fire, and (3) mentally
generate a suggestion to use less wood.
In this regard, the claims bear similarity to the claims found to be
abstract in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016). There, the claims recited “[a] method of detecting events on an
inter-connected electric power grid in real time over a wide area and
automatically analyzing the events on the interconnected electric power
grid.” Id. at 1351–52. The claimed method involved collecting information
from the power grid, analyzing that information, and providing an indication
of vulnerabilities in the grid based on the analysis. The Federal Circuit
determined that these limitations were abstract mental processes. Id. at 1355
(“But merely selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes.”). Similar to the claims in Electric Power
Group, limitations (1)–(3) above recite selecting information, analyzing it,
and providing the result of the analysis. As such, we conclude the claims
recite abstract mental processes.
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Having determined that the claims recite a judicial exception, our
analysis under the Guidance turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See MPEP §§ 2106.05(a)–(c), (e)–(h). Appellants’ claim 1
recites various computer-related limitations, including “an industrial
automation controller,” a “functional module comprising at least one
processor and a memory configured to retain instructions carried out by the
processor,” an “acquisition component,” a “communication network coupled
to the functional module,” an “analysis component,” an “optimization
component,” and an “interface component.” Although these computer-
related limitations are not wholly generic in nature, they are described in
terms of their respective functions in the Specification without significant
meaningful detail about their structure or configuration. See, e.g.,
Spec. ¶¶ 30 (describing functions of acquisition component), 32 (describing
functionality of analysis component), 33 (optimization component). As
such, we do not find the computer-related limitations of claim 1 sufficient to
integrate the judicial exception into a practical application.
Claim 1 also recites a limitation relating to operations which describe
how the suggestion generated by the optimization component is handled.
Specifically, the claim recites that the optimization component “causes the
industrial automation controller to implement at least one suggestion . . .
wherein the at least one suggestion comprises increasing or decreasing
production by the manufacturing elements or the facility elements.” App.
Br. 21 (Claims Appendix). As noted above, Appellants contend that this
limitation removes the claims from the realm of abstract ideas because “the
claims also include increasing or decreasing the production by facility and
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manufacturing elements. This increase or decrease in production
corresponds to an adjustment to a system or a device of an industrial
manufacturing environment.” App. Br. 11.
We are not persuaded that this “implement at least one suggestion”
limitation is sufficient to integrate the abstract idea into a practical
application because Appellants’ argument is not commensurate with the
broad scope of the limitation.
Appellants’ argument is premised on an assumption that the claim
requires that production in a manufacturing element or facility element be
physically adjusted when the industrial automation controller implements
the suggestion. However, under its broadest reasonable interpretation in
light of the Specification, we do not discern such a requirement in claim 1.
The claim recites that the optimization component generates a
suggestion, and that it causes the industrial automation controller to
implement the suggestion. However, the industrial automation controller is
not the manufacturing element. That is, the claim does not recite that the
manufacturing element implements the suggestion. Rather, as described in
the Specification, the suggestions are provided to users so that the users can
make adjustments to the operation of the manufacturing elements. For
example, the Specification describes the “suggestions can be accessed by
remote users via a plurality of communication protocols.” Spec. ¶ 7; see
also id. ¶ 26 (“The displays and suggestions can be accessed by a user via
the network 106.”). The Specification further describes that the
optimizations are provided to users via an interface which is used to
“facilitate users in understanding and interpreting the information contained
therein.” Id. ¶ 45. This also is consistent with the claims. For example,
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claim 4, which depends from claim 1, recites “the interface component
causes the interface to display the at least one suggestion.” Similarly,
independent claim 11 recites “causing an interface of the industrial
automation controller to display at least one of a graphical or textual
representation of the . . . suggested optimization,” and independent claim 17
recites a similar “display” limitation. Thus, viewed in light of the other
claims and the description in the Specification, the act of displaying the
suggestion to a user (so that a user can subsequently modify operation of a
manufacturing element) is encompassed by the broadest reasonable
interpretation of the “implement at least one suggestion” claim limitation.
The Federal Circuit has explained, however, that presenting
information for user consumption is not sufficient to remove a claim from
the abstract realm. Elec. Power Grp., 830 F.3d at 1354 (“And we have
recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.”) (citations omitted). Given the particular facts here
where the “implement[ing]” limitation broadly encompasses the display of
information and does not require that a physical change in operation to any
manufacturing elements be made, we conclude it is not sufficient to integrate
the abstract idea into a practical application.
Similar to dependent claim 4 reciting a system capable of displaying
the suggestion, claim 1 also recites a system capable of “display[ing]
representations of at least one of the utilization data elements, forecasts,
trends, or relationships.” However, as with displaying the final result, this
limitation displaying the initial data or intermediate data fails to integrate the
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abstract idea into a practical application because it merely amounts to
“presenting the results of abstract processes of collecting and analyzing
information.” Elec. Power Grp., 830 F.3d at 1354.
Our analysis now turns to Step 2B of the Guidance. Appellants’
arguments in connection with Step 2B also rely primarily on the
“implement” limitation discussed above. Appellants assert that because the
claimed systems and methods provide improved optimizations which result
in increasing or decreasing production in manufacturing elements, the claim
amounts to significantly more than the abstract idea itself. Reply Br. 7. We
disagree.
As we explained above, the claims do not require that production be
modified in the manufacturing elements. Rather, the claims require only that
a suggestion be made for how to do so. In our view, these purported
improvements are better characterized as improvements to the abstract idea
itself—they improve the energy management process. See SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. May 15, 2018) (“[w]hat is
needed is an inventive concept in the non-abstract realm”). Moreover, we
agree with the Examiner that the “[S]pecification [makes] clear that the
invention describes the computing components/environment as either
performing basic computing functions such as sending or receiving data, or
performing functions ‘known’ in the art.” Final Act. 19.
The Specification illustrates that the computer devices implementing
the claimed invention are conventional and are described at a high level.
E.g., Spec. ¶¶ 21 (describing conventional networks), 23 (describing
controller as “include[ing] any type of control, communications module,
computer, I/O device, sensors, Human Machine Interface (HMI) that
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communicate via the network that includes control, automation, or public
networks”); see also id. ¶¶ 29–31, 62–65, Fig. 11 (showing conventional
computer client/server environment). Thus, the additional elements recited
in Appellants’ claims do not amount to significantly more than the abstract
idea and do not supply an inventive concept under Alice step 2.
Accordingly, we conclude Appellants’ have failed to persuasively
demonstrate the Examiner erred in rejecting the claims for lack of subject
matter eligibility, and we therefore sustain the rejection under 35 U.S.C.
§ 101.

DECISION
We affirm the Examiner’s rejection under 35 U.S.C. § 101.
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