Shefali Bansal et al.

Patent Trials and Appeals Board

Aug 2, 2019

14634952 - (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.
14/634,952 03/02/2015 SHEFALI BANSAL IN920140042US2 2895
79196 7590 08/02/2019
LAW OFFICE OF JIM BOICE
3839 BEE CAVE ROAD, SUITE 201
WEST LAKE HILLS, TX 78746
EXAMINER
LOFTIS, JOHNNA RONEE
ART UNIT PAPER NUMBER
3683
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):
Emily@BoiceIP.com
Jennifer@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHEFALI BANSAL and TAPAN DEY1
___________

Appeal 2018-007343
Application 14/634,952
Technology Center 3600

____________

Before CARL W. WHITEHEAD JR., JASON V. MORGAN, and
JAMES B. ARPIN, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1–12 under
35 U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Introduction
The invention is directed to “managing preventive maintenance
schedules for equipment.” Specification ¶ 1.

1 Appellants identify International Business Machines Corporation, as the
real party in interest. Appeal Brief 2.
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Representative Claim
1. A method comprising:
detecting, by one or more processors, an outage on a unit
of equipment, wherein the outage is a result of a maintenance
operation being performed on a first subcomponent of the unit
of equipment, wherein the outage is detected by the one or more
processors receiving a signal describing a state of the first
subcomponent of the unit of equipment, and wherein the signal
is from one or more physical sensors that monitor a state of the
first subcomponent of the unit of equipment;
determining, by one or more processors, that the
maintenance operation is a superseding maintenance operation,
wherein the superseding maintenance operation renders a first
minor maintenance operation on the first subcomponent of the
unit of equipment unnecessary for preventing a failure of the
unit of equipment, and wherein the first minor maintenance
operation is scheduled after the superseding maintenance
operation;
identifying, by one or more processors, a first critical
maintenance operation on the first subcomponent of the unit of
equipment, wherein the first critical maintenance operation is
scheduled after the superseding maintenance operation, and
wherein failure to perform the first critical maintenance
operation within a predefined period of time of the superseding
maintenance operation has been predetermined to cause the unit
of equipment to fail; and
performing the first critical maintenance operation, but
not the first minor maintenance operation, while executing the
superseding maintenance operation on the first subcomponent
of the unit of equipment during the outage.

Rejections on Appeal
Claims 1–7 stand provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 8–20 of copending
Application Number 14/274,343. Final Action 7.
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Claims 1–12 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final
Action 7–9.

ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed January 31, 2018), the Reply Brief (filed
July 11, 2018), the Final Action (mailed September 19, 2017) and the
Answer (mailed May 17, 2018), for the respective details.

Double Patenting Rejection
We decline to address the merits of the provisional obviousness-type
double patenting rejection. On appeal, neither Appellants nor the Examiner
address the merits of the pending provisional obviousness-type double
patenting rejection. See Appeal Brief 1; see also Answer 3. Under the
circumstances, we also decline to address the merits of this provisional
rejection. Ex parte Jerg, Appeal No. 2011-000044, 2012 WL 1375142 at *3
(BPAI Apr. 13, 2012) (informative) (“Panels have the flexibility to reach or
not reach provisional obviousness-type double-patenting rejections.”) (citing
Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential)). If there is
ongoing prosecution, we leave it to the Examiner to decide in the first
instance whether an obviousness-type double patenting rejection remains
warranted. See MPEP § 804(I)(B)(1)(b)(iv).

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35 U.S.C. § 101 Rejection
The Examiner determines, “Claims 1–12 are rejected under 35 U.S.C.
[§] 101 because the claimed invention is directed to a judicial exception (i.e.,
a law of nature, a natural phenomenon, or an abstract idea) without
significantly more.” Final Action 7; see Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014) (describing the two-step framework “for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.”).
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (hereinafter “Memorandum”). Under the Memorandum,
the Office first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., (a) mathematical concepts, (b) certain
methods of organizing human activity such as a fundamental
economic principles and practice, commercial or legal
interactions, managing personal behavior, relationships and
interpersonal interactions, (c) mental processes); and

(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office 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

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(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.
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own, and we add the following primarily for emphasis and clarification
with respect to the Memorandum.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
Appellants contend:
In exemplary Claim 1, the present invention likewise uses
sensors (“one or more physical sensors that monitor a state of the
first subcomponent of the unit of equipment”, as supported by
paragraph [0038] of the present specification) to provide
information needed to initiate preventative maintenance on the
unit of equipment, thereby reducing errors (failure) in the unit of
equipment.
Thus, like Thales [Visionix Inc. v. United States, 850 F.3d 1343
(Fed. Cir. 2017)], the present invention passes Part I of the Mayo
[Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012)] (i.e., is not an abstract idea), and is statutory under 35
U.S.C. § 101 and Alice.
Appeal Brief 6.
Appellants’ arguments are not persuasive. Instead, we agree with the
Examiner’s determination that the claims recite an abstract idea. Final
Action 8 (“detecting an outage on a unit of equipment, wherein the outage is
a result of a maintenance operation . . . , determining if the maintenance
operation is a superseding maintenance operation . . . , identify a first critical
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maintenance operation . . . . Each of these steps may be performed by a
human with pen and paper.”).
The Specification discloses:
A method, system, and/or computer program product
schedules preventive maintenance on a unit of equipment. An
outage on a unit of equipment, which is the result of a
maintenance operation being performed on a subcomponent of
the unit of equipment, is detected. A determination is made that
the maintenance operation is a superseding maintenance
operation, which renders a subsequently scheduled minor
maintenance operation on the subcomponent of the unit of
equipment unnecessary. A critical maintenance operation on the
subcomponent of the unit of equipment is also identified. Thus,
the critical maintenance operation, but not the minor
maintenance operation, is performed while executing the
superseding maintenance operation on the subcomponent of the
unit of equipment during the outage.

Specification ¶ 3.
Claim 1 recites a method comprising, “detecting, by one or more
processors, an outage on a unit of equipment,” “determining, by one or more
processors, that the maintenance operation is a superseding maintenance
operation,” “wherein the first minor maintenance operation is scheduled
after the superseding maintenance operation,” and “identifying, by one or
more processors, a first critical maintenance operation on the first
subcomponent of the unit of equipment.”
The claim recites the abstract idea of concepts performed in the
human mind including observation, evaluation, judgement, and opinion. See
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Memorandum, Section I (Groupings of Abstract Ideas); see also
Specification ¶ 3.2
Therefore, we conclude the claims recite an abstract idea pursuant to
Step 2A, Prong One of the guidance. See Memorandum, Section III(A)(1)
(Prong One: Evaluate Whether the Claim Recites a Judicial Exception).

Step 2A, Prong Two
Under Prong Two of the Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception” it is noted that a “claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Memorandum, Section
III(A)(2).
Appellants argue:
If the present invention were (erroneously) be deemed to
fail Part I of the Mayo test, then it would nonetheless pass Part II
of the Mayo test, since it would, like Classen [Immunotherapies,
Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)], “move
from an abstract principle to a specific application” by
“identifying, by one or more processors, a first critical
maintenance operation on the first subcomponent of the unit of
equipment” (arguably, but disputed by Appellants, as being an

2 See also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (holding that “collecting information, analyzing it, and displaying
certain results of the collection and analysis” are “a familiar class of claims
‘directed to’ a patent-ineligible concept”); see also In re TLI Commc'ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016).
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“abstract principle”) to the “specific application” of “performing
the first critical maintenance operation.”
Appeal Brief 7.

We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See Memorandum at 55 nn.25, 27–32.
Appellants contend:
Thales is held to be statutory since it claims the use of sensors
that determine a characteristic of an entity (i.e., a physical
location of a unit of cargo in a vehicle). That is, the CAFC held
the Thales invention to be statutory since “the determination of
orientation of the track object” is “based on the signals from the
two inertial sensors,” thereby reducing “errors in an inertial
system that tracks an object on a moving platform” (see page 9
of Thales). In exemplary Claim 1, the present invention likewise
uses sensors (“one or more physical sensors that monitor a state
of the first subcomponent of the unit of equipment,” as supported
by paragraph [0038] of the present specification) to provide
information needed to initiate preventative maintenance on the
unit of equipment, thereby reducing errors (failure) in the unit of
equipment.
Appeal Brief 6.

The statutory invention in [Diamond v. Diehr, 450 U.S.
175 (1981)] controls/modifies a rubber mold (a device).
Similarly, the present invention controls/modifies a unit of
equipment (a device) based on the detection of an outage on the
unit of equipment caused by a maintenance operation, which
leads to the performance of a critical maintenance operation on
the unit of equipment.
. . . .
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As such, the court in Diehr held that the claimed invention is
statutory, with or without the use of an automatic feedback
electronic controller or other computer. Thus, just as Diehr
controls the operation/improvement of the rubber molding
device (automatically or manually), the present invention
controls the operation/improvement of the unit of equipment
(automatically or manually).
Appeal Brief 8.
In Thales Visionix, our reviewing court determined that the claims
were not directed to an abstract idea because, like the claims in Diehr, they
improved upon difficulties in making accurate calculations in the prior art
and “result[ed] in a system that reduces errors.” Thales, 850 F.3d at 1348.
The claims in Diehr were found to be patent-eligible, despite containing a
mathematical formula, because they involved physical transformation of
uncured synthetic rubber into a different state and solved an industry
problem of “undercuring” and “overcuring.” See Diehr, 450 U.S. at 178,
187; see also Memorandum at 55; MPEP § 2106.05(c).
Accordingly, we do not find Appellants’ arguments persuasive. We
are not persuaded the claim includes a technical solution to a technical
problem, as the benefits of the claimed system pertains to the user rather
than to the computing system(s). See Specification ¶ 1 (“[T]he present
disclosure relates to managing preventive maintenance schedules for
equipment.”); cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090
(Fed. Cir. 2019) (“This invention makes the trader faster and more efficient,
not the computer. This is not a technical solution to a technical problem.”).
We also find the claimed use of automation does not integrate the recited
judicial exception into a practical application. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a
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computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”). Further, as the Federal
Circuit has explained, a “claim for a new abstract idea is still an abstract
idea.” Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016). Even assuming the technique claimed was “[g]roundbreaking,
innovative, or even brilliant,” that would not be enough for the claimed
abstract idea to be patent eligible. See Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
In addition, we detect no additional element (or combination of
elements) recited in Appellants’ representative claim 1 that integrates the
judicial exception into a practical application. See Memorandum, Section
III(A)(2). For example, Appellants’ claimed additional element (e.g.,
processors and sensors) do not: (1) improve the functioning of a computer
or other technology; (2) is not applied with any particular machine (except
for a generic processor); (3) does not effect a transformation of a particular
article to a different state; and (4) is not applied in any meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See Memorandum, Section
III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate
Whether the Judicial Exception Is Integrated Into a Practical Application).
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Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Step 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo,
566 U.S. at 72–73).
Appellants contend, “[t]hus, like Classen, the present invention passes
Part II of the Mayo (i.e., adds ‘significantly more’), and is statutory under 35
U.S.C. § 101 and Alice.” Appeal Brief 7.
The Examiner finds:
[T]aken alone, the additional elements do not amount to
significantly more than the above-identified judicial exception
(the abstract idea). . . . Thus the claims do not include additional
elements, taken individually or as an ordered combination of
elements, that amount to significantly more than the judicial
exception because the additional elements are merely directed to
instructions to implement the idea on a computer and/or
computer implemented functions that are well-understood,
routine, and conventional activities previously known to the art.
Final Action 9; see Answer 5.
Appellants argue, “[o]n page 4, the Examiner’s Answer responds that
use of sensors to provide information needed to initiate preventative
maintenance on a unit of equipment is ‘well understood, routine, and
conventional’. Appellants respectfully disagree.” Reply Brief 2.
Appellants contend:
The April 2018 USPTO Memo was issued in response to the
February 8, 2018 CAFC decision in Berkheimer v. HP, 881 F.3d 1360
(Fed. Cir. 2018) – “Berkheimer.” The Berkheimer decision addressed
what constitutes “significantly more than the judicial exception” in Step
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2B of the Mayo test (also referred to as “Step 2 of Alice”). The
Berkheimer decision held that this question is a question of fact, and
that “Whether a particular technology is well-understood, routine, and
conventional goes beyond what was simply known in the prior art” (see
page 14 of the Berkheimer slip opinion. More specifically, if a claimed
feature (e.g., Claims 4–7 in Berkheimer) “improves system operating
efficiency” in a manner that is unique enough to differentiate it from
processes in the prior art, then it is not “well-understood, routine, and
conventional” (see pages 16–17 of the Berkheimer slip opinion). As
such, the invention is an improvement to computer functionality, rather
than an abstract idea, and is statutory under 35 U.S.C. § 101 (see page
11 of the Berkheimer slip opinion, as well as Enfish, LLC v. Microsoft
Corp., 822, F.3d 1327, 1335-36 (Fed. Cir. 2016)).
Reply Brief 2.

Memorandum, Section III (B) (footnote 36) (emphasis omitted)
states:
In accordance with existing guidance, an examiner’s
conclusion that an additional element (or combination of
elements) is well understood, routine, conventional activity must
be supported with a factual determination. For more information
concerning evaluation of well-understood, routine, conventional
activity, see MPEP 2106.05(d), as modified by the USPTO
Berkheimer Memorandum.

Accordingly, the Examiner determines:
The sensors of the present invention merely transmit data to a
processor that describes a state of a first subcomponent of a unit
of equipment. The conventional use of sensors to transmit data is
analyzed under step 2B of the Mayo test and as indicated in the
Final Office Action dated September 19, 2017, which pointed to
Appellant’s specification, paragraph 0019, the sensors use a
network interface to transmit information. See MPEP
2016.05(d)(II) which includes the court recognized computer
functions which are well understood, routine, and conventional
when they are claimed in a merely generic manner. Specifically,
“receiving or transmitting data over a network” is recognized as
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routine and conventional. Symantec, 893 F.3d at 1321, 120
USPQ2d at 1362.
Answer 4 (emphasis added).
The Berkheimer Memorandum, Section III (A)(1) states
(emphasis added):

A specification demonstrates the well-understood, routine,
conventional nature of additional elements when it describes the
additional elements as well-understood or routine or
conventional (or an equivalent term), as a commercially
available product, or 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). A finding that an element is well-
understood, routine, or conventional cannot be based only on the
fact that the specification is silent with respect to describing such
element.

Appellants contend that the Specification does not “expressly state[]
that the elements in the claim are well-understood, routine, and
conventional.” Reply Brief 3 (citing Berkheimer Memorandum).
Appellants’ Specification discloses in paragraph 19:
As depicted, computer 102 is able to communicate with a
software deploying server 150, as well as sensor(s) 152 (which
monitor one or more components on a unit of equipment) using
a network interface 130. Network interface 130 is a hardware
network interface, such as a network interface card (NIC), etc.
Network 128 may be an external network such as the Internet, or
an internal network such as an Ethernet or a virtual private
network (VPN).

We agree with the Examiner’s findings that the additional claim
elements are well-understood, routine, and conventional are properly based
upon a factual determination as specified in the Berkheimer Memorandum,
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Section III (A)(1). The Examiner determines that the additional elements,
the claimed sensors, are merely transmitting data and cites to paragraph 19
of the Specification to support the determination. See Answer 4; see also
Specification ¶¶ 14 (instructions executed by “a processor of a general
purpose computer”), 38 (description of known sensors). The Examiner
further supports the determination by noting that courts have recognized
transmitting data over a network is a well-understood, routine and
conventional function when it is claimed in a generic manner such as it is in
the instant application. See Answer 4 (citing MPEP 2016.05(d)(II)); see also
Specification ¶ 11 (describing known networks and network components),
¶12 (“the remote computer may be connected to the user’s computer through
any type of network, including a local area network (LAN) or a wide area
network (WAN), or the connection may be made to an external computer
(for example, through the Internet using an Internet Service Provider)”
(emphasis added)), ¶18 (“While the format of the ports connected to I/O
interface 116 may be any known to those skilled in the art of computer
architecture, in one embodiment some or all of these ports are universal
serial bus (USB) ports.” (emphasis added)). The Examiner’s determination
in not challenged with any specificity by Appellants. See Reply Brief 1–7.
Accordingly, we conclude claims 1–12 are directed to a mental
process as identified in the Memorandum and thus an abstract idea, and the
claims do not recite limitations that amount to significantly more than the
abstract idea itself. We sustain the Examiner’s § 101 rejection of claims 1–
12.
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DECISION
The Examiner’s patent-ineligible subject matter rejection of claims 1–
12 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED