The Boeing Company

Patent Trials and Appeals Board

Sep 9, 2021

2021000844 (P.T.A.B. Sep. 9, 2021)

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.
15/642,069 07/05/2017 Jose Luis Lemus Martin 13-0983-US-DIV 4711
111908 7590 09/09/2021
DUFT & BORNSEN, PC
1319 W BASELINE RD
SUITE 100A
LAFAYETTE, CO 80026
EXAMINER
WHITTINGTON, JESS G
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
09/09/2021 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):
docketing@db-iplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSE LUIS LEMUS MARTIN,
SERGIO PEREIRA MAYAN, and
EDUARDO GABRIEL FERREYRA
____________

Appeal 2021-000844
Application 15/642,069
Technology Center 3600
____________

Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
WILLIAM A. CAPP, Administrative Patent Judges.

Opinion for the Board filed by CAPP, Administrative Patent Judge

Opinion Dissenting in Part filed by GREENHUT,
Administrative Patent Judge

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 22–29 and 31–43. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies The Boeing Company as the
Applicant and real party in interest. Appeal Br. 3.
Appeal 2021-000844
Application 15/642,069
2
We AFFIRM.
THE INVENTION
Appellant’s invention relates to power management in an unmanned
air vehicle (UAV). Spec. 1. Claim 22, reproduced below, is illustrative of
the subject matter on appeal.
22. An Unmanned Air Vehicle (UAV), comprising:
a plurality of onboard subsystems;
at least one power source; and
a power management system configured to receive at least
one pre-defined mission parameter to implement during
performance of a mission,
the power management system is configured, repetitively
during performance of the mission, to:
check an available energy status of the at least one power
source;
check power requirements of each of the plurality of
onboard subsystems; and
automatically calculate and assign priorities to electrical
loads of the plurality of onboard subsystem based on the at least
one pre-defined mission parameter, the available energy status
of the at least one power source, and the power requirements of
each of the plurality of onboard subsystems.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Duggan US 2010/0292874 A1 Nov. 18, 2010
Calvignac US 2011/0178648 A1 July 21, 2011
Rivers US 2012/0095612 A1 Apr. 19, 2012
Peverill US 2016/0137311 A1 May 19, 2016
Appeal 2021-000844
Application 15/642,069
3
The following rejections are before us for review:
1. Claims 22–29 and 31–43 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception to patentable subject matter.
2. Claims 22–29 and 31–43 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
3. Claims 22–25, 29, 31–39, 42, and 43 are rejected under 35 U.S.C.
§ 103 as unpatentable over Calvignac and Rivers.
4. Claims 26 and 40 are rejected under 35 U.S.C. § 103 as
unpatentable over Calvignac, Rivers, and Peverill.
5. Claims 27, 28, and 41 are rejected under 35 U.S.C. § 103 as
unpatentable over Calvignac, Rivers, and Duggan.
OPINION
Section 101 – Patentable Subject Matter
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. Courts
recognize certain judicial exceptions to Section 101, namely: (1) laws of
nature, (2) natural phenomena, and (3) abstract ideas. Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70–71 (2012).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo, 566 U.S.
at 72–73). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts.
Id. If so, we must secondly “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
Appeal 2021-000844
Application 15/642,069
4
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id.
In situations where an abstract idea is implemented on a computer, the
first step in the Alice/Mayo analysis asks whether the focus of the claims is
on a specific improvement in computer capabilities or, instead, on a process
that qualifies as an “abstract idea” for which computers are invoked merely
as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016).
The PTO has published guidelines on the application of Section 101.
See Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (the “Guidelines”). Under such guidelines, in conducting step one of
the Alice framework, 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 interactions 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)).
In other words, under prong 1 of an abstract idea analysis, we look to
whether the claim recites an abstract idea. Then, if it does, under prong 2,
we look at the claim, as a whole, and determine whether the claim is
“directed to” the abstract idea or, instead, is “directed to” a “practical
application” of the abstract idea.
Step 1, Prong 1
The Guidelines identify three key concepts identified as abstract
ideas: (a) mathematical concepts including “mathematical relationships,
mathematical formulas or equations, mathematical calculations”; (b) certain
methods of organizing human activity, such as “fundamental economic
Appeal 2021-000844
Application 15/642,069
5
principles or practices,” “commercial or legal interactions,” and “managing
personal behavior or relationships or interactions between”; and (c) mental
processes including “observation, evaluation, judgment, [and] opinion.”
Guidelines, 84 Fed. Reg. at 52.
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea. Non-Final Act. 6. According to the
Examiner, the steps are directed to an abstract idea in the form of a “mental
process.” Id. at 7.
Appellant argues that claim 1 does not recite an abstract idea. Appeal
Br. 20–21. Appellant argues that calculating and assigning priorities related
to electrical loads cannot be performed in the human mind. Id. at 21.
There is little question here that claim 22 recites an abstract idea.
Claim 1, generously construed, entails using a processor (Spec. ¶ 4) to assist
in the process of gathering data (check available energy status and power
requirements of subsystems) and then perform calculations and analysis.
Claims App.
“Information as such is an intangible.” Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Courts treat collecting
information as well as analyzing information by steps people go through in
their minds as essentially mental processes within the abstract-idea category.
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed.
Cir. 2016). The claims here relate to collecting and analyzing data related to
electrical power supply and consumption on a UAV. Claims App. As such,
the method recites an abstract idea under the principles espoused in
FairWarning. Appellant’s argument that the computations and analysis
cannot actually be performed in the human mind is unpersuasive.
Appeal 2021-000844
Application 15/642,069
6
“[R]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
Step 1, Prong 2
Under Prong 2 of Step 1 of the Guidelines, we do not assume that
such claims are directed to patent ineligible subject matter because “all
inventions [at some level] embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.” In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (quoting Alice, 573 U.S.
at 217). Instead, “the claims are considered in their entirety to ascertain
whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016). If the claims are not directed to an abstract idea, the
inquiry ends. Id.; Guidelines, 84 Fed. Reg. at 54.
In our opinion, the Examiner errs in concluding, without substantial
analysis, that the claims are not directed to a practical application. Non-
Final Act. 7; Ans. 15. Here, the data collection and analysis is directed to
the practical application of improving the operation of an aerial vehicle by
managing and optimizing its power usage. Specifically, claim 22 requires
certain power management activities be done “repetitively during
performance of the mission.” In this manner, the claim does not simply
require abstract calculations, but ties those calculations to the performance
of the mission, thus applying the abstract idea to a practical application.
Our determination that all of the pending claims are directed to a
practical application of the recited abstract idea ends our inquiry. We do not
sustain the Examiner’s Section 101 rejection of claims 22–29 and 31–43.
Appeal 2021-000844
Application 15/642,069
7
Written Description
The written description requirement of 35 U.S.C. § 112 provides, in
pertinent part, that “[t]he specification shall contain a written description of
the invention.” That requirement is satisfied if the inventor “convey[s] with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention, and demonstrate[s] that by
disclosure in the specification of the patent.” Centocor Ortho Biotech, Inc.,
v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011) (quoting Carnegie
Mellon Univ. v. Hoffmann–La Roche Inc., 541 F.3d 1115, 1122 (Fed.
Cir. 2008)). “The essence of the written description requirement is that a
patent applicant, as part of the bargain with the public, must describe his or
her invention so that the public will know what it is and that he or she has
truly made the claimed invention.” AbbVie Deutschland GmbH & Co. v.
Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014); Nuvo
Pharmaceuticals (Ireland) Designated Activity Company v. Dr. Reddy’s
Labs. Inc., 923 F.3d 1368, 1377 (Fed. Cir. 2019).
According to the Examiner, the phrase:
automatically calculate and assign priorities to electrical loads
of the plurality of onboard subsystem based on the at least one
pre-defined mission parameter, the available energy status of
the at least one power source, and the power requirements of
each of the plurality of onboard subsystems.
in each of independent claims 22 and 35 renders them lacking in written
description support. Non-Final Act. 5–6. According to the Examiner,
Appellant’s disclosure supporting the above quoted limitation is merely a
“black box,” where variables are inserted and priorities are output. Id. at 6.
The Examiner criticizes Appellant’s failure to provide an algorithm or set of
Appeal 2021-000844
Application 15/642,069
8
rules for assigning priorities. Id. The remaining claims are dependent
claims and are rejected based on their dependency. Id. at 6.
In traverse, Appellant directs our attention to a number of passages
from the Specification that disclose a variety of mission scenarios and how
the power management system may use fuzzy logic to monitor system status
and prioritize among power consuming subsystems. Appeal Br. 19.
In response, the Examiner, once again, decries the lack of disclosure
of an algorithms or more concrete disclosure of “what is actually being
done.” Ans. 13. In reply, Appellant merely reiterates its position from the
Appeal Brief. Reply Br. 3.
The level of detail required to satisfy the written description
requirement varies depending on the nature and scope of the claims and on
the complexity and predictability of the relevant technology. Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
With respect to generic claims, the Federal Circuit has set forth a number of
factors for evaluating the adequacy of the disclosure, including the existing
knowledge in the particular field, the extent and content of the prior art, the
maturity of the science or technology, and the predictability of the aspect at
issue. Id.
In the instant case, there is an aircraft that is airborne. There is no
pilot on board to monitor the status of the various electrical systems.
Consequently, Appellant’s invention automates the process of monitoring
the status of power sources, such as batteries and/or solar panels. Depending
on the amount of energy available, the system assigns priority to energy
consuming sub-systems and does so based on mission parameters. If there is
plenty of available energy to supply all energy consuming sub-systems,
Appeal 2021-000844
Application 15/642,069
9
obviously no prioritization is necessary. If there is not enough energy to
continuously supply all power consuming sub-systems, depending on
mission parameters, power will be delivered to sub-systems on a priority
basis.
The Examiner’s “black box” argument is focused on “how and what is
being used.” Ans. 13. This concern goes more to issues of enablement and
definiteness. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350–51
(Fed. Cir. 2015); Automotive Tech. Int’l, Inc. v. BMW of North America,
Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007). However, the Examiner makes
no rejection under the definiteness or enablement provisions of Section 112.
See generally Non-Final Act. The written description requirement is
separate from the enablement requirement. Ariad, 598 F.3d at 1351.
Although a specific example or perhaps an algorithm might have been
helpful, we take into account the maturity of technology in the aviation and
electrical power management industries. The passages of the Specification
cited by Appellant at page 19 of the Appeal Brief provide enough disclosure
to demonstrate possession of the invention. Appeal Br. 19. More
particularly with respect to the maturity of technology, we note that each of
the Examiner’s four prior art references relied on in Section 103 grounds of
rejection, are derived from the aviation (Calvignac, Peverill, Duggan) and
electrical power (Rivers) industries. Appellant’s disclosure demonstrates
possession of its invention at a level that is roughly in keeping with that of
the prior art of record. Compare, e.g., Appellant’s Figure 2, with Calvignac,
Fig. 3.
Accordingly, we do not sustain the Examiner’s Section 112 written
description rejection of claims 22–29 and 31–43.
Appeal 2021-000844
Application 15/642,069
10
Unpatentability of Claims 22–25, 29, 31–39, 42, and 43
over Calvignac and Rivers
Claims 22 and 35
Appellant argues claims 22 and 35 together. Appeal Br. 5–15.
Claim 22 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Calvignac discloses the invention
substantially as claimed except for a plurality of subsystems, for which the
Examiner relies on Rivers. Non-Final Act. 9–10, 15. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to combine the teachings of Rivers
with Calvignac to achieve the claimed invention. Id. at 11. According to the
Examiner, a person of ordinary skill in the art would have done this to avoid
high priority electrical loads from losing power. Id.
Appellant argues that the prior art fails to disclose the “automatically
calculate” limitation of claim 22. Appeal Br. 6. According to Appellant,
Calvignac merely discloses controlling the rate of charge of an energy
storage device based on predicted thrust and energy demands rather than
based on any of activity related to the claimed features. Id. at 7. More
particularly, Appellant quotes paragraphs 55–57 of Calvignac and concludes
that the “automatically calculate” limitation of claim 22 does not read on
such passage.
Appellant also argues that Rivers, in general, and in paragraphs 61
and 62 in particular, fails to disclose the “automatically calculate” limitation.
Id. at 12–13. Appellant also argues that the Examiner’s rejection lacks
articulated reasoning with rational underpinning. Id. at 14–15.
In response, the Examiner points out that the rejection is based on the
combined teachings of the prior art and that Appellant’s arguments, for the
Appeal 2021-000844
Application 15/642,069
11
most part, are directed at individual attacks on each of the Examiner’s cited
references. Ans. 5–6. The Examiner finds that Calvignac discloses pre-
defined mission parameters such as distance, flight plan, and flight profile.
Id. at 7. The Examiner further finds that Calvignac discloses that power
source capabilities for recharge of the flight load is known and measured.
Id. (citing Calvignac ¶¶ 54–57). The Examiner further finds that in
“determining an optimal electrical system profile for the flight,” Calvignac
engages in assigning priorities to aircraft systems. Id. (citing Calvignac
¶ 54). The Examiner reiterates findings from the rejection and notes that the
only limitation missing from Calvignac is explicit disclosure of breaking the
electrical loads into subsystem loads, but explains that such missing
disclosure is supplied by Rivers. Id.
Rivers clearly teaches the missing limitations when Rivers
states
“In one embodiment, central charge controller 132 may
categorize or prioritize loads 104 such that at least one load
104 is categorized as a high priority load 104 and at least
one load 104 is categorized as a low priority load 104. In
such an embodiment, central charge controller 132 may
electrically decouple one or more power sources 102 from
low priority load 104 while maintaining a supply of power
to high priority load 104 from power source 102. The
categorization or prioritization may be based on any
suitable criteria, such as based on a user identified priority
list, a cost of power consumed by load 104, a financial
benefit of load 104, an amount of power consumed by load
104, a location of load 104, information regarding the
ownership of load 104 and/or the identity of the operator of
load 104, an amount of charge needed to complete a
charging operation of load 104 (e.g., of renewable power
storage device 114 and/or vehicle power storage device
116), and/or any other criteria.”
Appeal 2021-000844
Application 15/642,069
12
Id. (quoting Rivers ¶ 62).
In reply, Appellant admits that Calvignac discloses flight profile data
that indicates, for each flight segment, the associated duration, engine
throttle settings, aircraft altitude, velocity, and the electrical loading on the
aircraft electrical system and the timing and scheduling of such electrical
loads. Reply Br. 3. Appellant further admits that Calvignac uses flight
profile data to control the rate of charge or discharge of the energy storage
device during a light segment. Id. at 5.
Calvignac is directed to an aircraft power management system.
Calvignac, Abstract. Figure 3 of Calvignac is a flow chart that depicts the
steps that are performed for determining an optimal electrical system profile
for a flight, or part thereof. Id. ¶ 54, Fig. 3. Calvignac’s processor receives
flight profile data 30, engine data 32, and energy store data 34. Id. ¶ 55.
Calvignac’s processor calculates an optimum electrical system profile and
transmits optimal system profile data to controller 24. Id. An algorithm is
applied successively to each flight segment to derive an optimal or desired
solution across all flight segments based on input data. Id. ¶ 57.
Rivers is directed to controlling a power system. Rivers, Abstract.
Rivers discloses controller 132 that categorizes and prioritizes loads into
high priority loads and low priority loads. Id. ¶ 61. Rivers’ controller may
decouple power sources 102 from low priority loads while maintaining a
supply of power to high priority loads. Id. Similarly, Rivers prioritizes
power sources 102. Id. ¶ 62. In the event that not all power sources are
needed to satisfy the power demands of loads, controller 132 may
electrically decouple low priority power sources 102 from loads 104 if
power supplied by such low priority power sources are not needed. Id.
Appeal 2021-000844
Application 15/642,069
13
Power sources may also be coupled to loads in a prioritized manner if
additional power is needed. Id.
Appellant’s arguments to the contrary notwithstanding, the
Examiner’s findings that the combination of Calvignac and Rivers discloses
the “automatically calculate” limitation have ample support in the
evidentiary record before us.
Finally, we disagree with Appellant’s assertion that the Examiner’s
rejection is not supported by articulated reasoning with rational
underpinning. Appeal Br. 15. The Examiner finds, correctly, that the
combined teachings of the prior art disclose or suggest all of the limitations
of claim 22. Non-Final Act. 9–10, 15. The Examiner provides a sound
reason for making the proposed combination. Id. at 11 (to avoid causing
high priority loads to lose power). See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (requiring an obviousness conclusion to be based on explicit
articulated reasoning with rational underpinning), cited with approval in
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner’s findings of fact are supported by a preponderance of
the evidence and the Examiner’s legal conclusion of unpatentability is well-
founded. In view thereof, we sustain the Examiner’s unpatentability
rejection of claims 22 and 35.
Claim 23
Claim 23 depends from claim 22 and adds the limitation: “the at least
one pre-defined mission parameter includes a distance to be traveled by the
UAV.” Claims App. The Examiner finds that Calvignac discloses this
limitation. Non-Final Act. 11, 15.
Appeal 2021-000844
Application 15/642,069
14
Appellant argues that the distance limitation is not satisfied by
Calvignac. Appeal Br. 15–16. In response, the Examiner cites to the
paragraphs 6–9, 49, 54–57, and 89 and Figures 2 and 3 in Calvignac as
evidentiary support for the Examiner’s finding. Ans. 9.
Appellant’s argument is unpersuasive. Calvignac discloses that its
invention is applicable for a plethora of operational conditions and flight
plans. Calvignac ¶ 34. A person of ordinary skill in the art understands that
a “flight plan” includes a route of flight, which, in turn, includes a distance
to be traveled along such route. Calvignac also discloses, for purposes of its
processing steps, a flight may be divided into segments. Calvignac ¶ 48.
According to Calvignac, “[e]ach segment can be defined in terms of its
duration or start and ends times within the total flight.” Id.
The flight profile data 30 may be received from the airframe
systems and comprises indication of the number of flight
segments and, for each segment, the associated duration, engine
throttle settings, aircraft altitude, velocity (Mach number), the
electrical loading on the aircraft electrical system and the
timing/scheduling of those electrical loads. The flight profile
data 30 may also comprise maximum and/or minimum possible
states of charge of the energy storage device 22.
Id. at 49. A person of ordinary skill in the art would understand that flight
duration is derived from distance and time. For example, a flight that
transits 100 miles at an average speed of 100 miles per hour would last for a
duration of one hour. Thus, Calvignac’s flight profile data, which includes
duration and velocity, necessarily contemplates distance to be traveled.
We sustain the Examiner’s unpatentability rejection of claim 23.
Claim 24
Claim 24 depends from claim 23 and adds the limitation: “the at least
one pre-defined mission parameter includes a flight speed of the UAV.”
Appeal 2021-000844
Application 15/642,069
15
Claims App. The Examiner finds that Calvignac discloses this limitation.
Non-Final Act. 12, 15.
Appellant admits that Calvignac expressly contemplates taking
velocity into account to control a rate of charge or discharge of an energy
storage device. Appeal Br. 18. Nevertheless, Appellant argues that such
controlling of a discharge rate is not equivalent to calculating and assigning
priorities based on a flight speed. Id. In response, the Examiner points to
the same velocity disclosure in Calvignac that Appellant admitted to in its
Appeal Brief. Ans. 11.
Appellant’s argument is altogether lacking in merit. A person of
ordinary skill in the art knows that, all things taken together, increasing the
airspeed of an aircraft increases its rate of energy consumption. This is just
the normal consequence of overcoming increased aerodynamic drag as
airspeed increases. If energy consumption increases with increased airspeed
and the supply of power becomes insufficient to maintain all power
consuming subsystems, Rivers teaches that low priority loads may be
decoupled from power sources. Rivers ¶ 61, Fig. 1. The combination of
Calvignac and Rivers teaches a power management system that receives pre-
defined mission parameters and calculates and assigns priority to electrical
loads based on pre-defined mission parameters, in general, and aircraft
velocity, in particular. Calvignac ¶¶ 48, 49, 50 (“values of fuel consumption
are provided against altitude, velocity, throttle and/or electrical power take-
off”); Rivers ¶ 61.
The Examiner’s findings of fact are supported by a preponderance of
the evidence and the Examiner’s legal conclusion of unpatentability is well-
Appeal 2021-000844
Application 15/642,069
16
founded. In view thereof, we sustain the Examiner’s unpatentability
rejection of claim 24.
Claims 25, 29, 31–34, 36–39, 42, and 43
These claims depend, directly or indirectly, from either of
independent claim 22 or 35 and are not separately argued. We sustain the
Examiner’s unpatentability rejection of claims 25, 29, 31–34, 36–39, 42,
and 43. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims
constitutes a waiver of arguments for separate patentability).
Unpatentability of Claims 26 and 40
over Calvignac, Rivers, and Peverill
These claims depend indirectly from each of claims 22 and 35
respectively and are not separately argued. We sustain the Examiner’s
rejection of claims 26 and 40. 37 C.F.R. § 41.37(c)(1)(iv).
Unpatentability of Claims 27, 28, and 41
over Calvignac, Rivers, and Duggan
These claims depend indirectly from each of claims 22 and 35
respectively and are not separately argued. We sustain the Examiner’s
rejection of claims 27, 28, and 41. 37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2021-000844
Application 15/642,069
17
CONCLUSION
Claims
Rejected
35
U.S.C. §
References/Bases Affirmed Reversed
22-29,
31-43
101 Eligibility 22-29,
31-43
22-29,
31-43
112 Written Description 22-29,
31-43
22-25, 29,
31-39, 42,
43
103 Calvignac, Rivers
22-25, 29,
31-39, 42,
43

26, 40 103 Calvignac, Rivers, Peverill 26, 40
27, 28, 41 103 Calvignac, Rivers, Duggan 27, 28, 41
Overall
Outcome
22-29,
31-43

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)(iv).
AFFIRMED

Appeal 2021-000844
Application 15/642,069
18
GREENHUT, Administrative Patent Judge, dissenting in part.

Almost 170 years ago, around the dawn of the telecommunications
era, the United States Supreme Court recognized the importance of striking
down preemptive patent claims. In O’Reilly v. Morse, (56 U.S. 65 (1853))
the Court struck down a claim by Samuel Morse, famed inventor of the
telegraph, which would have covered a present-day email or text message.
That claim covered the use of “electro-magnetism, however developed for
marking or printing intelligible characters, signs, or letters, at any distances.”
Id. at 112. The Court stated:
If this claim can be maintained, it matters not by what process or
machinery the result is accomplished. For aught that we now
know some future inventor, in the onward march of science, may
discover a mode of writing or printing at a distance by means of
the electric or galvanic current, without using any part of the
process or combination set forth in the [Morse]’s specification.
His invention may be less complicated — less liable to get out of
order — less expensive in construction, and in its operation. But
yet if it is covered by this patent the inventor could not use it, nor
the public have the benefit of it without the permission of this
patentee
Id. at 113.
O’Reilly v. Morse was decided prior to the 1952 initiative to codify
patent laws under Title 35. However, immediately prior to the analysis
reproduced above the Court provided a summary of relevant U.S. patent
laws at that time. Id. at 119. That summary included language that is now
Appeal 2021-000844
Application 15/642,069
19
embodied mainly in either § 1012 or § 112(a)3 of Title 35. As recognized by
both our reviewing court and the Supreme Court, both sections 101 and
112(a) play an important role in present-day prohibitions against preemptive
claiming.4 They operate to do so by somewhat different mechanisms.

§ 101
I agree with the majority’s summary of the general principles of law
associated with an analysis under § 101 as well as the majority’s
determination that claim 22 recites an abstract idea. However, in the
majority’s view:
the Examiner errs in concluding, without substantial analysis,
that the claims are not directed to a practical application.

2 “Whoever discovers that a certain useful result will be produced, in any art,
machine, manufacture, or composition of matter, by the use of certain
means, is entitled to a patent for it.” Morse 56 U.S. at 119.
3 “provided he specifies the means he uses in a manner so full and exact, that
any one skilled in the science to which it appertains, can, by using the means
he specifies, without any addition to, or subtraction from them, produce
precisely the result he describes. . . . he must describe the manner and
process as above mentioned, and the end it accomplishes.” Morse 56 U.S. at
119.
4 See, e.g., Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1346 n.4,
1353 (Fed. Cir. 2010) (en banc) (“Morse, decided under the 1836 Act, can
also be interpreted as involving a separate written description inquiry. . . .
the written description doctrine [gives] the incentive to actual invention and
not attempt[s] to preempt the future before it has arrived.” (citation and
internal quotation omitted)); Mayo Collaborative v. Prometheus Labs., 566
US 66, 85 (2012) (citing Morse) (“The Court has repeatedly emphasized . . .
a concern that patent law not inhibit further discovery by improperly tying
up the future use of laws of nature.”) (quoted with approval in Alice Corp.
Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2354 (2014)).
Appeal 2021-000844
Application 15/642,069
20
The majority criticizes the Examiner’s conclusion as being “without
substantial analysis.” The entirety of the majority’s analysis on this point is
reproduced below:
Here, the data collection and analysis is directed to the practical
application of improving the operation of an aerial vehicle by
managing and optimizing its power usage.
The Examiner’s analysis concerning whether the claim fails to
integrate the abstract idea into a practical application is as follows:
[T]his judicial exception is not integrated into a practical
application. In particular, the claim only recites one additional
element – a UAV with a power source that checks and assigns
priorities. The management system, which is doing the
calculations, in these steps is recited at a high-level of generality
(i.e., as a generic processor performing a generic computer
function of checking and assigning) such that it amounts no more
than mere instructions to apply the exception using a generic
computer component. Accordingly, this additional element does
not integrate the abstract idea into a practical application because
it does not impose any meaningful limits on practicing the
abstract idea. The claim is directed to an abstract idea
Non-Final Act. 15.
The 2019 Revised Patent Subject Matter Eligibility Guidance
reference by the majority (“Section 101 Guidance”) provides:
In Prong Two, examiners should evaluate whether the claim as a
whole integrates the recited judicial exception into a practical
application of the exception. 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.
. . .
an additional element applies or uses the judicial exception in
some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment,
Appeal 2021-000844
Application 15/642,069
21
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.
Section 101 Guidance at 54–55.
The Examiner correctly concludes that in addition to the “power
management system,” which the entirety of this panel regards as an abstract
idea, “the claim only recites one additional element – a UAV with a power
source.” This seems to me to fall squarely within the type of limitation
contemplated in the Section 101 Guidance as “generally linking the use of
the judicial exception to a particular technological environment.” Thus, I
would agree with the Examiner that this limitation “does not impose any
meaningful limits on practicing the abstract idea.”
According to the majority, claims 22 and 35 are directed to a practical
application because the data collection and analysis “improv[es] the
operation of an aerial vehicle by managing and optimizing its power usage.”
However, claims 22 and 35 recite nothing of the sort.5 The data collection
involving “check[ing] an available energy . . .” and “check[ing] power
requirements” are at least tied in some way to the respective sources of that
information, “the at least one power source” and “the plurality of onboard
subsystems.” However, our reviewing court has held that mere data
gathering, including specifying the source of data, cannot make an otherwise
nonstatutory claim statutory. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011). Perhaps more importantly, the claims

5 For purposes of the §§ 101 and 112(a) analysis, because the Examiner,
Appellant, and the majority group independent claims 22 and 35 together I
do as well. However, I note that it is not entirely clear to me that the method
of claim 35 describes the UAV as anything beyond an intended environment
of use. Depending on the circumstances intended use limitations may or may
not actually limit the scope of a claim. See, e.g., MPEP § 2111.02(II).
Appeal 2021-000844
Application 15/642,069
22
do not require the power management system or method to actually do
anything with the results of the “calculate[ing] and assign[ing] priorities.” It
is unclear from what claim language the majority concludes some type of
“managing and optimizing [UAV] power usage” takes place. It certainly
would not seem to follow from merely making a calculation. No discussion
is provided by the majority regarding precisely what “assign priorities”
actually entails and I do not find any elaboration on the subject in the
Specification or in Appellant’s arguments. As best as I can tell it involves
creating some sort of list, table, or other dataset affiliating a priority level
with each of the subsystems. If this is correct, I fail to see how this amounts
to anything more than insignificant post-solution activity that is not
integrated in any meaningful way into the claim as a whole.6
It is well-settled that “any reliance on the specification in the § 101
analysis must always yield to the claim language.” ChargePoint, Inc. v.
SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019). In claims 22 and 35,
like the Examiner, I see generic calculation, that happens to be performed in
the environment of a UAV, and apparently relies on some unrecited formula
or algorithm that makes use of routine gathered data (a mission parameter,
power source available energy status, and subsystems’ power requirements)
in some unrecited way, to achieve a vague result of having electrical load
priorities “assign[ed].” These claims are very similar in nature to those held
ineligible in ChargePoint. The same result should follow. It is clear error for

6 See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.
2011) (quoting Parker v. Flook, 437 U.S. 584, (1978)) (discussed at MPEP
§ 2106.05(g)) (“The Court rejected the notion that the recitation of a
practical application for the calculation could alone make the invention
patentable, stating that any ‘competent draftsman could attach some form of
post-solution activity to almost any mathematical formula.’”)
Appeal 2021-000844
Application 15/642,069
23
the majority to venture far beyond the language of the claim to conclude that
claims 22 and 35 are directed to patent-eligible subject matter. There could
have been, or, in the future, there could be, some specific embodiment
developed which falls within the scope of claim 22 or claim 35 and actually
does what the majority envisions. But that preemptive effect on actual non-
abstract invention is precisely the reason why claims 22 and 35 should be
rejected under § 101 not the reason why they pass muster.

§ 112(a)
Initially I note that I agree with the majority’s preliminary statements
regarding the law concerning the written description requirement. It should
come as no surprise that when a claim is directed to an abstract idea the
Specification will typically fail to demonstrate possession of that idea itself.
Or, putting it differently, in light of the broad generic nature of an abstract
claim, it is likely impossible to disclose sufficient species to support a claim
to such a broad, and potentially limitless, genre. In any case, the written
description inquiry has its own standards that can be approached
independently of the eligibility inquiry. I would still find the subject matter
in question as lacking an adequate written description regardless of how the
eligibility question is answered.
I do not believe there is any basis in law or policy for the majority’s
statement that, in effect, summarily dismisses the Examiner’s position as
being legally misdirected:
The Examiner’s “black box” argument is focused on “how and
what is being used.” Ans. 13. This concern goes more to issues
of enablement and definiteness. Williamson v. Citrix Online,
LLC., 792 F.3d 1339, 1350–51 (Fed. Cir. 2013); Automotive
Appeal 2021-000844
Application 15/642,069
24
Tech. Int’l, Inc. v. BMW of North America, Inc., 501 F.3d 1274,
1283 (Fed. Cir. 2007). However, the Examiner makes no
rejection under the definiteness or enablement provisions of
Section 112. See generally Non-Final Act. The written
description requirement is separate from the enablement
requirement. Ariad, 598 F.3d at 1351.
Although certainly not the only way to satisfy the written description
requirement, informing the reader “how and what is being used” as the so-
called black box is most certainly an inquiry that is relevant to determining if
the Specification contains sufficient disclosure to demonstrate Appellant was
in actual or constructive possession of the subject matter claimed.
The “written description” requirement implements the principle
that a patent must describe the technology that is sought to be
patented; the requirement serves both to satisfy the inventor’s
obligation to disclose the technologic knowledge upon which the
patent is based, and to demonstrate that the patentee was in
possession of the invention that is claimed.
Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005) (cited by MPEP
§ 2163). The fact that such facts are relevant to other statutory provisions
does not, without more, demonstrate the Examiner erred in considering them
in the context of a written description analysis.
According to MPEP § 2163.04(I), to meet the initial burden of
establishing a lack of written description, the Examiner should:
(A) Identify the claim limitation(s) at issue; and
(B) Establish a prima facie case by providing reasons why a
person skilled in the art at the time the application was filed
would not have recognized that the inventor was in possession of
the invention as claimed in view of the disclosure of the
application as filed.
There is no question that this has clearly been done (Non-Final Act. 5–6).
Thus, the burden should shift to Appellant to come forward with evidence or
Appeal 2021-000844
Application 15/642,069
25
argument to rebut the Examiner’s position because Appellant is in the best
position to direct attention to the relevant portions of the Specification or
submit any necessary argument or evidence for consideration. Hyatt v.
Dudas, 492 F.3d 1365, 1369–71 (Fed. Cir. 2007) (discussing MPEP
§ 2163(I)(B)); see also In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
(“The process of patent prosecution is an interactive one”). Here, Appellant
responds only by reproducing excerpts from the Specification (Appeal Br.
19) without providing any further explanation in rebuttal.
The first paragraph reproduced by Appellant (Spec. 9:34–10:5)
appears to relate to a “mission parameter,” endurance. Spec. 11:25–29. But it
is unclear how this paragraph relates to the “algorithm or . . . set of rules . . .
being used to create the[] assigned priorities” for which the Examiner sought
clarification. Non-Final Act. 6; Ans. 13. The second paragraph (Spec. 10:6–
11) again appears to relate to a mission parameter, “maximum speed,” and
appears to indicate that the propulsion system, an “electrical load[],” will be
given priority at least from sources other than auxiliary battery (4): “the
fuzzy logic PMU[7] (7) will derive all but the auxiliary battery[8] (4) to the
control/propulsion system (11).” The third paragraph (Spec. 10:16–24) again
seems to describe a mission parameter “a compulsory high current payload
delivery” and indicates the “PMU (7) will store the necessary energy for the
payload (8) and will apply energy optimization strategies depending on the
other mission goals.” The fourth and final paragraph quoted (Spec. 10:34–
11:10) generally follows along with the language of claims 22 and 35

7 Power Management Unit.
8 I find the exact meaning of the phrase “derive all but the auxiliary battery”
unclear.
Appeal 2021-000844
Application 15/642,069
26
regarding gathering data variables. With regard to the “automatically
calculate and assign” language in question, this paragraph states:
With the information of the mission oriented fixed parameters,
the internal variables (including the load status and power
requirements) and the external variable, the system automatically
calculate [sic] (26), by means of a fuzzy logic power
management unit (7), a set of priorities for delivering power to
the subsystems (8–11), so the system evaluates which
subsystems will be first or mainly provided with power and
which subsystems will be secondly or secondarily provided with
power
At the very least, the second quoted paragraph may, arguably, provide
a single specific instance falling within the phrase “automatically calculate
and assign priorities” of claim 22 or the similar language of claim 35.
However, it is not clear how the operation described there makes such a
calculation and assignment “based on the . . . available energy status of the
at least one power source and the power requirements of each of the plurality
of onboard subsystems” as is also required by claims 22 and 35. In
particular, no other power requirements of each of the plurality of onboard
subsystems appear to be taken into consideration in making this particular
power allocation determination. Neither Appellant nor the majority provide
any comments with regard to this portion of the disclosure. In any case, even
if there were something within this disclosure that could somehow be
considered to fall within the claim language in question, as the majority
recognizes, a disclosure of a single species does not necessarily entitle an
applicant to a claim including an entire genus. So, the question would
remain: what entitles Appellant to a claim encompassing a much broader
range of ways to “automatically calculate and assign priorities . . .?”
Appeal 2021-000844
Application 15/642,069
27
The so-called “black box” appears to be “the fuzzy logic PMU,” but
again, there is no analysis from Appellant or the majority in this regard.
Thus, the subject matter at issue here actually appears to be represented by
white boxes with black outlining and lettering (7 and 28 in Figs. 1 and 2,
respectively). There is no specific structure associated with this “fuzzy logic
PMU” component, and the Specification describes its operation with respect
to the limitation in question merely by indicating it “will apply energy
optimization strategies” and it “automatically calculate [sic] . . . a set of
priorities for delivering power to the subsystems.” “[A]pply[ing] energy
optimization strategies” and “calculate[ing] a set of priorities” amount to
statements of desired results and not manipulative steps associated with any
particular process, algorithm or structure. All the reader knows is that there
must be three inputs upon which the result is based, but as was the situation
in Morse at 113, “it matters not by what process or machinery the result,”
here calculation and assignment, “is accomplished.” Can these types of
nebulous statements, without more, really form a foundation on which
Appellant “demonstrates possession” of the claimed subject matter? Like the
Examiner, I think not.
Williamson, cited by the majority, stands for the proposition that in
the absence of sufficient structure in the claim for performing a recited
function, a limitation that does not employ the literal term “means” may be
construed under § 112(f), and further, if the Specification also lacks
sufficient corresponding structure then the claim will be held invalid for
indefiniteness under § 112(b). Automotive Tech. Int’l demonstrates that a
Specification’s failure to disclose sufficient structure for performing recited
functions may cause a claim to be invalid for lack of enablement.
Appeal 2021-000844
Application 15/642,069
28
Considering the quid pro quo of the patent grant, it should not be surprising
that a failure to recite or disclose sufficient manipulative steps or structures
associated with a purported invention can run afoul of multiple provisions of
Title 35. However, neither Williamson nor Automotive Tech. Int’l stand for
the proposition that answering the question of “how and what is being used”
to achieve a result necessarily falls outside the scope of the written
description inquiry. The precise issue raised and addressed in Ariad itself,
which the majority relies on as support for the statement “[t]he written
description requirement is separate from the enablement requirement,” was
whether “the asserted claims are not supported by a written description
because the specification of the . . . patent fails to adequately disclose how
the claimed reduction of NF-êB activity is achieved.” Ariad at 1354
(emphasis added). The question of “how and what is being used” to achieve
a result is clearly relevant to the written description inquiry.9 In Ariad the
court repeatedly cautioned against claims reciting broad genera including
anything directed to achieving a desired result, goal, or outcome, where
there was little or no disclosure of the specific processes or mechanisms for
achieving them. That is the case here. Claims 22 and 35 each cover any and
all ways a power management system can “automatically calculate and
assign priorities to electrical loads” based on the recited parameters without
actually disclosing any specific ones.

9 See also Ariad at 1359 (Newman J., additional views) (“[T]he overriding
policy of patent systems requires both written description and enablement,
and it is less critical to decide which statutory clause applies in a particular
case, than to assure that both requirements are met . . . As the court debates
the relationship between ‘written description’ and ‘enablement,’ let us not
lose sight of the purpose of Section 112.”)
Appeal 2021-000844
Application 15/642,069
29
Although the written description requirement is separate and distinct
from the enablement requirement, this does not mean that the absence of a
certain disclosure relevant to one is de facto irrelevant to the other. Lack of
enablement will, in many instances, give rise to a lack of written description.
See, e.g., LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336,
1345 (Fed. Cir. 2005) (“Those two requirements usually rise and fall
together.”). In other words, determining “how” a particular function is
achieved may be relevant to both teaching the skilled artisan how to make
and use the invention achieving that function, and to demonstrating that
applicants themselves possessed an invention achieving that function
commensurate in scope with what is claimed. As the court cautioned in
Ariad at 1352 “although written description and enablement often rise and
fall together, requiring a written description of the invention plays a vital
role in curtailing claims that do not require undue experimentation to make
and use, and thus satisfy enablement, but that have not been invented, and
thus cannot be described.” Appellant has not described any, or at the very
least has not described a sufficient number of ways, the recited calculating
and assigning is achieved. This shortcoming is not remedied by merely
repeating the recited goals in the Specification. “A claim does not become
more descriptive by its repetition.” Enzo Biochem, Inc. v. Gen-Probe Inc.,
323 F. 3d 956, 969 (Fed. Cir. 2002); see also MPEP §§ 2163(I)(A),
2163.03(V) and 2161.01(I).
If there is an actual reduction to practice or something is very well-
known or commercially available an express disclosure in the Specification
regarding exactly “how and what is being used” to achieve a recited result
may not be necessary. One could demonstrate possession with, for example,
Appeal 2021-000844
Application 15/642,069
30
detailed photographs or illustrations, experimental data, or an indication
where to obtain that subject matter. Ariad recognizes “invention” does not
necessarily require an actual reduction to practice. If the reduction to
practice is instead constructive, it seems clear that a disclosure containing
sufficient detail to demonstrate possession would likely, if not necessarily,
need to rely on describing “how” the results are achieved and/or precisely
“what is being used” to achieve them.
The USPTO’s published guidance on this subject is consistent with
this understanding of Ariad. See “Examining Computer-Implemented
Functional Claim Limitations for Compliance With 35 U.S.C. 112.” 84 Fed.
Reg. 57 (Jan. 7, 2019) (“112 Guidance”) (discussing, inter alia, Ariad). The
112 Guidance reaffirmed the familiar principles and framework articulated
in, in particular, MPEP §§ 2161.01(I). 112 Guidance at 61–62. The
USPTO’s 112 Guidance makes clear that, consistent with Ariad:
It is not enough that one skilled in the art could theoretically write
a program to achieve the claimed function, rather the
specification itself must explain how the claimed function is
achieved to demonstrate that the applicant had possession of it.
. . .
If the specification does not provide a disclosure of the computer
and algorithm(s) in sufficient detail to demonstrate to one of
ordinary skill in the art that the inventor possessed the invention
that achieves the claimed result, a rejection under 35 U.S.C.
112(a) for lack of written description must be made
112 Guidance at 62 (emphasis added).
The majority sidesteps an analysis of this nature stating:
Although a specific example or perhaps an algorithm might have
been helpful, we take into account the maturity of technology in
the aviation and electrical power management industries. The
passages of the Specification cited by Appellant at page 19 of the
Appeal 2021-000844
Application 15/642,069
31
Appeal Brief provides enough disclosure to demonstrate
possession of the invention. Appeal Br. 19. More particularly
with respect to the maturity of technology, we note that each of
the Examiner’s four prior art references relied on in Section 103
grounds of rejection, are derived from the aviation (Calvignac,
Peverill, Duggan) and electrical power (Rivers) industries.
Appellant’s disclosure demonstrates possession of its invention
at a level that is roughly in keeping with that of the prior art of
record. Compare, e.g., Appellant’s Figure 2, Calvignac, Fig. 3.
The majority appears to agree there is no algorithm disclosed. Like
Appellant the majority does not provide any detailed analysis regarding the
paragraphs from the Specification reproduced in Appellant’s brief. I am
unable to discern the precise facts relied upon by the majority in the
discussion above concerning “the maturity of technology.” As far as I can
tell, the majority appears to rely on some combination of its own knowledge
and aspects of the prior art cited in the Examiner’s obviousness rejections.
The majority’s analysis is flawed for several reasons.
First, in other contexts our reviewing court has cautioned against PTO
personnel relying on official notice for facts not capable of instant and
unquestionable verification and/or personal knowledge without supplying
refutable evidence in the form of an affidavit for the evidentiary record. See,
e.g., In re Beasley, 117 Fed.Appx. 739, 744 (Fed. Cir. 2004) (citing In re
Ahlert, 424 F.2d 1088, 1091 (CCPA 1970)). As our factual determinations
should be expressly stated and based on evidence in the record,10 I see no
reason why similar standards and requirements should not apply in the
context of an analysis under § 112(a). Second, the only specific citation by
the majority appears to be a comparison between Appellant’s Figure 2 and

10 In re Zurko, 258 F. 3d 1379 (Fed. Cir. 2001)
Appeal 2021-000844
Application 15/642,069
32
Calvignac’s Figure 3, presumably to show that in both figures the power
management calculation aspects were illustrated with simple boxes.
However, figures alone are not necessarily indicative of what Calvignac
actually describes in relation to those figures, or for what subject matter
Calvignac provides descriptive support in accordance with the requirements
of § 112(a). The majority provides no further discussion on that subject.
Third, and perhaps most importantly, regardless of what the majority
purports to know or what the references cited in the prior art rejection
describe, it is not the role of the judges of this board to act as expert
witnesses or advocates for Appellant. That responsibility rests squarely with
Appellant. Hyatt v. Dudas, 492 F.3d at 1369–71; MPEP § 2163(I)(B).
If Appellant wished to make of record evidence indicating that the
calculating and assigning aspects of claims 22 and 35 were so well-known
that they need not be expressly described in greater detail in Appellant’s
own Specification Appellant has had every opportunity to do so. Instead, and
to the contrary, Appellant vehemently challenges the conclusion that this
very subject matter is even rendered obvious by the cited prior art. Appeal
Br. 6 et seq. Although the panel unanimously affirms the obviousness
rejection of claims 22 and 35 this should not be regarded as a de facto
determination that Appellant’s disclosure contains a written description
sufficient to support the subject matter of these claims under § 112(a): there
are subtle but important differences in the standards involved in each
inquiry. Vas-Cath Inc. v. Mahurkar, 935 F. 2d 1555, 1562 (Fed Cir. 1991)
(citing In re Lukach, 442 F.2d 967 (CCPA 1971)) (“the description of a
single embodiment of broadly claimed subject matter constitutes a
description of the invention for anticipation purposes . . . whereas the same
Appeal 2021-000844
Application 15/642,069
33
information in a specification might not alone be enough to provide a
description of that invention for purposes of adequate disclosure”).
Furthermore, it is well-settled that “[a] description that merely renders the
invention obvious does not satisfy the [written description] requirement.”
Ariad., 598 F.3d at 1352. To the extent the majority relies on the
obviousness analysis to demonstrate descriptive support, such reasoning
strays even a step further removed from that principle. Although one may
rely on that which is common knowledge in the art, what is common
knowledge is not necessarily demonstrated by an obviousness analysis, and
ultimately, it is Appellant’s disclosure that must satisfy the written
description requirement. Where Appellant relies on common knowledge in
place of express disclosure it is Appellant’s burden to supply evidence to
establish this.
Neither Appellant’s disclosure nor any evidence of record adequately
demonstrates Appellant was in possession of subject matter commensurate
in scope with either of claims 22 or 35.

Conclusion
Whether viewed through the lens of § 101 or § 112(a) of Title 35 the
underlying problem with claims 22 and 35 is their preemptive effect. These
claims constitute an attempt to cover any type of calculation and assignment
of priorities that is based on three very fundamental factors associated with a
vehicular environment: a mission parameter, available energy of a power
source, and power requirements of subsystems. The claims may indicate that
the system and method are used in a UAV. However, that constitutes a
drafting effort to include a particular technological environment for purposes
Appeal 2021-000844
Application 15/642,069
34
of § 101, and does not materially affect the question of descriptive support
for the limitation for which clarification was sought under § 112(a).
We cannot know what the future holds for vehicular power
management systems, electrical, airborne, or otherwise. Some future
inventor may invent a device or process to calculate and assign priorities to
various electrical loads using these same basic parameters, with or without
additional parameters. That inventor may devise better systems and methods
to obtain the data, better systems and methods to process it, and better
systems and methods to apply the results of their analysis. The problem is,
no matter how sophisticated or innovative the systems or techniques
employed by some future inventor are, no matter how far afield from
Appellant’s disclosure here, that future inventor could not practice their
invention, nor the public have the benefit of it, without the permission of
Appellant.
Section 112(a) acts to guard against claims that seek exclusive right to
subject matter beyond that for which an applicant’s specification adequately
demonstrated possession. Section 101 operates to guard against claims that
are so abstract and sweeping they would effectively monopolize basic tools
of scientific and technological work. Sections 101 and 112(a) are both
important tools to invalidate or reject overly preemptive claims regardless of
whether those claims may also fail to meet the requirements of 35
U.S.C. § 103. Although I join in the majority’s decision to affirm the
rejections under § 103, I respectfully dissent from the majority’s decision to
reverse the rejections under §§ 101 and 112(a).