YANG, YI et al.

Patent Trials and Appeals Board

Nov 1, 2019

14525354 - (D) (P.T.A.B. Nov. 1, 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.
14/525,354 10/28/2014 YI YANG 14-NRG-090 8864
101730 7590 11/01/2019
ECKERT SEAMANS CHERIN & MELLOTT, LLC
EATON CORPORATION
600 GRANT STREET
44TH FLOOR
PITTSBURGH, PA 15219
EXAMINER
RIVERA VARGAS, MANUEL A
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
11/01/2019 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):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YI YANG, MAYURA ARUN MADANE, and PRACHI SURESH
ZAMBARE
Appeal 2019-001010
Application 14/525,354
Technology Center 2800
Before BEVERLY A. FRANKLIN, BRIAN D. RANGE, and LILAN REN,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–11, and 13–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Eaton
Corporation. Appeal Br. 2.
Appeal 2019-001010
Application 14/525,354

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to systems for
characterizing and identifying operating modes of electric loads. Spec. 1:9–
12. Claim 1 is illustrative:
1. A system to characterize and identify one of a plurality of
different operating modes of a number of electric loads, said
system comprising:
a processor;
a sensor providing a voltage signal for one of said
electric loads to said processor;
a current sensor providing a current signal for said one of
said electric loads to said processor; and
a routine executed by said processor and structured to
characterize said different operating modes using steady state
and voltage-current trajectory features determined from said
voltage and current signals, and to identify a particular one of
said different operating modes based on a plurality of operating
mode membership functions of said steady state and voltage-
current trajectory features,
wherein said different operating modes comprise a no
load mode, a parasitic mode, an active mode, and a standby
mode.

2 In this Decision, we refer to the Final Office Action dated November 17,
2017 (“Final Act.”), the Appeal Brief filed March 16, 2018 (“Appeal Br.”),
the Examiner’s Answer dated September 14, 2018 (“Ans.”), and the Reply
Brief filed November 14, 2018 (“Reply Br.”).
Appeal 2019-001010
Application 14/525,354

3
REJECTION
The Examiner maintains the rejection of claims 1, 3–11, and 13–20
under 35 U.S.C. § 101 as directed to unpatentable subject matter. Final Act.
2; Ans. 3.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant does not argue any claims separately. We therefore
limit our discussion to claim 1. All remaining claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2013).
A. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. E.g., Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
Appeal 2019-001010
Application 14/525,354

4
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See id. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
India rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56
U.S. (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409
U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
Appeal 2019-001010
Application 14/525,354

5
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
The PTO has published revised guidance on the application of § 101.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (USPTO Jan. 7, 2019) (“Guidance”). According to 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 activities such as a fundamental economic practice, or mental
processes); and
Appeal 2019-001010
Application 14/525,354

6
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)-(c), (e)-(h) (9th ed.
Rev. 08.2017, Jan. 2018)).
If a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, the Guidance looks 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 56; see also, e.g., Ex parte Kimizuka, Appeal
2018-001081 (July 1, 2019) (informative).
B. The Examiner’s Rejection
The Examiner determines that claim 1 is directed to a judicial
exception: an abstract idea. Final Act. 2–3. In particular, the Examiner
determines that claim 1 is directed to “characterizing said different operating
modes using steady state and voltage-current trajectory features determined
from said voltage and current signals, and to identify a particular one of said
different operating modes based on a plurality of operating mode
membership functions of said steady state and voltage-current trajectory
features.” Id. at 2 (emphasis removed). As further explained herein, this
“characterizing” is a mathematical operation. The Examiner determines that
the claims are similar to those our reviewing court has identified as abstract
ideas. Id. at 3 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
Appeal 2019-001010
Application 14/525,354

7
1366 (2011) and Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016)). The Examiner also determines that the claim does not
include any additional elements that amount to significantly more than the
abstract idea itself. Id. at 2.
C. Guidance Step 1: Does claim 1 fall within a statutory category?
Pursuant to 35 U.S.C. § 101 and consistent with Step 1 of the
Guidance, we first consider whether the claimed subject matter falls within
the four statutory categories explicitly set forth in § 101: “[p]rocess,
machine, manufacture, or composition of matter.” Guidance, 84 Fed. Reg.
at 53–54; see 35 U.S.C. § 101. Claim 1 recites a system having physical
components such as a processor and sensors and, thus, falls within the
“machine” category. Consequently, we proceed to the next step of the
analysis.
D. Guidance Step 2A Prong 1: Does the claim recite a judicial
exception?
Pursuant to the U.S. Supreme Court’s Mayo and Alice framework and
consistent with the next step of the Guidance, we consider whether the claim
recites a judicial exception. Guidance, 84 Fed. Reg. at 51. The Guidance
synthesizes the key concepts identified by the courts as abstract ideas into
three primary subject-matter groupings: mathematical concepts, certain
methods of organizing human activities (e.g., a fundamental economic
practice), and mental processes. Id. at 52. For the reasons discussed below,
claim 1 recites a mathematical formula or equation that fall in the
Guidance’s mathematical concepts grouping.
In particular, claim 1 recites “a routine executed by said processor and
structured to characterize said different operating modes using steady state
Appeal 2019-001010
Application 14/525,354

8
and voltage-current trajectory features determined from said voltage and
current signals, and to identify a particular one of said different operating
modes based on a plurality of operating mode membership functions of
said steady state and voltage-current trajectory features.” Appeal Br. 12
(Claims App.) (emphasis added). The recited “membership functions” are
mathematic relationships or formulas that calculate whether signal data
corresponds to one of the recited operating modes (“wherein said different
operating modes comprise a no load mode, a parasitic mode, an active mode,
and a standby mode”). In other words, the recited phrase quoted above is a
textual replacement for mathematic equations. The Specification provides
an example of a “sigmoid member function f(),” and we reproduce that
example function below.

Spec. 12:3–16. The mathematic function reproduced above is Equation 4 of
the Specification. The Specification indicates that the sigmoid membership
function depends on values of α, ß, and x where α is “the center of the
sigmoid function for the selected feature,” ß is “the width of the sigmoid
function for the selected feature,” and x is “the test data point of the selected
feature.” Id.
Because claim 1 recites a mathematical formula or equation, the claim
recites a concept that falls within the Guidance’s mathematical operation
grouping and thus recites an abstract idea. Guidance, 84 Fed. Reg. at 52 n.
12, 14, and 15.
Appeal 2019-001010
Application 14/525,354

9
E. Guidance Step 2A Prong 2: Is the claim “directed to” the recited
judicial exception?
Because claim 1 recites an abstract idea, we now determine, pursuant
to the precedent of the U.S. Supreme Court and our reviewing court and
consistent with the Guidance, whether the recited judicial exception is
integrated into a practical application. Guidance, 84 Fed. Reg. at 51.
According to the Guidance, when a claim recites a judicial exception and
fails to integrate the exception into a practical application, the claim is
“directed to” the judicial exception. Id.
The claim may integrate the judicial exception when, for example, it
reflects an improvement to technology or a technical field. Id. at 55. Here,
Appellant argues that claim 1 improves existing functions and methods and
that prior methods of identifying operating modes of loads “suffer from
disadvantages in terms of accuracy, robustness, and applicability, and do not
differentiate between a parasitic mode or low power mode.” Appeal Br. 7–
10.
Here, the Examiner determines that claim 1 is directed to the abstract
idea characterizing different operating modes using steady state and voltage-
current trajectory features determined from said voltage and current signals
and identifying a particular one of said different operating modes based on a
plurality of operating mode membership functions of said steady state and
voltage-current trajectory features. Final Act. 2. The identification of
operating mode is performed using a mathematical operation—a
membership function. As explained above, the membership function is a
mathematical formula or equation and is abstract.
Appeal 2019-001010
Application 14/525,354

10
Appellant’s argument that claim 1 is directed to a technological
improvement rather than an abstract idea (Appeal Br. 6–8) is not persuasive
for three reasons. First, and perhaps most importantly, to the extent claim 1
provides any improvement, the improvement is only in the abstract idea (use
of mathematic member functions). Ans. 4; see also infra. Appellant does
not argue that claim 1’s sensors or processor recitations represent an
improvement; rather, the alleged improvement is in the recited mathematic
“routine.” Second, Appellant does not persuasively explain why or how
claim 1 provides an improvement over existing technology and does not
provide evidence of improvement. See Spec. 1:8–3:17 (identifying prior
methods for identifying electric load). Third, claim 1 collects information
and performs a calculation with the information. The claim does not use the
information in any way and does not use the information to improve any
device.
Claim 1 is distinguishable from technology-based integrations
addressed by our reviewing court. See, e.g., Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1337 (Fed. Cir. 2016) (holding that patent-eligible claim was
directed to self-referential table to improve computer databases); McRO, Inc.
v. Bandai Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016) (explaining
that patent-eligible claim focused on specific asserted improvement in
computer animation), cited in Appeal Br. 6, 8–9; Reply Br. 2–3. Claim 1,
instead, is more akin to claims our reviewing court has held are not patent-
eligible. See, e.g., Digitech Image Techs., LLC, 758 F.3d 1344, 1350 (Fed.
Cir. 2014) (holding that claims to a “process of organizing information
through mathematical correlations” are directed to an abstract idea even
though the patentee argued that use of calculated profile would be useful for
Appeal 2019-001010
Application 14/525,354

11
capturing, transforming, or rendering a digital image); SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (holding claims patent eligible and
distinguishing McRO where claims were directed to “a mathematical
technique with no improved display mechanism”); see also ChargePoint,
Inc. v. SemaConnect, Inc., 920 F.3d 759, 773 (Fed. Cir. 2019) (holding that
claims were patent ineligible where claims were “directed to the abstract
idea of communicating over a network for device interaction”).
Claim 1 also recites “a processor,” “a sensor providing a voltage
signal for one of said electric loads to said processor,” and “a current sensor
providing a current signal for said one of said electric loads to said
processor.” Appeal Br. 12 (Claims App.). The Examiner finds that claim
1’s processor and sensors are well known in the art and cites evidence to
support the finding. Ans. 3. Appellant does not persuasively refute the
Examiner’s evidence. Claim 1 recites the “processor” and “sensor[s]” in a
broad functional manner, and the Specification does not further limit the
processor or sensors. Rather, the Specification defines “processor” broadly
and generically. Spec. 5:20–24. Similarly, the Specification lacks technical
detail as to how the recited sensors operate. See, e.g., Spec. 15:5–21
(referencing sensors but not referencing how the sensors work). Mere data
gathering or use of a physical data gathering device does not necessarily
render an otherwise patent-ineligible claim eligible. See, e.g., Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d
1343, 1348 (Fed. Cir. 2014) (holding that use of generic computer and
scanner did not make claim patent eligible); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (explaining that
Appeal 2019-001010
Application 14/525,354

12
obtaining transaction data for later verification was insufficient to render the
claim eligible in that case).
We further note that the Guidance identifies various indicia of
integration, and claim 1 does not include these indicia. 84 Fed. Reg. at 55.
For example, “[t]ransformation and reduction of an article ‘to a different
state or thing’ is the clue to the patentability of a process claim that does not
include particular machines.” Bilski, 561 U.S. at 604 (emphasis added),
quoted in MPEP § 2106.05(c). Yet “not all transformations . . . infuse an
otherwise ineligible claim with an ‘inventive concept.’” DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Claim 1
does not transform any physical object or substance. The claim is thus
distinguishable from claims that courts have determined were patent eligible
because of transformation. See, e.g., Diehr, 450 U.S. at 184 (holding that
claims directed to process that transforms rubber were patent eligible).
Appellant emphasizes that claim 1 is directed to a novel and improved
method of identifying operating statuses of loads. Appeal Br. 6–7; Reply Br.
2–3. Appellant further argues that the Federal Circuit’s explanation of its
McRO decision in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089
(Fed. Cir. 2016) favors patent eligibility where claims improve an existing
technological process. Appeal Br. 6–7.
We do not agree with Appellant’s view of FairWarning.
FairWarning holds that the claims at issue there were directed to the abstract
idea of “collecting and analyzing information to detect misuse and notifying
a user when misuse is detected.” FairWarning IP, 839 F.3d at 1094. The
decision emphasizes that, while that the claims at issue recited rules and the
patent eligible claims of McRO also recited rules, McRO’s claims provided
Appeal 2019-001010
Application 14/525,354

13
“a specific asserted improvement in computer animation.” Id. at 1094. The
FairWarning claims, in contrast, were “not directed to an improvement in
the way computers operate.” Id. at 1095.
Here, claim 1 is more similar to the patent ineligible claims of
FairWarning than the patent eligible claims of McRO. In particular, like the
claims in FairWarning, claim 1 does not improve how a computer operates.
Rather, claim 1 provides, at most, an improved mathematic process. Our
reviewing court has consistently held that “[a] claim for a new abstract idea
is still an abstract idea,” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016), and we see no inconsistency in FairWarning’s
holding.
On this record, claim 1 is directed to the identified abstract idea. See
Final Act. 2–3.
F. Guidance Step 2B: Does the claim provide an inventive concept?
Pursuant to the second step of the Mayo/Alice test and consistent with
the Guidance, we next determine whether a claim provides an inventive
concept, additional elements (i.e., claim recitations beyond the identified
patent ineligible subject matter) are considered both individually and in
combination with the claim as a whole to determine whether the elements
(1) add a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field or (2) simply append well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 56. Also, we reevaluate our conclusions about the
additional elements discussed in the previous step. Id.
Appeal 2019-001010
Application 14/525,354

14
Here, as explained above, the Examiner finds that the recited
processor and sensors are well understood and conventional and provides
evidence supporting this point. Ans. 4–6. Claim 1, as a whole, combines
conventional equipment with what is, at most, a new mathematical concept.
In this circumstance, the claim does not provide additional elements that
provide an inventive concept.
Appellant argues that claim 1 does “not pre-empt all methods of
identifying operating loads” and instead recites “a particular solution for
solving the problem of accurately identifying operating modes of loads in a
particular, sufficiently concrete, way.” Appeal Br. 8 (internal quotation
marks omitted). As explained above, however, the “solution” and “way”
Appellant refers to is math that does not extend beyond the judicial
exception explained above. The gathering of data is claimed (and explained
in the Specification) at a high level of generality, and Appellant does not
persuasively dispute that claim 1’s processor or sensors are not well-
understood, routine, and conventional activity. See Spec. 1:13–3:17
(referring to various prior art systems and methods that also measure current
and voltage).
Moreover, while broad preemption of practical uses of a patent-
eligible concept “may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Here, while claim 1 may not preempt every method of identifying an
operating mode of loads, the claim, as a practical matter, preempts any use
of a mathematic membership function as recited to identify a no load mode,
Appeal 2019-001010
Application 14/525,354

15
parasitic mode, active mode, or standby mode. As such, preemption weighs
in favor of unpatentability in this instance.
On this record, claim 1’s limitations—considered individually and in
combination—do not provide an inventive concept. Final Act. 2–3; Ans. 3–
5. Because Appellant’s arguments do not establish Examiner error, we
sustain the Examiner’s rejection.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–11, 13–
20
101 Eligibility 1, 3–11,
13–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED