Ex Parte Ahn et alDownload PDFPatent Trials and Appeals BoardJun 21, 201914498707 - (D) (P.T.A.B. Jun. 21, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/498,707 09/26/2014 75739 7590 06/25/2019 RYAN, MASON & LEWIS, LLP 2425 Post Road Suite 204 Southport, CT 06890 FIRST NAMED INVENTOR Hyung-il Ahn 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ARC920140047US1 9015 EXAMINER THOMAS, ANA D ART UNIT PAPER NUMBER 3661 NOTIFICATION DATE DELIVERY MODE 06/25/2019 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): CTOFFICE@RML-LA W.COM kmm@rml-law.com mjc@rml-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HYUNG-IL AHN, MATTHEW DENESUK, AXEL HOCHSTEIN, and YING TAT LEUNG Appeal2018-003971 Application 14/498,707 Technology Center 3600 Before MICHAEL L. HOELTER, JEFFREY A. STEPHENS, and NATHAN A. ENGELS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) from the Examiner's Final Office Action (Mar. 24, 2017) ("Final Act.") rejecting claims 1-20. 2 We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we are not informed of error in the rejection of claims 1-20 under 35 U.S.C. § 101. Accordingly, we AFFIRM. 1 Appellant is the Applicant, International Business Machines Corp., identified in the Appeal Brief as the real party in interest. Br. 2. 2 The Final Office action is supplemented by additional explanation in an Advisory Action (July 6, 2017). Appeal2018-003971 Application 14/498,707 Claimed Subject Matter The claimed subject matter relates to "techniques to generate robust estimates of failure risk for high-dimensional and low sample size data," which may be useful in condition-based maintenance for machinery. Spec. 1:10-19. Claims 1 and 12-14 are independent. Claim 1, reproduced below, illustrates the claimed subject matter. 1. A method comprising the following steps: (a) splitting a first input time series comprising multiple data points derived from a vehicular component across a fleet of multiple vehicles into multiple sub-time series, wherein each of the multiple sub-time series comprises a portion of the multiple data points in the first input time series; (b) generating, based on a full likelihood model fitting across the multiple data points in the first input time series, a first failure status predicting function of a first selected sub-time series from the multiple sub-time series that has the best fit to the multiple data points; ( c) deleting, from the first input time series, the portion of the multiple data points that corresponds to the first selected sub- time series, thereby generating a modified first input time series; ( d) generating, based on a full likelihood model fitting across the multiple data points in the modified first input time series, a first failure status predicting function of a second selected sub-time series from the multiple sub-time series that has the best fit to the multiple data points excluding the deleted portion; ( e) deleting, from the modified first input time series, the portion of the multiple data points that corresponds to the second selected sub-time series, thereby generating a further modified first input time series; ( f) generating, based on a partial likelihood model fitting across a given sub-set of the multiple data points in the first input time series, a second failure status predicting function of each 2 Appeal2018-003971 Application 14/498,707 selected sub-time series that has the best fit to the given sub-set of the multiple data points; (g) applying the second failure status predicting function of each selected sub-time series to a second input time series derived from the vehicular component to calculate multiple prediction of failure values for the second input time series; and (h) identifying the largest of the multiple prediction of failure values as an estimate of failure risk for the vehicular component; wherein the steps are carried out by at least one computing device. Rejections I. Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 3-8. 3 II. Claims 1-20 stand rejected under 35 U.S.C. § 103 as unpatentable over White (US 2003/0137194 Al, published July 24, 2003), Khalak (US 2010/0198771 Al, published Aug. 5, 2010), and Smith (US 2005/0065678 Al, published Mar. 24, 2005). Final Act. 9-22. DISCUSSION Rejection I - 35 U.S. C. § 1 OJ Appellant argues all independent claims together as a group. Br. 9- 17. We select claim 1 as representative, and decide the appeal of the 3 An additional basis on which claim 12 was rejected under 35 U.S.C. § 101, see Final Act. 8, appears to relate to an earlier version of claim 12, prior to an Amendment (Dec. 22, 2016) that added the term "non-transitory" in front of "computer readable storage medium" in the preamble of the claim. Absent further clarification from the Examiner, we consider this additional basis for rejection withdrawn. 3 Appeal2018-003971 Application 14/498,707 rejection of these claims on the basis of claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. Nonetheless, the Supreme Court has long interpreted§ 101 to include implicit exceptions: "Laws of nature, natural phenomena, and abstract ideas are not patentable." E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (internal quotation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo 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 Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). In Diamond v. Diehr, 450 U.S. 175 (1981), 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." 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 protection for that formula in the abstract ... is not accorded the 4 Appeal2018-003971 Application 14/498,707 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 Gottschalkv. Benson, 409 U.S. 63 (1972); Parker v. Flook, 437 U.S. 584 (1978)). The Court also indicated, however, that "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection." Id. at 187. If the claim is "directed to" an abstract idea, we then tum 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 (additional quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention." Id. The USPTO recently published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Revised Step 2A includes two prongs: Prong One: Evaluate whether the claim recites a judicial exception, i.e., a law of nature, a natural phenomenon, or subject matter within the groupings of abstract ideas enumerated in the Revised Guidance (i.e., mathematical concepts, certain methods of organizing human activity, and mental processes); and 5 Appeal2018-003971 Application 14/498,707 Prong Two: Evaluate whether the claim recites additional elements that integrate the judicial exception into a practical application (see, e.g., MPEP §§ 2106.05(a}-(c), (e}-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then consider Step 2B of the Revised Guidance, in which we look to whether the claim: (a) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or (b) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Revised Guidance. Claim 1 recites a process, one of the four statutory categories of invention in 35 U.S.C. § 101. The Examiner determines, however, that claims 1-20 recite a judicial exception because the claims are "directed to an abstract idea of processing data related to a method of generating a plurality of data sets based on a mathematical model to predict fault in a vehicle component[]." Final Act. 5. More particularly, for claim 1, the Examiner determines the claim "is directed to a method of splitting time-series for multiple data points into a sub-time series then generating a predictive vehicle component failure based on a mathematical model." Id. Appellant argues "the Examiner has oversimplified the collection of specific claim limitations as a whole," and argues the Examiner has not provided proper support for the determination that claim 1 is directed to an abstract idea. Br. 10-12. 6 Appeal2018-003971 Application 14/498,707 The Examiner responds that Appellant "omits stating that claims 1-20 are not directed to an abstract idea but instead attacks the structure of the rejection." Ans. 3. The Examiner explains how each step of claim 1 recites a mathematical relationship. Ans. 4--5. "Thus," the Examiner concludes, the claims are directed to "'Mathematical Relationships/ Formulas', which is an abstract idea under Alice/Mayo analysis at step 2A." Ans. 5. At Prong One of Step 2A of the Revised Guidance, we evaluate whether the claim recites a judicial exception. Claim 1 recites steps of "(a) splitting a first input time series ... into multiple sub-time series"; "(b) generating ... a first failure status predicting function of a first selected sub-time series"; "( c) deleting, from the first input time series, the portion of the multiple data points that corresponds to the first selected sub-time series"; "( d) generating ... a first failure status predicting function of a second selected sub-time series"; "( e) deleting, from the modified first input time series, the portion of the multiple data points that corresponds to the second selected sub-time series"; "(f) generating ... a second failure status predicting function of each selected sub-time series"; "(g) applying the second failure status predicting function of each selected sub-time series to a second input time series derived from the vehicular component to calculate multiple prediction of failure values for the second input time series"; and "(h) identifying the largest of the multiple prediction of failure values as an estimate of failure risk for the vehicular component." Each of these steps recites mathematical calculations, or concepts that may be performed in the human mind. For example, the "generating" steps of "(b) generating ... a first failure status predicting function of a first selected sub-time series," 7 Appeal2018-003971 Application 14/498,707 "( d) generating ... a first failure status predicting function of a second selected sub-time series," and "(f) generating ... a second failure status predicting function of each selected sub-time series" are mathematical calculations because they involve creating mathematical models that fit selected data. Similarly, the step of "(g) applying the second failure status predicting function of each selected sub-time series to a second input time series derived from the vehicular component to calculate multiple prediction of failure values for the second input time series" is a mathematical calculation because it involves applying a function to selected data "to calculate" prediction of failure values. The step of "(h) identifying the largest of the multiple prediction of failure values as an estimate of failure risk for the vehicular component" recites a mathematical calculation because it involves identifying the largest among multiple values. Accordingly, we conclude claim 1 recites mathematical calculations, which is one of the mathematical concepts identified in the Revised Guidance, and thus recites an abstract idea. 4 4 Bilski, 561 U.S. at 611 ("The concept of hedging ... reduced to a mathematical formula ... is an unpatentable abstract idea .... "); Diehr, 450 U.S. at 191 ("A mathematical formula as such is not accorded the protection of our patent laws .... ") (citing Benson, 409 U.S. 63); Flook, 437 U.S. at 594 ("[T]he discovery of [a mathematical formula] cannot support a patent unless there is some other inventive concept in its application."); Benson, 409 U.S. at 71-72 (concluding that permitting a patent on the claimed invention "would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself'); Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) ("[A] scientific truth, or the mathematical expression of it, is not patentable invention .... "); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a "series of mathematical calculations based on selected information" are directed to abstract ideas); Digitech Image Techs., LLC v. 8 Appeal2018-003971 Application 14/498,707 The remaining steps of the method of claim 1 recite concepts that may be performed in the human mind. For example, the step of"( a) splitting a first input time series ... into multiple sub-time series" is a concept that may be performed in the human mind because it merely identifies sub-groups of data among a larger group, in preparation for subsequent mathematical calculations to be performed using the data. The "deleting" steps, including "( c) deleting, from the first input time series, the portion of the multiple data points that corresponds to the first selected sub-time series" and "( e) deleting, from the modified first input time series, the portion of the multiple data points that corresponds to the second selected sub-time series," are also concepts that may be performed in the human mind because the steps merely require removing two of the sub-groups of data from the larger group. Identifying and storing ( or removing) information are functions that humans have always performed. See Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding ineligible claims "drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory" and stating: "The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions."). Accordingly, we conclude claim 1 recites concepts that may be performed in the human mind, which are mental Elecs.for Imaging, Inc., 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); Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012) (identifying the concept of "managing a stable value protected life insurance policy by performing calculations and manipulating the results" as an abstract idea). 9 Appeal2018-003971 Application 14/498,707 processes as identified in the Revised Guidance, and thus recites an abstract idea. To determine whether claim 1 is "directed to" an abstract idea, we proceed to Prong Two of Step 2A of the Revised Guidance, and consider whether the claim recites additional elements that integrate the judicial exception into a practical application. Here, claim 1 recites "wherein the steps are carried out by at least one computing device." The computing device is recited at a high level of generality, i.e., as a generic computing device performing generic computer functions of identifying and organizing data, and performing calculations using the data. The generic computing device recited in claim 1 amounts to no more than mere instructions to apply the mental processes and mathematical concepts using a generic computer. The claim, when considered as a whole, does not recite improvements to technology or computer functionality. Accordingly, limiting the mental processes and mathematical concepts to being carried out by a computing device does not integrate the abstract idea into a practical application because the limitation does not impose any meaningful limits on practicing the abstract idea. Thus, we agree with the Examiner that claim 1 is directed to an abstract idea. In this case, the analysis in Step 2B of the Revised Guidance shares overlapping considerations with the analysis in Step 2A, Prong Two. Mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A, or provide an inventive concept at Step 2B. Thus, we agree with the Examiner that claim 1 does not include any additional elements that amount to significantly more than the abstract idea itself. Final Act. 5-7. 10 Appeal2018-003971 Application 14/498,707 Appellant generally contends that "the claims recite a combination of elements sufficient to ensure that the claims are significantly more than the alleged abstract idea" because "the specific limitations of the claims constitute limitations other than what is well-understood, routine and conventional in the field." Br. 12-13. Appellant argues the Examiner "has focused on the vaguely phrased 'additional elements' of the claims, and then arbitrarily selected 'a processor, memory, a computer program product' as the only such 'additional elements' without any particular substantive rationale." Br. 14. Appellant contends that Step 2B of the Alice/Mayo framework does not separate claim limitations as being either abstract or not abstract. Rather Step 2B *assumes that the claims are directed to an abstract idea*, and then revisits the specifics of the claims - including the "specific limitations" therein - to determine [if] such specifics qualify as "significantly more" when recited in a claim that is generally directed to an abstract idea. Accordingly, ignoring all of the actively stated claim limitations as being "the abstract idea" merely because the claim itself has generally been alleged to be "directed to" an abstract idea, is an incorrect application of the Supreme Court standard. Id. "Appellant asserts that a relevant and appropriate means of attempting to identify whether the claims include 'specific limitations' other than what is well-understood, routine and conventional in the field[] includes looking specifically to the actual claim *limitations* in comparison to an extensive collection of relevant prior art teachings." Id. Appellant thus directs attention to its arguments in connection with the rejection under 35 U.S.C. § 103 and asserts: if a set of "specific limitations" is not anticipated, taught, or even suggested by a field of available art, ( as Appellant asserts is the case with the instant claims) then the same set of "specific 11 Appeal2018-003971 Application 14/498,707 limitations" cannot plausibly be simultaneously argued as being "well-understood, routine and conventional in the field." Br. 15. In sum, Appellant argues that "a set of claims that are novel, non- obvious, and enabled should properly be deemed patent-eligible." Br. 16. Appellant's arguments do not inform us of error in the rejection. "The Supreme Court has ... consistently held that § 101 provides a basis for a patentability/validity determination that is independent of-and on an equal footing with-any other statutory patentability provision." BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1347 (Fed. Cir. 2016). Thus, even if a rejection under 35 U.S.C. § 103 is not sustained, this is not determinative of the outcome of the analysis under 35 U.S.C. § 101. As to the proper analysis under § 101, whether the recited abstract ideas are routinely performed does not inform whether the claims recite "other elements or a combination of elements, sometimes referred to as an 'inventive concept,' sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself," as required by Mayo, Alice, and the Revised Guidance. Mayo, 566 U.S. at 72- 73 ( emphasis added); Revised Guidance, 84 Fed. Reg. 50, 55 n.24 ("USPTO guidance uses the term 'additional elements' to refer to claim features, limitations, and/ or steps that are recited in the claim beyond the identified judicial exception."); see also BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018) ("At Alice step two, it is irrelevant whether considering historical usage information while inputting data may have been non-routine or unconventional as a factual matter. As a matter of law, narrowing or reformulating an abstract idea does not add 'significantly more' to it."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) ("[A] claim for a new abstract idea is still an 12 Appeal2018-003971 Application 14/498,707 abstract idea."). Requiring the mathematical calculations and mental processes recited in claim 1 to be "carried out by at least one computing device" does not ensure that the patent in practice amounts to significantly more than a patent upon the abstract ideas. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner's rejection of representative claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the rejection of independent claims 12-14, which are rejected on the same ground and not argued separately. Appellant argues the Examiner's explanation as to the dependent claims rejected under 35 U.S.C. § 101 with the independent claims does not provide sufficient notice under 35 U.S.C. § 132. Br. 17. Considering the Examiner's explanation, Final Act. 8, and the limitations of the dependent claims in this case, we determine that Appellant was on notice as to the basis of the Examiner's rejection. On appeal, Appellant does not explain how any specific limitation in the dependent claims provides a separate basis for patent eligibility, and, therefore, does not inform us of error in the rejection of the dependent claims under 35 U.S.C. § 101. Rejection II - 35 U.S. C. § 103 Claims 1-20 Claim 1 includes multiple "deleting" steps in which portions of the multiple data points that correspond to a first and second selected sub-time series are deleted to generate a modified input time series. In rejecting claim 1, the Examiner finds Khalak is silent as to removing a portion of the multiple data points that correspond to the first and second time series, but 13 Appeal2018-003971 Application 14/498,707 that Smith teaches the limitation. Final Act. 11. For support, the Examiner cites paragraph 128 of Smith, which refers to "removal of other functionality based on the desired behavior of the vehicle-interaction system." Paragraph 128 of Smith describes a software framework that may include one or more functional modules that "allow the addition of new algorithms or removal of other functionality." Smith ,r 128. We agree with Appellant that Smith is not referring to removing time-series data from a data set to generate a new data set. Br. 24--25. The Examiner's stated reason for modifying White and Khalak in view of Smith does not address the difference between removing functionality from software and removing data from a data series, and thus does not address the reason why one of ordinary skill in the art would have combined the teachings in a way that would result in performing the steps recited in claim 1. See Final Act. 12 ("It would have been obvious to modify the invention White in view of Khalak with the teachings of Smith because integrated vehicle diagnostic an information system would provide the methods for diagnosing the faults on a fleet of vehicles (i-f 30-32)."). In view of the foregoing, we do not sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 103 as unpatentable over White, Khalak, and Smith. The rejection of independent claims 12-14, and of dependent claims 2-11 and 15-20 suffer from the same deficiency. Thus, we do not sustain the rejection of claims 2-20 under 35 U.S.C. § 103 for the same reason. DECISION We affirm the Examiner's decision to reject claims 1-20 under 35 U.S.C. § 101. 14 Appeal2018-003971 Application 14/498,707 We reverse the Examiner's decision to reject claims 1-20 under 35 U.S.C. § 103. 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)(l )(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation