Ex Parte Li et al

Patent Trial and Appeal Board

Mar 6, 2019

14015241 (P.T.A.B. Mar. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/015,241 08/30/2013
28866 7590 03/08/2019
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
YonghuaLi
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.
83382899 6469
EXAMINER
KUAN, JOHN CHUNY ANG
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
03/08/2019 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):
MST@mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YONGHUA LI and XU WANG 1
Appeal2017-010229
Application 14/015,241
Technology Center 2800
Before BEYERL YA. FRANKLIN, RAEL YNN P. GUEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20 under 35 U.S.C. § 101, as claiming ineligible
subject matter. 2 See Examiner's Final Office Action, dated July 13, 2016
("Final Act."); Examiner's Answer, dated May 30, 2017 ("Ans."). We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appellant/ Applicant in this case is the real party in interest Ford
Global Technologies LLC. See Appellant's Appeal Brief 1, filed April 13,
2017 ("Appeal Br.").
2 The Examiner has expressly stated that the claims distinguish over the
closest prior art of record. Final Act. 6-7.
Appeal2017-010229
Application 14/015,241
Appellant's invention is related to a method for determining
equivalent circuit model parameters for modeling of a battery circuit when
estimating battery power capability in a vehicle, particularly an electric or
hybrid electric vehicle. Specification ,r,r 1-2 ("Spec."). In particular, the
invention is described as calculating the model parameters "using an optimal
data fitting process, which may employ, for example, an extended Kalman
filter (EKF)." Spec. ,r 2. The Specification explains that a concern with
using EKF as an optimal data fitting process in determining circuit model
parameters is "that the estimated values for the parameters are based on data
fitting from measurement data," which "can lead to model mismatch, as well
as being corrupted by sensor biases or measurement noises in the
measurement data" and "biased estimation of the parameters." Id. The
Specification states that the recited battery equivalent circuit model based on
battery temperature or state-of-charge (SOC) measurements, which are
properly limited in an EKF, "allows for erroneous estimations to be
corrected, with the EKF converging to relatively accurate values for the
circuit model parameters, with desired speed." Id. ,r 8.
Independent claim 1 is exemplary of the subject matter on appeal and
is reproduced below:
1. A method comprising:
employing a battery circuit model, including a first resistance (rl)
in series with a second resistance ( r2) and a capacitance ( C) in
parallel;
measuring battery temperature;
setting upper and lower limits for rl, r2 and C based on the
temperature;
determining a battery power capability by applying an Extended-
Kalman-Filter to determine rl, r2 and C within the set limits;
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a controller controlling operation of a battery based on the battery
power capability
Br. 18, Claim App 'x. Claims 1 and 9 are independent claims directed to a
"method," namely a method of employing a battery circuit model. Claim 9
differs from claim 1 only in that the claim 1 recites "measuring battery
temperature" and setting the model parameters "based on the temperature,"
while claim 9 recites "measuring battery state-of-charge" and setting the
model parameters "based on the state-of-charge." Claim 18, however, is
directed to "An electric vehicle," comprising (1) a battery, and (2) a
controller estimating battery power capability by applying a battery circuit
model.
II. DISCUSSION
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, 107 5 (BP AI 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.")).
The Examiner rejects claims 1-20 under pre-AIA 35 U.S.C. § 101 as
being directed to a judicial exception, namely an abstract idea of
mathematical relations and/or algorithms, without significantly more. Final
Act. 2.
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
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Application 14/015,241
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 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
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.").
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, 69 (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 182 n.7 (quoting Corning v. Burden, 56 U.S.
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
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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
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 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 (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. (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 recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019, Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
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( 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 § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP §
2106.0S(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 Memorandum.
We have considered the Examiner's findings and the Appellant's
arguments and are not persuaded the Examiner erred in rejection the claims
under 35 U.S.C. § 101.
Under the guidance, in the first step (1) of our analysis, we consider
whether the Examiner erred in determining that the claims recite a judicial
exception. With respect to the method claims 1 and 9, the Examiner finds
that the steps of employing a battery circuit model, setting upper and lower
limits for the model's parameters based on the battery temperature, and
determining a battery power capability by applying an EKF to determine the
model's parameters within set limits are "limitations [] about organizing data
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through mathematical correlations or algorithms, similar to the concepts
found abstract previously by the courts." Final. Act. 2, 3--4 (citing Benson,
409 U.S. at 67, Parker v. Flook, 437 U.S. at 594 (1978), Diehr, 450 U.S. at
188 (1981), In re Grams, 888 F.2d 835 (Fed. Cir. 1989), and Digitech Image
Tech., LLC v. Electronics for Imaging, Inc. (758 F.3d 1344) (Fed. Cir.
2014)). Similarly, with respect to vehicle claim 18, the Examiner finds that
the functional limitations are mathematical correlations or algorithms. Id.
at 4.
Appellant does not dispute the Examiner's finding that the claims
recite a judicial exception. See e.g., Appeal Br. 8 ("The mere fact that
mathematical formulas and a battery circuit model are employed during this
process does not change the overall method in claim 1 to an abstract idea.").
Rather, Appellant argues that the claims as a whole are not directed to a
judicial exception but that the claim elements amount to significantly more
than an abstract idea. See e.g., Appeal Br. 8-9. According we agree with
the Examiner that the claims recite an abstract idea, namely mathematical
concepts, including a battery model and EKF, which is a method of
mathematically manipulating varying data to converge the data to an
estimated value. See Spec. ,r 18 ("EKF is a method of nonlinear state
estimation.").
We next tum to the second step (2) of determining whether additional
elements that integrate the judicial exception into a practical application.
The Examiner finds that the additional elements, namely the steps of
measuring battery temperature, and a controller controlling the battery
operation based on the modeled battery power capability, are not sufficient
to amount to significantly more than the judicial exception because they "are
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Application 14/015,241
recited at a high level of generality, necessary, routine, or conventional to
facilitate the application of the abstract idea." Final Act. 3, 4 (citing e.g.,
Alice). Similarly, with respect to vehicle claim 18, the Examiner finds that
the additional functional limitation of adjusting vehicle electric operations,
are not sufficient to amount to significantly more than the judicial exception
because they "are recited at a high level of generality, necessary, routine, or
conventional to facilitate the application of the abstract idea." Final Act. 4--
5.
Appellant argues that the claim as whole is directed to an
"improvement to another technology-that is, improvement to battery
operation itself by being [able] to accurately determine the battery's power
capability, with this power capability significant because the controller
controls the battery operation based upon this determination in order to
avoid any deleterious effects on the battery." Reply Br. 5---6. Appellant
argues that the temperature measurement "is needed to achieve precise
control of operation of the battery" because the measurement is used to set
the model parameter limits "without which the battery power capability
being accurately determined by the EKF may be inaccurate ... causing the
operation of the battery to be based on incorrect battery power capability."
Appeal Br. 9.
In order to show that the invention is an improvement in battery
operation, the disclosure must provide sufficient details such that one of
ordinary skill in the art would recognize the claimed invention as providing
an improvement. Compare McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314--16 (Fed. Cir. 2016) (the specification explained how
the particular rules recited in the claim enabled the automation of specific
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animation tasks), with Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253,
1264---65 (Fed. Cir. 2016) (the specification failed to provide details
regarding the manner in which the invention accomplished the alleged
improvement); see MPEP § 2016.05(a).
We disagree with Appellant that the invention describes "precise
control of operation of the battery" or any specific improvement in the
operation of the battery given a more accurate model for battery power
capability, as argued. The Specification lacks any description or evidence as
to how the battery operation or vehicle operation is improved, or even
necessarily controlled, based on the battery power estimation. Rather, the
Specification describes applying the battery power capability estimation
only in a general non-specific way. See Spec. ,r 38 ("The battery power
capability may be, for example, displayed to a vehicle driver, may be used to
adjust, control or regulate vehicle operations based on the estimated battery
power capability, or both."). Thus, the Specification lacks sufficient detail
to find that the claimed invention improves battery operations as argued by
Appellant.
Similarly, the claims reflect no improvement in battery operation,
either specifically or generally. Compare Enfish, LLC v. Microsoft Corp.,
822 F.3d. 1327, 1332 (Fed. Cir. 2016) (the claim recited a specific data
structure which is described in the specification as improving the way
computers store and retrieve data from memory), with Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1315-1316 (Fed. Cir. 2016) (the
claims themselves did not have any limitations that addressed the alleged
improvement). The claims merely recite a general step of "controlling
operation of a battery" or "adjusting vehicle electric operations," and
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provide no specifics as to how to control or adjust operations to achieve any
actual improvement.
Appellant argues that the additional elements, namely the steps of
measuring battery temperature, and a controller controlling the battery
operation based on the modeled battery power capability ( claims 1 and 9), or
the particular recitations of a battery and a controller ( claim 18), apply the
judicial exception in a meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. Appeal Br. 8-9, 14--17. Appellant also asserts that the
controller controlling operation is "significant post solution activity" and not
'just a generalized output." Appeal Br. 9. Appellant argues that the abstract
idea is thus meaningfully linked to a particular technological environment
and does not seek to tie up a judicial exception such that others cannot
practice it. Id. IO.
The Examiner notes that the step of "measuring battery temperature"
is recited broadly and is "merely a data collection step." Ans. 6. The
Examiner notes the claim does not recite "the structure of the controller, the
mechanism for controlling the operation, or the kind of battery operations
that are controlled." Id.
We agree with the Examiner that the additional elements are so
broadly recited that they merely generally link the judicial exception to a
technological environment and that there is no significant extra-solution
(pre-solution or post-solution) activity to the judicial exception.
MPEP § 2106.0S(e}-(h). Further, we determine that the limitation "control
the battery operation with a controller" to be little more than an equivalent of
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adding the words "apply it" to the judicial exception, i.e., the mere
instructions to implement the abstract idea on a computer. The claims do
not recite significantly more because the claimed method ( claims 1 and 9)
and claimed vehicle ( claim 18) use a particular machine-"a battery."
Additional elements that invoke machinery merely as a tool to perform an
existing process will generally not amount to significantly more than a
judicial exception. See, e.g., Versata Development Group v. SAP America,
793 F.3d 1306, 1335 (Fed. Cir. 2015).
In particular, we agree with the Examiner that the subject matter of
the claims most resembles that of Parker v. Flook, 437 U.S. 584 (1978). In
Flook, the claims were directed to updating alarm limits for a catalytic
conversion process and recited an initial step which merely measures the
present value of the process variable (e.g., the temperature); an intermediate
step which mathematically calculates an updated alarm-limit value; and a
final step in which the actual alarm limit is adjusted to the updated value. Id.
Unlike in our case, in which the preamble only recites "a method," the
preamble in Flook recited a field of use, namely a catalytic chemical
conversion, but did not meaningfully limit the steps recited in the claims.
Like the data collection step in Flook, the steps of measuring a battery
temperature and measuring a battery state of charge is mere data gathering,
and is described so generically with respect to any model that may be
employed that it does not amount to significantly more than the judicial
exception.
While the present claims, unlike in Flook, further include a post-
solution step of "controlling a battery operation" using a controller, this
limitation does not have any specificity to it or link to the model to render it
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more than insignificant post-solution activity. Unlike in Diamond v. Diehr,
450 U.S. 175 (1981), where the post-solution activity, namely controlling
the press is very specific with respect to designated outcomes of the
mathematical calculation, namely "to open when the comparison indicates
equivalence, meaning that the molded product is cured," the present claims
are too generic to constitute significantly more. See also Classen
Immunotherapies Inc. v. Biogen IDEC, 659 F.3d 1057, 1066-68 (Fed. Cir.
2011) (the immunization step, which only immunized where the analysis
step resulted in showing lower risk for chronic immune-mediated diseases,
was meaningful because it integrated the results of the analysis into a
specific and tangible method). Cf Electric Power Group, LLC v. Alstom,
S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (claiming a particular solution to
a problem or a particular way to achieve a desired outcome may provide
significantly more). The phrase "controlling operation of a battery based on
the battery power capability" does not inform how operation of a battery is
controlled. Is it turned on or off, is it cooled, is it just further monitored, is it
charged further, et cetera? Similarly, claims do not recite what aspect of the
battery power capability would trigger a controlling operation. What value
calculated by the model would trigger what specific controlling operation?
These details are neither recited in the claims nor described in the
Specification in any detail. See Spec. ,r 38.
Further, taking the claims as a whole and considering the steps of
measuring battery temperature and a controller controlling the battery
operation based on the modeled battery power capability in view of the
mathematical limitation that are judicial exceptions does not change our
analysis. The claims are not directed to more than applying the judicial
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exception in the most generic way to a generic battery. MPEP § 2106.05(±).
As in Mayo, where the steps merely required doctors to apply the judicial
exception in any generic manner that the doctor chose to do, in the present
case, the claims as a whole provide no guidance to the skilled artisan as to
how or when to apply the judicial exception merely because the judicial
exception is being applied in the context of a battery. Here, the presence of
a battery and/or a controller that "controls" the battery merely define the
field of use linked to the judicial exception. There is no description of
transforming the battery or any actual description of improving the battery.
See MPEP § 2106.0S(c).
Finally, we look to see if the additional elements, namely the steps of
measuring battery temperature and a controller controlling the battery
operation based on the modeled battery power capability are (3) more than
"well-known, routine, and conventional" so as to render the claim subject
matter eligible or ( 4) simply append "well-known, routine, and
conventional" elements, particularly at a high level of generality, to the
judicial exception. The Examiner determines that the additional elements
fall into the latter category (Ans. 6), and Appellant does dispute that they do
not. See generally Appeal Br.; Reply Br. Indeed, what the Examiner finds
novel and non-obvious is the use of the particular battery power capability
model (a mathematical equation) in combination with EKF (another
mathematical equation specifically for data manipulation). Final Act. 6-7.
The additional steps of taking a battery temperature measurement,
measuring a battery state of charge, and the non-specific limitation of
controlling battery operations with a controller are all well-known and
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conventional in the art. 3 Similarly, with respect to claim 18, a generic
electric vehicle and a generic controller are also well known and
conventional in the art.
IV. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the rejection maintained by the Examiner, namely the rejection of
claims 1-20 under pre-AIA 35 U.S.C. § 101 for claiming ineligible subject
matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
3 We note that claims 1 and 9 are directed to a generic "method" and recite a
"battery," but are not limited to a battery for an electric vehicle, or even a
vehicle battery at all. The scope of the claims applies to any battery in
existence that (1) has a temperature or state of charge and (2) could be
modeled by a model that includes a first resistance (rl) in series with a
second resistance (r2) and a capacitance (C) in parallel.
14