Ex Parte TOYAMA et al

Patent Trial and Appeal Board

Nov 29, 2018

14226925 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/226,925 03/27/2014
116 7590 12/03/2018
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Koji TOYAMA
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.
OBA-52468 1069
EXAMINER
ANDERSON, LYNNE D
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOJI TOY AMA, SATOSHI SUEHIRO, and
YOSHIHIRO NAKAYAMA
Appeal 2018-001319
Application 14/226,925
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL,
and DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1, 3-8, and 10 under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Mitsubishi Aircraft Corporation, which is also
identified as the real party in interest (Appeal Br. 2).
Appeal2018-001319
Application 14/226,925
THE INVENTION
Claim 1 reproduced below, is illustrative of the subject matter on
appeal:
1. A safety analysis system for wiring in a wiring structure in
which each of a plurality of electric wires belonging to a
wire harness is connected to a pair of connectors located at
terminals via a relay element, the safety analysis system
compnsmg:
a storage unit that stores:
electric wire-terminal connector correlation
information in which each of the plurality of electric
wires and the pair of connectors are correlated with each
other,
terminal connector-function correlation information
in which the pair of connectors located at the terminals
and a function of a device to which the connectors are
connected are correlated with each other, and
function determination information including a
combination of a plurality of functions that are not allowed
to be lost at the same time; and
a processing unit that matches the electric wire-terminal
connector correlation information and the terminal connector-
function correlation information when the wire harness is
identified, and generates electric wire-function correlation
information in which each of the plurality of electric wires and
the function of the device are correlated with each other,
wherein the processing unit determines whether or not the
combination of the plurality of functions included in the
function determination information exists in the generated
electric wirefunction correlation information, and evaluates that
the wire harness has safety when the combination does not
exist.
Appeal Br. 17 (Claims Appendix).
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that
Independent claim 8 is similar to claim 1, however, claim 8 requires
the processing unit determines whether or not the plurality of
separation requirement codes included in the generated electric
wire-separation requirement correlation information are
identical, and evaluates that the wire harness has safety when
the plurality of separation requirement codes are identical.
Appeal Br. 19 (Claims Appendix).
ANALYSIS
The rejection under 35 US.C. § 101 as being directed to non-statutory
subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014 ), identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355. In that regard, the Examiner
determined that the claims are directed to a system and "that the claims
recite an abstract idea as the claims recite a system that employs
mathematical algorithms for gathering and combining data to generate
additional information using a generic processor" and concluded that the
subject matter of the claims is directed to the judicial exception of abstract
ideas. Ans. 3; Final Act. 3-6.
Appellant challenges the Examiner's articulation of what the claims
are directed to, but the challenge is unfounded. See Appeal Br. 6-9. For
example, the fact that the claims are drafted to "describe particular types of
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Application 14/226,925
information that are stored and particular processing as part of a safety
analysis" (Appeal Br. 8) is not dispositive. The question is what the claims
are "directed to."
[T]he "directed to" inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether "their
character as a whole is directed to excluded subject matter."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016)
(inquiring into "the focus of the claimed advance over the prior
art").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). "The
'abstract idea' step of the inquiry calls upon us to look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas v.
DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). "In
determining the eligibility of respondents' claimed process for patent
protection under§ 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
As set out in the Description of the Related Art section of Appellant's
Specification, it was known to check whether a wire harness is wired with
required safety before using it (Spec. ps. 1, 2). Claim 1 is directed to
qualitatively analyzing the safety of the wiring using, e.g., stored electric
wire-terminal connector correlation information, and a
processing unit may determine whether or not the combination
of the plurality of functions included in the function
determination information exists in the generated electric wire
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Application 14/226,925
function correlation information, and may evaluate that the wire
harness has safety when the combination does not
exist.
(Spec. 3, second full paragraph)
As pointed out by the Examiner, Appellant's Specification also states
Although the evaluation may also be peif ormed by a
person referring to the generated electric wire-function
correlation information, a more quick and accurate
evaluation result can be obtained by the processing unit.
(Spec. 3, third full paragraph; emphasis added)
Independent claim 8 is similarly directed to qualitatively analyzing the
safety of the wiring using stored correlation information.
Accordingly, the claims as a whole, in light of the Specification, are
directed to performing mathematical functions, which is consistent with the
Examiner's position (Final Act. 5---6). Thus, the claims are directed to using
abstract ideas. However, a patentable invention must do more than use or
apply abstract ideas. See Electric Power v. Alstom, 830 F.3d at 1354
(Claims for "a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions ... are ... directed to
an abstract idea.").
Step two is "a search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
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Application 14/226,925
(2012)). Appellant's argument that the Examiner has not established that the
claims are not directed to significantly more because only a conclusory
statement was made with no analysis (Appeal Br. 10) is not persuasive of
reversible error. The Examiner determined that, generically linking the use
of a judicial exception to a particular technological environment or field of
use (i.e., optical profilometry) is insufficient because the claims do not
include additional elements that are sufficient to constitute significantly
more than the abstract idea because they do not "provide meaningful
limitations to transform the abstract idea into a patent eligible application of
the abstract idea such that the claims amounts to significantly more than the
abstract idea itself' (Ans. 10). Notably, the Supreme Court has also rejected
the idea that claims become patent eligible simply because they disclose a
specific solution to a particular problem; Alice, 134 S. Ct. 2358 ("patenting
abstract ideas cannot be circumvented by attempting to limit the use of [the
idea] to a particular technological environment")).
The Specification does not support Appellant's argument that the
claims comprise additional elements that constitute significantly more than
the abstract idea of using mathematical correlation information and
equations to determine wire harness safety. The claims do not specify any
devices as performing the mathematical steps other than "a storage unit" and
"a processing unit". These are references to well-understood, routine, and
conventional techniques and devices known in the art. See Mayo, 566 U.S.
at 73 ( claims directed to an ineligible concept must do more than add steps
that "involve well-understood, routine, conventional activity previously
engaged in by researchers in the field"). In addition, the Specification does
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Application 14/226,925
not disclose the mathematical steps as being tied to any special or non-
generic hardware. Cf Alice, 134 S. Ct. 2358 (citation omitted). "[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention. Stating an abstract idea 'while adding
the words "apply it"' is not enough for patent eligibility." Id.
Further, the Examiner concluded that the claims in Appellant's
invention do not even measure any data, and "nothing concrete is done with
the information" (Ans. 6) and that there is "no concrete industrial process
recited" and thus no specific application of the safety analysis for example
"for a computer server, an airplane, a boat, or a car" (Ans. 7).
Indeed, the value or usefulness of the safety analysis is not dispositive
of patent eligibility. Parker v. Flook, 437 U.S. 584, 594--95 (1978) (cited
with approval in Alice, 134 S. Ct. 2347) (Determining claims to "a new and
presumably better method for calculating alarm limit values," which were of
undisputed usefulness, to be directed to nonstatutory subject matter.).
Rather, "[ w ]ithout additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible." Digitech Image Techs., LLC v.
Elecs.for Imaging, Inc., 1351 (Fed. Cir. 2014).
For the foregoing reasons, the Appellant has not shown error in the
Examiner's Alice step two determination that the claims do not include an
element or combination of elements sufficient to ensure that in practice they
amount to significantly more than to be upon the ineligible concept itself.
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In light of all these principles, a preponderance of the evidence
supports the Examiner's conclusion that the claims are directed to patent
ineligible subject matter.
The remaining arguments have been carefully considered but are
unpersuasive as to error in the rejection.
The rejection of claims 1, 3-8, and 10 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter is sustained.
DECISION
The decision of the Examiner is affirmed.
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
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