Ex Parte Wampler et al

Patent Trials and Appeals Board

Jun 3, 2019

14488906 - (D) (P.T.A.B. Jun. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/488,906
72823 7590
Quinn IP Law / GM
21500 Haggerty Road
Suite 300
Northville, MI 48167
09/17/2014
06/05/2019
FIRST NAMED INVENTOR
Charles W. Wampler II
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.
P028287-US-NP 3764
EXAMINER
LE,JOHNH
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
06/05/2019 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):
adomagala@quinniplaw.com
USDocketing@quinniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES W. WAMPLER II,
DANIEL R. BAKER, MARK W. VERBRUGGE,
PATRICK FROST, BRIAN J. KOCH,
and PA TRICIA M. LASKOWSKY
Appeal2018-006701
Application 14/488,906
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 4-13 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. We have jurisdiction over the
1 Our decision refers to the Specification ("Spec.") filed September 17,
2014, the Examiner's Final Office Action ("Final") dated July 12, 2017,
Appellant's Appeal Brief ("Appeal Br.") filed February 12, 2018, the
Examiner's Answer ("Ans.") dated April 12, 2018, and Appellant's Reply
Brief ("Reply Br.") filed June 12, 2018.
2 Appellant is the Applicant, GM Global Technology Operations LLC.,
which is identified in the Appeal Brief as the real party in interest. Appeal
Br. 3.
Appeal2018-006701
Application 14/488,906
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to methods of estimating at least one of the
power capabilities of a battery "to provide a robust state of power predictor."
Spec. ,-J,-J 3-4. Appellant discloses that this can be accomplished by
obtaining impedance data from a battery, building an equivalent circuit that
operates in a manner approximating the impedance data, determining at least
one of the power capabilities of the equivalent circuit via linear regressions
methods or "domain matrix exponentials, a Laplace transform, a Fourier
transform, a Fourier series, or any other method of integrating a system of
ordinary differential equations," and estimating the at least one power
capability of the battery based on the determination. Id. at ,-J,-J 3-4, 13.
Claims 4 and 8, reproduced below from the Claims Appendix to the
Appeal Brief (with some indentation added), are illustrative of the subject
matter on appeal.
4. A method comprising:
obtaining impedance data from a battery;
building an equivalent circuit which operates in a manner
approximating the battery impedance data;
determining at least one of the power capabilities of the
equivalent circuit; and,
estimating at least one of the power capabilities of the
battery based upon the determined power capabilities of the
equivalent circuit, wherein the equivalent circuit is an
R+N(RIIC) circuit,
wherein estimating at least one of the power capabilities
of the battery based upon the power capabilities of the
equivalent circuit comprises:
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Application 14/488,906
imposing a constant input current, I upon the equivalent
circuit;
solving for the voltage, Vi(t) across capacitor C,
according to
predicting an equivalent circuit power at time, t according to
correlating the equivalent circuit power at time, t to the power
of the battery at time t.
8. A method comprising:
obtaining impedance data from a battery;
building an equivalent circuit which operates in a manner
approximating the battery impedance data;
determining at least one of the power capabilities of the
equivalent circuit; and,
estimating at least one of the power capabilities of the battery
based upon the determined power capabilities of the equivalent
circuit, wherein the equivalent circuit is an R+N(RIIC) circuit,
wherein the equivalent circuit is an Rll(R+Ct circuit.3
ANALYSIS
Legal Framework
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
3 We note that this claim recites that the equivalent circuit is both an
R+N(RllC)circuit and an Rll(R+Ct circuit. Appellant's summary of the
claimed subject matter of claim 8 merely repeats the limitations of claim 8
and directs attention to Specification paragraphs 10 and 38. Appeal Br. 4-5.
However, neither of these paragraphs describe the equivalent circuit as both
an R+N(RllC)circuit and an Rll(R+Ct circuit. Upon further prosecution of
this application, the Examiner and Appellant should consider addressing this
apparent inconsistency.
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implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
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, our
inquiry focuses on 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 (Gottschalkv. 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
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Application 14/488,906
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
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 Office recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"), 84 Fed. Reg. 50.
Under that guidance, we first look to whether the claim recites:
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Application 14/488,906
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity 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)).
Only if a claim recites a judicial exception and 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 § 2106.05(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 generally Memorandum.
Analysis
Applying the guidance set forth in the Memorandum, we sustain the
Examiner's rejection under§ 101 that claims 4-13 do not recite patent-
eligible subject matter.
Revised Step 2A, Prong One-Directed to a Judicial Exception
The Memorandum instructs us first to determine whether each claim
recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The
Memorandum identifies three judicially-excepted groupings: ( 1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. Id. at 52.
The Examiner determines the steps recited in claim 4 are directed to
mathematical relationships, citing various cases, such as Digitech lrnage
Techs,, LLCv, E?ecs . .Jbr Imaging, Inc,, 758 F-3d 1344 (Fed. Cir. 2014),
Final Act. 4-5. Independent claim 4 recites, among other things,
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"determining at least one of the power capabilities of the equivalent circuit"
and "estimating at least one of the power capabilities of the battery based
upon the determined power capabilities of the equivalent circuit." Claim 4
further recites that making the estimation comprises the use of mathematical
equations, including a Laplace transform of an ordinary differential
equation. See Spec. ,i,i 18-20.
Digitech demonstrates that a process employing mathematical
algorithms to manipulate existing information to ger1ernte additiorwJ
infonnation is abstract in certain circumstances. 758 F,3d at 1350----51. 'fhe
determining and estimating steps of claim 4 are directed to this concept.
Specifically, the steps regard the manipulation of information about
parameters of an equivalent circuit to generate additional information (Le,,
power capabilities) for a battery.
Indeed, Appellant's arguments appear to concede that claim 4 recites
an abstract idea, using an analysis similar to that set forth in Prong One of
Step 2A of the Memorandum:
Independent claim 4 recites a mathematical equation. According
to the MPEP, this means that claim 4 is "directed to" an abstract
idea. For this reason, the rejection of claim 4 under 35 U.S.C. §
101 makes some sense. Note however, as shown above, being
"directed to" an abstract idea does not damn a claim to patent
ineligibility.
Appeal Br. 11. Although the above statements indicate claim 4 may be
directed to an abstract idea, the last point made by Appellant appears to shift
the analysis to whether the additional elements are sufficient to 'transform'
the claimed abstract idea into a patent-eligible application. We will discuss
that issue below when analyzing the rejection under Prong Two of Step 2A
and Step 2B of the Memorandum.
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Appellant argues at pages 5-6 of the Reply Brief ( citing a past panel
decision) that the Examiner has not used facts and evidence to properly
analogize the claims to cited cases. As noted above, the Examiner has
compared claim 4 to Digitech, which is an apt analogy in light of the
determining and estimating steps recited in the claim.
Independent claim 8 recites, among other things, "determining at least
one of the power capabilities of the equivalent circuit" and "estimating at
least one of the power capabilities of the battery based upon the determined
power capabilities of the equivalent circuit." The Examiner rejects claim 8
under § 101 for reasons similar to those for claim 4 (when one compares the
rejection of cancelled claim 1 to the rejection of claim 4). Final Act. 6;
compare id. 2-4 with id. 4-6.
Fundamentally, claim 8 is directed to mathematical concepts for
substantially the same reasons as provided above regarding claim 4.
Although claim 8 does not specifically recite mathematical relationships like
claim 4, Appellant's Specification demonstrates that the determining and
estimating limitations use mathematical relationships to carry out those
steps. Specifically, the Specification explains that various mathematical
concepts ( e.g., linear regression algorithms, domain matrix exponentials,
Laplace transforms, Fourier transforms, Fourier series, "or any other method
of integrating a system of ordinary differential equations") can be used to
determine at least one power capability of an equivalent circuit and estimate
at least one of the power capabilities of a battery. Spec. ,i,i 3-4, 10, 13, see
Spec. ,i,i 20-22, 25-27.
As a result, the defining and estimating steps of claim 4 recite
mathematical concepts and, therefore, claim 4 recites an abstract idea.
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Likewise, when interpreted in light of the Specification, the determining and
estimating steps of claim 8 recite mathematical concepts and, therefore,
claim 8 recites an abstract idea. Appellant does not argue dependent claims
5-7 and 9-13 separately from claims 4 and 8. Appeal Br. 11-17.
Revised Step 2A, Prong Two - Practical Application
Having determined that claims 4-13 recite the abstract idea of
mathematical concepts, we next look to determine whether the claims recite
"additional elements that integrate the judicial exception into a practical
application." MPEP § 2106.05(a)-(c), (e)-(h); Memorandum, 84 F.3d at
53-54. Integration into a practical application requires an additional element
or a combination of additional elements in the claim to "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 exception." Memorandum, 84 Fed. Reg. at 53-54; see
also id. at 55 (setting forth exemplary considerations indicative that an
additional element or combination of elements may have integrated the
judicial exception into a practical application).
Here, the Examiner determines that the additional elements of claims
4 and 8 are insufficient to amount to significantly more than the judicial
exception. Final Act. 5-6. Specifically, the Examiner determines that the
additional elements are recited at a high level of generality and there is no
indication that the combination of elements provides a technological
improvement or improves the functioning of a computer. Id.
The additional steps of claims 4 and 8 are "obtaining impedance data
from a battery" and "building an equivalent circuit which operates in a
manner approximating the battery impedance data." The Examiner's
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determination that these steps are recited with a high level of generality is
correct. The step of "obtaining impedance data from a battery" is a generic
step of gathering information, specifically battery impedance data that can
be considered insignificant extra-solution activity. Memorandum, 84 Fed.
Reg. at 55, fn. 31.
The step of building an equivalent circuit is essentially a design step
in which a circuit is built to approximate a battery based on the gathered
impedance data. Appellant argues the limitation of "building an equivalent
circuit" is not limited to an abstraction ( e.g., constructing a virtual circuit)
but "the most reasonable interpretation is that the equivalent circuit is a real
tangible circuit." Appeal Br. 11. This argument is unpersuasive. Appellant
does not cite to the Specification or other source to support their proffered
definition of "building an equivalent circuit." In fact, the Specification
supports an interpretation that "building an equivalent circuit" encompasses
virtual circuits "built" by a control system. Specifically, paragraph 11 of the
Specification discloses that "a real-time state estimator" determines the
necessary number and value of the equivalent circuit components and
paragraph 12 discloses that the real-time state estimator maintains an
estimate of resistor, capacitor, and voltage values for the equivalent circuit.
Paragraph 10 of the Specification discloses that a control system and sensors
obtain impedance data from a battery and that, based on the impedance data,
an equivalent circuit is constructed by determining a relation of battery
current to battery voltage over time and solving for a necessary number and
value of each equivalent circuit component, which appears to imply that the
latter calculations can be performed by the control system. Thus, "building
an equivalent circuit" is not as limited as Appellant asserts.
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Appellant also argues that"[ c ]laim 4 is tied to the particular
application of a battery" and thus claim 4 is not abstract because "claim 4
cannot be performed in the absence of a battery." Appeal Br. 14. This
argument is also unpersuasive because it is an attempt to limit use of the
abstract idea to a particular environment or field of use, which is insufficient
to transform a judicial exception into eligible subject matter. See A lice, 573
U.S. at 222 ('"[Limiting the use of an abstract idea to a
particular technologica1 er1vironmenC is '"not er1ough for patent eligibility!')
(internal citations and quotation omitted); Bilski, 561 U.S. at 610---11
("[TJhe prohibition against patenting abstract ideas • cannot be circumvented
by attempting to limit the use of the fi1mmla to a particular
techno 1ogical environment" or adding 'insignificant postsolution activity"')
(quoting Diehr, 450 U.S. at 191-92); Elec. Pm,ver Ci-rp., LLC v. Alstom,
SA, 830 F.3d 1350, 1354 (Fed Cir. 2016) ("[Limiting the c1aims to the
particular technologica1 environment of power-grid monitoring is, vvithout
more, insufficient to transform them into patent-eligible applications of the
abstract idea at their core."); Ultrarnercia!, inc. v. Hulu, LLC, 772 F.3d 709,
716 (Fed. Cir. 2014) ("'Narrowing the abstract idea of using advertising as a
cun-ency to the Internet is an ·attempt[ J to limit the use' of the abstract idea
"to a particular technological environment/ which is insufficient to save a
claim!') (quoting Alice, 573 U.S. at 219---20).
Nor do the additional e1emer1ts, when considered individually and as
an ordered combination, reflect an improvement to the functioning of a
computer, or to any other technology or technical field. See Memorandum,
84 Fed. Reg. at 55, fn. 25. Appellant contends that "claim 4 is geared
toward the disclosed intent/problem 'to provide a robust state of power
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predictor' and achieves the non-monopolizing, inventive solution by the
limited, particular implementation of the specified method." Appeal Br. 12
( citing Spec.). This improvement of providing "a robust state of power
predictor" is general in nature and appears to be the result of applying the
mathematical concepts (i.e., the judicial exception itself). However, "a
claimed invention's use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention 'significantly
more' than that ineligible concept." BSG Tech LLC v. Buyseasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018). Nor is the judicial exception particularly
limited or non-monopolizing by reciting obtaining battery impedance data
(i.e., generic data gathering) and building the equivalent circuit, as recited in
claims 4 and 8, which encompass gathering impedance data and designing a
virtual equivalent circuit based on the impedance data.
We note that the mere use or presence of mathematical concepts does
not render a claimed invention patent ineligible. A claimed invention,
however, needs to include elements sufficient to 'transform' the claimed
abstract idea into a patent-eligible application instead of merely being the
use of the judicial exception. As explained by the Federal Circuit in
Digitech, although an application of a mathematical formula to a known
structure or process may be deserving of patent protection (758 F.3d at 1350,
quoting Diehr, 450 U.S. at 187) and "[a] claim may be eligible if it includes
additional inventive features such that the claim scope does not solely
capture the abstract idea," (id., citing Alice), a claim does not become
eligible "merely by adding the words 'apply it"' (id., quoting Bancorp
Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1276
(Fed. Cir. 2012)).
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As discussed above, the additional elements of claims 4 and 8 are
recited at a high level of generality and do not provide a technological
improvement. Therefore, claims 4 and 8 do not integrate the judicial
exception into a practical application that imposes a meaningful limit on the
judicial exception so that the claim does more than monopolize the judicial
exception. Claims 4 and 8 instead appear to be the mere application of the
abstract idea (i.e., use of mathematical concepts to determine at least one
power capabilities of an equivalent circuit and estimate at least one power
capability of a battery). "If a claim is directed essentially to a method of
calculating, using a mathematical formula, even if the solution is for a
specific purpose, the claimed method is nonstatutory." Flook, 437 U.S. at
595 (quoting In re Richman, 563 F.2d 1026, 1030 (CCPA 1977)). In other
words, claims 4 and 8 are no more than a drafting effort designed to
monopolize the judicial exception. As a result, the additional elements do
not integrate the judicial exception into a practical application.
Step 2B-Inventive Concept
Because we determine that claims 4-13 are directed to an abstract
idea and they do not include additional elements that integrate the abstract
idea into a practical application, we look to whether each claim provides an
inventive concept, i.e., adds a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional" in the field.
Memorandum, 84 Fed. Reg. at 56.
Appellant provides no indication that the data gathering and
equivalent circuit building, when considered individually and as an ordered
combination, are done in an unconventional way or present an
unconventional combination. See id. As discussed above, these additional
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elements are specified at a high level of generality. Also, the improvement
argued by Appellant appears to be a result of merely applying the judicial
exception (i.e., the use of mathematical concepts to determine at least one
power capability of an equivalent circuit and estimate at least one power
capability of a battery), as discussed above.
Appellant presents what it calls a "Statement of Facts" at page 18 of
the Appeal Brief and requests the Decision to address them. We treat this
list as arguments that have been addressed by the analysis above. Moreover,
to the extent Appellant argues the claims are patent eligible under § 101
because there is no prior art rejection under§§ 102 or 103 (Appeal Br. 18,
"SF6"), such an argument is unpersuasive. "The question therefore of
whether a particular invention is novel is 'wholly apart from whether the
invention falls into a category of statutory subject matter."' Diehr, 450 U.S.
at 190 (quoting In re Bergy, 596 F.2d 952,961 (CCPA 1979) (emphasis
deleted)). The Supreme Court further stated:
In this case, it may later be determined that the respondents'
process is not deserving of patent protection because it fails to
satisfy the statutory conditions of novelty under § 102 or
nonobviousness under § 103. A rejection on either of these
grounds does not affect the determination that respondents'
claims recited subject matter which was eligible for patent
protection under § 101.
Id. at 191.
Accordingly, Appellant's arguments do not identify a reversible error
in the Examiner's rejection of claims 4-13 under 35 U.S.C. § 101. The
claims ensnare the basic idea of using mathematical concepts to determine at
least one power capability of an equivalent circuit and use that determination
to estimate at least one power capability of a battery and do not recite
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additional elements that integrate those mathematical concepts into a
practical application or provide an inventive concept.
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 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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