Frederick Wilson. Wheeler et al.Download PDFPatent Trials and Appeals BoardDec 13, 201914231059 - (D) (P.T.A.B. Dec. 13, 2019) Copy Citation 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. 14/231,059 03/31/2014 Frederick Wilson Wheeler 271348-1 3569 6147 7590 12/13/2019 GENERAL ELECTRIC COMPANY GLOBAL RESEARCH 1 RESEARCH CIRCLE K1 - 3A59 Niskayuna, NY 12309 EXAMINER BLOSS, STEPHANIE E ART UNIT PAPER NUMBER 2864 NOTIFICATION DATE DELIVERY MODE 12/13/2019 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): GRCLegal.mail@ge.com preisman@ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FREDERICK WILSON WHEELER and JUSTIN SHRIVER ____________________ Appeal 2018-006302 Application 14/231,059 Technology Center 2800 ____________________ Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s September 21, 2017 decision finally rejecting claims 1–23 (“Final Act.”). We have jurisdiction over the appeal 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 General Electric Company as the real party in interest (Appeal Br. 3). Appeal 2018-006302 Application 14/231,059 2 CLAIMED SUBJECT MATTER Appellant’s disclosure relates to a method for performing diagnostics for a valve assembly (Abstract). The method includes obtaining valve assembly information, including a set of data points where each data point of the set of data points includes a position of an actuator stem, classifying each data point of the set of data points as at least one of a plurality of data point types where the plurality of data point types includes a first data point type and a second data point type (id.). The method also includes determining at least one valve assembly characteristic based on the classification of each data point of the set of data points where determining the at least one valve assembly characteristic includes measuring the position of the actuator stem at a specific point in time (id.). The claims are directed to the foregoing method, a system for carrying out that method, and non-transitory computer media for carrying out the method. Details of the claimed method are set forth in independent claims 1, 18, and 22, which are reproduced below from the Claims Appendix to the Appeal Brief: 1. A method for performing diagnostics for a valve assembly, the valve assembly including a valve and an actuator, the actuator including an actuator stem, said method comprising: obtaining valve assembly information including a set of data points, wherein each data point of the set of data points includes a position of the actuator stem; classifying each data point of the set of data points according to a direction of travel of the actuator stem, as at least one of a plurality of data point types, wherein the plurality of data point types comprises a first data point type associated with a first direction of travel of the actuator stem and a second data point type associated with a second direction of travel of the actuator stem; Appeal 2018-006302 Application 14/231,059 3 determining at least one valve assembly characteristic based on the classification of each data point of the set of data points, wherein determining the at least one valve assembly characteristic includes measuring the position of the actuator stem at a specific point in time; and presenting the valve assembly information to a user using a presentation interface comprising: a user input interface, an alarm and a display device. 18. A system for determining characteristics of a valve assembly, the valve assembly including a valve and an actuator, the actuator including an actuator stem, said system comprising: a positioner configured to receive a plurality of setpoints and generate a signal for positioning the actuator stem for each setpoint of the plurality of setpoints; at least one diagnostic component coupled to said positioner, said at least one diagnostic component configured to: receive the plurality of setpoints tor positioning the actuator stem; obtain valve assembly information including a set of data points, wherein each data point of the set of data points is associated with a position of the actuator stem; classify each data point of the set of data points according to a direction of travel of the actuator stem, as at least one of a plurality of data point types, wherein the plurality of data point types comprises a first data point type associated with a first direction of travel of the actuator stem and a second data point type associated with a second direction of travel of the actuator stem; and determine at least one valve assembly characteristic based on the classification of each data point of the set of data points, wherein said diagnostic component is configured to measure the position of the actuator stem at a specified point in time; and Appeal 2018-006302 Application 14/231,059 4 a presentation interface comprising: a user input interface, an alarm and a display device, and configured to present the valve assembly information to a user. 22. Non-transitory computer-readable storage media for performing diagnostics for a valve assembly, the valve assembly including a valve and an actuator, the actuator including an actuator stem, the computer-readable storage media having computer-executable instructions embodied thereon, wherein, when executed by at least one processor, the computer-executable instructions cause the processor to: obtain valve assembly information including a set of data points, wherein each data point of the set of data points is associated with a position of the actuator stem; classify each data point off the set of data points according to a direction of travel of the actuator stem, as at least one of a plurality of data point types; wherein the plurality of data point types comprises a first data point type associated with a first direction of travel of the actuator stem and a second data point type associated with a second direction of travel of the actuator stem; determine at least one valve assembly characteristic based on the classification of each data point of the set of data points, wherein determining the at least one valve assembly characteristic includes measuring the position of the actuator stem at a specific point in time; and present the valve assembly information to a user using a presentation interface comprising; a user input interface, an alarm and a display device. Appeal 2018-006302 Application 14/231,059 5 REJECTIONS I. Claims 1–23 are rejected under 35 U.S.C. § 101 on the grounds that the claimed invention is directed to a judicial exception, without significantly more. II. Claims 1–23 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Latwesen.2 DISCUSSION Rejection 1 - Rejection under §101 Legal background. 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 interpreted § 101 to include implicit 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, the Supreme Court’s two-step framework, described in Mayo and Alice guides our analysis. 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. Kappos, 130 S. Ct. 3218 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). 2 Latwesen, US 7,996,096 B2, issued August 9, 2011. Appeal 2018-006302 Application 14/231,059 6 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, 130 S. Ct. 3218 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (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 187 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 mathematical formula.” Diehr, 450 U.S. at 187; 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.”). Appeal 2018-006302 Application 14/231,059 7 If the claim is “directed to” an abstract idea, the analysis moves 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. (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. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under 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 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 (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 § 2106.05(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 54–56. Appeal 2018-006302 Application 14/231,059 8 Appellant does not argue the claims separately (see, Appeal Br. 8–11). Accordingly, we will focus our analysis on the rejection of claim 1. Guidance Step 1 There is no dispute that claim 1 falls within a statutory category, as it recites a method. Guidance Step 2A, Prong 1 Under Step 2A of the Guidance, we first consider whether the claims recite a judicial exception. Claim 1 recites several limitations which may be considered to be mental processes, because they recite a step which can be carried out in the human mind: “classifying each data point of the set of data points according to a direction of travel.” Because this limitation recites a mental process, we conclude that claim 1 recites a judicial exception because mental processes are identified in the Guidance as an abstract idea, which is a judicial exception. Guidance Step 2A, Prong 2 Having determined that the claims recite a judicial exception, our analysis under the Guidance turns to determining whether there are additional elements that integrate the exception into a practical application. See MPEP § 2106.05(a)–(c), (e)–(h). “A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application.” Guidance at 53–54. A claim integrates the judicial exception into a practical application when it applies, relies on, or uses 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 judicial exception.” Id. Appeal 2018-006302 Application 14/231,059 9 The additional elements in claim 1 include: (1) “obtaining valve assembly information including a set of data points”; (2) “determining at least one valve assembly characteristic based on the classification of each data point”; and (3) “presenting the valve assembly information to a user using a presentation interface.” Claim 1 represents a method for performing diagnostics for valve assembly which includes a valve and an actuator. The claimed method has four steps. The first step is obtaining valve assembly information (in an unspecified manner), the second is classifying the data points based on the direction of travel of the actuator stem, the third is determining (in an unspecified manner) a valve assembly characteristic based on the classification of each data point, and the fourth is presenting the valve assembly information to a user with a generically claimed system (user input interface, alarm, and display device). As explained by the Examiner (Ans. 2–3), “obtaining data” is not considerably more than routine data gathering, and generically presenting information at the end of the process is no more than insignificant extra- solution activity. The claim does not recite steps outside of the mental process which specifically integrate that process into a practical application. The additional steps, which are discussed above, are listed in generic form, without identifying specifics about how the data is gathered. Appellant has not demonstrated that the claim integrates the judicial exception into a practical application by applying, relying on, or using 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 judicial exception.” Guidance at 53–54. Appeal 2018-006302 Application 14/231,059 10 Appellant argues that “the functional elements of the independent claims in combination with familiar tangible elements provide a unique way of achieving goal [sic] of performing valve diagnostics” (Appeal Br. 11). However, how this is purportedly done is not set forth in the claims, nor is explained by Appellant. Accordingly, we determine that the preponderance of the evidence of record supports a determination that the claims are directed to an abstract idea. Guidance Step 3 The Examiner finds that the non-abstract elements recited in claim 1 do not add a specific limitation beyond the judicial exception that is not well understood, routine, and conventional in the field, and append those elements to the judicial exception at a high level of generality. In particular, the Examiner finds that the data obtaining step is recited at a high level of generality, as is the determination step and the presentation step (Ans. 2–3).3 Appellant does not persuasively dispute these findings (see, Reply Br. 2–3). Accordingly, we conclude that claim 1 does not describe patent eligible subject matter. Appellant does not separately argue that any of the other claims recite patentable subject matter (Appeal Br. 8–11). Therefore, these claims stand or fall with independent claim 1. 37 C.F.R. § 41.37(c)(1)(iv). 3 In the Final Action, the Examiner specifically finds that claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because the step of obtaining data is both claimed generically and an example of routine and well known data gathering required to perform the abstract idea that when taken alone or in combination with the other limitations of the claim fails to amount to significantly more than the abstract idea (Final Act. 2–3). Appeal 2018-006302 Application 14/231,059 11 Rejection 2 - Anticipation over Latwesen “A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). In this instance, Appellant argues4 that Latwesen does not disclose: classifying each data point of the set of data points according to a direction of travel of the actuator stem, as at least one of a plurality of data point types, wherein the plurality of data point types comprises a first data point type associated with a first direction of travel of the actuator stem and a second data point type associated with a second direction of travel of the actuator stem (Appeal Br. 12, quoting claim 1, emphases omitted). The Examiner finds that this element is taught by Latwesen as set forth below: classifying each data point of the set of data points according to a direction of travel of the actuator stem (col 9 lines 39-41 where determination of a reversal is a classification, see also col 10 line 18-24 50-53 where the region based on degree is a classification and must be “according to” stem direction) as at least one of a plurality of data point types (col 9 lines 40-45), wherein the plurality of data point types comprises a first data point type associated with a first direction of travel of the actuator stem and a second data point type associated with a second direction of travel of the actuator stem (col 9 lines 36-49 where multiple regions are discussed based on direction col 10 lines 18-27 and 50-53 where regions are based on travel characteristics col 11 lines 35-44 where the null zone and other regions are a further example of classification based on travel and direction) (Final Act. 5–6). 4 Appellant does not argue the claims separately (see, Appeal Br. 11–15). Accordingly, we focus our analysis on the rejection of claim 1. Appeal 2018-006302 Application 14/231,059 12 However, as argued by Appellant (Appeal Br. 15; Reply Br. 9–10), while Latwesen discloses that the when its actuator reverses there is a period of time when the applied pressure increases or decreases a significant amount without little or no movement of the moveable valve element, nothing in Latwesen teaches or suggests classifying each data point according to its direction of travel, as required by claim 1. Latwesen is silent with respect to the direction travel of the actuator and, therefore, cannot be said to be classifying the data points according to this criteria as required by the language of claim 1. Accordingly, we conclude that Appellant has demonstrated reversible error in the rejection of claim 1. Because each of the other independent claims (claims 18 and 22) contains a similar limitation, we reverse those rejections as well. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–23 101 Eligibility 1–23 1–23 102(a)(1) Latwesen 1–23 Overall Outcome 1–23 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation