Frederick Wilson. Wheeler et al.

Patent Trials and Appeals Board

Dec 13, 2019

14231059 - (D) (P.T.A.B. Dec. 13, 2019)

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).
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Application 14/231,059

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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;
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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
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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.

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Application 14/231,059

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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.
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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.”).
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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.
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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.
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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.
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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).
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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.
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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