Gregor Hess

Patent Trials and Appeals Board

Dec 12, 2019

14487487 - (D) (P.T.A.B. Dec. 12, 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.
14/487,487 09/16/2014 Gregor HESS 1021/0167PUS1 9047
60601 7590 12/12/2019
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
DALBO, MICHAEL J
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
12/12/2019 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):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GREGOR HESS
____________________

Appeal 2018-000327
Application 14/487,487
Technology Center 2800
____________________

Before AVELYN M. ROSS, JENNIFER R. GUPTA, and
DEBRA L. DENNETT Administrative Patent Judges.

ROSS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1, 3–7, 11, and 13–19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In our Decision we refer to the Specification filed September 16, 2014
(“Spec.”), the Final Office Action appealed from dated November 1, 2016
(“Final Act.”), the Appeal Brief filed June 2, 2017 (“Appeal Br.”), the
Examiner’s Answer dated August 8, 2017 (“Ans.”), and the Reply Brief
filed October 10, 2017 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Smiths Heiman GmbH is the real party
in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The subject matter on appeal relates to a method and device for
estimating or predicting the lifetime of an X-ray generator. Spec. ¶ 3. X-ray
generators are useful in “inspection systems . . . [that] are used for security
checks of carry-on luggage and other objects carried by persons, for
example, at airports.” Id. ¶ 5. According to the Specification, X-ray
screening downtime can be reduced by “provid[ing] a timely warning of an
impending generator failure.” Id. ¶ 9, see also id. ¶¶ 7, 10–14 (same).
Therefore, “by routinely determining and storing the data of at least one
physical variable that influences the lifetime of the generator and evaluating
the stored data by means of statistics, . . . the expected remaining lifetime of
the X-ray generator” can be determined. Id. ¶ 8. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for predicting a lifetime of an X-ray generator,
the method comprising:
recording, a high voltage, a target current, a temperature,
a thermal load, a total operating time and a total standby time of
a first X-ray tube via a positive voltage measuring device, a
negative voltage measuring device and a temperature measuring
device;
storing a plurality of recorded variables to memory,
wherein the recorded variables comprise the high voltage, the
target current, the temperature, the thermal load, the total
operating time, and the total standby time of the first X-ray tube;
analyzing the stored plurality of recorded variables to
determine a plurality of predictors of X-ray tube failure;
storing the plurality of predictors in a database;
evaluating a second X-ray tube with the stored predictors
in order to determine the expected remaining lifetime of the
second X-ray tube; and
notifying a user with a precautionary measure or the
expected remaining lifetime.
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Appeal Br. 17 (Claims App.).
REJECTION
The Examiner maintains the rejection of claims 1, 3–7, 11, and 13–19
under 35 U.S.C. § 101 as directed to non-statutory subject matter. Final 3–6.
Appellant argues independent claims 1, 11, and 16 together as a group
and does not separately argue the dependent claims. Appeal Br. 12–15. We,
therefore, limit our discussion to claim 1, and claims 3–7, 11, and 13–19
stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(iv) (2016).
OPINION
We review the appealed rejection for error based upon the issues
Appellant identifies and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 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 . . . .”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejection for the reasons expressed in the Final Office Action
and the Answer. We add the following.
Patent Eligible Subject Matter
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. However,
the Supreme Court has long recognized certain exceptions to this section
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including “[l]aws of nature, natural phenomena, and abstract ideas.” Alice
Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
To determine whether a claim falls within an excluded category, the
Supreme Court’s two-step framework, described in Mayo and Alice, guides
us. 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” and whether that
concept is directed to an abstract idea. 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, 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 methods for 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)). However,
not every claim that recites a mathematical formula is patent ineligible.
If the claim is “directed to” an abstract idea, we then turn 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).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The USPTO recently published revised guidance on the application of
§ 101. See Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“2019 Guidance”). Under Step 1 of the 2019 Guidance,
we determine whether the claimed subject matter falls within the four
statutory categories: process, machine, manufacture, or composition of
matter. Step 2A of the Guidance is two-pronged, under which we look to
whether the claim recites:
(1) any judicial exception, 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)).
See Guidance at 54–55.
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));
(4) or simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Guidance at 56.
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Step 1 (statutory category)
As an initial matter, the claims must recite at least one of four
recognized statutory categories, namely, machine, process, article of
manufacture, or composition of matter. MPEP § 2106(I); see 35 U.S.C.
§ 101. Claims 1 and 16 recite a method and claim 11 recites an apparatus.
Appeal Br. 17–19 (Claims App.). Furthermore, there is no dispute that
claims 1, 11, and 16 fall within a statutory category. See generally Final
Act.
Step 2A, Prong 1 (recites a judicial exception)
According to Step 2A of the 2019 Guidance, we first consider whether
the Examiner erred in determining that the claim recites a judicial exception.
The Examiner determines that claims 1, 11, and 16 “are directed to the
abstract idea of predicting a lifetime of an X-ray generator.” Final 3
(claims 1 and 16), 4 (claim 11). With respect to claims 1 and 16, the
Examiner finds that “analyzing the stored plurality of recorded variables to
determine a plurality of predictors of X-ray tube failure” and “evaluating a
second X-ray tube with the stored predictors in order to determine the
expected remaining lifetime of the second X-ray tube” to be abstract
language. Id. at 3. And, relevant to claim 11, the Examiner finds that
“comparing the stored data with the plurality of predictors to determine the
expected remaining lifetime of the X-ray tube” to be abstract language. Id.
at 4. According to the Examiner, the remaining elements of the claims do
not amount to significantly more than the judicial exception. Id. at 3
(claims 1 and 16), 5 (claim 11).
Appellant contends that the Examiner failed to apply the two-part test
of Mayo and “improperly generalized the claim in asserting that the method
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is merely analyzing data while disregarding the explicit structure and
measuring steps of the claims.” Appeal Br. 12. In particular, Appellant
argues that the Examiner “disregarded the measuring systems and
connections altogether.” Id. Appellant explains that “[t]he Examiner must
determine if the claim as a whole is directed primarily to an abstract idea or
instead to an application of that idea to a system.” Id. Appellant urges that
the limitations identified by the Examiner, that is “the estimating and
comparing steps, are not abstract because they relate specifically to the
machine’s hardware.” Id. at 13.
We are unpersuaded by Appellant’s arguments, and instead agree with
the Examiner that the claims are directed to abstract ideas, for the reasons
that follow. Applying the construct set forth in the 2019 Guidance, we must
first determine whether claim 1 recites a judicial exception to patent
eligibility. 2019 Guidance at 54. The 2019 Guidance identifies three
judicially-excepted groupings:
(a) mathematical concepts including “mathematical
relationships, mathematical formulas or equations, mathematical
calculations”; (b) certain methods of organizing human activity,
such as “fundamental economic principles or practices,”
“commercial or legal interactions,” and “managing personal
behavior or relationships or interactions between people”; and
(c) mental processes including “observation, evaluation,
judgment, [and] opinion.”
Id. at 52.
Based on existing Supreme Court and Federal Circuit precedent, the
2019 Guidance has identified “mental processes” as including “concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).” Id. at 53. The “mental processes” judicial exception
also includes concepts that can be performed by a human with a pen and
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paper as well as those that can be performed entirely in the mind. See
October 2019 Update: Subject Matter Eligibility (“2019 Update”) at 9 (“a
claim that encompasses a human performing the step(s) mentally with the
aid of a pen and paper recites a mental process”); Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (finding
claims to be patent ineligible because “with the exception of generic
computer implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”).
Here, independent claim 1 recites, inter alia, the following limitations:
(iii) “analyzing the stored plurality of recorded variables to determine a
plurality of predictors of X-ray tube failure” and (v) “evaluating a second X-
ray tube with the stored predictors in order to determine the expected
remaining lifetime of the second X-ray tube.” Appeal Br. 17 (Claim App.);
see Spec. ¶¶ 11–14. These limitations recite mental processes because they
analyze measured values to form conclusions, i.e., predictions, and compare
the performance of a second X-ray tube to the predictions to determine
expected lifetime, which are concepts that can be performed by a human
with a pen and paper as well as those that can be performed entirely in the
mind. 2019 Update 7 (citing Elec. Power Grp. v. Alstom SA, 850 F.3d 1350,
1355 (Fed. Cir. 2016)).
In view of the foregoing, we do not discern a reversible error in the
Examiner’s determination that claim 1 recites abstract subject matter.
Step 2A, Prong 2 (integration into a practical application)
Having determined that claim 1 recites a judicial exception, i.e., an
abstract idea, our analysis under the Guidance turns to whether the claims
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include additional elements that integrate the abstract idea into a practical
application. Guidance at 54. In other words, we must now determine
whether the claims are directed to the abstract idea itself or whether it is
instead directed to some technological implementation or application of, or
improvement to, the abstract idea such that there is a meaningful limit
imposed on the judicial exception. See Guidance, 84 Fed. Reg. 54–55; see
also, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
The Examiner finds that the method steps of “recording” variables,
“storing” variables to memory for determination of predictors, “storing” the
predictors in a database, and “notifying a user” of the results, are insufficient
to amount to significantly more than the judicial exception. Final 3–4. The
Examiner determines that recording and storing variables are “mere data
gathering” or extra-solution activity. Id. And, according to the Examiner,
“notifying a user . . . is nothing more than outputting the results of the
algorithm, i.e., insignificant extra[-]solution activity, which is not integral to
the steps of the invention.” Id. Further, “[t]he addition of a memory and a
database does not offer a meaningful limitation beyond generally linking the
use of the method to a computer.” Id.
Appellant argues “that even if the independent claims fail Step 2A of
the Mayo Test, the additional limitations cited by the Examiner and the
physical aspects of the allegedly abstract limitations amount to significantly
more than an abstract idea.” Appeal Br. 13. Appellant contends that “the
Examiner cannot dismiss, without basis, the entire measurement and
calculation system” because “[t]he x-ray machine needs these detectors and
requires individual monitoring.” Id. Therefore, Appellant reasons that “the
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measurement is essential to the reaching of a solution” and therefore
amounts to significantly more than an abstract idea. Id. Unlike Electric
Power Group, Appellant argues that the claimed method requires
“measurement devices physically connected to an X-ray tube and recording
analog signals . . . before transforming the signals into stored data for
processing and comparison.” Id. at 14.
We agree with the Examiner. Here, the additional method elements in
claim 1 require (i) “recording” certain measured variables, (ii) “storing a
plurality of recorded variables to memory,” (iii) “storing the plurality of
predictors in a database,” and (vi) “notifying a user with a precautionary
measure or the expected lifetime.” See Appeal Br. 17 (Claims App.). These
method steps amount to data gathering, storage, retrieval, and output steps
that are incidental to performing the abstract idea identified above.
Guidance at 55 (describing such elements as “insignificant extra-solution
activity to the judicial exception”); see also SAP Am, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1168 (Fed. Cir. 2018) (“As many cases make clear, even if a
process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” (quoting Elec. Power Grp., 830 F.3d at
1355)); Flook, 437 U.S. at 590 (“[t]he notion that post-solution activity, no
matter how conventional or obvious in itself, can transform an unpatentable
principle into a patentable process exalts form over substance.”). Further,
Appellant has not shown that “the additional limitations reflect an
improvement in the function of a computer, or an improvement to another
technology or technical field” such that the claim integrates the judicial
application into a practical application. 2019 Update 11. Rather, the
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Specification states that “[t]he object is attained in an embodiment by
routinely determining and storing the data of at least one physical variable
that influences the lifetime of the generator and evaluating the stored data by
means of statistics, in order to determine the expected remaining lifetime of
the X-ray generator.” Spec. ¶ 8.
And, while additional elements may integrate the judicial exception
into a practical application when “use[d] in conjunction with a particular
machine or manufacture that is integral to the claim,” no machine or
apparatus is described. 2019 Guidance 55; see also MPEP § 21.06.05(b)
(“determin[ing] whether the judicial exception is applied with, or by use of,
a particular machine”). The additional structural aspects of claim 1 merely
require memory and a database. See Appeal Br. 17 (Claims App.). The
Specification describes data acquisition and evaluation as supported
generally by electronics such as a microprocessor, i.e., a general purpose
computer. Spec. ¶¶ 11, 20. Appellant does not explain how these claim
elements add any other meaningful technological limitations, i.e., limitations
beyond linking the use of the abstract idea to generic technology. See
Appeal Br. 13.
For the foregoing reasons, we determine that claim 1 does not
integrate the judicial exception into a practical application.
Step 2B (inventive concept)
Consistent with the Guidance, “[i]t is possible that a claim that does
not ‘integrate’ a recited judicial exception is nonetheless patent eligible.”
Guidance 56. In step 2B, we consider the elements of the claim, both
individually and as an ordered combination to assess whether the additional
elements transform the nature of the claim into patent-eligible subject
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matter. Id.; see Content Extraction & Transmission LLC v. Wells Fargo
Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014). “An inventive concept that
transforms the abstract idea into a patent-eligible invention must be
significantly more than the abstract idea itself, and cannot simply be an
instruction to implement or apply the abstract idea on a computer.” Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
(Fed. Cir. 2016). In this context, we consider whether the additional
elements simply append “well-understood, routine, and conventional”
elements, particularly at a high level of generality to the judicial exception.
2019 Guidance 56.
Here, we determine that the claims do not recite “significantly more”
than an abstract idea. As described in the Specification, the combination of
steps gather information in a conventional manner and utilize conventional
equipment. Appellant does not direct our attention to any record evidence
that would show the additional method steps or structural elements are more
that well-understood, routine, and conventional. See generally Appeal Br.
13–16; see also Ans. 3 (“The argued limitations are well-understood,
routine, and convention[al] in the art and recited at a high level of
generality.”). As the Examiner aptly explains, “the additional limitations are
directed to a conventional configuration of an x-ray monitoring device and
well established monitored variables” and “[w]hile the determining is made
by the claimed monitoring circuit, i.e., a data processor implementing the
claimed abstract idea via a data processor does not offer a meaningful
limitation beyond generally linking the use of the method to a computer.”
Ans. 4.
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For the reasons discussed above and those the Examiner provides, we
are not persuaded that the Examiner reversibly erred and, therefore, sustain
the rejection of claims 1, 3–7, 11, and 13–19.
CONCLUSION
Appellant fails to identify a reversible error in the Examiner’s
rejection of claims 1, 3–7, 11, and 13–19 under 35 U.S.C § 101 as directed
to non-statutory subject matter.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3–7, 11,
and 13–19 is affirmed.

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–7, 11,
13–19

101 Eligibility 1, 3–7, 11,
13–19

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED