Pollock, Graham S. et al.

Patent Trials and Appeals Board

Sep 13, 2019

14634673 - (R) (P.T.A.B. Sep. 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.
14/634,673 02/27/2015 Graham S. Pollock 20150002-01 1777
126187 7590 09/13/2019
Keysight Technologies, Inc.
In care of: CPA Global
900 Second Avenue South
Suite 600
Minneapolis, MN 55402
EXAMINER
ZARE, SCOTT A
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
keysightdocketing@cpaglobal.com
notice.legal@keysight.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GRAHAM S. POLLOCK, STANLEY T. JEFFERSON, and
DANIEL L. PLEASANT
____________

Appeal 2018-004860
Application 14/634,6731
Technology Center 3600
____________

Before ROBERT E. NAPPI, CATHERINE SHIANG, and
MICHAEL T. CYGAN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants requested rehearing of the Decision entered May 24, 2019
(“Decision” or “Dec.”), which affirmed the Examiner’s rejection of claims
1–20 under 35 U.S.C. § 101. We have considered Appellants’ arguments,
and such arguments have not persuaded us that we misapprehended or
overlooked any arguments, facts, or points of law in our Decision.
Therefore, we deny Appellants’ Request for Rehearing (“Req.”).

1 Appellants identify Keysight Technologies, Inc. as the real party in interest.
App. Br. 1.

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Application 14/634,673

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THE 35 U.S.C. § 101 GUIDANCE
The USPTO recently published revised guidance on the application of
§ 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
guidance set forth in 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) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)) (9th Ed.,
Rev. 08.2017, 2018) (Step 2A, Prong 2).
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 (Step 2B).
See Guidance, 84 Fed. Reg. at 54–56.
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DISCUSSION2
A request for rehearing “must state with particularity the points [of
law or fact] believed to have been misapprehended or overlooked by the
Board,” and must comply with 37 C.F.R. § 41.52(a)(1).
I
First, Appellants contend “[c]onsider claim 1 . . . the claim is not
directed to a mental process that can be performed in the human mind, since
all of the steps must be carried out by the data processing system.” Req. 1–
2.
We disagree, as Appellants do not persuasively explain why “the
claim is not directed to a mental process that can be performed in the human
mind.” Req. 2. To the contrary, as discussed in our Decision, independent
claims 1 and 11 (with emphases) recite:
1. A method for operating a data processing system to
discover the attributes of instruments in a set of instruments
connected thereto, said method causing said data processing
system to:
determine all instruments in said set of instruments
connected thereto by sending a first query on each
communication link connected to said data processing system;
receive a response that identifies one of said instruments,
said response comprising a model identification code;
retrieve model configuration information from an
instrument catalog database attached to said data processing
system, said model configuration information comprising an
option that is available on said one of said instruments and a
second query that will cause that instrument to provide

2 “Arguments not raised, and Evidence not previously relied upon . . . are not
permitted in the request for rehearing except as permitted.” 37 C.F.R.
§ 41.52(a)(1). Therefore, to the extent Appellants advance new arguments
without showing good cause, Appellants’ new arguments are untimely.
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information on whether that option is installed on said one of
said instruments, said second query being different from said
first query, and sending said second query to said one of said
instruments to determine if said option is installed on said one
of said instruments.

11. A computer readable medium comprising
instructions that cause a data processing system to execute a
method for operating said data processing system to discover
the attributes of instruments in a set of instruments connected
thereto, said method causing said data processing system to:
determine all instruments in said set of instruments
connected thereto by sending a first query on each
communication link connected to said data processing system;
receive a response that identifies one of said instruments,
said response comprising a model identification code;
retrieve model configuration information from an
instrument catalog database attached to said data processing
system, said model configuration information comprising an
option that is available on said one of said instruments and a
second query that will cause that instrument to provide
information on whether that option is installed on said one of
said instruments, said second query being different from said
first query, and sending said second query to said one of said
instruments to determine if said option is installed on said one
of said instruments.

Claim 1 recites (i) “operating a data processing system to
. . . causing said data processing system to”; (ii) “by sending a
first query on each communication link connected to said data
processing system”; (iii) “database attached to said data
processing system, . . . a second query that will cause that
instrument to . . .”; and (iv) “said second query being different
from said first query, and sending said second query to said one
of said instruments” for performing the above italicized
functions of claim 1.

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Similarly, Claim 11 recites (i) “[a] computer readable
medium comprising instructions that cause a data processing
system to execute a method for operating said data processing
system to . . . causing said data processing system to”; (ii) “by
sending a first query on each communication link connected to
said data processing system”; (iii) “database attached to said
data processing system, . . . a second query that will cause that
instrument . . .”; and (iv) “said second query being different
from said first query, and sending said second query to said one
of said instruments” for performing the above italicized
functions of claim 11.

All of the italicized functions can be performed in the
human mind, or by a human using a pen and paper. They
require acts, performable by a human being, of receiving
information and making mental determinations based on that
information. Accordingly, the italicized functions are like the
mental processes in CyberSource and Synopsys . . . .
Dec. 6–8.
Second, Appellants argue “[c]onsider claim 1 . . . a human could not
query the attached instruments, which may be remote from the location of
the data processing system, using paper and pencil.” Req. 1–2 (emphasis
added). That argument is unpersuasive because it is not commensurate with
the scope of claim 1, as Appellants acknowledge claim 1 does not require
the argued “remote” location. In any event, Appellants’ argument is
unpersuasive because a human can travel to the remote location, if
necessary.
Third, Appellants argue claim 1 does not recite mathematical concepts
or certain methods of organizing human activity under the Guidance. See
Req. 2. That argument is unpersuasive because our Decision determines
claim 1 recites mental processes, and thus an abstract idea under the
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Guidance. See Guidance, Step 2A, Prong 1 (Groupings of Abstract Ideas).
See Dec. 6–9.

II
Appellants argue “the limitations of the claim do integrate the
‘abstract idea’ identified by the Examiner into a practical application that
allows a user to determine if a specific option is available on an instrument
that is connected to the data processing system.” Req. 2–3.
That argument is unpersuasive, because Appellants do not provide
sufficient evidence or explanation to support the argument. In particular,
Appellants’ assertion that “the claimed elements do more than contribute
nominally or insignificantly to the method. Without the communication
link, instrument catalog database and the data processing system, the user
could not ascertain the target information” (Req. 3) is unsubstantiated. As
discussed in our Decision (Dec. 6–12) and above, a person can obtain the
information mentally via observation. Further, Appellants’ assertion that
“the claim links the data processing system to a particular machine, i.e., the
instruments being queried, in a manner that is integral to the claim” (Req. 3)
does not persuade us of error, as Appellants do not persuasively explain why
broadly reciting “instruments” that can be purely software instruments
(Spec. ¶ 17) renders the claim patent eligible.
In any event, our Decision (Dec. 9–13) explains in details why the
claims do not recite additional elements that integrate the judicial exception
into a practical application, and Appellants have not persuasively disputed
our analysis.
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Therefore, Appellants’ arguments about claim 1 are unpersuasive.
For similar reasons, Appellants’ arguments about claims 2–20 are
unpersuasive.

CONCLUSION
For the reasons stated above, Appellants have not persuaded us that
we misapprehended or overlooked any issue of fact or law in our Decision.
We have granted Appellants’ Request for Rehearing to the extent that
we have reconsidered our Decision. Appellants have not shown that we
misapprehended or overlooked any issue of law or fact in reaching that
decision. Accordingly, we deny Appellants’ Request for Rehearing.

DENIED