13343067 - (D) (P.T.A.B. Jul. 24, 2019)

Quiv.Le

Patent Trials and Appeals BoardJul 24, 2019

13343067 - (D) (P.T.A.B. Jul. 24, 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. 13/343,067 01/04/2012 Qui V. Le NSD 2011-007 3282 26353 7590 07/24/2019 WESTINGHOUSE ELECTRIC COMPANY, LLC 1000 Westinghouse Drive Suite 141 Cranberry Township, PA 16066 EXAMINER DAVIS, SHARON M ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 07/24/2019 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): coldrerj@westinghouse.com guerral@westinghouse.com spadacjc@westinghouse.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte QUI V. LE1 ____________________ Appeal 2018-000254 Application 13/343,067 Technology Center 3600 ____________________ Before BENJAMIN D. M. WOOD, WILLIAM A. CAPP, and FREDERICK C. LANEY, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1– 17. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). 1 Appellant states that the real party in interest is Westinghouse Electric Company LLC. App. Br. 1. Appeal 2018-000254 Application 13/343,067 2 THE INVENTION The claims are directed to a method of detecting a loose part in a nuclear power plant steam generator. Spec. ¶ 7. Claims 1 and 10 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of non-destructively detecting an existence of a loose part within a steam generator of a nuclear power plant, the steam generator having a plurality of tubes within an interior thereof, the method comprising: identifying in a first eddy current signal a first signal anomaly at a first tube position along a first tube from among the plurality of tubes, and converting the first tube position along the first tube into a three-dimensional first generator location within the interior of the steam generator; identifying in a second eddy current signal a second signal anomaly at a second tube position along a second tube from among the plurality of tubes different from the first tube, and converting the second tube position along the second tube into a three-dimensional second generator location within the interior of the steam generator; making a determination that the first generator location and the second generator location are within a predetermined proximity of one another; and responsive to the determination, determining that a loose part exists in the vicinity of the first and second generator locations. REFERENCES Junker US 4,763,274 Aug. 9, 1988 Samson Le US 2004/0257072 A1 US 2005/0154564 A1 Dec. 23, 2004 July 14, 2005 Appeal 2018-000254 Application 13/343,067 3 Junker ’07 US 2007/0125175 A1 June 7, 2007 Electric Power Research Institute, Steam Generator Foreign Object Task Force Review Material (EPRI 2006) (hereinafter “EPRI”). REJECTIONS Claims 1–6 and 9 are rejected under pre-AIA 35 U.S.C. § 103(a)2 as unpatentable over Junker and EPRI. Claim 2 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Junker, EPRI, and either Samson or Junker ’07. Claims 7 and 8 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Junker, EPRI, and Le. Claims 10–15 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Junker and EPRI. Claim 11 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Junker, EPRI, and either Samson or Junker ’07. Claims 16 and 17 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Junker, EPRI, and Le. ANALYSIS NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) We enter a new ground of rejection for claims 1–17 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. To determine whether a claim falls within a judicially recognized exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step 2 Appellant’s application was filed before the March 16, 2013 effective date of the statutory changes to 35 U.S.C. § 103 enacted by the Leahy-Smith America Invents Act (AIA), and therefore the pre-AIA version of § 103 applies. Pub. L. No. 112–29, § 3(n)(1), 125 Stat. 284, 293 (2011). Appeal 2018-000254 Application 13/343,067 4 framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and reaffirmed in Alice Corporation Proprietary Ltd. v. CLS Bank International, 573 U.S. 208 (2014). For the first Alice step (Step 2A of the USPTO’s Subject Matter Eligibility Guidance, MPEP § 2106), we determine whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea, law of nature, or natural phenomenon. Alice, 573 U.S. 217 (citing Mayo, 566 U.S. at 78– 79). If so, we advance to the second Alice step (Step 2B of the USPTO’s Subject Matter Eligibility Guidance) where “we consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application” of the otherwise patent-ineligible concept. Id. (quoting Mayo, 566 U.S. 78–79). The USPTO recently published revised guidance on applying step 2A. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).3 The Revised Guidance establishes a “two-prong inquiry” for determining whether a claim is directed to a judicial exception. Id. at 54. In prong one, we determine whether the claim recites a judicial exception, such as laws of nature, natural phenomena, or abstract ideas. Id. If so, we look to whether the claim recites additional elements that integrate the judicial exception into a practical application. Id. at 50. Thus, a claim is directed to a judicial exception only if the claim recites a judicial exception and does not integrate that exception into a practical application. Id. 3 Available at https://www.govinfo.gov/content/pkg/FR-2019-01- 07/pdf/2018-28282.pdf. Appeal 2018-000254 Application 13/343,067 5 The Revised Guidance also clarifies what constitutes an “abstract idea:” a matter will be treated as an abstract idea if it falls within the following specific groupings: (a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; (b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Id. at 52 (footnotes omitted). “Claims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas” except in rare circumstances. Id. at 53. Step 2A, prong 1 Independent claim 1: Claim 1 recites “identifying in a first [second] eddy current signal a first [second] anomaly at a first [second] tube position along a first [second] tube from among a plurality of tubes” (“the identifying steps”). App. Br. 15 (claims app’x). According to the Specification, an eddy current signal (typically a voltage level and phase angle) is compared to a signal obtained from an adjacent position, and if the difference exceeds a predetermined threshold (accounting for, if necessary, nearby structural elements), the Appeal 2018-000254 Application 13/343,067 6 signal is treated as an anomaly. Spec. ¶¶ 19–26, Fig. 1. This analysis is essentially the comparison of a measured value with a threshold value, which can be performed in a human mind. See Spec. ¶ 5 (stating that eddy- current signal data is reviewed by an “analyst”). Therefore, the identifying steps recite a mental process, which falls within the abstract-idea grouping. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139 (Fed. Cir. 2016) (holding that claims to the mental process of “translating a functional description of a logic circuit into a hardware component description of the logic circuit” are directed to an abstract idea because the claims “read on an individual performing the claimed steps mentally or with pencil and paper”). Claim 1 also recites “converting the first [second] tube position along the first [second] tube into a three-dimensional first [second] generator location within the interior of the steam generator” (the “converting steps”). The Specification explains that signal-anomaly data is typically associated with a particular position “disposed at a linear distance along the longitudinal extent of a particular tube.” Spec. ¶ 28. An electronic model of the steam generator is then used to convert the longitudinal tube position to a three-dimensional position within the steam generator. Id. There is nothing in claim 1, however, that prevents this conversion from being performed by a human, mentally or with pen and paper, using a physical model of a steam generator. As our reviewing court has held, “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. Appeal 2018-000254 Application 13/343,067 7 2016) (internal citation and quotation marks omitted). As such, the converting steps also recite a mental process. Claim 1 further recites “making a determination that the first generator location and the second generator location are within a predetermined proximity of one another (“first determining step”). This step simply requires comparing one value with another, which, again, can be performed in the human mind. Thus, the first determining step recites a mental process. Finally, claim 1 recites “responsive to the determination, determining that a loose part exists in the vicinity of the first and second generator locations” (the second determining step). This step simply requires confirming the results of the previous determining step, and can be performed in the human mind. In summary, the identifying steps, the converting steps, and the first and second determining steps all recite a mental process, which falls within the abstract-idea grouping. Claims 2–9 Claims 2–9 ultimately depend from claim 1 and therefore recite the abstract ideas discussed above. Most of these claims also recite additional abstract ideas. For example, claim 2 recites “instructing a further analysis” of tube positions associated with signal anomalies that indicate the presence of a loose part. App. Br. 15 (claims app’x). This “instructing” can be done by a human. Claim 3 recites confirming the previously identified signal anomalies by performing the identifying steps using an alternative data stream. Id. at 15–16. Thus, claim 3 simply requires a repetition of the identifying steps. Claim 4 specifies that the first signal anomaly be Appeal 2018-000254 Application 13/343,067 8 determined by looking for a change in signals between adjacent positions on the first tube, and thus only modifies the first identifying step. Id. at 16. Claims 5 and 6 recite “ignoring” signal changes under certain circumstances, and thus do not seem to require any additional action. Id. Claim 7 requires subtracting “a historic signal change” from signals received near a tube sheet. Id. at 16–17. Subtracting one signal value from another can be performed in the human mind or with pencil and paper. And claim 8 requires detecting a signal anomaly by comparing a data stream with a previous data stream, and thus simply modifies the identifying steps. Claims 10–17 Independent claim 10 is drawn to a computer with a processor and a memory that stores instructions for performing steps that are identical to the steps of claim 1. Id. at 17–18. Thus, claim 10 recites the abstract ideas discussed above with respect to claim 1. Claims 11–17 ultimately depend from claim 10 and are otherwise identical to claims 2–8, discussed above. Step 2A Prong 2 We determine that the additional steps of claims 1–17, both individually and as an ordered combination, do not integrate a judicial exception, in this case the mental processes discussed above, into a practical application of the judicial exception. Claim 1 recites little more than the abstract ideas themselves. The additional limitations of dependent claims 2– 8 and 11–17 likewise only add additional mental processes to, or modify the mental processes recited in, claims 1 and 10. Claim 9 is directed to a “machine readable storage medium” having stored instructions for performing the steps of claim 1; similarly, claim 10 is directed to a “computer” comprising a “processor” and “memory having Appeal 2018-000254 Application 13/343,067 9 stored therein one or more routines comprising instructions which, when executed on a processor, cause the computer to perform” the steps of claim 1. The Specification makes clear that computer systems contemplated by these claims are generic, such that the claims merely use the recited computer or storage media as a tool to perform the recited abstract ideas. Spec. ¶ 38; see MPEP § 2106.05(f); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014) (“[A] claim directed to an abstract idea does not move into section 101 eligibility territory by merely requiring generic computer implementation” (internal citation, quotation marks, and alterations omitted)). Further, none of the claims require the performance of eddy current testing per se; the claims can be practiced with previously collected data. Thus, none of the claims require the use of a particular machine to perform such testing. Step 2B Having considered the elements of each claim both individually and as an ordered combination, we determine that the additional elements do not transform the nature of the claims into a patent-eligible application of the otherwise patent-ineligible concept, for reasons discussed above with respect to Step 2A, Prong 2. Further, the additional elements of claims 9 and 10— the “machine readable storage medium” of claim 9 and the “computer,” “processor,” and “memory” of claim 10—were well-understood routine, and conventional at the time of the invention. See Alice, 573 U.S. at 225-26; MPEP § 2106.05(d). Appeal 2018-000254 Application 13/343,067 10 REJECTIONS UNDER 35 U.S.C. § 103 Claims 1–6 and 9—Rejected as Unpatentable over Junker and EPRI The Examiner finds that Junker teaches most of the limitations of independent claim 1, and also teaches “making a determination based on [eddy current testing] data that a tube flaw exists,” but acknowledges that Junker “does not explicitly disclose steps of determining that a loose part exists.” Final Act. 4–5. For those steps, the Examiner relies on EPRI. Id. at 5. The Examiner asserts that Figure 22 of EPRI “clearly shows that a loose part produces flaw signatures on adjacent tubes within a predetermined proximity along the length of adjacent tubes.” Id. The Examiner also relies on “page 173” of EPRI (labeled page B-39) that “eddy current testing inspection of the C steam generator detected a loose foreign object in the vicinity of three [adjacent] tubes).” Id. (quoting EPRI, B-39). Appellant responds, inter alia, that Figure 22 of EPRI relates to evaluating the wear that occurs on a tube as a result of a loose part, rather than to the detection of a loose part per se, and that EPRI “provides no disclosure whatsoever of how the location of the loose part [shown in Figure 22] was determined.” App. Br. 7 (emphasis omitted). Appellant further argues that the Examiner “materially mischaracterize[s]” page 173 of EPRI. Id. According to Appellant, “the correct quotation . . . is ‘Eddy current testing and FOSAR inspection of the ‘C’ steam generator on 5/12/04 detected and removed a loose foreign object in the vicinity of three tubes 1- 120, 2-121, and 3-120’” (quoting EPRI, B-39) (emphasis added by Appellant). Id. at 9. Appellant states that FOSAR stands for “Foreign Object Search and Retrieval,” and is a visual inspection in which “remote inspection and retrieval equipment is introduced into the interior of a steam Appeal 2018-000254 Application 13/343,067 11 generator for the purpose of identifying and removing a loose part.” Id. Appellant asserts that “the EPRI reference certainly does not disclose that eddy current testing alone resulted in the detection of the loose foreign part.” Id. (emphasis omitted). Appellant also notes that Figure 22 and page 173 “relate to completely different studies on completely different nuclear installations.” Id. at 5. We are not persuaded that EPRI teaches using eddy current testing to detect loose parts in a steam generator, and therefore decline to sustain this rejection. First, the Examiner has not explained how Figure 22 “shows that a loose part produces flaw signatures on adjacent tubes within a predetermined proximity along the length of adjacent tubes.” Figure 22 depicts portions of five tubes, four of which show signs of damage. Eddy current test data appears at the bottom of the Figure, but only below two of the damaged tubes. The Examiner does not explain the significance of the two specific values depicted, whether the values are associated with a loose part as opposed to damage caused by the loose part, or even whether the values would be considered abnormal. Thus, we are not persuaded that Figure 22 of EPRI “clearly shows that a loose part produces flaw signatures on adjacent tubes within a predetermined proximity along the length of adjacent tubes.” Id. Second, page 173 of EPRI does not state that eddy current testing detected a loose foreign object, but rather that “[e]ddy current testing and FOSAR inspection . . . detected and removed a loose foreign object.” EPRI, B-39. While the Examiner correctly notes that claim 1 uses the transition phrase “comprising” and therefore does not exclude additional steps, such as FOSAR inspection (Ans. 4), the point is that one cannot know from this Appeal 2018-000254 Application 13/343,067 12 brief statement what role, if any, eddy current testing itself played in the detection of the loose part (if obviously played no role in the removal of the loose part.). The Remaining Rejections The Examiner’s rejections of claims 2, 7, 8, and 10–17 under 35 U.S.C. § 103 rely on the erroneous finding that EPRI teaches using eddy current testing to detect loose parts in a steam generator. Final Act. 7–10. The additional references relied on in the rejections do not cure this deficiency. Therefore, for the reasons discussed above, we do not sustain these rejections. DECISION For the above reasons, we reverse the Examiner’s rejections under 35 U.S.C. § 103 and enter a new ground of rejection for claims 1–17 under 35 U.S.C. § 101. FINALITY OF DECISION This decision contains a new ground of rejection under 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, “must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the Appeal 2018-000254 Application 13/343,067 13 matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record.” REVERSED 37 C.F.R. § 41.50(b)