Quiv.LeDownload PDFPatent Trials and Appeals BoardSep 26, 201913343067 - (R) (P.T.A.B. Sep. 26, 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. 13/343,067 01/04/2012 Qui V. Le NSD 2011-007 3282 26353 7590 09/26/2019 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 09/26/2019 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. LE ____________________ 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 REQUEST FOR REHEARING Appeal 2018-000254 Application 13/343,067 2 STATEMENT OF THE CASE This is a response to Appellant’s Request for Rehearing (“Request” or “Req.”) of the Board’s July 24, 2019 Decision (“Decision” or “Dec.”) entering a new ground of rejection of claims 1–17 as drawn to ineligible subject matter. Requests for Rehearing are limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52. For the reasons set forth below, we deny the Request. OPINION In the Decision, we characterized the limitations of claim 1 as the “identifying steps,” the “converting steps,” the “first determining step,” and the “second determining step.” Dec. 5–7.1 For the first prong of the two- prong analysis regarding whether the claim is directed to a patent-ineligible judicial exception, we determined that each of these limitations recites a mental process, one of the abstract-idea groupings. Id.; See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (Jan. 7, 2019) (“Revised Guidance”).2 Appellant does not appear to dispute that the identifying steps, the converting steps, and the first determining step recite a mental process. For the second determining step, Appellant disagrees with our characterization of this limitation as “simply requir[ing] confirming the 1 A rehearing request “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. §§ 41.50(b)(2), 41.52(a)(1). Appellant’s Request only addresses claim 1 with particularity, and relies on arguments presented with respect to claim 1 to request rehearing of our rejection of claims 2–17. Req. 5. Therefore, we limit our discussion to claim 1. 2 Available at https://www.govinfo.gov/content/pkg/FR-2019-01- 07/pdf/2018-28282.pdf. Appeal 2018-000254 Application 13/343,067 3 results of the previous [first] determining step.” Req. 2 (quoting Dec. 7) (emphasis omitted). Nonetheless, Appellant appears to acknowledge that this step recites a mental process. See id. (“Appellant is not necessarily arguing that the ‘second determining step’ is incapable of being performed in the human mind.”). Therefore, Appellant has not identified error in our determination that each of the limitations of claim 1 recites a mental process. Appellant also disagrees with our determination that because “[c]laim 1 recites little more than the abstract ideas themselves,” the “additional steps” of claim 1 do not integrate the recited abstract ideas into a practical application. Id. at 3 (quoting Dec. 8). According to Appellant, we provided “an insufficient level of analysis to support [the] rejection.” Id. We disagree. The analysis under prong 2 presupposes the existence of “additional elements recited in the claim beyond the judicial exception(s).” Revised Guidance, 54–55 (emphasis added). But, as stated above, all of the limitations of claim 1 recite a judicial exception. Thus, there are no “additional elements” in claim 1 that could have been evaluated to determine whether they integrate the recited judicial exception into a practical application. We have reviewed Appellant’s remaining arguments and find them unpersuasive. For example, Appellant argues that claim 1, and particularly the second determining step, “advantageously results in a new type of insight into a physical reality within the interior of the steam generator,” and results in “an advantageous leveraging of tube signal data.” Req. 3–4. But novelty and usefulness of the claimed method do not make the invention patent eligible. As our reviewing court has stated, we may assume that the claimed method is “[g]roundbreaking, innovative, or even brilliant,” but that Appeal 2018-000254 Application 13/343,067 4 is not enough for eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). DECISION For the above reasons, Appellant’s request for rehearing is denied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). DENIED Copy with citationCopy as parenthetical citation