Quiv.Le

Patent Trials and Appeals Board

Sep 26, 2019

13343067 - (R) (P.T.A.B. Sep. 26, 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 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