Salm, Jacob Andrew. et al.

Patent Trials and Appeals Board

Mar 9, 2020

14077873 - (D) (P.T.A.B. Mar. 9, 2020)

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.
14/077,873 11/12/2013 Jacob Andrew Salm 269262-1 9731
80944 7590 03/09/2020
Hoffman Warnick LLC
540 Broadway
4th Floor
Albany, NY 12207
EXAMINER
LIANG, LEONARD S
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
03/09/2020 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):
ptocommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JACOB ANDREW SALM, KELSEY ELIZABETH BEACH,
ALEXANDER JAMES PISTNER, and BIROL TURAN
_________

Appeal 2019-001067
Application 14/077,873
Technology Center 2800
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant is identified as General Electric Company.
Appeal 2019-001067
Application 14/077,873

2
CLAIMED SUBJECT MATTER
The subject matter of the invention relates to “turbomachine airfoil
erosion determination” (Spec., para. 1). Claims 1 and 11, reproduced below
with emphasis on the contested limitations, are illustrative of the claimed
subject matter:

1. A system comprising:
at least one computer device configured to perform the
steps of:
attaining a two-dimensional used profile of a leading edge
at a specified radial position on a turbomachine airfoil after use;
aligning opposing substantially straight alignment
portions of the two-dimensional used profile with opposing
substantially straight alignment portions of a previously attained
two-dimensional, baseline profile of the turbomachine airfoil,
the alignment portions of each profile being in substantially
identical radial locations of the turbomachine airfoil; and
comparing the used profile to the baseline profile to
determine whether the leading edge at the specified radial
position of the used turbomachine airfoil has erosion.

11. A computer-implemented method comprising:
attaining a two-dimensional used profile of a leading edge
at a specified radial position on a turbomachine airfoil after use;
aligning opposing substantially straight alignment
portions of the two-dimensional used profile with opposing
substantially straight alignment portions of a previously
attained, two-dimensional, baseline profile of the turbomachine
airfoil, the alignment portions of each profile being in
substantially identical radial locations of the turbomachine
airfoil; and
Appeal 2019-001067
Application 14/077,873

3
comparing the used profile to the baseline profile to
determine whether the leading edge at the specified radial
position of the used turbomachine airfoil has erosion.

As can be seen above, system claim 1 and method claim 11 recite the
same contested limitations in this appeal. Likewise, independent Claim 20 is
directed to a non-transitory computer readable medium that recites computer
instructions to carry out the method of claim 11 above (Appeal Br. Claims
Appendix 19–20).
REFERENCES
The prior art relied upon by the Examiner is:2
Name Reference Date
Wang US 2004/0083024 A1 April 29, 2004
Mika US 2004/0262277 A1 December 30, 2004
Graham US 2006/0090336 A1 May 4, 2006
Beeson US 2007/0251072 A1 November 1, 2007
Bauer WO 2010/003512 A1 January 14, 2010

2 The Examiner relies on the references to Wang, Mika, Graham, and
Beeson only for the § 101 rejection to exemplify that a computer device and
a turbomachine airfoil are each “well-understood, routine, [and]
conventional” (Ans. 5). We do not list these references in the summary table
at the end of this decision.
Appeal 2019-001067
Application 14/077,873

4
REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter without significantly more.3
Claims 1, 5–11 and 15–20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer.4

OPINION
The rejection of claims 1–20 under 35 U.S.C. § 101 (patent-ineligible
subject matter)
Preliminary comments
The Appellant argues claims 1–20 as a group (see Appeal Br. 4–8).
We select claim 1 as the representative claim for this group, and the
remaining claims 2–20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv). For clarity, our discussion of system claim 1 applies
equally to method claim 11 and article claim 20 given that all claims include
the same contested limitations.

The USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (hereinafter “2019 Revised 101 Guidance”),
published January 7, 2019 and updated in October 2019, supersedes the
earlier guidance that was in effect at the time the Appeal Brief was filed. Id.

3 The Examiner designated the § 101 rejection as a “new ground” in the
Answer in order to explain in more detail the previously-made § 101
rejection (Ans. 8). Appellant filed a Reply Brief on November 21, 2018
addressing the “new ground” of rejection.
4 Dependent claims 2–4 and 12–14 were not included in the § 103 rejection
(see Non-Final Action 15 (mailed Jan. 1, 2018)).
Appeal 2019-001067
Application 14/077,873

5
at 51 (“Eligibility–related guidance issued prior to the Ninth Edition, R–
08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”).
Accordingly, our analysis will not address the sufficiency of the Examiner’s
rejection against the Office’s previous guidance. Rather, our analysis will
comport with the 2019 Revised 101 Guidance.

Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
There is no dispute that claim 1 covers a “manufacture” or “machine”,
statutory subject matters for which a patent may be obtained5 (Ans. 3; see
generally Reply Br.). Section 101, however, “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).

5 This discussion corresponds to Step 1 of the 2019 Revised 101 Guidance
which requires determining whether a “claim is to a statutory category.”
84 Fed. Reg. at 53; see also id. at 53–54 (“consider[] whether the claimed
subject matter falls within the four statutory categories of patentable subject
matter identified by 35 U.S.C. 101”). Likewise, claim 11 is to a statutory
subject matter of a “process”, claim 20 is directed to a statutory subject
matter of a “manufacture”.
Appeal 2019-001067
Application 14/077,873

6
Even though claim 1 covers statutory subject matter, the Examiner
determines that claim 1 recites an abstract idea (see generally Ans.). As
stated earlier, our discussion of system claim 1 applies equally to method
claim 11 and article claim 20 given that all claims incorporate the same
contested limitations. Alice identifies a two-step framework for determining
whether claimed subject matter is patent-eligible. Alice, 573 U.S. at 217. In
accordance with that framework, we first determine what concept the
claim is “directed to.” See Alice, 573 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”).
If the claim is “directed to” an abstract idea, we 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. “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). “[M]erely
requir[ing] [a] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January 2019, the PTO published revised guidance on the
application of § 101. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (“2019 Revised
101 Guidance”). Under that guidance, in order to determine if a claim is
Appeal 2019-001067
Application 14/077,873

7
“directed to” a judicial exception, 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);
and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP
§§ 2106.05(a)-(c), (e)-(h)).
See 2019 Revised 101 Guidance, 84 Fed. Reg. at 54–55. Only if a claim
(1) recites a judicial exception and (2) does not integrate that exception
into a practical application, is it “directed to” a judicial exception. If so,
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.
See 2019 Revised 101 Guidance, 84 Fed. Reg. at 56.
The 2019 Revised 101 Guidance instructs us first to determine
whether each claim recites any judicial exception to patent eligibility. 84
Fed. Reg. at 54. The 2019 Revised 101 Guidance lays out three judicially-
excepted groupings of abstract ideas: mathematical concepts, certain
methods of organizing human activity, and mental processes. 84 Fed. Reg.
at 52.
Appeal 2019-001067
Application 14/077,873

8
The Abstract Idea (Revised Step 2A, Prong One) 6
Under Step 2A, Prong 1, we “determine whether the identified
limitation(s) falls within the subject matter groupings of abstract ideas
enumerated in Section 1 of the [2019 Revised 101 Guidance].” 2019
Revised 101 Guidance, 84 Fed. Reg. at 54.
The Examiner determines that the claims “merely gather data and then
analyze that data using mathematical analysis and data comparison
techniques” (Ans. 3). That is, the Examiner determines that the claims
involve a mathematical relationship that recites a mathematical concept.
The Examiner contends that the step of “attaining a two dimensional
used profile of a leading edge at a specified radial position on a
turbomachine airfoil after use” is directed to data collection, and that the
mention of the airfoil being the source of the data only “limits the claims to a
particular technological environment” which does not amount to
significantly more than data collection (Ans. 4). The Specification describes
that the step of attaining a profile can be performed (1) by measuring a
turbomachine airfoil prior to use or (2) based on a CAD based definition of
the blade profile (Spec. ¶ 31). Measuring is a step that can be performed in
the human mind. As such, this step is a mental step that recites a mental
process. Computer-aided Design (CAD) is a computer modelling device

6 Step 2A of the 2019 Revised 101 Guidance corresponds to Alice Step 1.
2019 Revised 101 Guidance 51. Step 2A determines “whether a claim is
‘directed to’ a judicial exception,” such as an abstract idea. 2019 Revised
101 Guidance 53. Step 2A is a two prong inquiry that addresses whether the
claim recites a judicial exception (Prong 1) and whether a recited judicial
exception is integrated into a practical application (Prong 2). 2019 Revised
101 Guidance 51.
Appeal 2019-001067
Application 14/077,873

9
that relies on mathematical relationships to create designs. Thus, this step
also involves a mathematical relationship that recites a mathematical
concept.
The Examiner further notes that the claimed “aligning opposing
substantially straight alignment portions of the two-dimensional, used profile
with opposing substantially straight alignment portions of a previously
attained two-dimensional, baseline profile of the turbomachine airfoil, the
alignment portions of each profile being in substantially identical radial
locations of the turbomachine airfoil” is directed to processing and
manipulation of data “through the use of abstract mathematical models”
(Ans. 3). The Specification describes using a “linear representation (e.g.,
y=mx+b) of each alignment portion 174 of raw baseline profile 170 along
with baseline profile 172” (Spec. ¶ 34). As such, this step involves a
mathematical relationship that recites a mathematical concept. Aligning
profiles is also a step that can be performed in the human mind. As such,
this step is a mental step that recites a mental process.
The Examiner contends that the step of “comparing the used profile to
the baseline profile to determine whether the leading edge at the specified
radial position of the used turbomachine airfoil has erosion” is directed to
the “abstract comparison of data” (Ans. 3). The Specification describes
using a linear regression to compare the previously calculated linear
representation for raw baseline profile to ensure that the profiles are aligned
(Spec. ¶ 36). As such, this step involves a mathematical relationship that
recites a mathematical concept. Comparing profiles is also a step that can be
Appeal 2019-001067
Application 14/077,873

10
performed in the human mind. As such, this step is a mental step that recites
a mental process.
Therefore, we agree with the Examiner’s determination that the claims
recite the abstract idea of a mathematical concept. In addition, we determine
that the steps discussed above recite a mental process because they are
claimed at a high level of generalization and are capable of being performed
using pen and paper, or even entirely within the mind of a person.
Applying the guidance set forth in the 2019 Revised 101 Guidance,
we conclude that the claims recite mathematical concepts and mental
processes, which are abstract ideas, and do not recite patent-eligible subject
matter.

Practical Application (Revised Step 2A, Prong Two)
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
“A claim that integrates a judicial exception into a practical
application will apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
2019 Revised 101 Guidance 54.
As we discuss above, the limitations noted above, individually and
collectively, recite a mathematical concept and a mental process.
Claim 1 additionally recites at least one computer device.
Appeal 2019-001067
Application 14/077,873

11
The Specification describes the computer as “any general purpose
computing article of manufacture capable of executing computer program
code installed by a user (e.g., a personal computer, server, handheld device,
etc.).” Spec. ¶ 24. That is, the Specification describes the use of a generic
computer.
Appellant does not direct us to any portion of the Specification that
describes an improvement to the functionality of a computer or that explains
how the steps of “attaining,” “aligning,” and “comparing” improve the
functionality of the computer. Cf. McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (“When looked at as a
whole, claim 1 is directed to a patentable, technological improvement over
the existing, manual 3–D animation techniques.”). Nor do we find sufficient
evidence in the record before us that the claimed subject matter reflects any
such improvement. Instead, these steps are disclosed as common processing
functions associated with generic computer devices. Cf. OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
We find that the additional element recited in claim 1 does not
integrate the judicial exception into a practical application.
While instructions a control circuit must follow to invoke the
performance of certain steps can be patentably significant (see Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); Ancora
Technologies v. HTC America, 908 F.3d 1343, 1347), here the instant record
does not sufficiently support the view that the recited steps result in any
improvement in computer functionality.
Appeal 2019-001067
Application 14/077,873

12
Rather than being directed to any specific, asserted improvement in
technological capabilities, the record supports the view that the claimed
subject matter is directed to using a generic control circuit to manipulate
data related to airfoils.7
We find that the additional element recited in claim 1 does not
integrate the judicial exception into a practical application.
Therefore, because claim 1 both recites a judicial exception and does
not recite additional elements that integrate the judicial exception into a
practical application, claim 1 is directed to a judicial exception.
Appellant contends that the claimed computer device and the
recitation of a turbomachine airfoil place the claims in the realm of non-
abstract ideas because it is a tangible, physical component (Appeal Br. 6–8;
Reply Br. 3). Appellant further argues that the laser profiler of claims 8–10
also places these claims in the realm of non-abstract ideas (Reply Br. 3).
Appellant’s argument does not identify a reversible error in the
Examiner’s determination that the claims lack patent eligible subject matter.
The recitation of tangible components is insufficient to place claims
reciting an abstract idea in the realm of non-abstract ideas. See, e.g., Am.
Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355 (Fed. Cir. 2019)

7 See the 2019 Revised 101 Guidance at 55:

The courts have also identified examples in which a judicial exception
has not been integrated into a practical application:
• An additional element merely recites the words “apply it” (or an
equivalent) with the judicial exception, or merely includes
instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea;
Appeal 2019-001067
Application 14/077,873

13
(precedential) (holding that claims reciting an abstract idea (Hooke’s law) as
well as very concrete and tangible limitations of providing a hollow shaft
member and positioning a liner in that shaft member were patent ineligible).
We direct attention to our discussion above concerning the reasons why the
computer device recited in claim 1 is insufficient to place this claim in the
realm of non-abstract ideas.
With respect to the recitation of the turbomachine airfoil, this
recitation merely identifies a certain field – turbomachine airfoil data – and
does not integrate the abstract idea into a practical application.
Regarding the laser profiler, the Specification describes the laser
profiler as commercially available (Spec. ¶ 26 (“One example laser profiler
130 may include a model HS730LE from Origin Technologies, but other
laser profilers may also be employed.”)) that is used as an input/output
device to attain the profile (id. ¶¶ 16, 25). As with the computer device, the
Specification does not explain how the laser profiler integrates the abstract
idea into a practical application.
We have considered all of Appellant’s arguments not specifically
identified and find them unpersuasive for the reasons given above.
Accordingly, we conclude, as did the Examiner, that the claims recite
a judicial exception, i.e., the abstract idea of a mathematical relationship for
calculating the transmittance and a mental process, and do not integrate this
judicial exception into a practical application.

Appeal 2019-001067
Application 14/077,873

14
Inventive Concept (Revised Step 2B)8
Because we determine that claim 1 under appeal recites an abstract
idea and does not include additional elements that integrate the abstract idea
into a practical application, we look to whether the claim provides an
inventive concept, i.e., adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field.
2019 Revised 101 Guidance, 84 Fed. Reg. at 56. See Alice, 573 U.S. at 217–
18 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 73 (2012)).
In that regard, the Examiner determined that:
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the additional computer processing elements,
which are recited at a high level of generality, provide
conventional computer functions that do not add meaningful
limits to practicing the abstract idea.
(Ans. 3).
The Examiner finds that the computer device is an element that is
“well-understood, routine, conventional” in the field as demonstrated by
Wang, Mika, Graham and Beeson. (Ans. 5). The Examiner further cites
Wang, Mika, Graham, and Beeson as showing that a turbomachine airfoil is
a well understood, routine and conventional component. Id.

8 This corresponds to Step 2B of the 2019 Revised 101 Guidance page 56
(“[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).”).
Appeal 2019-001067
Application 14/077,873

15
We agree with the Examiner.
We direct Appellant’s attention to our prior discussion with respect to
the specific asserted improvements in technology.
We are unpersuaded that claim 1 presents an element or combination
of elements indicative of a specific asserted improvement in technological
capabilities, thereby rendering the claimed subject matter sufficient to ensure
that the patent in practice amounts to significantly more than a patent upon
using a generic computer device to compare data of two profiles of airfoils
and determine a difference.
As we explain above, we find no suggestion of any technical
improvements associated with the performance of the recited steps. The
Specification is focused on determining erosion, not on the “computer
device” (claim 1). This is supported by the Specification’s disclosure of
using a generic computer (Spec. ¶ 24). Much like the “data storage unit”
and “computer, coupled to said storage unit” in the claims of Alice (U.S.
Patent 7,149,720, claim 1), “the claims here do [no] more than simply
instruct the practitioner to implement the abstract idea [. . .] on a generic
computer.” Alice, 573 U.S. at 225. See also Bancorp Servs., 687 F.3d at
1278 (“[T]he use of a computer in an otherwise patent-ineligible process for
no more than its most basic function—making calculations or
computations—fails to circumvent the prohibition against patenting abstract
ideas and mental processes.”).
Further, the laser profiler of claims 8-10, are also well known,
understood, routine and conventional. Bauer teaches a laser profiler
(abstract), as do the references cited by the Examiner (Ans. 5). In addition,
Appeal 2019-001067
Application 14/077,873

16
the Specification states that the laser profiler to be used can be a
commercially available laser profiler (Spec. ¶ 26 (“one example laser
profiler 130 may include a model HS730LE from Origin Technologies, but
other laser profilers may also be employed”)).
For the reasons discussed above, we are unpersuaded that the record
supports interpreting the steps recited in the claim as yielding any
improvement in technology.
Appellant contends that the Examiner did not meet the burden under
Berkheimer to find explicit support to demonstrate that the elements claimed
are well understood, routine or conventional (Appeal Br. 8). However, the
Examiner addressed these in the updated rejection in the Examiner’s Answer
(Ans. 5). Appellant’s subsequent Reply Brief did not address the
Examiner’s findings regarding the computer device and turbomachine airfoil
being generic and well understood, routine or conventional. While
Appellant contended that the laser profiler that the Examiner found was used
in a different manner than the laser profiler claimed in claim 8 (Reply Br. 3),
this is not persuasive that the laser profiler was novel. See Mayo, 566
U.S. at 90 (although the 101 patent eligibility inquiry and prior art
inquiries might sometimes overlap, “to shift the patent eligibility inquiry
entirely to those later sections risks creating significantly greater legal
uncertainty, while assuming that those sections can do work that they are
not equipped to do”); see also Diehr, 450 U.S. at 188–89 (“[t]he 'novelty'
of any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter”).
Appeal 2019-001067
Application 14/077,873

17
The laser profiler itself, regardless of the use that profile in the
system, is still a component that is well-understood, routine and
conventional. Further, we find clear support demonstrating that the elements
of the computer device, the turbomachine airfoil (although not explicitly
claimed) and the laser profiler are well understood, routine and
conventional, each individually and as an ordered combination, via the
Specification or the prior art of Bauer, as discussed above.
No other persuasive arguments having been presented, we conclude
that no reversible error has been identified in the Examiner’s determination
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellant’s remaining arguments and
find them unpersuasive.
Accordingly, because we are not persuaded of error in the
determinations that representative claim 1, as well as claims 2–20, which are
all directed to an abstract idea and do not present an “inventive concept,” we
sustain the Examiner’s conclusion that they are directed to patent-ineligible
subject matter under 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc.,
656 F. App’x 991, 997 (Fed. Cir. 2016) (“We have considered all of Lending
Tree’s remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an ‘inventive concept,’ we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g.,
Appeal 2019-001067
Application 14/077,873

18
OIP Techs., 788 F.3d at 1364; Fair Warning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1098 (Fed. Cir. 2016).

The rejection of claims 1, 5–11, and 15–20 under 35 U.S.C. § 103(a) as
being unpatentable over Bauer
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection.). We sustain the Section 103 rejection for the reasons expressed
by the Examiner in the Non-Final Office Action of January 24, 2018 and the
Answer.
We add the following primarily for emphasis.
Appellant’s main contentions are that 1) Bauer fails to teach
alignment portions of a used and a baseline profile of the turbomachine
airfoil (Appeal Br. 9–10; Reply Br. 5–6), 2) Bauer “never attains profiles
wherein . . . erosion has not occurred” (Appeal Br. 10), 3) Appellant has
identified a problem with Bauer due to manufacturing variation that its
invention has overcome (Appeal Br. 11), 4) the Examiner ignores the plain
meaning of “profile” when determining that Bauer teaches comparing
profiles (Appeal Br. 12), and 5) Bauer never teaches comparing a baseline
profile with the used profile (Reply Br. 6).
Appeal 2019-001067
Application 14/077,873

19
Appellant’s arguments are not persuasive of reversible error for
reasons presented by the Examiner (Ans. 8–14).
Appellant’s arguments fail to consider the applied prior art as a whole
and the inferences that one of ordinary skill in the art would have made
therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992)
(holding that a reference stands for all of the specific teachings thereof as
well as the inferences one of ordinary skill in the art would have reasonably
been expected to draw therefrom).
Assuming arguendo that Appellant is correct that Bauer does not
explicitly teach that aligning opposing substantially straight alignment
portions of the two-dimensional used profile with opposing substantially
straight alignment portions of a previously attained two-dimensional,
baseline profile of the turbomachine profile, a preponderance of the evidence
still supports the Examiner’s determination of obviousness.
There is no dispute that Bauer collects data representing turbomachine
airfoil erosion data (Bauer, Figure 2A, 2B and 4), which data could be
reasonably construed as a type of profile. As the Examiner points out, Bauer
also teaches using this data representing used and baseline airfoils for
comparison to each other (via a determined distance) in order to determine
whether the leading edge of the used turbomachine airfoil has erosion (Ans.
14; Bauer, Figure 9, and page 12). Bauer is silent on whether the determined
distance comparison entails the opposing edge portions being aligned.
However, at least in Figure 4 of Bauer, the image presented is of
several profiles “overlaid” onto each other (Bauer, page 8; Non-Final Act.
7–8). Overlaying multiple profiles of an airfoil to show erosion areas will
Appeal 2019-001067
Application 14/077,873

20
necessarily include alignment of the profiles to have data that is equivalent
for an apples-to-apples type comparison. Further, Bauer’s Figure 4 supports
the overlaying of profiles by the graph – which has only one line on each of
the left and right sides of the shape on the graph. (Bauer, Figure 4). If the
edges were not aligned, there would be more lines shown, similar to the
different lines on the top of the figure that represent different profiles
overlaid. One of ordinary skill in the art at the time the invention was filed
would have readily appreciated that Bauer overlays airfoil blade profiles to
determine differences between those profiles in order to determine erosion.
As the Examiner points out, determining erosion via use of the data
determined by a laser profiler of an airfoil is a goal of both Bauer and
Appellant (Non Final Act. 16), and the use of Bauer’s known data (profiles
with alignment portions in Figures 2A and 2B), also disclosed in Bauer’s
overlaying shown in Figure 4, would have been an obvious modification.
Further, the Specification does not limit the “baseline” profile to be an
unused or ideal model, but also states that the baseline profile “may be
attained by measuring the turbomachine airfoil being evaluated after some
amount of use.” Spec. ¶ 31. Therefore, the baseline can be reasonably
construed as the other profiles overlaid in Figure 4, and is not limited to the
teaching of Bauer in Figure 2A of a non-eroded airfoil edge (Figure 2A,
contrasted with Figure 2B at Bauer, page 7, ¶ 9). Moreover, Bauer does
disclose an ideal or optimal baseline comparison by comparing an obtained
(used) distance parameter with a “predetermined distance” to determine if
there is “unacceptable erosion.” (Bauer, page 12, ¶ 2).
Appeal 2019-001067
Application 14/077,873

21
Appellant has not persuasively disputed the Examiner’s determination
that one of ordinary skill in the art, using no more than ordinary creativity,
would have used the comparison steps of Bauer (at page 12) with an
overlaying and aligning of baseline and used profiles of an airfoil shown in
Bauer’s Figure 2A and 2B. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (“[T]he analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.”); see also id. at 421 (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”); In re Fritch, 972 F.2d at
1264–65.
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 11, and 20, as well as all rejected claims dependent thereon, noting
that no claims are separately argued (Appeal Br. 9–13).

CONCLUSION
The decision of the Examiner to reject claims 1–20 is affirmed.
More specifically:
The rejection of claims 1-20 under 35 U.S.C. § 101 is affirmed.
The rejection of claims 1, 5–11, and 15–20 under 35 U.S.C. § 103(a)
is affirmed.

Appeal 2019-001067
Application 14/077,873

22
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 § 101 Eligibility 1–20
1, 5–11,
15–20
§ 103 Bauer 1, 5–11,
15–20

Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
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).

AFFIRMED