ABB Research Ltd.

Patent Trials and Appeals Board

Dec 14, 2020

2020003486 (P.T.A.B. Dec. 14, 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.
14/142,027 12/27/2013 Steven Thomas Zyglowicz PG-US-13038-
OAG-US-NP
4656
167938 7590 12/14/2020
SLATER MATSIL, LLP / ABB Power Grids
17950 PRESTON RD, SUITE 1000
DALLAS, TX 75252-5793
EXAMINER
KNOX, TYLER W
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/14/2020 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):
docketing@slatermatsil.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN THOMAS ZYGLOWICZ, KAREN J. SMILEY,
SHAKEEL M. MAHATE, and CHIHHUNG HOU
____________

Appeal 2020-003486
Application 14/142,027
Technology Center 3600
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MOHANTY, 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 1–10, 12–19, and 21. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as ABB Power Grids
Switzerland AG (Appeal Br. 2).
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Application 14/142,027

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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a method for generating,
using a model, a health profile of an industrial asset based upon data
generated during an assessment period and indicative of the industrial asset
(Spec., para. 6). Claim 1, reproduced below with the italics added, is
representative of the subject matter on appeal.

1. A method, comprising:
generating a first health profile of an industrial asset using a
model comprising first data generated during an assessment period
and indicative of the industrial asset, the first health profile
comprising a maintenance plan providing one or more maintenance
actions that are recommended to be performed with respect to the
industrial asset during a maintenance period;
receiving second data generated during the maintenance period
and indicative of the industrial asset;
updating the model, via a processor, wherein updating the
model comprises:
adding the second data to the model responsive to identifying a
pattern in the second data; and
responsive to the addition of the second data to the model and
responsive to determining that a cost corresponding to resources
required to acquire the first data is greater than a benefit
corresponding to an improvement in at least one of accuracy or
confidence of predictions associated with the model comprising the
first data, removing the first data from the model to generate an
updated model;
generating, using the updated model comprising the second
data and not the first data, a second health profile of the industrial
asset; and
generating instructions to perform one or more actions
associated with the industrial asset based upon the second health
profile.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kadambe US 7,478,071 B2 Jan. 30, 2009
Byrne et al. US 2009/0037206 A1 Feb. 5, 2009
Nasle et al. US 2009/0113049 A1 Apr. 30, 2009

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–10, 12–19, and 21 are rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter.
2. Claims 1–10, 12–19, and 21 are rejected under 35 U.S.C. § 103
as unpatentable over Bryne, Nasle, and Kadambe.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 5, 6; Reply Br. 2, 3).
The Appellant argues further that the claim represents an integration into a
practical application (App. Br. 6–8; Reply Br. 3). The Appellant argues

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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further that the claim provides an inventive concept by adding a feature that
is not well-understood, routine, conventional activity in the field (App. Br. 8,
9; Reply Br. 3, 4).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 7–16, Ans. 3–9).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. 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.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under 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
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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, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] 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.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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.
See Guidance.
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 (citation omitted). “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. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Specification at para. 6 states that the invention generally relates
to a method for generating, using a model, a health profile of an industrial
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asset based upon data generated during an assessment period and indicative
of the industrial asset. Here, the Examiner has determined that the claim sets
forth “removing [a] first data from [a] model to generate an updated model”
when the “cost corresponding to resources required to acquire the first data
is greater than a benefit corresponding to an improvement in . . . accuracy or
confidence of predictions” while assessing the “health profile[s] of [an]
industrial asset” and is a method of organizing human activities and
fundamental economic practice (Final Act. 9, 10).
We substantially agree with the Examiner. We determine that the
claim sets forth the subject matter in italics above, which describes the
concept of: [1] “generating a first health profile of an industrial asset using a
model comprising first data generated during an assessment period and
indicative of the industrial asset”; [2] “receiving second data generated
during the maintenance period and indicative of the industrial asset”;
[3] “updating the model. . . wherein updating the model comprises: adding
the second data to the model responsive to identifying a pattern in the second
data”; [4] “responsive to the addition of the second data to the model and
responsive to determining that a cost corresponding to resources required to
acquire the first data is greater than a benefit corresponding to an
improvement in . . . accuracy or confidence of predictions associated with
the model comprising the first data, removing the first data from the model
to generate an updated model”; [5] “generating, … a second health profile of
the industrial asset”; and [6] “generating instructions to perform one or more
actions associated with the industrial asset based upon the second health
profile,” which is a method of generating a model to assess an industrial
asset using data and determining actions based on the model, which is a
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certain method of organizing human activities, i.e. a judicial exception. A
method, like the claimed method, “a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible.” See Digitech Image Techs, LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). See Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting
information, analyzing it, and displaying results from certain results of the
collection and analysis was held to be an abstract idea. Courts have found
claims directed to collecting, recognizing, and storing data in a computer
memory to be directed to an abstract idea. Content Extraction and
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir.
2014).
We next determine whether the claim recites additional elements to
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e)–(h).
Here, the claim does not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claim imposes a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort to monopolize the judicial exception.
For example, in the claim, the additional element beyond the abstract
idea is the recited “processor.” The claimed limitations of “generating…a
profile,” “receiving….data,” “updating the model,” “adding the second data
to the model,” and “generating instructions” here “do not purport to improve
the functioning of the computer itself,” do not improve technology or a
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technical field, and do not require a “particular machine.” Rather, they are
performed using generic computer components. Further, the claim as a
whole fails to effect any particular transformation of an article to a different
state. The recited steps in the claim fail to provide meaningful limitations to
limit the judicial exception. In this case, the claim merely uses the claimed
computer element as a tool to perform the abstract idea.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references MPEP § 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim elements both individually and as an ordered
combination fails to add subject matter beyond the judicial exception that is
not well-understood, routine, and conventional in the field. Rather the claim
uses well-understood, routine, and conventional activities previously known
in the art and they are recited at a high level of generality. The Specification
at paras. 115–122 for example describes using conventional computer
components such as a processing unit and memory, in a conventional
manner. The claim specifically includes recitations for computers to
implement the method but these computer components are used in a manner
that is well-understood, routine, and conventional in the field. Here, the
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claimed generic computer components which are used to implement the
claimed method are well understood, routine, or conventional in the field.
Here, the claim has not been shown to be “significantly more” than the
abstract idea.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for the remaining claims which
are drawn to similar subject matter and the rejection of these claims is
sustained for the same reasons given above.

Rejection under 35 U.S.C. § 103
The Appellant argues that the rejection of claim 1 is improper because
the prior art fails to disclose the claim limitation requiring:
adding the second data to the model responsive to identifying a
pattern in the second data; and
responsive to the addition of the second data to the model and
responsive to determining that a cost corresponding to resources
required to acquire the first data is greater than a benefit
corresponding to an improvement in at least one of accuracy or
confidence of predictions associated with the model comprising the
first data, removing the first data from the model to generate an
updated model;

(App. Br. 11).
In contrast, the Examiner has determined that cited claim limitation is
disclosed by Kadambe at Fig. 3 (step 306, 310) and col. 2, line 51 to col. 3,
line 10 (Ans. 9).
We agree with the Appellant. Here, the argued claim limitation
requires first “adding the second data to the model responsive to identifying
a pattern in the second data” and then responsive to that “determining that a
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cost corresponding to resources required to acquire the first data is greater
than a benefit … comprising the first data, removing the first data from the
model to generate an updated model” and the citations to Kadambe at Fig. 3
and col. 2, line 51 to col. 3, line 10 fail to disclose this. For example, in
Kadambe at Fig. 3 at step 306 it is disclosed that the “cost/benefit analysis”
is performed, but it is not specifically disclosed that this results in removing
the first data from the model to generate an updated model. That is, it is not
specifically disclosed that the “second data” is added to the model and
subsequently that the first data is removed in the specific manner and
sequence in the cited claim limitation. Accordingly, the rejection of claim 1
and its dependent claims is not sustained. Independent claim 10 contains a
similar limitation and the rejection of this claim and its dependent claims is
not sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting Claims 1–10, 12–19, and 21 under 35 U.S.C. § 101.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1–10, 12–19, and 21 under 35 U.S.C. § 103 as unpatentable
over Bryne, Nasle, and Kadambe.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12–
19, 21
101 Eligibility 1–10, 12–
19, 21

1–10, 12–
19, 21
103 Bryne, Nasle,
Kadambe
1–10, 12–
19, 21
Overall
Outcome
1–10, 12–
19, 21

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