Akli Adjaoute

Patent Trials and Appeals Board

Oct 10, 2019

14815940 - (D) (P.T.A.B. Oct. 10, 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.
14/815,940 07/31/2015 Akli Adjaoute 51403-US-CIP1-CIP1-CIP2 4474
150180 7590 10/10/2019
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
10/10/2019 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):
uspatents@hoveywilliams.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AKLI ADJAOUTE
____________________

Appeal 2018-007443
Application 14/815,9401
Technology Center 3600
____________________
Before DEBRA K. STEPHENS, CARL WHITEHEAD JR., and
JASON V. MORGAN, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–16, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to a method “for
protecting groups of digital electronic appliances used collectively for
monitoring the operations of machines and for issuing predictions, warnings

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Brighterion, Inc., as the real party in
interest. (App. Br. 3).
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and calls for preventative maintenance and equipment failure interventions”
(Spec. 1 § Field of the Invention). The method “empanels several different
artificial intelligence (AI) classification technologies into a ‘jury’ uses
combinational digital logic to render ‘verdicts’ about the need for service
and impending equipment failures of the machines they monitor” (Abstract).
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for monitoring the operation of machines and for
issuing calls for preventative maintenance and predictions of
equipment failures, comprising:
attaching monitoring devices, instruments, and
transducers to a machine subject to operational failures;
reading in measurements and data obtained by the
monitoring devices, instruments, and transducers regarding the
status and operation of the machine;
empaneling a jury of classification models as jurors to
assess the measurements and data obtained with a separate
computer programmed for that purpose;
presenting all the measurements and data obtained to the
jury with a separate computer programmed for that purpose;
classifying the measurements and data obtained and
presented to the jury according to a logic decision tree and
outputting a juror vote that includes a confidence assessment
with a separate computer programmed for that purpose;
classifying the measurements and data obtained and
presented to the jury according to a neural network and
outputting another juror vote that includes a confidence
assessment with a separate computer programmed for that
purpose;
classifying the measurements and data obtained and
presented to the jury according to a fuzzy logic and outputting
another juror vote that includes a confidence assessment with a
separate computer programmed for that purpose;
classifying the measurements and data obtained and
presented to the jury according to a smart agent profiling and
outputting another juror vote that includes a confidence
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assessment with a separate computer programmed for that
purpose;
classifying the measurements and data obtained and
presented to the jury according to business rules and outputting
another juror vote that includes a confidence assessment with a
separate computer programmed for that purpose;
classifying the measurements and data obtained and
presented to the jury according to case-based reasoning and
outputting another juror vote that includes a confidence
assessment with a separate computer programmed for that
purpose;
collecting all the juror votes into a single ballot and
mathematically apply individual weights in calculations to each
respective juror vote with respect to its own confidence
assessment and a priori data inputs with a separate computer
programmed for that purpose;
tallying a verdict from the results obtained in the
previous steps, and that predicts an operational failure of the
machine by outputting a report with a separate computer
programmed for that purpose; and
tallying another verdict from the results obtained in the
previous steps, and that summons a particular service procedure
and/or a replacement part for the machine by outputting another
report so the costs of maintaining the machine are reduced.

REJECTIONS
Claims 1–16 stand rejected under 35 U.S.C. §101 as not being
directed to patent-eligibility subject matter (Final Act. 2–5).2

2 Claim 2 is objected to for being wrongly numbered (Final Act. 2). This
issue is not before us (see MPEP §§ 706.01, 120 (9th ed., Rev 9, March
2014)).
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ANALYSIS
Principles of Law
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 (Alice Corp. Pty. Ltd. 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
id. 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
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
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rubber, smelting ores” (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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 176; 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. (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.”)).
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 (quotation marks 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. (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.).
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USPTO January 7, 2019, Revised Section 101 Memorandum
The USPTO published revised guidance on the application of § 101
(see 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019 (“Revised 101 Guidance”)). Under the Revised 101
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 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)).
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, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.

The Examiner concluded claims 1–16 are directed to patent-ineligible
subject matter (Final Act. 2–7). Appellants argue the invention as recited in
claims 1–16 is directed to patent-eligible subject matter (App. Br. 6–12).
Therefore, the issue presented by the arguments is whether the Examiner
erred in concluding the invention as recited is patent-ineligible.
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STEP 1
Section 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, subject to
the conditions and requirements of this title” (35 U.S.C. § 101).
Independent claim 1 recites a method for monitoring and independent claim
8 recites to a group of electronic appliances for monitoring and, thus, each is
directed to a statutory class of invention within 35 U.S.C. § 101, i.e., a
process and a machine, respectively.

STEP 2A, Prong 1
Under Step 2A, Prong 1 of the Revised 101 Guidelines, we must
determine whether the claims, being directed to statutory classes of
invention, nonetheless fall within a judicial exception.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
(a) Mathematical concepts – mathematical relationships,
mathematical formulas or equations, mathematical calculations;
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(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)

(see Revised 101 Guidance, 84 Fed. Reg. at 52 (citations omitted)).
According to the Revised 101 Guidance, “claims that do not recite [subject]
matter that falls within these enumerated groupings of abstract ideas should
not be treated as reciting abstract ideas,” except in rare circumstances (see
Revised 101 Guidance, 84 Fed. Reg. at 53). Even if the claims recite any
one of these three groupings of abstract ideas, these claims are still not
“directed to” a judicial exception (abstract idea), and thus are patent eligible,
if “the claim as a whole integrates the recited judicial exception into a
practical application of that judicial exception” (see Revised 101 Guidance,
84 Fed. Reg. at 53). Under the Revised 101 Guidance, if the claim does not
recite a judicial exception (a law of nature, natural phenomenon, or subject
matter within the enumerated groupings of abstract ideas above), then the
claim is patent-eligible at Step 2A, Prong 1. This determination concludes
the eligibility analysis, except in situations identified in the Revised 101
Guidance.
The Examiner contends the claims are “directed toward the abstract
idea of monitoring the operation of machines” and “monitoring the operation
of machines is a fundamental economic practice” (Final Act. 3). Therefore,
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according to the Examiner, “claim 1 includes an abstract idea” (id.). In
particular, the Examiner determines “[t]he limitations in the claim that set
forth the abstract idea are: ‘a method for reading data; assessing data;
presenting data; classifying data; collecting data; and tallying data’” (id. at 3,
5).
We determine the claim does not recite “certain methods of
organizing human activity” (see Revised 101 Guidance, 84 Fed. Reg. at 52).
In particular, we agree with Appellants that the claims do not recite a
fundamental economic practice (App. Br. 10). Specifically, we do not find
“monitoring the operation of machines” as recited in the instant application,
is a fundamental economic principle (such as hedging, insurance, or
mitigating risk). Rather, the claims recite monitoring operation of machines
using neural networks, logic decision trees, confidence assessments, fuzzy
logic, smart agent profiling, and case-based reasoning (see Spec., Claims 1
and 8).
Nor do we see how the claimed invention recites commercial or legal
interactions, or managing personal behavior or relationships or interactions
between people, for example (see Revised 101 Guidance, 84 Reg. at 52). As
such, we are not persuaded the claim as recited falls within the category of
“certain methods of organizing human activity.”
Nor do we determine the claims as recited are directed to a mental
process. A claim recites a mental process when the claim encompasses acts
people can perform using their minds or pen and paper (see, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (determining that a claim whose “steps can be performed in the
human mind, or by a human using a pen and paper” is directed to an
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unpatentable mental process)). This is true even if the claim recites that a
generic computer component performs the acts (see, e.g., Versata Dev. Grp.,
Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind”); see also Revised 101 Guidance, 84 Fed. Reg. at 52
n.14 (“If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”)).
Claims 1 and 8 as recited are not practically performed in the human
mind. As discussed above, the claims recite monitoring operation of
machines using neural networks, logic decision trees, confidence
assessments, fuzzy logic, smart agent profiling, and case-based reasoning
(Spec., Claims 1 and 8). Specifically, the claims recite “empaneling a jury
of classification models as jurors to assess the measurements and data
obtained” and “presenting all the measurements and data obtained to the
jury” (id.). The claims further recite classifying the measurement and data
according to “a logic decision tree,” “a neural network” “a fuzzy logic,” “a
smart agent profiling,” “business rules,” “case-based reasoning,” and
outputting a juror vote that includes a confidence assessment for each
classification” (see Spec., Claim 1). Claim 8 similarly recites modules and
specifically, “a smart-agent juror module,” “a data-mining juror module,” “a
fuzzy logic juror module,” “a business-rules juror module,” “a case-based
reasoning juror module,” “an associative-learning juror module,” “a
clustering juror module,” and “a metarule arbiter module” (see Spec., Claim
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8). Lastly, claim 1 recites tallying two different verdicts from the
classification results and claim 8 recites “an output device that transforms
the composite prediction output into human-readable form.”
Moreover, the Specification discloses “embodiments of the present
invention empanel several different artificial intelligence (AI) classification
technologies into a ‘jury’ that uses combinational digital logic to render
‘verdicts’ about the need for service and impending equipment failures of
the machines they monitor” (Spec. 3). The Specification further describes
“[multiple artificial intelligence technologies [of the described system are]
embedded and include[e] . . . particular smart-agents with real-time and
long-term profiling, data mining, neural networks, business rules, fuzzy
logic, case-based reasoning, etc. Each technology independently returns its
own predictions, confidence scores, and reason details” (id. at 10).
In other words, the “classifying” steps of claims 1 and “modules” of
claim 8 when read in light of the Specification, recite a method and system
difficult and challenging for non-experts due to their computational
complexity. As such, we conclude that one of ordinary skill in the art would
not find it practical to perform the aforementioned “classifying” steps recited
in claim 1 and function of the “modules” recited in claim 8 mentally. We
conclude that it is not practical for one of ordinary skill in the art to perform
the aforementioned the “classifying” steps of claims 1 and functions of the
“modules” of claim 8 step mentally.
Also, although the Specification identifies some of the criteria used by
the “classifying” steps of claim 1 and the “modules” of claim 8, the specific
mathematical algorithm or formula is not explicitly recited in the claims. As
such, under the recent Revised 101 Guidance, the claims do not recite a
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mathematical concept (see, e.g., Subject Matter Eligibility Examples:
Abstract Ideas, at 7 (Jan. 7, 2019) (discussing Example 38 and noting that
“[t]he claim does not recite a mathematica1 relationship, formula, or
calculation. While some of the limitations may be based on mathematical
concepts, the mathematical concepts are not recited in the claims”)).
As such, based on the record before us, we are persuaded that the
Examiner erred in Step 2A, Prong 1 by determining that the claims recite an
abstract idea.

Step 2A, Prong 2
Even assuming arguendo, that the claims had recited an abstract idea,
we are persuaded the idea is integrated into a practical application as
discussed in the Revised 101 Guidance (Revised 101 Guidance 54).
Specifically, we determine the claim is recited “in a manner that imposes a
meaningful limit, such that the claim is more than a drafting effort designed
to monopolize” the idea (id.). Here, claim 1 recites:
tallying a verdict from the results obtained in the
previous steps, and that predicts an operational failure of the
machine by outputting a report with a separate computer
programmed for that purpose; and
tallying another verdict from the results obtained in the
previous steps, and that summons a particular service procedure
and/or a replacement part for the machine by outputting another
report so the costs of maintaining the machine are reduced.
We are persuaded claim 1 and commensurately recited claim 8 recite
additional elements that integrate the recited invention into a practical
application. In particular, Appellant describes:
The present invention relates to methods for protecting groups of
digital electronic appliances used collectively for monitoring the
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operation of machines and for issuing predictions, warnings and
calls for preventative maintenance and equipment failure
interventions, and more particularly to methods that use
computer data processing systems to empanel several artificial
intelligence (AI) classification technologies into a “jury” that
renders “verdicts” about the need for service and impending
equipment failures
(Spec. 1). Appellant further describes in a virtual world of a computer, a
parallel panel or “jury” of classification engines each apply different
techniques and methods to analyze, interpret, and scrutinize identical parallel
attribute sets, which replace an actual physical machine (id. at 7). Like the
claims in DDR, claims 1 and 8 “do not merely recite the performance of
some business practice known from the pre-Internet world along with the
requirement to perform it on the Internet” (DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). “Instead, the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks”
(id.). Likewise, Appellant’s claims address a problem specifically using
several artificial intelligence classification technologies to monitor the
operation of machines and to predict preventative maintenance needs and
equipment failure (Spec. 1). Claims 1 and 8 both recite “monitoring the
operation of machines and for issuing calls for preventative maintenance and
predictions of equipment failure.” Claim 1 further recites “tallying” the
classification results into a verdict that “predicts an operational failure of the
machine by outputting a report with a separate computer” and into another
verdict that “summons a particular service procedure and/or a replacement
part for the machine by outputting another report so the costs of maintaining
the machine are reduced.” Similarly, claim 8 further recites “produc[ing] a
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single composite prediction output.” We, therefore, find the claimed
additional elements integrate the recited idea into a practical application.

Conclusion
As discussed above, we are persuaded that the Examiner erred in Step
2A, Prong 1 by determining that the claims recite an abstract idea. We are
further persuaded that, even assuming arguendo, the claims recite an abstract
idea, the claims integrate the recited idea into a practical application in Step
2A, Prong 2. Accordingly, we determine the claims as recited are directed
to patent-eligible subject matter.

CONCLUSION
In summary:

Claim(s) Rejected Basis Affirmed Reversed
1–16 § 101 1–16
Overall Outcome 1–16

DECISION
For the reasons above, we reverse the Examiner’s rejection of claims
1–16.

REVERSED