Clyde T. Eisenbeis et al.Download PDFPatent Trials and Appeals BoardAug 28, 201914553362 - (D) (P.T.A.B. Aug. 28, 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. 14/553,362 11/25/2014 Clyde T. Eisenbeis 20040/56-12659 1081 34431 7590 08/28/2019 HANLEY, FLIGHT & ZIMMERMAN, LLC 150 S. WACKER DRIVE SUITE 2200 CHICAGO, IL 60606 EXAMINER HIDALGO, FERNANDO N ART UNIT PAPER NUMBER 2827 NOTIFICATION DATE DELIVERY MODE 08/28/2019 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): jflight@hfzlaw.com mailroom@hfzlaw.com mhanley@hfzlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CLYDE T. EISENBEIS, THOMAS PESEK, and ROSS SCHADE ____________________ Appeal 2018-007300 Application 14/553,362 Technology Center 2800 ____________________ Before JAMES C. HOUSEL, DEBRA L. DENNETT, and JANE E. INGLESE, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–13, 16–18, 20, 21, 23, and 24 under 35 U.S.C. § 101. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In our Decision, we refer to the Specification filed November 25, 2014 (“Spec.”); the Non-Final Office Action dated October 30, 2017 (“Non-Final Act.”); the Appeal Brief filed March 27, 2018 (“App. Br.”); the Examiner’s Answer dated May 3, 2018 (“Ans.”); and the Reply Brief filed June 28, 2018 (“Reply Br.”). 2 Appellant is the Applicant, Fisher Controls International LLC, identified as the real party in interest. App. Br. 2. Appeal 2018-007300 Application 14/553,362 2 THE INVENTION Appellant’s invention generally relates to methods and apparatus to diagnose failure of a valve using electric valve actuators. Spec. ¶ 1. Independent claims 1, 12, and 21, reproduced below from the Claim Appendix, illustrate the claimed subject matter: 1. An electric valve actuator comprising: an electric motor to actuate a valve; rotation sensors to monitor a rotation of a drive shaft associated with the electric motor to determine a distance travelled by the drive shaft; a valve position sensor to determine a measured position of a flow control member of the valve when the valve is fully closed at a first point in time; and a processor to generate an alert based on a difference between the measured position and a reference position, the reference position corresponding to a position of the flow control member of the valve when the valve is fully closed at a second point in time before the first point in time, the alert associated with a failure of the valve. 12. A method comprising: monitoring, via rotation sensors, a distance travelled by a drive shaft associated with an electric motor of an electric valve actuator used to operate a valve; determining a measured position of a flow control member of the valve, via a valve position sensor when the valve is fully closed at a first point in time; and generating, by executing an instruction on a processor, an alert based on a difference between the measured position and a reference position, the reference position corresponding to a position of the flow control member of the valve when the valve is fully closed at a second point in time before the first point in time, the alert associated with a failure of the valve. Appeal 2018-007300 Application 14/553,362 3 21. A tangible machine readable storage medium comprising instructions that, when executed, cause a machine to at least: monitor a distance travelled by a drive shaft associated with an electric motor of an electric valve actuator used to operate a valve; determine a measured position of a flow control member of the valve, via a valve position sensor when the valve is fully closed at a first point in time; and generate an alert based on a difference between the measured position and a reference position, the reference position corresponding to a position of the flow control member of the valve when the valve is fully closed at a second point in time before the first point in time, the alert associated with a failure of the valve. REJECTION The Examiner maintains the rejection of all pending claims (claims 1– 13, 16–18, 20, 21, 23, and 24) under 35 U.S.C. § 101 as directed to a judicial exception to patent-eligible subject matter, without significantly more. Non- Final Act. 4–5. OPINION The Examiner finds that each of the pending claims is directed to an abstract idea. Final Act. 2–3. The Examiner determines that claims 1 and 21 and their dependent claims are directed to the abstract idea of “collection of information, analysis thereof and displaying, conveying certain results of the collection and analysis.” Id. at 5, 8 (referencing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The Examiner finds also that the claims do “not include additional elements that are sufficient to amount to significantly more” than an abstract idea because the additional elements “are recited at a high level of generality, necessaries, routine or are Appeal 2018-007300 Application 14/553,362 4 conventional to facilitate the application of the abstract idea.” Id. at 5, 8. With respect to claim 12 (the method claim), the Examiner finds that the claim is directed to the collection of information, analysis thereof and displaying, conveying certain results of the collection and analysis, and/or an algorithm/procedure for calculating parameters indicating an abnormal condition (referencing In re Grams, 888 F.2d 835 (Fed. Cir. 1989)). Id. at 6. Appellant argues that the claims are patent eligible. App. Br. 11–32. Regarding claim 1, Appellant argues that the Examiner overgeneralizes the claim by failing to consider it as a whole. Id. at 12–13. Appellant contends that claim 1 is directed to an electric valve actuator that includes an electric motor, rotation sensors, a valve position sensor, and a processor. Id. at 14. Appellant contends that the Examiner focuses exclusively on what the recited processor does, and disregards all other limitations as insignificant additional elements. Id. Appellant argues that method claim 12 specifies what parameters are being measured and what devices are used to measure such parameters to produce the outcome of generating an alert associated with a failure of a valve. Id. at 30. Appellant contends that, unlike the claims in Grams to which the Examiner cites, claim 12 does not cover only an algorithm, but rather, improves the detection of failures of a valve, similar to the claims in Thales Visionix Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017). Id. According to Appellant, when claim 21 is read as a whole, it is not directed to an abstract idea that gives rise to concerns that a fundamental building block of science or technology is being monopolized. App. Br. 32. Appellant contends that the claim language of claim 21 properly read as a whole is not routine, well understood or conventional. Id. Appeal 2018-007300 Application 14/553,362 5 Applying the guidance set forth in the Memorandum, we conclude under 35 U.S.C. § 101 that claims 1–13, 16–18, 20, 21, 23, and 24 recite patent-eligible subject matter. I. Principles of Law Section 101 defines patent-eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has long held that “laws of nature, natural phenomena, and abstract ideas” are not patentable, are ineligible concepts that are implicit exceptions to the statutory categories. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70–71 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). The Supreme Court articulated a two-step subject-matter eligibility test in Mayo and Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). Alice/Mayo step one asks whether a claim is “directed to” a judicial exception. Alice, 573 U.S. at 217. In Alice/Mayo step two, we consider “the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). Step two is described as a search for an “inventive concept.” Id. After submission of the briefing in this appeal, the USPTO published revised guidance on patent subject matter eligibility. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). The initial inquiry in the USPTO’s eligibility analysis asks whether the claimed subject matter falls within the four statutory categories of invention. Id. at 53–54. If so, then under Step 2A, Prong One of the Appeal 2018-007300 Application 14/553,362 6 Guidance, we determine if the claim recites a judicial exception, including particular groupings of abstract ideas. Id. at 52–53. 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, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 183 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 Appeal 2018-007300 Application 14/553,362 7 to a known structure or process may well be deserving of patent protection.”). If the claim recites a judicial exception (such as an abstract idea), we turn to Step 2A, Prong Two of the Guidance (and part of the Alice and Mayo framework), where we must examine the elements of the claim to determine whether it integrates the judicial exception into a practical application of the exception. Guidance, 84 Fed. Reg. at 53–55; see also MPEP §§ 2106.05(a)– (c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018); 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].’”). “When the exception is so integrated, then the claim is not directed to a judicial exception . . . and is eligible” subject matter, concluding the eligibility analysis. Guidance, 84 Fed. Reg. at 54. Only if the additional elements do not integrate the exception into a practical application is the claim directed to a judicial exception, requiring us to look to whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional activity in the field” (see MPEP § 2106.05(d)) or whether the claim simply appends well- understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56. II. Analysis The subject matter of all of the pending claims falls within the four statutory categories of invention. Guidance, 84 Fed. Reg. at 53–54. We address independent claim 1 separately from independent claims 12 and 21. A. Claim 1 and Its Dependent Claims Appeal 2018-007300 Application 14/553,362 8 Claim 1 recites “a processor to generate an alert based on a difference between the measured position and a reference position,” “the alert associated with a failure of the valve.” App. Br. 34 (Claims App.). We turn to Step 2A, Prong One of the Guidance, to determine if the claims recite one or more judicial exceptions. Guidance, 84 Fed. Reg. at 52–53. 1. Revised Step 2A, Prong One–Recitation of a Judicial Exception In the Non-Final Action, the Examiner generally discusses claim 1 as directed to “a judicial exception,” but review of the action indicates the judicial exceptions at issue are abstract ideas. See Non-Final Act. 5–9. Our reviewing court treats collecting and analyzing information as mathematical concepts and a mental process. See Elec. Power Grp., 830 F.3d at 1353–54. Claim 1’s requirement of “generating an alert based on a difference between the measured position and a reference position” recites a mathematical concept and a mental process (determining a difference). Mathematical concepts and mental processes are abstract ideas. Guidance, 84 Fed. Reg. at 52. 2. Revised Step 2A, Prong Two—Practical Application In Prong Two, we evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. Guidance, 84 Fed. Reg. at 54. If a recited judicial exception is integrated into a practical application that applies, relies on, or uses 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, the claim is not directed to a judicial exception. Id. Appeal 2018-007300 Application 14/553,362 9 Although claim 1 recites a mathematical concept and a mental process (generating an alert based on a difference between the measured position and a reference position), the claim is not directed to an abstract idea. Claim 1 recites an electric valve actuator comprising an electric motor, rotation sensors, a valve position sensor, and a processor. App. Br. 34 (Claims App.). Although the Examiner finds that these elements are recited at a high level of generality, or are routine or conventional to facilitate the application of the abstract idea, we disagree. These elements are recited with the necessary particularity to ensure that the functional relationships between these structures is set forth and that the intended purpose of the electric valve actuator is achieved. See MPEP 2106.05(b)(I). As such, they are not recited at such a high level of generality that their recitation adds little to the recited abstract idea. Indeed, these elements as recited in claim 1, taken as a whole, are directed to patent eligible subject matter that does not become ineligible simply because it recites an abstract idea. Analogous to Diehr, claim 1 is patent eligible under § 101 because it implements or applies the collected information in a structure which, considered as a whole, performs a function that the patent laws were designed to protect. Diehr, 450 U.S. at 192. Accordingly, we agree with Appellant that claim 1 and its dependent claims are not directed to a judicial exception to patent eligibility, concluding the eligibility analysis for these claims. See Guidance, 84 Fed. Reg. at 54. B. Claim 12 and Its Dependent Claims Claim 12 recites a method comprising, inter alia, “generating, by executing an instruction on a processor, an alert based on a difference Appeal 2018-007300 Application 14/553,362 10 between the measured position and a reference position.” App. Br. 34 (Claims App.). 1. Revised Step 2A, Prong One–Recitation of a Judicial Exception The Examiner finds claim 12 is directed to the collection of information, analysis thereof and displaying, conveying certain results of the collection and analysis (citing Elec. Power Group) and an algorithm or procedure for calculating parameters indicating an abnormal condition (citing Grams) based on the claimed “monitoring” and “generating an alert” steps. Non-Final Act. 6. Claim 12 recites “generating . . . an alert based on a difference between the measured position and a reference position;” thus claim 12 recites a mathematical concept and a mental process, both of which are abstract ideas. See Guidance, 84 Fed. Reg. at 52. Thus, we proceed to consideration of Prong Two to determine whether the claim is directed to an abstract idea. Id. at 54. 2. Revised Step 2A, Prong Two—Practical Application We ask here whether the claim as a whole integrates the recited judicial exception into a practical application of the exception, such that the claim as a whole is not directed to an abstract idea. See Guidance, 84 Fed. Reg. at 54. In Parker v. Flook, the Supreme Court found that claims to a method for updating alarms limits, wherein the only difference from conventional methods was a mathematical algorithm or formula for computing the updated alarm limits, did not describe patentable subject matter. Flook, 437 U.S. at 585–86, 590. The Supreme Court noted that the process itself, not merely the mathematical algorithm, must be new and useful to comply with Appeal 2018-007300 Application 14/553,362 11 § 101. Id. at 590. The decision considered that both the process and the mathematical formula were well known. Id. at 592. We distinguish claim 12 from Parker v. Flook. The alert generated by the method of claim 12 diagnoses failure of the valve, causing the operation to stop. See Spec. 3, Fig. 6. At least on this basis, the claim is not directed to an abstract idea. We also distinguish claim 12 from the claims in Grams, which the Examiner cites as analogous. See Non-Final Act. 6. In Grams, the Federal Circuit noted that “the mere presence of a mathematical exercise, as a step or steps in a process involving nonmathematical steps, should not slam the door of the Patent and Trademark Office upon an applicant.” Grams, 888 F.2d 835, 838 (Fed. Cir. 1989) (quoting In re Sarkar, 588 F.2d 1330, 1333 (1978)). Grams discussed In re Walter, 618 F.2d 758 (CCPA 1980), which held: Once a mathematical algorithm has been found, the claim as a whole must be further analyzed. If it appears that the mathematical algorithm is implemented in a specific manner to define structural relationships between the physical elements of the claim (in apparatus claims) or to refine or limit claim steps (in process claims), the claim being otherwise statutory, the claim passes muster under § 101. Grams, 618 F.2d 758, 767 (CCPA 1980); see also Guidance, 84 Fed. Reg. at 54 (requiring evaluation whether the claim as a whole integrates a recited judicial exception into a practical application of that exception). Consistent with Walter, claim 12 implements a mathematical exercise in a specific manner to refine or limit the steps of “monitoring . . . a distance travelled by a drive shaft,” “determining a measured position of a flow control member of the valve,” and “generating . . . an alert based on a Appeal 2018-007300 Application 14/553,362 12 difference between the measured position and a reference position,” the alert associated with a failure of the valve. This implementation improves the identification of the failure of a valve, thereby demonstrating patent eligibility. See MPEP 2106.05(a)(II). Also, claim 12 recites integral use of a particular machine, i.e., an electric valve actuator having an electric motor whose drive shaft operates a valve, rotation sensors for monitoring the distance travelled by the drive shaft, and a valve position sensor for determining the measured position of a flow control member of the valve, to achieve performance of the method. See MPEP 2106.05(b)(II). Therefore, claim 12 and its dependent claims integrate the judicial exception into a practical application, allowing the claims to pass muster under § 101. 3. Step 2B—Inventive Concept Revised Step 2A specifically excludes consideration of whether additional claim elements represent well-understood, routine, conventional activity. Guidance, 84 Fed. Reg. at 55. Analysis of these issues is accomplished in Step 2B. Id. Were we to determine that claim 12 is directed to an abstract idea, the claim is still patent eligible under Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018). Berkheimer holds that “whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Id. at 1368. “Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.” Id. at 1369. Instead, the Examiner should explain why the courts have recognized, Appeal 2018-007300 Application 14/553,362 13 or those in the relevant field of art would recognize, those claim limitations as being well-understood, routine, conventional activities. MPEP § 2106.07(a)(II). That is, the Examiner should provide a reasoned explanation that supports that conclusion. Such explanation is entirely missing here; the Examiner provides no evidence (e.g., citations to court decisions, publications, the Specification, or statements by applicant in the prosecution record) that support an addition element (or combination of element(s)) is well-understood, routine or conventional, and fail to take official notice of such nature of the additional element(s). Appellant argues that the Examiner’s assertion that the components would routinely be used in applying the abstract idea is conclusory and made without any factual basis. App. Br. 25. Appellant also asserts that the additional elements of the claims are not routinely used in applying the recited abstract idea. Id. at 25– 26. Moreover, claim 12’s diagnosis of the failure of the valve, causing the operation to stop, is achieved unconventionally by determining the measured position of a flow control member of a valve and comparing it to a particular reference position. App. Br. 36 (Claims App.); Spec. ¶ 25. We do not sustain the Examiner’s rejection of claim 12 and its dependent claims as patent ineligible under 35 U.S.C. § 101. C. Claim 21 and Its Dependent Claims Claim 21 recites a tangible machine readable storage medium comprising instructions that cause a machine to perform specific operations. App. Br. 38 (Claims App.). The Examiner refers to the rejection of claim 1 as supporting rejection of claim 21. Non-Final Act. 8. Claim 1 and claim 21 both require generation of an alert based on a difference between a measured position and a reference position. App. Br. 34, 38 (Claims App.). With Appeal 2018-007300 Application 14/553,362 14 respect to claim 21, the Examiner further finds that the additional element (tangible machine readable storage medium comprising instructions” is not sufficient to amount to significantly more than the judicial exception. Non- Final Act. 8. 1. Revised Step 2A, Prong One–Recitation of a Judicial Exception In rejecting claim 21 under § 101, the Examiner refers the reader to the rejection of claim 1. Non-Final Act. 8. In rejecting claim 1, the Examiner finds that the claim is directed to a judicial exception, specifically “collection of information, analysis thereof and displaying, conveying certain results of the collection and analysis.” Id. at 5. Claim 21 recites a mathematical concept and a mental process: “generat[ing] an alert based on a difference between the measured position and a reference position.” App. Br. 38 (Claims App.). As stated in our analysis of claim 1, supra, a requirement to collect and analyze information, without more, typically is considered a recitation of a mathematical concept or mental process, and mathematical concepts or mental processes are abstract ideas. See Guidance, 84 Fed. Reg. at 52. 2. Revised Step 2A, Prong Two—Practical Application We determine whether claim 21 as a whole is directed to an abstract idea by determining whether it integrates the recited judicial exception into a practical application of the exception. See Guidance, 84 Fed. Reg. at 54. Our analysis of the Examiner’s § 101 rejection in relation to claim 12, including our discussion of Parker v. Flook and Grams, apply with equal force to claim 21. The alert generated when the instructions comprised in the tangible machine readable storage medium are executed diagnoses failure of the valve, causing the operation to stop. See Spec. 3, Fig. 6. Like Appeal 2018-007300 Application 14/553,362 15 claim 12, claim 21 is consistent with Walter in implementing a mathematical exercise in a specific manner to refine or limit “monitor[ing] a distance travelled by a drive shaft,” “determin[ing] a measured position . . . via a valve position sensor,” and “generat[ing] an alert based on a difference between the measured position and a reference position,” the alert associated with a failure of the valve. See Walter, 618 F.2d at 767. Claim 21 recites instructions that, when executed, cause a machine to perform a process substantially the same as recited in claim 12, involving the same machine features as recited therein. Implementation of this process improves the identification of the failure of a valve, thereby demonstrating patent eligibility. See MPEP 2106.05(a)(II). In addition, claim 21 likewise recites integral use of a particular machine, i.e., an electric valve actuator having an electric motor whose drive shaft operates a valve, and a valve position sensor for determining the measured position of a flow control member of the valve, to achieve performance of the process. See MPEP 2106.05(b)(II). Such specific application of an abstract idea means that claim 21 is not directed to an abstract idea. Thus, claim 21 as a whole is not directed to the abstract idea of a mathematical concept, unlike the claim in Electric Power Group, which the Examiner cites as applicable. See Non-Final Act. 5. 3. Step 2B—Inventive Concept Claim 21 is also patent eligible under Berkheimer for the reasons given supra with respect to claim 12, i.e., the Examiner fails to support that the additional elements in claim 21 are well-understood, routine and conventional to a skilled artisan in the relevant field. See Berkheimer, 881 F.3d at 1368. Appeal 2018-007300 Application 14/553,362 16 Thus, we do not sustain the rejection of claim 21 and its dependent claims under 35 U.S.C. § 101. DECISION The Examiner’s rejection of claims 1–13, 16–18, 20, 21, 23, and 24 is reversed. REVERSED Copy with citationCopy as parenthetical citation