Ex Parte ANUZIS et al

Patent Trial and Appeal Board

Dec 14, 2018

13935924 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/935,924 07/05/2013
27049 7590 12/18/2018
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
PaulANUZIS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
137114.01 3858
EXAMINER
NGHIEM, MICHAEL P
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
OfficeAction27049@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ANUZIS and LEONID MOISEEVICH
Appeal2017-004167
Application 13/935,924 1
Technology Center 2800
Before JENNIFER S. BISK, SCOTT E. BAIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL 2
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1, 4--14, and 23. We have jurisdiction under
25 U.S.C. § 6(b). We affirm-in-part.
1 Appellants identify the real party in interest as Rolls-Royce, PLC. App.
Br. 1.
2 Throughout this Decision we have considered the Specification filed July
5, 2013 ("Spec."), the Final Rejection mailed February 22, 2016 ("Final
Act."), the Appeal Brief filed August 22, 2016 ("App. Br."), the Examiner's
Answer mailed November 18, 2016 ("Ans."), and the Reply Brief filed
January 11, 2017 ("Reply Br.").
Appeal2017-004167
Application 13/935,924
STATEMENT OF THE CASE
Appellants' invention relates to monitoring rotating blades mounted
on a shaft in a gas turbine engine. Spec. ,r 1.
Claims 1 is illustrative:
1. A method for determining an artifact in a component, the
method comprising:
a) exciting the component to induce a resonance response;
b) calculating real and imaginary components of bi-coherence
b of the resonance response pkO and qkO, where p and q are
integers and kO is a component resonant frequency;
c) determining a position or area of the calculated real and
imaginary components in two-dimensional space; and
d) determining the presence of the artifact in the component
from the position or area of the calculated real and
imaginary components.
App. Br. (Claims Appendix, A-1 ).
THE REJECTIONS
1. The Examiner rejected claims 6-14 under U.S.C. § 112, ,r 2 as being
indefinite. Final Act. 3--4.
2. The Examiner rejected claims 1, 4, 5, 8-14, and 23 under§ 101 as
directed to non-statutory subject matter. Final Act. 4--5.
ANALYSIS
THE§ 101 REJECTION
For purposes of the§ 101 rejection, Appellants argue all the claims as
a group, focusing on the limitations of claims 1, 9, and 23 only. See Appeal
Br. 7-17. We select claims 1 and 23 as representative. Claims 4, 5, and 8-
14 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 13/935,924
Legal Framework
To be eligible under 35 U.S.C. § 101, the subject matter of an
invention must be a "new and useful process, machine, manufacture, or
composition of matter, or [a] new and useful improvement thereof."
35 U.S.C. § 101. We initially note that claims 1, 4, 5, 8-14, and 23 are
directed to a method, i.e., a process. Thus, each of the claims is directed to
one of the four statutory categories of eligible subject matter.
The Supreme Court has held there are implicit exceptions to the
categories of eligible subject matter identified in § 101, including laws of
nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2355 (2014). Further, the Court has "set forth a
framework for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Id. (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66 (2012)). Under the Supreme Court's
two-step test, we first determine whether the claims are directed to a patent-
ineligible concept: laws of nature, natural phenomena, and abstract ideas.
Id. at 2354--55. If so, we then proceed to the second step and examine the
claim's elements-both individually and as an ordered combination-to
determine whether the claim contains an "inventive concept" sufficient to
transform the claimed abstract idea into a patent-eligible application. Id. at
2357.
Claims 1, 4, 5, and 8-14
The Examiner concludes that the claims are directed to an abstract
idea because all the limitations "can either be performed using math or as
mental processes." Final Act. 5; Ans. 4--5. The Examiner also finds that the
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Application 13/935,924
claims "do not include additional elements sufficient to amount to
significantly more" than the abstract idea because "[ e ]xciting a component
to induce a resonance response, rotating a shaft, correcting the artifact in the
component" are "well-understood, routine and conventional activities known
in the industry" and "[ s ]amp ling response data is directed to an insignificant
extra solution activity of data gathering." Final Act. 5; Ans. 5, 9-10.
Appellants contend that the claims are directed to "methods for
determining an artifact in a component," which is not an abstract idea. App.
Br. 9. According to Appellants, "the claimed calculating real and imaginary
components of bi-coherence is not a mathematical algorithm nor is it
reasonable to conclude that it can be performed by a mental process." Id. at
10. Instead, Appellants describe the calculating step as an "active method"
step. Id. Appellants contend that "[ w ]hen considered as a whole, claims 1,
9 and 23 cannot reasonably be considered to recite an abstract idea." Id. at
10-11 (citing Enfzsh, 822 F.3d at 1335). Appellants argue that, like the
claims in Diamond v. Diehr, "the present claims allow a more accurate
determination of the presence of an artifact in a component that was
previously possible" and are, therefore, "an improvement to an existing
technological process that results in a patent-eligible application of an
abstract idea." Id. at 12-13. Appellants also compare the claims at issue to
those found patent-eligible in Thales Visionix Inc. v. US., 850 F.3d 1343
(Fed. Cir. 2017). 3
We agree with the Examiner that claims 1, 4, 5, and 8-14 are directed
to patent-ineligible subject matter. The steps of calculating bi-coherence
3 Thales was decided after the Reply Brief in this case was filed and,
therefore, we permit the new argument presented at oral hearing.
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Application 13/935,924
components, determining the position of the calculated components in two-
dimensional space, and determining, from that position, the presence of the
artifact, do not add up to anything more than analyzing information using a
mathematical relationship. See Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) ("[W]e have treated analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category."); see Spec. ,r 104 ("[T]he method may be realized by
programming a computer to run the method steps described in this
invention.") (emphasis added). Moreover, the claims are focused on
analyzing information using a particular calculation, but do not make any
practical use of the determinations. Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (holding unpatentable a
claims that "simply invite[] the reader to determine the content of [ existing]
knowledge," but "do not include putting this knowledge to practical use").
We are not persuaded that these claims are similar to those at issue in
Thales. In determining that the claims in Thales were directed to patent-
eligible subject matter, the Federal Circuit focused on the unconventional
use of inertial sensors. Thales, 850 F.3d at 1349 ("Far from claiming the
equations themselves, the claims seek to protect only the application of
physics to the unconventional configuration of sensors as disclosed.").
Appellants do not identify any unconventional configuration of sensors or
any other equivalent limitation such that the claims are directed to more than
using mathematical equations to determine an artifact in a component.
We also agree with the Examiner that the claims are not directed to
significantly more than the abstract idea. An inventive concept "cannot be
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Application 13/935,924
furnished by the unpatentable law of nature ( or natural phenomenon or
abstract idea) itself." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016); see also Alice, 134 S. Ct. at 2355 (explaining that,
after determining a claim is directed to a judicial exception, "we then ask,
' [ w ]hat else is there in the claims before us?"' ( emphasis added, brackets in
original) (quoting Mayo, 566 U.S. at 78)). Instead, an "inventive concept" is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim
as a whole amounts to significantly more than the judicial exception
itself. Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 72-73); see BSG
TechLLCv. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
( explaining that the Supreme Court in Alice "only assessed whether the
claim limitations other than the invention's use of the ineligible concept to
which it was directed were well-understood, routine and conventional,"
( emphasis added)).
Moreover, notwithstanding Appellants' contention that the claims
allow a more accurate determination of a parameter, the analysis of Alice's
step two is not an evaluation of novelty or nonobviousness, but rather, a
search for "an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself"' Alice, 134 S. Ct at 2355 (quoting
}.;Jayo, 566 U.S. at 72----73). The question in the second step is not whether
the claimed invention is noveL but rather whether the implementation of the
abstract idea involves "more than performance of 'well-understood, routine,
[and] conventional activities previous1y known to the industry."' Content
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Extraction & Transmission LLC v. Wells Fargo Bank, 776 F3d 1343, 1347----
48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359).
Because claims 1, 4, 5, and 8-14 recite no additional elements beyond
the abstract idea, these claims fail to add significantly more to the abstract
idea. Even to the extent that computer processing is implied, such use of
computers is merely as tools to compare and report information, which
simply implements the abstract idea. See BSG Tech, 899 F.3d at 1286;
Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (explaining that the claimed
steps could easily "be carried out in existing computers long in use, no new
machinery being necessary").
Claim 23
We do not, however, sustain the Examiner's rejection of claim 23.
Unlike claims 1, 4, 5, and 8-14, claim 23 includes an additional step of
"correcting the artifact in the component." This is a concrete, physical step
as compared with the other steps involving data gathering and calculations
and, as such, transforms the claimed subject matter from an abstract
mathematical determination to a physical application of that determination.
Claim 23, therefore, is not an abstract idea. See Classen Immunotherapies,
659 F.3d at (holding patent-eligible claims that include "the physical step of
immunization" because they "are directed to a specific, tangible
application"). Accordingly, we do not sustain the rejection of claim 23
under 35 U.S.C. § 101.
Conclusion
Under§ 101, the Examiner did not err in rejecting claims 1, 4, 5, and
8-14, but erred in rejecting claim 23.
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THE § 112 REJECTIONS
The Examiner rejects claim 6 as indefinite, finding it "unclear how a
rotation-periodic signal intersects the natural frequency range of the blade."
Final Act. 3--4. Because the Specification states that "rotation-periodic
signals are conventionally known as order components," the Examiner asks
"[s]hould claim 6 be amended to recite a frequency of 'an order related
component' (rotation-periodic signal) of a shaft intersecting with the
"natural frequency" range of a blade (similar to claim 9, step a-5)?" Ans. 3.
Appellants argue that "one of ordinary skill in the art of harmonics
would clearly recognize that an order related component is a signal that
could intersect with a natural frequency in the frequency-speed domain."
App. Br. 5---6 ( citing Spec. Fig. 1, ,r,r 2, 7). According to Appellants, the
Specification "discloses how rotary components generate rotation-periodic
signals, i.e., order components, which are periodic with respect to shaft
rotation and have a frequency related to the angular velocity of the shaft and
engine speed." Reply 4 (citing Spec ,r 2).
We agree with Appellants that a person of ordinary skill in the art
would understand from the Specification that when the claims refer to "an
order related component of the shaft" in the context of intersecting with the
natural frequency range of the blade, they refer to the frequency of the
periodic signal with respect to shaft rotation. See Spec ,r 2 ("As the angular
speed of rotation increases typically the order components similarly increase
in frequency.").
The Examiner further rejects claim 9 as indefinite "because steps 1-5
do not support step a." Final Act. 4. According to the Examiner, "the
claims do not recite 'component(s) is/are mounted on a shaft in a gas turbine
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Application 13/935,924
engine' to clearly define the metes and bounds of the claimed step of
exciting the component to induce a resonance response." Ans. 2.
Appellants argue that the Specification "describes how this
application is directed to methods for monitoring components mounted on a
shaft in a gas turbine engine that generates signals which are periodic with
respect to shaft rotation" and "one of ordinary skill in the art of aerospace
engineering and harmonics would be able to understand the metes and
bounds of claim 9 when read in light of the specification." App. Br. 5;
Reply 3 (citing Spec ,r,r 1-2).
We agree with Appellants that claim 9 is sufficiently clear that the
recited component in step a is mounted on a shaft. This is especially true in
light of other claim language such as in step !-"components of a shaft" and
in step 2-"vibration modes of at least one article functionally mounted to
the shaft."
We, therefore, do not sustain the Examiner's rejection of claims 6-14
under U.S.C. § 112, ,r 2 as being indefinite.
DECISION
We affirm the Examiner's decision to reject claims 1, 4, 5, 8-14.
We reverse the Examiner's decision to reject claim 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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