Ex Parte Civil et al

Patent Trials and Appeals Board

Apr 4, 2019

13409920 - (D) (P.T.A.B. Apr. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/409,920 03/01/2012
105678 7590 04/08/2019
IBM Corp. - Fishkill Drafting Center
2455 South Road
MIS P386, Bldg. 008-2
Poughkeepsie, NY 12601
FIRST NAMED INVENTOR
Aaron D. Civil
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.
AUS920110185US2 4177
EXAMINER
YOUNG, ASHLEY YA-SHEH
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
04/08/2019 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):
fdciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON D. CIVIL, JEFFREY G. KOMATSU,
JOHNM. WARGO,EMMANUEL YASHCHIN,andPAULA. ZULPA
Appeal 2017-010109 1
Application 13/409,9202
Technology Center 3600
Before MICHAEL C. ASTORINO, MATTHEWS. MEYERS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-8 and 10-21. Wehavejurisdiction
under § 6(b ). We affrrm.
1 We reference herein the Specification filed March 1, 2012 ("Spec."),
Appeal Brief filed February 4, 2016 ("Appeal Br."), and Reply Brief filed
July 23, 2017 ("Reply Br."), as well as the Examiner's Answer mailed
June 1, 2017 ("Ans."), and Final Office Action mailed November 5, 2015
("Final Act.").
2 According to Appellants, International Business Machines Corporation
("IBM") is the real party in interest. Appeal Br. 5.
Appeal 2017-010109
Application 13/409,920
SUBJECT MATTERON APPEAL
The invention relates to "computing targets for use in process control,
based on trends in observed process control data." Spec. ,r 1. Claims 1, 15,
and 19 are the independent claims on appeal. Independent claim 1,
reproduced below, is illustrative of the claimed subject matter.
Claim 1: A computer-implemented method of trend-based
target setting for controlling processing of physical entities in a
process control environment, comprising using a processor of the
computer for performing:
selecting a particular physical entity from among a
plurality of physical entities;
obtaining historical process control data for a group of
related ones of the plurality of physical entities, the group
comprising the selected entity and at least one additional one of
the plurality of entities previously identified as being related to
the selected entity and the historical process control data
describing previously-performed processing in the process
control environment;
computing a yardstick value for the group from the
obtained historical process control data, the yardstick value
comprising a representative rate of non-conformance exhibited,
to a predetermined confidence level, for the entities in the group
during the previously performed processing;
setting a process control target for the selected entity in
view of the yardstick value, the process control target comprising
an expected rate of non-conformance for the selected entity,
further comprising:
responsive to determining that an estimated rate of
non-conformance for the selected entity is less than or
equal to the computed yardstick value, setting the process
control target for the selected entity to a lower of the
computed yardstick value and a lower bound of a
confidence interval for the estimated rate of
non-conformance for the selected entity, and otherwise
setting the process control target for the selected entity to
a greater of the computed yardstick value and an upper
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bound of the confidence interval for the estimated rate of
non-conformance for the selected entity; and
controlling processing of the selected entity in the process
control environment using the process control target, comprising
causing the process control environment to identify instances of
the selected entity that fail to conform to the process control
target during processing of the selected entity as non-conforming
instances.
Appeal Br., Claims App.
REFERENCES
The Examiner relies on the following references in rejecting the
claims on appeal:
Yigit et al. US 2006/0031840Al Feb. 9, 2006 ("Yigit")
F arooq et al. US 2009/0192867 Al July 30, 2009 ("Farooq")
Mneimnehet al. US 2010/0106555 Al Apr. 29, 2010 ("Mneimneh")
Richard W. Jenny and Kathryn Y. Jackson-Tarentino, Causes of
Unsatisfactory Performance in Proficiency Testing, 43:1 Clinical Chemistry
89 (2000) ("Jenny").
Ramzi Telmoudi, A Multi-Stream Process Capability Assessment Using a
Nonconformity Ratio Based Desirability Function, University of Dortmund
(Aug. 2005) ("Telmoudi").
REJECTIONS
The Examiner rejects the claims on appeal as follows:
claims 1-8 and 10-21 under 35 U.S.C. § 112, frrst paragraph, as
failing to comply with the written description requirement;
claims 1-8 and 10-21 under 35 U.S.C. § 101 as judicially excepted
from statutory subject matter;
claims 19-21 under 3 5 U.S. C. § 101 as non-statutory subject matter;
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claims 1-3, 11-16, 19, and20 under 35 U.S.C. § 103(a) as
unpatentable over Yigit, Jenny, and Telmoudi;
claims 4--8, 17, 18, and21 under 35 U.S.C. § 103(a) as unpatentable
overYigit, Jenny, Telmoudi, andFarooq; and
claim 10 under 35 U.S.C. § 103(a) as unpatentable over Yigit, Jenny,
Telmoudi, and Mneimneh.
ANALYSIS
Written Description
The Examiner finds claims 1-8 and 10-21 fail to comply with the
written description requirement because the disclosure does not sufficiently
describe the limitation reciting "controlling processing of the selected entity
in the process control environment using the process control target,
comprising causing the process control environment to identify instances of
the selected entity that fail to conform to the process control target during
processing of the selected entity as non-conforming instances" in each of
independent claims 1, 15 and 19. Final Act. 5; Ans. 3-5. According to the
Examiner:
[T]he [S]pecification still does not describe what processing
environment I entity is intended to be controlled in sufficient
detail, nor does it describe how the controlling is achieved in a
specific manner. The amendments merely describe the
identification of non-conforming instances, but do not describe
any further detail regarding the actual controlling of the process
using the non-conforming instances.
Ans. 5.
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On the other hand, Appellants argue the claim language itself and the
Specification describe how the processing is controlled. Appeal Br. 17.
More specifically, Appellants contend
Id.
the 'controlling ... ' claim element explicitly recites that the
controlling 'compris[ es] causing the process control
environment to identify instances of the selected product that fail
to conform to the process control target ... as non-conforming
instances" (Claim 1, lines 25 - 27, emphasis added),
and Appellants submit that this is described in the Specification
in at least paras. [0014], [0020], [0025], [0060] - [0061 ], [0070],
and [ 0084] - [ 0085].
A claim limitation does not meet the written description requirement
if the limitation and its suppmiing disclosure merely describe a desired
result. Ari ad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349
(Fed. Cir. 2010) (en bane); see also Vaseduvan Software, Inc. v.
MicroStrategy, Inc., 782 F.3d 671,683 (Fed. Cir. 2015) ("The more telling
question is whether the specification shows possession by the inventor of
how [ the disputed limitation] is achieved."). We, however, agree with
Appellants that the "controlling processing" limitation does not simply
describe a desired result. Rather, the limitation itself explains how the
processing is controlled, namely by "causing the process control
environment to identify instances of the selected entity that fail to conform
to the process control target during processing of the selected entity as
non-conforming instances." Appeal Br., Claims App. The Examiner,
therefore, has not shown persuasively that the "controlling processing"
limitation fails to comply with the written description requirement, and we
do not sustain the Examiner's rejection of independent claims 1, 15, and 19
and claims 2-8, 10-14, 16-18, 20, and 21 depending therefrom.
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Judicially-Excepted Subject Matter
An invention is patent eligible if it is a "new and useful process,
machine, manufacture, orcompositionofmatter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted§ 101 to include an implicit
exception: "[l]aws of nature, natural phenomena, and abstract ideas are not
patentable." E.g.,Alice Corp. v. CLSBankint'l, 573 U.S. 208,216 (2014)
( quoting Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576,589 (2013)).
To "distinguish[] patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts," the Supreme Court, in Alice, reaffrrmed the
two-step analysis previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc.,566U.S. 66(2012). Alice, 573 U.S. at 217.
The first step of the analysis considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea. Id. (citing Mayo, 566U.S. at
77). According to Supreme Court precedent, concepts determined to be
abstract ideas, and thus patent ineligible, include certain methods of
organizing human activity, such as fundamental economic practices (id. at
2l9-20;Bilski v. Kappas, 561 U.S. 593,611 (2010)); mathematical formulas
(Parkerv. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes
(Gottschalkv. Benson, 409U.S. 63, 69 (1972)).
The Supreme Court has also made clear " [a] claim drawn to subject
matter otherwise statutory does not become nonstatutory simply because it
uses a mathematical formula." Diamondv. Diehr, 450 U.S. 175, 187 (1981).
In that same case, the Supreme Court cautioned that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
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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. at l9l(citingBensonandFlook).
If the claim is directed to an abstract idea, we tum to the second step
of the Alice framework. The second step considers whether the claim recites
an inventive concept-an element or combination of elements sufficient to
ensure the claim amounts to significantly more than the abstract idea and
transform the nature of the claim into a patent-eligible application. Alice,
573 U.S. at217-18 (citing Mayo, 566 U.S. at 72-73, 78, 79). "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. at 221 (quoting Mayo, 566 U.S. at 77). "[M]erelyrequir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The Office recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under this guidance,
we frrst 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) (9th ed.
Rev. 08.2017, Jan. 2018)).
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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 are 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.
In determining that the subject matter of claims 1-8 and 10-21 is
judicially-excepted subject matter, the Examiner analyzes the claims using
the Alice two-step framework. Final Act. 7-8; Ans. 5-8. Pursuant to the
frrst step, the Examiner determines the claims are directed to the abstract
idea of trend-based target setting. Final Act. 7. The Examiner also
determines the claims are directed to an abstract idea because they are
directed to obtaining and comparing intangible data and/or organizing
information through mathematical correlations. Ans. 5. Under the second
step, the Examiner determines that the claims do not include additional
elements amounting to significantly more than the abstract idea because the
claims merely require generic computer implementation of the abstract idea.
Final Act. 7-8; Ans. 6-8 (citing Spec. ,r 102).
Appellants argue independent claims 1, 15, and 19 as a group
(Appeal Br. 23-38; Reply Br. 5-8), and do not present arguments for
dependent claims 2-8, 10-14, 16-18, 20, and 21 apart from the arguments
for the independent claims (Appeal Br. 39). \Ve select independent c1aiin 1
as representative, and the reniaining claims stand or fall with independent
clain1 1. 37 C.F.R. § 4I.37(c)(l)(iv).
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Appellants present several arguments against the Examiner's
determination that independent claim 1 is patent ineligible. We consider
these arguments and the Examiner's rejection in accordance with the Alice
two-step analysis and the Office's guidance.
Alice Step One
"Under step one of Mayo/Alice, the claims are considered in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015). To effectuatethis determination, the
Office's Revised Guidance prescribes a two-step procedure. 84 Fed. Reg. at
53. Under this procedure, we first determine whether a claim recites any
judicial exceptions, including certain groupings of abstract ideas. Id. If the
claim recites a judicial exception, we then determine whether there are
additional elements that integrate the judicial exception into a practical
application. Id. If the claim integrates the judicial exception into a practical
application, then the character of the claim as a whole is not directed to
excluded subject matter. Id. ("Aclaim is not 'directed to' a judicial
exception, and thus is patent eligible, if the claim as a whole integrates the
recited judicial exception into a practical application of that exception.").
Judicial Exception in the Claim
To determine whether a claim recites a judicial exception, we frrst
identify the specific limitation( s) in the claim, individually or in
combination, that recites an abstract idea. 84 Fed. Reg. at 54. If the recited
judicial exception is an abstract idea, we then "determine whether the
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identified limitation( s) falls within the one of the enumerated groupings of
abstract ideas in the Revised Gui dance, namely mathematical concepts,
certain methods of organizing human activity such as a fundamental
economic practice, or mental processes. Id. As explained in the Revised
Gui dance, mental processes are concepts that can be performed in the
human mind, and include observation, evaluation, judgment, opinion. Id. at
52.
Independent claim 1 includes limitations that are mental processes.
See Ans. 5 ( determining independent claim 1 is directed to "obtaining and
comparing intangible data and/or organizing information through
mathematical correlations"). We reproduce independent claim 1 below with
these limitations in italics.
Claim 1: A computer-implemented method of trend-based
target setting for controlling processing of physical entities in a
process control environment, comprisingusing a processor of the
computer for performing:
selecting a particular physical entity from among a
plurality of physical entities;
obtaining historical process control data for a group of
related ones of the plurality of physical entities, the group
comprising the selected entity and at least one additional one of
the plurality of entities previously identified as being related to
the selected entity and the historical process control data
describing previously-performed processing in the process
control environment;
computing a yardstick value for the group from the
obtained historical process control data, the yardstick value
comprising a representative rate of non-conformance exhibited,
to a predetermined confidence level,for the entities in the group
during the previously performed processing;
setting a process control target for the selected entity in
view of the yardstick value, the process control target comprising
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an expected rate of non-conformance for the selected entity,
further comprising:
responsive to determining that an estimated rate of
non-conformance for the selected entity is less than or
equal to the computed yards ti ck value, setting the process
control target for the selected entity to a lower of the
computed yards ti ck value and a lower bound of a
confidence interval for the estimated rate of
non-conformance/or the selected entity, and otherwise
setting the process control target for the selected entity to
a greater of the computed yardstick value and an upper
bound of the confidence interval for the estimated rate of
non-conformance for the selected entity; and
controlling processing of the selected entity in the process
control environment using the process control target, comprising
causing the process control environment to identify instances of
the selected entity that fail to conform to the process control
target during processing of the selected entity as non-conforming
instances.
Appeal Br., Claims App. ( emphasis added).
The limitation reciting "selecting a particular physical entity from
among a plurality of physical entities" encompasses observing a particular
physical entity from among a plurality of physical entities. Similarly, the
limitation reciting
obtaining historical process control data for a group of
related ones of the plurality of physical entities, the group
comprising the selected entity and at least one additional one of
the plurality of entities previously identified as being related to
the selected entity and the historical process control data
describing previously-performed processing in the process
control environment
encompasses observinghistorical process control data for a particular group.
Such observances are mental processes.
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The limitation reciting "computing a yardstick value for the group
from the obtained historical process control data, the yardstick value
comprising a representative rate of non-conformance exhibited, to a
predetermined confidence level, for the entities in the group during the
previously performed processing" encompasses a mental process because it
simply requires evaluating data, i.e., using the obtained historical process
control to compute the yardstick value. See also Spec. ,r,r 26-34, Fig. 1
( describing how to compute a yardstick value). Likewise, the limitation
reciting "determining that an estimated rate of non-conformance for the
selected entity is less than or equal to the computed yardstick value"
encompasses a mental process because it is an evaluation of the estimated
rate of non-conformance for the selected entity relative to the computed
yardstick value.
The three limitations regarding setting the process control target, i.e.,
"setting a process control target for the selected entity in view of the
yardstick value, the process control target comprising an expected rate of
non-conformance for the selected entity," "setting the process control target
for the selected entity to a lower of the computed yardstick value and a
lower bound of a confidence interval for the estimated rate of
non-conformance for the selected entity," and "setting the process control
target for the selected entity to a greater of the computed yardstick value and
an upper bound of the confidence interval for the estimated rate of
non-conformance for the selected entity," also encompass mental processes.
Setting a process control target encompasses updatingthe value of the
process control target, which is an evaluation of the value.
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In view of these limitations, independent claim 1 recites mental
processes, which are one of the groupings of abstract ideas in the Revised
Guidance. Given that the claim includes subject matter that falls within one
of the groups of abstract ideas identified in the Revised Gui dance, we are
unpersuaded by Appellants' assertion that the courts have not found claim
language similar to independent claim 1 to be directed to an abstract idea.
Reply Br. 7. Accordingly, independent claim 1 recites an abstract idea,
which is a judicial exception.
Integrated into a Practical Application
Having determined that the claim recites a judicial exception, we next
consider whether the claim recites additional elements that integrate the
abstract idea into a practical application. 84 Fed. Reg. at 53. We determine
integration into a practical application by "[i]dentifying whether there are
any additional elements recited in the claim beyond the judicial
exception( s )" and "evaluating those additional elements individually and in
combination to determine whether they integrate the exception into a
practical application, using one or more of the considerations laid out by the
Supreme Court and the Federal Circuit." Id. at 54--5 5. These considerations
are set forth in MPEP §§ 2106.05(a}-(c)and (e}-(h), 3 and we address the
considerations at issue in tum below.
3 We acknowledge that some of these considerations may be properly
evaluated under the second step of the Alice analysis. Solely for purposes of
maintaining consistent treatment within the Office, we take these
considerations into account under the frrst step. See also Amdocs (Isr.) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) ("Recent
cases ... suggest that there is considerable overlap between step one and
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Improvements to the Functioning of a Computer or to Any
Other Technology or Technical Field (MPEP § 2106. 05(a))
Appellants argue the claimed invention yields a desired result that
improves operations in process control environments, namely an improved
manner for setting a process control target that avoids setting the process
control target in an arbitrary or subjective way. Appeal Br. 36. Appellants
similarly contend independent claim 1 "recites creating an association
between particular entities and the process control target that will be used for
that particular entity, thus providing entity-specific process control targets."
Reply Br. 7 (footnote omitted). According to Appellants, "this association
provides a technology-based solution." Id.
The alleged improvement to process control, however, is insufficient
to integrate the abstract idea into a practical application because it is not an
improvement to a technology or technical field. Process control apart from a
particular process is simply an evaluation of values, which could be done in
the human mind. As such, process control itself is not a technical field, and
an improvement to process control is not a technology-based solution.
Appellants also argue independent claim 1 is not directed to an
abstract idea, but instead to an improvement in computer technology.
Reply Br. 7. More specifically, Appellants contend the claimed invention
provides "efficiency improvements for a process control environment
through improved techniques for setting targets for determining whether
entities are determined to be non-conforminginstances." Id.
step two [ of the Alice analysis], and in some situations this analysis could be
accomplished without going beyond step one." ( citations omitted)).
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Appellants' argument is not persuasive of error because the
improvement is to the techniques for setting process control targets, not to
the functioning of the computer. As set forth above, an improvement to
process control is not sufficient to integrate the abstract idea into a practical
application.
Particular Machine (MPEP § 2106. 05(b))
Independent claim 1 recites "using a processor of a computer."
Appeal Br., Claims App. These computing components, however, are
recited in the claims and described in the Specification at a high level,
without any meaningful detail about their structure or configuration. See
Spec. ,r,r 99-101, Fig. 8 ( describing the data processing system).
Consequently, the recited computing components are insufficient to integrate
the judicial exception into a practical application. See TL! Commc 'ns LLC
Patent Litig., 823 F .3d 607, 614 (Fed. Cir. 2016) ( explaining "generic
computer components [are] insufficient to add an inventive concept to an
otherwise abstract idea" ( citations omitted)).
Independent claim 1 also recites "a process control environment."
Appeal Br., Claims App. Appellants argue the claimed invention has effect
in a manufacturing environment and therefore is not directed to an abstract
idea. Appeal Br. 23-27; Reply Br. 5. Although independent claim 1 does
not expressly refer to a manufacturing environment, Appellants allege a
person of ordinary skill in the art would readily understand that the recited
"process control environment" refers to a manufacturing environment.
Appeal Br. 23-25.
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Like the recited computing components, the process control
environment is recited in the claims and described in the Specification at a
high level. See, e.g., Spec. ,r,r 13, 14, 51, 55 (referencing an environment
without any description of the environment). Even if a person of ordinary
skill in the art would understand that the recited process control environment
refers to a manufacturing environment, the claim nonetheless only refers
tangentially to the environment. The recited process control environment,
therefore, does no more than generally link the use of the judicial exception
to a field of use, which is not sufficient to integrate the judicial exception
into a practical application. 84 Fed. Reg. at 55; Bilski, 561 U.S. at 612
( explaining that limiting an abstract idea to a field of use does not make the
concept patentable ( citing Flook)).
Other Meaningful Limitations (MPEP § 2106.05(e))
Appellants assert independent claim 1 recites detailed and specific
operations that are specific and meaningful adaptations of the abstract idea.
Appeal Br. 3 7. We disagree.
We consider whether the claim includes limitations that ensure the
claimed invention applies the excepted subject matter in a meaningful way
such that the claim is more than a drafting effort designed to monopolize the
exception. 84Fed. Reg. at 55; MPEP § 2106.05(e). Even if we agree with
Appellants that independent claim 1 includes detailed and specific
limitations, the limitations describe the process control, not the process.
Consequently, the recited abstract ideas are not limited to a particular
process and, therefore, are not integrated into a practical application.
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Mere Instructi ans to Apply an Exception (MP EP § 2106. 05 (f))
Appellants contend independent claim 1 is not directed to abstract
idea because it recites the determined process control target is used to
control processing in a process control. Appeal Br. 28. We disagree.
The final limitation of independent claim 1 recites "controlling the
processing of the selected entity in the process control environment using the
process control target, comprising causing the process control environment
to identify instances of the selected entity that fail to conform to the process
control target during processing of the selected entity as non-conforming
instances." Appeal Br., Claims App. This limitation requires controlling the
processing of the selected entity by identifying non-conforming instances.
According to the claim, identifying non-conforming instances is
accomplished by the preceding limitations (id.), which, as discussed above,
recite mental processes. This limitation, therefore, amounts to no more than
an instruction to apply the abstract idea, which is insufficient to integrate the
abstract idea into a practical application. SeeAlice, 573 U.S. at223
("Neither stating an abstract idea while adding the words 'apply it,' nor
lliniting the use of an abstract idea to a particular technological enviromnent,
is enough for patent elibribility." (inten1al quotations and citations mnitted)).
Conclusion
In view of the considerations explained in MPEP §§ 2106.05(a}-(c)
and ( e }-(h), independent claim 1 does not include additional elements that
integrate the judicial exception into a practical application. Consequently,
the character of the claim as a whole is directed to excluded subject matter.
Cf Flook, 43 7 U.S. at 595 ("[I]f a claim is directed essentially to a method
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of calculating ... even if the solution is for a specific purpose, the claimed
method is nonstatutory." ( quoting In re Richman, 563 F .2d 1026, 1030
(1977))).
Alice Step Two
"The second step of the Alice test is satisfied when the claim
limitations involve more than performance of well-understood, routine [ and]
conventional activities previously known to the industry." Berkheimerv.
HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (internal quotations and
citation omitted); see also 84 Fed. Reg. at 56 ( explaining the second step of
the Alice analysis considers whether a claim adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" activity in the field; MPEP § 2106. 05( d). Moreover, claim
limitations describing the excluded subject matter cannot satisfy the second
step oftheAliceanalysis. See Mayo, 566U.S. at72-73 (requiring "a
process that focuses upon the use of a natural law also contain other
elements or a combination of elements, sometimes referred to as an
'inventive concept,' sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the natural law itself' ( emphasis
added)); BSG Tech. LLCv. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) ("It has been clear since Alice that a claimed invention's use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention 'significantly more' than that ineligible concept.");
Berkheimerv. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring) (" [ A ]nd Berkheimer . .. leave [ s] untouched the numerous cases
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from [the Federal Circuit] which have held claims ineligible because the
only alleged 'inventive concept' is the abstract idea.)."
Appellants contend independent claim 1 "specifies how to carry out
interactions that differ from a routine and conventional approach to
identifying non-conforming instances in process control data, thereby yield a
desired result that improves operations in process control environments."
Appeal Br. 36. Appellants' contention, however, improperly relies upon the
excluded subject matter, not the additional elements.
The Specification explains "[t]raditional process control strategies are
often based on arbitrary or subjective targets" and conventional strategies to
establishing targets give "little thought or analysis as to whether a particular
target is valid or suitable for the environment." Spec. ,r 13. In contrast, the
claimed invention "is directed to trend-based target setting and may be used
in a process control environment to derive, practical, objective targets which
are determined to be suitable for the environment, based on observed
process control data." Id. ,r 14. Hence, accordingto the Specification, the
improvement is the use of observed process control data to derive targets
such that the targets are objective.
The improvement is embodied in the "selecting," "obtaining,"
"computing," and "setting" limitations of independent claim 1. As
explained above, however, these limitations encompass mental steps and are
therefore abstract ideas and judicially-excepted subject matter.
Consequently, Appellants cannot rely on these limitations to demonstrate
activities that are not well-understood, routine, conventional in the field.
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Remaining Arguments
Appellants allege "the Office Action merely asserts that Claim 1 is
directed to an abstract idea, with no concrete factual evidence in support
thereof." Appeal Br. 32. Appellants similarly argue that the Examiner's
determination under the second step of Alice analysis is "unsupported by any
evidence." Id. at 34 ( emphasis omitted).
Although Appellants are correct that factual determinations must be
adequately supported, our reviewing court has explained that a
determination of patent ineligibility can be made without resolving fact
issues. See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1325-26 (Fed. Cir. 2016) ("[I]t is also possible, as numerous
cases have recognized, that a § 101 analysis may sometimes be undertaken
without resolving fact issues."). Nonetheless, for the reasons discussed
above, the factual determinations are sufficiently supported.
Conclusion
In view of the foregoing, independent claim 1 is directed to a
patent-ineligible concept without significantly more. We, therefore, sustain
the Examiner's rejection of independent claim 1, with claims 2-8 and 10-21
falling therewith.
Non-Statutory Subject Matter
Independent claim 19 recites "a computer readable storage medium,"
and claims 20 and 21 depend from independent claim 19. Appeal Br.,
Claims App. The Examiner determines the subject matter of claims 19-21 is
non-statutory because the broadest reasonable interpretation of a claim
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reciting a computer readable medium typically encompasses transitory
propagating signals per se, which are not statutory subject matter.
Final Act. 8-9; Ans. 8-9.
In contrast, Appellants refer to paragraphs 103 and 104 of the
Specification, and argue "it can be seen that Appellants' Specification limits
transitory signals to inclusion within the term 'computer readable signal
medium' and excludes such transitory signals from the term 'computer
readable storage medium."' Appeal Br. 3 8. Appellants' argument is not
persuasive.
When construing claims,
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Furthermore, we do not
read claims restrictively absent "a clear intention to limit the claim scope
using 'words or expressions of manifest exclusion or restriction."'
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)
(quoting Teleflex, Inc. v. FicosaN Am. Corp., 299 F.3d 1313, 1327
(Fed. Cir. 2002)).
Appellants do not dispute that the ordinary meaning of "computer
readable storage medium" encompasses transitory signals. See Ex parte
Mewherter, No. 2012-007692 (PTAB May 8, 2013) (precedential) ("[T]he
ordinary and customary meaning of' computer readable storage medium' to
a person of ordinary skill in the art was broad enough to encompass both
non-transitory and transitory media."). Rather, the issue is whether
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Appellants' Specification limits the meaning of "computer readable storage
medium" to exclude transitory signals. We determine it does not.
Paragraph 103 of the Specification explains "[i]n the context of this
document, a computer readable storage medium may be any tangible
medium that can contain or store a program for use by or in conjunction with
an instruction execution system, apparatus, or device." Spec. ,r 103
( emphasis added). Similarly, paragraph 104 explains that"[ a] computer
readable signal medium may be any computer readable medium that is not a
computer readable storage medium and that can communicate, propagate, or
transport a program for use by or in connection with an instruction execution
system." Id. ,r 104 (emphasis added). Accordingly, the Specification, at
best, describes that the computer readable storage medium may exclude
transitory signals, which is not an expression of restriction so as to provide a
clear intention to limit the meaning of "computer readable storage medium"
to exclude transitory signals.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner's determination that by way of the limitation "computer readable
storage medium," independent claim 19 encompasses non-statutory subject
matter. We, therefore, sustain the rejection of independent claim 19 and
claims 20 and 21 depending therefrom.
Obviousness
In rejecting independent claim 1, the Examiner relies on Yigit for
disclosing the invention substantially as claimed. Final Act. 9-12. The
Examiner acknowledges Yigit fails to explicitly disclose computing a
yardstick value comprising a rate of non-conformance, and relies on Jenny's
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rate of unsatisfactory performance forteachingthis limitation. Id. at 12.
The Examiner also acknowledges Yigit in view of Jenny does not teach
computing a yardstick value to a predetermined confidence level, and relies
on Telmoudi'scontrollimits. Id. at 13-14.
The Examiner further fmds Yigit and view of Jenny does not teach the
"setting a process control target" and "controlling processing" limitations of
the claim. Id. at 13. For these limitations, the Examiner relies on
Telmoudi's nonconformity ratio and loss function approaches. Id. at 14--15.
Appellants argue the Examiner has not shown T elmoudi teaches the
detailed recitations of the "setting a process control target" limitation.
Appeal Br. 4 3. According to Appellants, the Examiner has not shown how
T elmoudi teaches "responsive to determining that an estimated rate of
non-conformance for the selected entity is less than or equal to the computed
yardstick value" as recited in this limitation. Id. Appellants similarly assert
the Examiner has not shown that T elmoudi teaches
the particular setting of the entity's target in view of upper and
lower bounds on a confidence interval, where this may result in
setting the entity's target to ( 1) the computed yardstick value,
(2) a lower bound of the entity-specific confidence interval ... ,
or (3) an upper bound of the entity-specific confidence interval-
depending on how the entity's estimated rate of
non-conformance compares to the group yardstick value,
as this limitation requires. Id. Appellants' argument is persuasive.
As an initial matter, the Examiner's rejection is unclear, and,
consequently, the Examiner has not explained persuasively how the
combined teachings of the cited prior art would have resulted in the claimed
invention, including the "setting a process control target" limitation. In
particular, this limitation recites three values: ( 1) "the yardstick value,"
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which is previously defmed in the claim as being "for the group" and
"comprising a representative rate of non-conformance exhibited"; (2) "a
process control target comprising an expected rate of non-conformance for
the selected entity"; and (3) "an estimated rate of non-conformance for the
selected entity." Appeal Br., Claims App. Although the Examiner relies on
specific portions of Telmoudi for teaching this limitation, the Examiner does
not identify what values in Telmoudi correspond the recited yardstick value,
process control target, and estimated rate of non-conformance. Thus, it is
unclear how T elmoudi in combination with the teachings of Yigit and Jenny
would have resulted in this limitation.
That notwithstanding, the "setting a process control target" limitation
recites
responsive to determining that an estimated rate of
non-conformance for the selected entity is less than or equal to
the computed yardstick value, setting the process control target
for the selected entity to a lower of the computed yardstick value
and a lower bound of a confidence interval for the estimated rate
of non-conformance for the selected entity, and otherwise setting
the process control target for the selected entity to a greater of
the computed yardstick value and an upper bound of the
confidence interval for the estimated rate of non-conformance for
the selected entity.
Appeal Br., Claims App. As Appellants points out, this limitation requires
that the process control target is set to the a lower of the computer yardstick
value and a lower bound of a confidence interval for the estimated rate of
non-conformance for the selected entity in some instances, and is set to the
greater of the yardstick value and an upper bound of the confidence interval
in others. Appeal Br. 43.
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Turning to T elmoudi, on which the Examiner relies for teaching this
limitation, Telmoudi teaches that process capability indices summarize the
ability of a process to meet the customer requirements. Telmoudi 5.
T elmoudi further teaches a nonconformity ratio approach and a loss function
approach for calculating process capability indices Cp, Cpk, Cpm, and Cpmk,
Id. at 7-14. As explained in Telmoudi, these approaches use upper and
lower specification limits to calculate the process capability indices. Id. at
9-14. Although these approaches use specification limits, i.e., upper and
lower bounds of a confidence interval, the Examiner has not explained how
these approaches set a process control target to a lower of the computer
yardstick value and the lower bound in some instances, and to the greater of
the yardstick value and the upper bound in others, as this limitation requires.
In view of the foregoing, the Examiner has not explained persuasively
how the combined teachings ofYigit, Jenny, and Telmoudi would have
resulted in the "setting a process control target" limitation of independent
claim 1. We, therefore, do not sustain the Examiner's rejection of
independent claim 1 and claims 2, 3, and 11-14 depending therefrom.
Independent claims 15 and 19 include the same "setting a process
control target" limitation as independent claim 1. Appeal Br., Claims App.
For the same reasons as independent claim 1, the Examiner has not
explained persuasively how the combined teachings ofYigit, Jenny, and
Telmoudi would have resulted in this limitation. Final Act. 16.
Accordingly, we similarly do not sustain the Examiner's rejection of
independent claims 15 and 19 and claims 16 and 20 depending therefrom,
respectively.
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Claims 4--8, 10, 1 7, 18, and 21 depend from independent claims 1, 15,
and 19. Appeal Br., Claims App. The Examiner's rejections of these claims
suffer from the same deficiency as the rejection of the independent claims.
Final Act. 26-39. Thus, for the same reasons as the independent claims, we
do not sustain the Examiner's rejections of claims 4--8, 10-17, 18, and 21.
DECISION
The Examiner's decision to reject claims 1-8 and 10-21 under
35 U.S.C. § 112, first paragraph, is reversed.
The Examiner's decision to reject claims 1-8 and 10-21 under
35 U.S.C. § 101 is affrrmed.
The Examiner's decision to reject claims 1-8 and 10-21 under
35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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