Ex Parte Cornwall

Patent Trial and Appeal Board

Oct 3, 2018

13747295 (P.T.A.B. Oct. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/747,295 01/22/2013
14402 7590 10/05/2018
Lee & Hayes, PLLC
601 W. Riverside Avenue
Suite 1400
Spokane, WA 99201
FIRST NAMED INVENTOR
Mark K. Cornwall
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.
I017-0043US 2160
EXAMINER
SATANOVSKY,ALEXANDER
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
10/05/2018 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):
lhpto@leehayes.com
itron-ip@itron.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK K. CORNWALL
Appeal2018-003287
Application 13/747,295
Technology Center 2800
Before JAMES C. HOUSEL, GEORGE C. BEST, and JANEE. INGLESE,
Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-3, 6-8, 11-16, 21-24, and 26-
29.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, Itron, Inc., which, according to the Appeal
Brief, is the real party in interest. Appeal Brief filed October 20, 2017
("App. Br."), 2.
2 Final Office Action entered May 18, 2017 ("Final Act.").
Appeal2018-003287
Application 13/747 ,295
STATEMENT OF THE CASE
Claim 1 illustrates the appealed subject matter and is set forth below:
1. A method comprising:
under control of one or more processors configured with
executable instructions:
measuring, by a gas metering device, a total gas flow rate
associated with a location at a point in time;
obtaining gas consumption ranges for a plurality of gas
consuming loads associated with the location, the plurality of
gas consuming loads including a first gas consuming load that
consumes gas at a rate that falls within a first gas consumption
range of the gas consumption ranges;
identifying a combination of the gas consumption ranges
that is approximately equal to the total gas flow measurement;
based at least in part on the combination of the gas
consumption ranges, determining a subset of gas consuming
loads of the plurality of gas consuming loads that is active at
the point in time;
associating the subset of gas consuming loads with one or
more gas consuming appliances associated with the plurality of
gas consuming loads based at least in part on the gas
consumption ranges;
identifying a change in gas consumption for the first gas
consuming load from a first period of time to a second period of
time;
determining, based at least in part on the change in the
gas consumption for the first gas consuming load, that the first
gas consuming load is consuming gas at a rate that falls within
a second gas consumption range of the gas consumption ranges;
adjusting the gas consumption range of the first gas
consuming load from the first gas consumption range to the
second gas consumption range;
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identifying a first gas consuming appliance of the gas
consuming appliances associated with the first gas consuming
load; and
based at least in part on the change in gas consumption:
determining that the first gas consuming appliance
has become defective and requires servicing; and
outputting an alert to a consumer associated with
the location about the change in gas consumption for the
first gas consuming appliance, the alert comprising:
an indication that the gas consumption range
of the first gas consuming appliance has been
adjusted from the first gas consumption range to
the second gas consumption range; and
an indication that the first gas consuming
appliance has become defective and requires
serv1cmg.
App. Br. 39-40 (Claims Appendix).
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Examiner's Answer entered
December 19, 2017 ("Ans."):
I. Claims 1-3, 6-8, 11-16, 21-24, and 26-29 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter; and
II. Claims 1-3, 6-8, and 29 under 35 U.S.C. § 112(a) for failing to
comply with the written description requirement.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's timely contentions, 3 we affirm the Examiner's rejection
3 We do not consider any new argument Appellant raises in the Reply Brief
that Appellant could have raised in the Appeal Brief. 37 C.F.R.
3
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Application 13/747 ,295
of claims 1-3, 6-8, 11-16, 21-24, and 26-29 under 35 U.S.C. § 101 for the
reasons set forth in the Final Action, the Answer, and below, and reverse the
Examiner's rejection of claims 1-3, 6-8, and 29 under 35 U.S.C. § 112(a)
for the reasons set forth below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellant identifies for each issue Appellant raises.
37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) ( explaining that even if the Examiner had failed to make a
prima facie case, "it has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections")).
Rejection I
Appellant argues claims 1-3, 6-8, 11-16, 21-24, and 26-29 as a
group on the basis of claim 1, to which we accordingly limit our discussion.
App. Br. 13-32; 37 C.F.R. § 4I.37(c)(l)(iv).
In Alice Corp. v. CLS Bank International, 134 S. Ct. 234 7 (2014 ), the
Court identified a two-step framework for determining whether claimed
subject matter is judicially excepted from patent eligibility under § 101. In
the first step, "[ w ]e must ... determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S. Ct. at 2355. The second step involves "a search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
§ 4I.37(c)(l)(iv); 37 C.F.R. § 4I.41(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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upon the [ineligible concept] itself,"' and is more than "well-understood,
routine, conventional activit[y]." Alice, 134 S. Ct. at 2355, 2359 (first
alteration in original) ( quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The Examiner applies Alice's two-step framework in rejecting claim 1
under 35 U.S.C. § 101. Ans. 3-8. In the first step, the Examiner determines
that the following steps recited in claim 1 are directed to an abstract idea:
identifying a combination of the gas consumption ranges
that is approximately equal to the total gas flow measurement;
based at least in part on the combination of the gas
consumption ranges, determining a subset of gas consuming
loads of the plurality of gas consuming loads that is active at
the point in time;
associating the subset of gas consuming loads with one or
more gas consuming appliances associated with the plurality of
gas consuming loads based at least in part on the gas
consumption ranges;
identifying a change in gas consumption for the first gas
consuming load from a first period of time to a second period of
time;
determining, based at least in part on the change in the
gas consumption for the first gas consuming load, that the first
gas consuming load is consuming gas at a rate that falls within
a second gas consumption range of the gas consumption ranges;
adjusting the gas consumption range of the first gas
consuming load from the first gas consumption range to the
second gas consumption range;
identifying a first gas consuming appliance of the gas
consuming appliances associated with the first gas consuming
load; and
based at least in part on the change in gas consumption:
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determining that the first gas consuming appliance
has become defective and requires servicing.
Final Act. 4; Ans. 4--5.
The Examiner determines that these steps are directed to the abstract
idea of a mathematical/logical algorithm-a deterministic sequence of
mathematical and logical steps carried out on a set of input data that results
in output data. Ans. 3---6. Specifically, the Examiner determines that these
steps recited in claim 1 identify a gas consumption associated with an
individual gas consuming appliance that has become defective, which the
Examiner determines constitutes an abstract idea because it is analogous to
other concepts that have been identified by the Federal Circuit as abstract,
such as collecting information, analyzing it, and displaying certain results of
the collection and analysis, Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016), comparing information regarding a sample or test
subject to a control or target data, In re BRCAJ- & BRCA2-Based Hereditary
Cancer Test Patent Litig., 774 F.3d 755 (Fed. Cir. 2014); Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013), data
recognition and storage, Content Extraction & Transmission LLC v. Wells
Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014), organizing information
through mathematical correlations, Digitech Image Techs., LLC v. Elecs. for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), a formula for computing an
alarm limit, Parker v. Flook, 437 U.S. 584 (1978), and an algorithm for
calculating parameters indicating an abnormal condition, In re Grams, 888
F.2d 835 (Fed Cir. 1989). Final Act. 4--5; Ans. 3---6.
With respect to the second step of the Alice framework, the Examiner
determines that claim 1 recites additional elements beyond the abstract
idea-a gas metering device, a processor, an implied device for outputting
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an alarm, and a step of obtaining gas consumption ranges-that when
viewed as a whole, do not provide meaningful limitations that transform the
abstract idea into a patent eligible application of the abstract idea, such that
claim 1 amounts to significantly more than a claim to the abstract idea itself.
Final Act. 5; Ans. 6.
Specifically, the Examiner determines that the gas metering device
recited in claim 1 is used for mere data gathering to execute the abstract
idea, is broadly recited, is directed to insignificant pre-solution activity that
does not add a meaningful limitation to the claimed method, does not limit
the abstract idea to a particular application of the abstract idea, and would
have been routinely used by those of ordinary skill in the art to apply the
abstract idea. Final Act. 5; Ans. 7. The Examiner determines that claim 1 's
step of obtaining data about gas consumption ranges is also not
"significantly more" because it is recited at a high level of generality, and
"must be taken by others in order to apply the abstract idea." Ans. 8. The
Examiner determines that claim 1 's processor constitutes generic computer
equipment that performs generic computer functions constituting well-
understood, routine, and conventional activities, previously known in the
industry, to carry out the mathematical/logical steps of the algorithm. Final
Act. 5---6; Ans. 7. The Examiner determines that the device implied by claim
1 for outputting an alert about a change in gas consumption constitutes
insignificant post-solution activity, and determines that the corresponding
outputting function is recited at a high level of generality. Final Act. 6; Ans.
7-8 (citing Elec. Power Grp., 830 F.3d at 1354--56 ("merely presenting the
results of abstract processes of collecting and analyzing information, without
more (such as identifying a particular tool for presentation), is abstract as an
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ancillary part of such collection and analysis ... the claims are clearly
focused on the combination of those abstract-idea processes. The advance
they purport to make is a process of gathering and analyzing information of
a specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions. They are
therefore directed to an abstract idea ... essentially result-focused,
functional character of claim language has been a frequent feature of claims
held ineligible under § 101 ".))
The Examiner concludes that the abstract idea of claim 1 amounts to a
"fundamental building block of human ingenuity" that could be the basis for
a variety of different practical applications, and a patent for claim 1 would
therefore monopolize the abstract idea itself, rather than particular practical
applications of the abstract idea, thus weighing against claim 1 's eligibility
for patenting. Ans. 8.
Appellant argues that similar to the claims in Diamond v. Diehr, 450
U.S. 175 (1981), claim 1 does not attempt to claim an algorithm, but instead
improves upon a technological problem in a conventional industry practice.
App. Br. 18. Appellant contends that traditional gas meters can only provide
total gas consumption associated with a particular location, and cannot
provide an indication of gas consumption associated with multiple individual
appliances at the location. App. Br. 18-19. Appellant asserts that, in
contrast, claim 1 recites techniques that enable a gas meter to determine gas
consumption for multiple individual gas consuming appliances at a
particular location, permitting gas consumption for individual appliances to
be tracked over time, which allows determination of whether an appliance
has become defective and requires servicing. App. Br. 18-21.
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Claim 1 recites steps directed to:
( 1) identifying a combination of gas consumption ranges for a
plurality of gas consuming loads associated with a location that is
approximately equal to the total gas flow rate associated with the
location at a point in time measured by a gas metering device,
(2)determining a subset of gas consuming loads of the plurality of gas
consuming loads that is active at the point in time based at least in
part on the combination of gas consumption ranges,
(3) associating the subset of gas consuming loads with one or more
gas consuming appliances associated with the plurality of gas
consuming loads based at least in part on the gas consumption
ranges,
( 4) identifying a change in gas consumption for a first gas consuming
load from a first period of time to a second period of time,
( 5) determining, based at least in part on the change in the gas
consumption for the first gas consuming load, that the first gas
consuming load is consuming gas at a rate that falls within a
second gas consumption range of the gas consumption ranges,
( 6) adjusting the gas consumption range of the first gas consuming
load from the first gas consumption range to the second gas
consumption range,
(7) identifying a first gas consuming appliance of the gas consuming
appliances associated with the first gas consuming load, and
(8) determining that the first gas consuming appliance has become
defective and requires servicing based at least in part on the change
in gas consumption.
These steps, taken individually, are directed to the abstract idea of
manipulating or analyzing data or information ( the total gas flow rate
associated with a location at a point in time measured by a gas metering
device and gas consumption ranges for gas consuming loads associated with
the location) to generate additional data or information (a combination of gas
consumption ranges for a plurality of gas consuming loads that is
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approximately equal to the total gas flow rate measured by the gas metering
device, a subset of gas consuming loads that is active when the total gas flow
is measured, gas consuming appliances associated with the active gas
consuming loads, and a change in gas consumption for a first gas consuming
appliance from a first period of time to a second period of time indicating
that the gas consuming appliance has become defective and needs service).
Merely combining these abstract steps as recited in claim 1 fails to
render the combination any less abstract. See Digitech, 758 F.3d at 1351
("Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible."); FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (abstract ideas include collecting
information and analyzing that information "by steps people go through in
their minds, or by mathematical algorithms"); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016) ("[W]e continue
to 'treat[ ] 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."' (second alteration in original)
(citation omitted)); Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1340-41 (Fed. Cir. 2017) (organizing, displaying, and
manipulating data is an abstract idea).
Claim 1 's step of measuring a total gas flow rate associated with a
location at a point in time is directed to mere data gathering, as is the step of
obtaining gas consumption ranges for a plurality of gas consuming loads
associated with the location. In addition, performing the steps recited in
claim 1 under the control of one or more processors configured with
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executable instructions is well-understood, routine, and conventional activity
in the art, and outputting an alert notifying of a change in gas consumption
constitutes insignificant post-solution activity recited at too general a level.
Accordingly, claim 1 is directed to data gathering recited at a high
level of generality, carrying out computations on the gathered data using a
conventional computer to generate new data or information----corresponding
to a mathematical algorithm-and displaying an alert based on the generated
data, which constitutes insignificant post-solution activity recited at a high
level of generality. Claim 1 's features, considered individually and as an
ordered combination, therefore, do not constitute an inventive concept that
transforms the abstract idea into a patent-eligible application of the abstract
idea. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed.
Cir. 2014) (holding the claims insufficient to supply an inventive concept
because they did not "do significantly more than simply describe [the]
abstract method," but rather are simply "conventional steps, specified at a
high level of generality" (quoting Alice, 134 S. Ct. at 2357)).
Although claim 1 is directed to a specific process, it is nonetheless
directed to manipulating or analyzing data or information to generate
additional data or information ( discussed above), and therefore constitutes a
procedure for solving mathematical problems-referred to by the courts as
an "algorithm"- corresponding to an abstract idea. Gottschalk v. Benson,
409 U.S. 63, 65 (1972) (A procedure for solving a given type of
mathematical problem is known as an "algorithm."). Accordingly, unlike
the situation in Diamond, a patent to claim 1 would pre-empt the use of the
algorithm itself, rather than a patent-eligible application of the algorithm,
and claim 1 is therefore ineligible for patenting. Flook, 437 U.S. at 595 ("if
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a claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific purpose, the
claimed method is nonstatutory." (internal quote marks omitted)).
Although Appellant argues that claim 1 's method improves upon
existing technology by enabling a gas meter to determine gas consumption
for multiple individual gas consuming appliances, and by allowing
identification of changes in gas consumption for an appliance over time to
determine if the appliance has become defective and requires servicing,
Appellant does not direct us to any factual evidence supporting this
conclusory assertion, such as evidence of record comparing Appellant's
method to the existing technology. App. Br. 13-32. Unsupported attorney
arguments cannot take the place of evidence necessary to resolve a disputed
question of fact. In re Schulze, 346 F.2d 600, 602 (CCPA 1965) ("Argument
in the brief does not take the place of evidence in the record.").
Appellant argues that, like the claims in Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016), claim 1 is not directed to an abstract
idea where computers are invoked as a tool, but instead is directed to a
specific improvement in computer capabilities: "improvements in
capabilities of gas metering computing devices and systems to measure gas
flows for multiple individual gas consuming devices at a location." App. Br.
23-24. Appellant contends that claim 1 recites improvements to the
functioning of traditional gas meters by enabling a gas meter to determine
individual gas loads operating internal to a site, which allows identification
of changes in gas consumption for an individual appliance over time,
permitting determination of whether an appliance has become defective and
requires servicing. App. Br. 24--25.
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The inquiry under Enfzsh is whether claim 1 is directed to a method
that improves the relevant computing technology, or is instead directed to a
result or effect that is itself an abstract idea, and merely invokes generic
processes and machinery. Enfzsh, 822 F.3d at 1335-36 (the first step of
Alice considers whether the "focus of the claims is on the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool."). As the Examiner explains, "the computer in the present claims is
merely acting as a tool to carry out the recited algorithm." Ans. 14--15.
Although Appellant asserts that claim 1 's method is directed to
improvements in capabilities of gas metering computing devices and
systems to measure gas flows for multiple individual gas consuming devices
at a location (App. Br. 23-24), Appellant does not direct us to any factual
evidence supporting this assertion, such as evidence of record comparing
Appellant's method to existing technology. Appellant's argument, therefore,
is not persuasive. Schulze, 346 F .2d at 602 ("Argument in the brief does not
take the place of evidence in the record."); Jung, 637 F.3d at 1365.
Appellant argues that like the situation in Enfish where the
Specification supported the assertion that the claimed subject matter was not
an abstract idea, Appellant's Specification emphasizes the benefits of the
claimed invention over the prior art with respect to conserving computing
resources, illustrating that claim 1 is directed to an improvement in computer
capabilities relative to the prior art, and not merely an abstract idea. App.
Br. 25-26. Appellant contends that the Specification explains that existing
gas meters fail to associate gas consumption with individual gas consuming
appliances, but claim 1 's method allows gas consumption to be associated
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with individual appliances so that consumers can track total consumption
and operating costs of individual appliances. App. Br. 26-27 ( citing Spec.
,r,r 1--4, 13-17).
However, as the Examiner correctly explains (Ans. 15), although the
portions of the Specification cited by Appellant discuss benefits of
Appellant's invention over the prior art, theses paragraphs of the
Specification do not describe benefits "with respect to conserving
computing resources," as Appellant asserts. Contrary to Appellant's
arguments, although the Specification does indicate that existing gas meters
fail to associate gas consumption with individual gas consuming appliances,
and indicates that Appellant's invention allows gas consumption to be
associated with individual appliances so that consumers can track total
consumption and operating costs of individual appliances, the Specification
does not support the assertion that claim 1 is directed to an improvement in
computer capabilities relative to the prior art (unlike the situation in Enfzsh).
Rather, the Specification describes "an enhanced gas meter [that] measures
gas flow rates, categorizes the measured gas flow rates, associates the
categorized gas flow rates with gas consuming loads and/or appliances and
outputs a result to include gas consumption data with the gas consuming
loads" (Spec. ,r 14), which is not directed to an improvement in computer
technology per se, but rather is directed to an algorithm for analyzing input
data (measured gas flow rates) to generate additional information (gas
consumption data associated with gas consuming loads and/or appliances).
Appellant argues that even if claim 1 were directed to an abstract idea,
the features of claim 1, when viewed as an ordered combination, amount to
significantly more than the alleged abstract idea because the claimed
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features include an "inventive concept" as defined in Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F. 3d 1341, 1350 (Fed.
Cir. 2016): "a 'particular arrangement of elements [ which are] a technical
improvement over [the] prior art."' App. Br. 27-29. Appellant argues that
similar to the claims in Bascom, claim 1 's features provide the benefits of
prior art solutions (measurement of total gas usage rate at an endpoint
location), and avoid the drawbacks of prior art solutions (the inability of a
gas meter at an endpoint location to measure gas usage rates of individual
gas-consuming devices at the location). App. Br. 29-31.
However, as discussed above, although claim 1 's method may provide
benefits relative to the prior art, and may avoid the drawbacks of prior art
solutions, the claimed method is nonetheless directed to an abstract idea, and
claim 1 's features, considered individually and as an ordered combination,
do not constitute an inventive concept that transforms the abstract idea into a
patent-eligible application of the abstract idea.
In Bascom, the Federal Circuit held that the claims at issue did not
preempt use of the abstract idea of filtering content on the Internet, or on
generic computer components performing conventional activities, but rather
carved out a specific location for the filtering systern (a remote ISP server),
and required the filtering system to give users the ability to customize
filtering for their individual network accounts. Bascom, 827 F. 3d at 1352.
In contrast, claim 1 's method would preempt use of the abstract idea of
analyzing or manipulating the total gas flow rate associated with a location
at a point in time to determine the gas consumption associated with
individual appliances at the location, because the rnethod of clairn 1 does not
add meaningful limitations that amount to more than generally linking use of
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the abstract idea to a particular technological environment. Accordingly,
claim 1 's features, when viewed individually and as an ordered combination,
do not amount to significantly more than the abstract idea itself.
Appellant argues that unlike the claims in Electric Power Group, "the
claims in this application include inventive methods and/or processes that
generate new data, and are not merely selection and manipulation of
information to provide a humanly comprehensible amount of information
useful for users." Reply Br. 2-5. Appellant contends that "the claims at
issue in this application enable a gas metering device to determine gas
consumption for multiple individual gas consuming appliances using only a
total gas flow rate for a location that includes the multiple individual gas
consuming appliances," and Appellant asserts that the Examiner "has
provided no evidence of this sort of data being generated using a single gas
metering device prior to Appellant's application." Reply Br. 5---6.
However, claim 1 's method is similar to the claims in Electric Power
Group, which were directed to methods of receiving data, analyzing the
data, and displaying the results. Elec. Power Grp., 830 F. 3d at 1351-52. In
Electric Power Group, the court explained that the claims were directed to
an ineligible abstract idea because "[ t ]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions." Id. at 1354. In the present case, as in
Electric Power Group, "[ n ]othing in the claims, understood in light of the
specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information." Id. at 1355. Furthermore, "the focus of
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the claims is not on ... an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools." Id. at 1354.
Moreover, even if the Examiner has not presented evidence
establishing that a single gas metering device had been known before
Appellant's application to generate gas consumption data for multiple
individual gas consuming appliances using only a total gas flow rate as
Appellant asserts, "a claim for a new abstract idea is still an abstract idea."
Synopsys, 839 F. 3d at 1151.
Accordingly, Appellant's arguments are unpersuasive of reversible
error in the Examiner's rejection of claim 1 under 35 U.S.C. § 101. We
therefore sustain the Examiner's rejection of claims 1-3, 6-8, 11-16, 21-24,
and 26-29 under 35 U.S.C. § 101.
Rejection II
The Examiner finds that Appellant's original disclosure does not
describe "determining," or "an indication," that "the first gas consuming
appliance has become defective and requires servicing," as recited in claims
1 and 29. Final Act. 3. The Examiner finds that Appellant's original
disclosure also does not describe "an indication that a water heater has a
calcium build-up in a tank of the water heater," as recited in claim 29. Id.
The Examiner finds that the "only relevant portion of the Specification with
regards to servicing" indicates that "a customer may discover that a water
heater is consuming more gas than was normal in the past, which may be
attributable to a calcium build-up in the tank of the water heater" and "a
consumer may discover that a gas furnace is consuming more gas than was
normal in the past, which may indicate that the furnace needs servicing."
Final Act. 3 ( citing Spec. ,r 16).
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To fulfill the written description requirement, the original disclosure
does not have to describe claimed subject matter in haec verba. Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991); In re Wertheim,
541 F.2d 257,262 (CCPA 1976) ("The function of the description
requirement is to ensure that the inventor had possession, as of the filing
date of the application relied on, of the specific subject matter later claimed
by him; how the specification accomplishes this is not material.").
Appellant's Specification explains that claim 1 's method allows a
customer to monitor changes in gas consumption associated with individual
gas-consuming appliances over time, and in so doing, "a consumer may
discover that a gas furnace is consuming more gas than was normal in the
past, which may indicate that the furnace needs servicing." The
Specification explains that a customer may also "discover that a water heater
is consuming more gas than was normal in the past, which may be
attributable to a calcium build-up in the tank of the water heater."
The Examiner does not adequately explain why these disclosures in
Appellant's Specification would not reasonably convey to those skilled in
the art that Appellant had possession at the time of filing of a method of
determining that a gas consuming appliance has become defective and
requires servicing based on a change in the appliance's gas consumption, as
recited in claims 1 and 29. Nor does the Examiner adequately explain why
these disclosures in Appellant's Specification would not reasonably convey
to those skilled in the art that Appellant had possession at the time of filing
of a method of determining that a water heater has a calcium build-up in the
tank of the water heater, based on a change in the water heater's gas
consumption, as recited in claim 29. As Appellant points out, "a written
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Appeal2018-003287
Application 13/747 ,295
description of determining that 'a gas furnace is consuming more gas than
was normal in the past, which may indicate that the furnace needs servicing'
includes the determination that a gas consuming appliance does in fact
require servicing." App. Br. 33-34.
Thus, we reverse the Examiner's rejection of claims 1-3, 6-8, and 29
under 35 U.S.C. § 112(a) for not complying with the written description
requirement.
DECISION
We affirm the Examiner's rejection of claims 1-3, 6-8, 11-16, 21-24,
and 26-29 under 35 U.S.C. § 101, and reverse the Examiner's rejection of
claims 1-3, 6-8, and 29 under 35 U.S.C. § 112(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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