Ex Parte Dutton et al

Patent Trial and Appeal Board

Oct 27, 2017

13463901 (P.T.A.B. Oct. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/463,901 05/04/2012 Drew Jon Dutton 2012P04830us 8416
28524 7590 10/31/2017
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
NGON, RICKY
Orlando, EL 32817 ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
10/31/2017 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DREW JON DUTTON and ROBERT BARTMESS
Appeal 2017-000690
Application 13/463,901
Technology Center 2800
Before TERRY J. OWENS, MICHAEL P. COLAIANNI,
BRIAN D. RANGE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The appellants claim a method for generating an energy usage
baseline. Claim 1 is illustrative:
1. A method in a data processing system for generating an
energy usage baseline, the method comprising:
receiving historical energy usage data for building;
identifying a historical energy usage baseline as a
function of temperature based on the historical energy usage
data;
receiving measurements for current energy usage for the
building to form a set of energy usage measurements;
Appeal 2017-000690
Application 13/463,901
associating the set of energy usage measurements with
values for temperature for an area where the building is located;
generating, using the data processing system, a correction
factor for the historical energy usage baseline based on a
comparison of the set energy usage measurements with a
portion of the historical energy usage baseline corresponding to
the values for temperature associated with the set of energy
usage measurements, wherein generating the correction factor
for the historical energy usage baseline comprises:
identifying a range of the values for
temperature associated with the set of energy
usage measurements;
identifying the portion of the historical
energy usage baseline that corresponds to the
range of the values for temperature associated with
the set of energy usage measurements, wherein the
portion of the historical energy usage baseline; and
generating the correction factor based on the
comparison of the set of energy usage
measurements to the identified portion of the
historical energy usage baseline;
generating an adjusted energy usage baseline by applying
the correction factor to the historical energy usage baseline; and
generating an estimate of future energy usage savings
attributable to use of energy saving products at the building
using the adjusted energy usage baseline.
The Rejection
Claims 1—20 stand rejected under 35 U.S.C. § 101 as claiming
nonstatutory subject matter.
OPINION
We affirm the rejection.
The Appellants rely upon essentially the same arguments with respect
to each independent claim (1,8 and 15) and do not provide a substantive
argument as to the separate patentability of any dependent claim but, rather,
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Application 13/463,901
merely state what each claim recites and assert that what is recited is not an
abstract idea (App. Br. 13—83).1 Accordingly, we limit our discussion to one
claim, i.e., claim 1. Claims 2—20 stand or fall with that claim.2
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. The Supreme Court stated in
Bilski v. Kappos, 561 U.S. 593, 601 (2010) that “[t]he Court’s precedents
provide three specific exceptions to § 101 ’s broad patent-eligibility
principles: Taws of nature, physical phenomena, and abstract ideas.’
[Diamond v.] Chakrabarty, [447 U.S. 303,] 309, 100 S. Ct. 2204 [(1980)].”
The Court further stated that limiting an abstract idea to a particular
technological environment does not make the concept patentable. See Bilski,
561 U.S. at 610-611. Determining whether a claimed invention is patent-
eligible subject matter requires determining whether the claim is directed
toward a patent-ineligible concept and, if so, determining whether the
claim’s elements, considered both individually and as an ordered
combination, transform the nature of the claim into a patent-eligible
application. See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2350
(2014).
1 We address only the Appeal Brief because the arguments in the Reply
Brief are essentially the same as those in the Appeal Brief.
2 See 37 C.F.R. § 41.37(c)(l)(iv) (2012); Cf.,In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (Rule 41.37 “require[s] more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
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Application 13/463,901
The Appellants claim the abstract idea of comparing current energy
usage over a temperature range to a portion of historical energy usage over
the temperature range, using the difference between those energy usages to
adjust the historical energy usage over its entire temperature range, thereby
forming an adjusted historical energy usage baseline, and basing estimated
future energy usage savings attributable to energy saving products on the
adjusted historical energy usage baseline.
The Appellants argue, in reliance upon claim 1 ’s steps, particularly
the last step of “generating an estimate of future energy usage savings
attributable to use of energy saving products at the building using the
adjusted energy usage baseline”, that “[wjhile the claim does recite
generation of an adjusted energy usage baseline, viewing the claim as a
whole, the claim clearly does not attempt to tie up all usage of generation of
an energy usage baseline” (App. Br. 17—18).
Claim 1 is limited to estimating future energy usage savings at a
building. However, limiting an abstract idea to a particular technological
environment does not make the concept patentable. See Alice, 134 S. Ct.
at 2355—57 (abstract idea limited to financial transactions); Mayo
Collaborative Services v. Prometheus Labs., 566 U.S. 66, 82—85 (2012)
(abstract idea limited to treating immune-mediated gastrointestinal
disorders); Bilski, 561 U.S. at 610-11 (abstract idea limited to commodities
transactions); Parker v. Flook, 437 U.S. 584, 594—95 (1978) (abstract idea
limited to hydrocarbon catalytic conversion).
As for claim 1 ’s individual steps, none of them is limited to a
particular technique for carrying out the recited step but, rather, each of them
broadly recites an abstract idea. Also, as an ordered combination, those
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Application 13/463,901
steps, including the Appellants’ relied-upon steps of measuring temperature
and energy usage and generating an estimate of future energy usage savings
(App. Br. 18, 22—23), do not transform the nature of the claim into a patent-
eligible application. Instead, they claim the abstract idea set forth above.
Accordingly, we are not persuaded of reversible error in the rejection.
DECISION/ORDER
The rejection of claims 1—20 under 35 U.S.C. § 101 as claiming
nonstatutory subject matter is affirmed.
It is ordered that the Examiner’s decision is affirmed.
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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