Ex Parte Felke et al

Patent Trial and Appeal Board

Jul 17, 2018

14060657 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/060,657 10/23/2013
89953 7590
HONEYWELL/FOGG
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
07/24/2018
FIRST NAMED INVENTOR
TimFelke
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.
H0040194-5634 9524
EXAMINER
PIERRE LOUIS, ANDRE
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
07/24/2018 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):
patentservices-us@honeywell.com
docket@fogglaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIM FELKE and JEFF VAN DER ZWEEP
Appeal2018-002150
Application 14/060,657
Technology Center 2100
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Honeywell International
Inc. App. Br. 1. Honeywell International Inc. is the Applicant for the instant
patent application. Bib. Data Sheet.
Appeal2018-002150
Application 14/060,657
STATEMENT OF THE CASE
Appellants' disclosed invention relates to "automatically generating a
fault model from a network diagram." Abstract. Claim 1, which is
illustrative, reads as follows:
1. A method of automatically generating a fault model from
a network diagram comprising:
parsing a network diagram to identify schematic
components and schematic interfaces;
mapping each schematic component to a respective
standard component;
mapping each schematic interface to a respective
standard interface;
generating component failure information for each
schematic component based on the respective standard
component, wherein component failure information includes
standard failure modes of the respective standard component;
generating interface failure information for each
schematic interface based on the respective standard interface,
wherein interface failure information includes standard failure
modes of the respective standard interface; and
constructing a fault model specific to the network
diagram based on component failure information and interface
failure information.
Claims 1-20 stand rejected under 35 U.S.C. § 101 2 as being directed
to ineligible subject matter. See Final Act. 3--4.
2 All rejections are under the provisions of 35 U.S.C. in effect after the
effective date of the Leahy-Smith America Invents Act of 2011 (AIA). See,
e.g., Final Act. 2.
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Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Nov. 3, 2017; "Reply Br." filed Dec. 22, 2017) for Appellants'
positions; the Final Office Action ("Final Act." mailed July 26, 2017) and
Examiner's Answer ("Ans." mailed Dec. 14, 2017) for the reasoning,
findings, and conclusions of the Examiner; and the Specification ("Spec."
filed Oct. 23, 2013). Only those arguments actually made by Appellants
have been considered in this decision. Arguments that Appellants did not
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
ISSUE
The issue presented by Appellants' arguments is whether the
Examiner errs in concluding that claims 1-20 are directed to ineligible
subject matter under 35 U.S.C. § 101.
ANALYSIS
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be
statutorily eligible, 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 1-9 are directed to a "method," i.e., a process; claims 10-16 are
directed to a "system" comprising a diagnostic device, i.e., a machine; and
claims 17-20 are directed to a "program product comprising a non-transitory
processor readable medium," i.e., an article of manufacture. Thus, each of
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the claims is directed to one of the four statutory categories of patentable
subject matter.
The Supreme Court, however, has held there are implicit exceptions to
the categories of patentable subject matter identified in § 101, including
(1) laws of nature, (2) natural phenomena, and (3) abstract ideas. Alice
Corp. Proprietary Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014). To
determine whether claims are patent eligible under § 101, we apply the
Supreme Court's two-step test as articulated in Alice. First, we 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
claims contain an "inventive concept" sufficient to transform the claimed
abstract idea into a patent-eligible application. Id. at 2357.
Alice Step One
Appellants rely on the arguments made for claim 1 to argue the
patentability of the remaining pending claims. See generally App. Br. 6-12.
We, therefore, select independent claim 1 as the representative claim for this
group, and the remaining claims 2-20 stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Claim 1 recites four key functions----( a) ( one recited step) identifying
schematic components and schematic interfaces in a network diagram, (b)
(two recited steps) mapping each schematic component and schematic
interface to respective standard components and standard interfaces, ( c) ( two
recited steps) generating component failure information for each schematic
component and interface failure information for each schematic interface,
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and ( d) ( one recited step) constructing a fault model based on the component
failure information and the interface failure information. At a high level of
abstraction claim 1, as a whole, is directed to collecting and analyzing data,
albeit described more narrowly by limiting its practical application to
generating fault models. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1240-41 (Fed. Cir. 2016) (finding "[a]n abstract idea can generally be
described at different levels of abstraction").
There is no definitive rule to determine what constitutes an "abstract
idea." Rather, our reviewing court has explained that "both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous cases."
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016). In
that regard, we see little difference between claim 1 here directed to
collecting and analyzing data and those in, for example, Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Similar to the
claims in Electric Power,
the claims do not go beyond requiring the collection, analysis,
and display of available information in a particular field, stating
those functions in general terms, without limiting them to
technical means for performing the functions that are arguably
an advance over conventional computer and network
technology. The claims, defining a desirable information-based
result and not limited to inventive means of achieving the
result, fail under § 101.
Elec. Power, 830 F.3d at 1351. And just as in Electric Power, we find that
"collecting information, including when limited to particular content ( which
does not change its character as information), as within the realm of abstract
ideas." Id. at 1353.
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Nor do Appellants persuasively rebut the Examiner's conclusion that
claim 1 is similar to other abstract ideas our reviewing court has found
abstract: a process of organizing information through mathematical
correlations, Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014); and collecting data, recognizing certain data
within the collected data set, and storing the recognized data in a memory,
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n.,
776 F.3d 1343 (Fed. Cir. 2014), cert denied, 136 S. Ct. 119 (Mem) (2015).
See Final Act. 2-3. Appellants' argument that the Examiner's citation to
Digitech and Content Extraction is merely a general assertion that is
contrary to more recent precedential case law on subject matter eligibility is
unavailing. Reply Br. 2 ( citing Enfish; BASCOM Global Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016); and
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1314
(Fed. Cir. 2016)). The Examiner citing to Digitech and Content Extraction
is consistent with the current decisional mechanism courts now apply. See
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) ("Instead of a definition [for what an 'abstract idea'
encompasses], then, the decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen-what prior cases were about, and which way they were decided.").
Appellants do not identify any case that overrules Digitech or Content
Extraction. Nor do Appellants persuasively identify cases that involved
claims more akin to claim 1 than those in Digitech and Content Extraction.
For example, although Appellants assert that, like the claim in Enfish, the
method of claim 1 improves the capability of a system as a whole (Reply Br.
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4--5), Appellants merely identify a more generalized statement of the claim,
i.e., the abstract idea, as the "system" being improved (Reply Br. 5). In
Enfzsh, it was not the performance of the self-referential data table that was
being improved, but rather the performance of the computer system on
which the self-referential data tables were used, so that the claim did not
present "a situation where general-purpose computer components are added
post-hoc to a fundamental economic practice or mathematical equation."
Enfzsh, 822 F. 3d at 1339.
Moreover, a method is merely an abstract idea and is not patent-
eligible under § 101 if the method can be performed by human thought
alone, or by a human using pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011); see also
Gottschalkv. Benson, 409 U.S. 63, 67 (1972). A human can use pen and
paper to perform the four key functions of claim 1 described above.
Appellants' Specification admits fault models can be constructed manually.
See Spec. ,r 1. That claim 10 adds a system comprising a diagnostic device
and an interface device, and claim 17 adds a program product to perform the
four key functions described above does not change our conclusion. See
Alice, 134 S. Ct. at 2357-58.
For the above reasons, Appellants provide no persuasive argument or
evidence showing the claims are not directed to an abstract idea. Thus, we
are unpersuaded the Examiner erred in concluding the claims are directed to
an abstract idea.
Alice Step Two
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, we "consider the elements of each
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claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012)).
"[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." Id. at 2358. The
"computer functions must be more than 'well-understood, routine, and
conventional activit[ies]' previously known to the industry." Id. at 2359
(quoting Mayo, 566 U.S. at 73).
We find unavailing Appellants' argument that claim 1 recites a
specific technical solution for automatically generating a fault model. App.
Br. 11. The "parsing" and "mapping" functions describe formulating
database queries, the "generating" function describe executing the queries,
and the "constructing" function describes putting the results of the
generating function into a particular report format-all well understood,
routine, and conventional functions. Nor is the recited use of generic
computer hardware enough to confer subject matter eligibility. See id. at
2358 ("[I]f a patent's recitation of a computer amounts to a mere instruction
to 'implement]' an abstract idea 'on ... a computer,' that addition cannot
impart patent eligibility."). As to Appellants' contention that claim 1
represents an "improvement to the capability of the system as a whole," see
App. Br. 5, 7-9; Reply Br. 4--5, we are not persuaded that the improvement
is to any technology, but rather mere data manipulation to generate a fault
model. That is, the asserted improvement to fault model generation does not
parallel any improvement to computer functionality itself, such as with
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Enfish's "self-referential table for a computer database." Enfish, 822 F.3d at
1336.
Nor do we find availing Appellants' argument that claim 1 recites an
inventive concept comprising a non-conventional and non-generic
arrangement of known, conventional pieces because the Examiner withdrew
an obviousness rejection under§ 103. App. Br. 11. "[P]atent-eligibility
does not tum on ease of execution or obviousness of application. Those are
questions that are examined under separate provisions of the Patent Act."
Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir.
2016) (citing Mayo, 566 U.S. at 89-90); see also Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 590-91 (2013). Thus, the
mere fact that the Examiner withdrew an obviousness rejection under § 103
does not alter our § 101 analysis.
Nor does Appellants' preemption argument alter our§ 101 analysis.
App. Br. 11; Reply Br. 5. Preemption concerns are fully addressed and
made moot where a claim is deemed to disclose patent ineligible subject
matter under the two-part framework described in Alice. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
"While preemption may signal patent ineligible matter, the absence of
complete preemption does not demonstrate patent eligibility." Id.
Lastly, Appellants contend, for the first time in the Reply Brief, that
the Examiner provides no analysis that "the claims do not recite any
additional elements that amount to significantly more than an abstract
concept, except for mere instructions and elements that are well-understood,
routine, and conventional activities." Reply Br. 3. This newly-raised
contention is waived as untimely. See 37 C.F.R. § 4I.41(b)(2). The
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Examiner made a similar finding on pages 2 and 3 of the Final Rejection to
which Appellants could have responded in the Appeal Brief. Appellants'
belated contention provides the Examiner no opportunity to respond to this
contention made only in the Reply Brief. See Ex parte Borden, 93 USPQ2d
1473, 1475 (BPAI 2010) (informative). A contention not raised in an appeal
brief and raised for the first time in a reply brief and "not responsive to an
argument raised in the examiner's answer, including any designated new
ground of rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown." 37 C.F.R. § 4I.41(b)(2).
Even assuming, without deciding, that Appellants' contention is
timely, which it is not, the Examiner's findings are Officially Noticed facts
"capable of such instant and unquestionable demonstration as to defy
dispute." See In re Ahlert, 424 F .2d 1088, 1091 (CCP A 1970) ( citations
omitted). On this record, then, Appellants' belated challenge did not
reasonably comply with the requirements of challenging such Officially
Noticed facts. See MANUAL OF p ATENT EXAMINING PROCEDURE (MPEP)
§ 2144.03 (9th ed. Rev. 08.2017, Jan. 2018).
Thus, "the claims at issue amount to 'nothing significantly more' than
an instruction to apply the abstract idea ... using some unspecified, generic
computer." Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 71).
Accordingly, we are not persuaded the Examiner erred in rejecting the
claims as directed to ineligible subject matter under 35 U.S.C. § 101.
CONCLUSION
The Examiner did not err in rejecting claims 1-20 under§ 101.
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DECISION
The Examiner's decision to reject claims 1-20 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)(l). See 37 C.F.R.
§§ 41.50(±), 41.52(b ).
AFFIRMED
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