Ex Parte Kupratis et al

Patent Trial and Appeal Board

Mar 30, 2018

14143342 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/143,342 12/30/2013 Daniel Bernard Kupratis
54549 7590 04/03/2018
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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.
24022UAA; 67097-2340
PUS2
CONFIRMATION NO.
6302
EXAMINER
WHITE, DWAYNE J
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL BERNARD KUPRA TIS and KARL L. HAS EL 1
Appeal2016-000331
Application 14/143,342
Technology Center 3700
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel Bernard Kupratis and Karl L. Hasel (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision to reject claim 21 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter and
under 35 U.S.C. § 103(a): (1) claims 1, 4--10, and 13-16 as unpatentable
over Alvanos (US 2007/0059158 Al, published Mar. 15, 2007) and Adams
(US 2012/0291449 Al, published Nov. 22, 2012); (2) claim 17 as
unpatentable over Alvanos, Adams, and Dunbar (US 7 ,334,409 B2, issued
1 In the Appeal Brief, United Technologies Corporation is indicated as "the
real party in interest of the present application." Appeal Brief 1 (hereinafter
"Appeal Br.") (filed Mar. 9, 2015).
Appeal 2016-000331
Application 14/143,342
Feb. 26, 2008); and (3) claim 18 as unpatentable over Alvanos, Adams, and
Suciu (US 2009/0314881 Al, published Dec. 24, 2009). Claims 2, 3, 11, 12,
19, 20, 22, and 23 have been canceled. 2 We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a turbine engine. See Spec. i-f 4,
Fig. 1. Claims 1, 10, and 21 are independent.
recite:
Claims 1 and 21 are illustrative of the claimed subject matter and
1. A turbine engine comprising:
a fan;
a compressor section having at least a first portion and a
second portion, wherein said first portion is configured to
exhibit a higher pressure than said second portion, and wherein
said second portion of the compressor section comprises a low
pressure compressor;
a combustor in fluid communication with the compressor
section;
a turbine section in fluid communication with the
combustor, wherein said turbine section includes at least a first
portion and a second portion and wherein said first portion
includes at least two (2) stages and is configured to exhibit a
higher pressure than said second portion, and wherein said
second portion of the turbine section comprises a low pressure
turbine, and wherein said turbine low pressure turbine drives
said fan via an epicyclic gear train geared architecture driving
2 We note that claims 5 and 16 depend from canceled claims. See Appeal Br.
10, 12, Claims App.
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the fan and wherein the epicylclic [sic.] geared architecture
includes a speed reduction greater than about 2.3;
wherein each of said compressor section second portion
and said turbine section second portion includes a plurality of
stages;
wherein a ratio of turbine section second portion stages to
compressor section second portion stages is less than 1;
a fan bypass ratio of the turbine engine is greater than
about 6.0; and
a configuration complexity metric of the low pressure
compressor and low pressure turbine is in the range of about
2.63 to about 4.27, wherein the configuration complexity metric
is defined by the relationship [l+N][l+[l/Nx(SLPT)+Nx(SLPc)]]
/[N+(SLPc)/(SLPT)]/[2N], SLPT is the number of turbine second
portion stages, SLPc is the number of compressor second portion
stages, SLPdSLPT is the ratio of the number of compressor
second portion stages to the number of turbine second portion
stages, and N is about 1.618034.
21. A method for validating a gas turbine engine comprising
determining a configuration complexity metric of a low
pressure compressor and low pressure turbine in a gas turbine engine
having a fan bypass ratio of the turbine engine greater than about 6.0
by determining a weighted summation of a number of low pressure
compressor stages and a number of low pressure turbine stages,
wherein the complexity metric is defined as
[l+N][l+[l/Nx(SLPT)+Nx(SLPc)]]/[N+(SLPc)/(SLPT)]/[2N],
where, SLPT is the number of low pressure turbine stages, SLPc is the
number of low pressure compressor stages, and N is about 1.618034;
and
validating said gas turbine engine when said configuration
complexity is in the range of about 2.63 to about 4.27.
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ANALYSIS
Patent-Ineligible Subject Matter
Claim 21
The Supreme Court has established "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). Under that framework, we first "determine whether the claims at
issue are directed to one of those patent-ineligible concepts"-i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. If so, we secondly
"consider the elements of each 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. Id. (quoting Mayo,
132 S. Ct. at 1298, 1297). The Supreme Court has described the second step
of the analysis as "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 upon the [ineligible
concept] itself."' Id. (alteration in original) (quoting Mayo, 132 S. Ct. at
1294).
The Examiner determines that:
Independent claim 21, when analyzed as a whole, is held
to be ineligible subject matter under 35 U.S.C. 101 because the
recited limitations fail to establish that the claim is not directed
to an abstract idea. Claim 21 is an insufficient recitation of
machine implementation or a physical transformation, since the
machine ("gas turbine engine") is merely involved nominally in
the steps of the process such that it covers any machine capable
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of performing the claimed steps defined by the method, which
are considered to involve only data gathering and computation.
Likewise, a specific computation based on observation of the
construction of the nominal gas turbine engine only applies an
abstract (mathematical) concept to the nominal engine. The
equation, by which the claimed complexity metric is calculated,
is considered to be a statement of a general concept (an equation
whose result is defined only by the number of stages in parts of
the nominal gas turbine engine).
Ans. 2-3 3; see also Final Act. 6-94 .
Appellants contend that the Examiner "has improperly shifted the
burden of establishing patentability" to Appellants and that "the burden in a
rejection under 35 USC 101 is placed on the [E]xaminer to establish that the
claim is directed to an abstract idea." Appeal Br. 6 (citing MPEP 2106(2)).
Appellants do not apprise us of error by this argument. We conclude
that the Examiner's analysis and remarks are sufficient to place Appellants
on notice regarding the Examiner's position that claim 21 is directed to an
abstract idea. See Final Act. 6-9; see also Ans. 2-3; In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (stating that "the PTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies 35 U.S.C. § 132, in 'notifying] the applicant. .. [by] stating the
reasons for [its] rejection, or objection or requirement, together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application"' (quoting 35 U.S.C. § 132)).
3 Examiner's Answer (hereinafter "Ans.") (dated Sept. 2, 2015).
4 Final Office Action (hereinafter "Final Act.") (mailed Aug. 25, 2014).
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Appellants contend that:
The claimed method is limited to the particular practical
application of validating a gas turbine engine using a
configuration complexity, and does not preclude other
utilizations or applications of the configuration complexity, or
other systems or methods of validating an engine. Further, the
configuration complexity of a gas turbine is neither a law of
nature, nor a physical phenomenon. As such, Claim 21 is not
directed to an abstract idea.
Appeal Br. 5.
We are not apprised of error based on this argument. The Supreme
Court has stated that "patents that. .. integrate the building blocks [of human
ingenuity] into something more, []thereby transform[ing] them into a patent-
eligible invention ... pose no comparable risk of pre-emption, and therefore
remain eligible for the monopoly granted under our patent laws." Alice, 134
S. Ct. at 2354-55 (citations and quotations omitted). Although preemption
"might tend to impede innovation more than it would tend to promote it,
'thereby thwarting the primary object of the patent laws"' (id. at 2354 (citing
Mayo, 132 S. Ct. at 1293)), "the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). Thus, even assuming claim 21 recites a particular application of
"validating a gas turbine engine" (see Appeal Br. 5}-such that claim 21
does not preempt the entirety of the identified abstract idea-that does not
demonstrate that claim 21 is directed to patent-eligible subject matter.
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We agree with the Examiner that, under the first step of the Alice
analysis, claim 21 is directed to an abstract idea. See Final Act. 6-9; see
also Ans. 2-3. Namely, the claim is directed to determining a condition and
validating an object based on the condition. Such activity amounts to
receiving information (i.e., determining a condition) and generating
additional information (i.e., validating an object based on the condition)
using an algorithm. Our reviewing courts have held claims ineligible under
§ 101 when directed to manipulating existing information, such as by using
algorithms, to generate additional information. See Parker v. Flook, 437
U.S. 584, 585, 594-96 (1978) (rejecting as ineligible claims directed to (1)
measuring the current value for a variable in a catalytic conversion process,
(2) using an algorithm to calculate an updated "alarm-limit value" for that
variable, and (3) updating the limit with the new value); Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (discussing how
"collecting information" and "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more" are
abstract ideas); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014) ("Without additional limitations, a process
that employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.").
Additionally, the Examiner determines that:
[T]he actual steps of the process do not recite any physical
transformation or any machine implementation of the method
steps. To perform the method, the construction of the engine
(number of low pressure compressor/turbine stages) is observed,
those two numbers are inserted into an equation, and the result is
checked against a range of "valid" values. Any or all of these
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steps can be performed by hand or even in the head of a person
observing the engine.
Even observation of the number of stages in the engine is
only implied. Though it is inherent that the number of stages has
to be known or verified at some point in the past, one could be
handed a sheet of paper listing the low pressure stage counts of
various engines and perform the claimed method on all of them
without even physically encountering a gas turbine engine.
Ans. 6-7; See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed. Cir. 2011) (stating that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101 ").
Having determined that claim 21 is directed to an abstract idea, we
now address the second step of the Alice framework.
Appellants contend that:
Weighing in favor of eligibility, a plain reading of the
claims reveals that the claim is more than a mere statement of a
concept and describes a particular solution of the problem to be
solved. As identified in the claim, the problem to be solved is
"validating a gas turbine engine", and the following steps
enumerate a specific and particular process and method for
solving the problem. Further, the solution is implemented in a
concrete and tangible manner by determining the complexity of
the gas turbine engine and verifying that the complexity falls
within an acceptable range. Even further still, the performance
of the steps is observable because once the steps are performed
the engine is either valid or invalid, whereas before the
performance of the steps, the engine is not validated.
Appeal Br. 6.
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Claims must include additional features that are significantly beyond
"well-understood, routine, conventional activity" or a simple "instruct[ ion]
... to implement [or apply] the abstract idea [on a computer]."
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(quoting Mayo, 566 U.S. at 79); Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). In this case, we agree
with the Examiner that ( 1) "nothing at all changes about [the] engine, except
the application of the abstract idea of [the engine] being 'valid' or not;" (2)
"the engine has not been made more or less complex as a result of the
method-physically, it doesn't change at all;" and (3) "nothing at all has been
actually done to the engine[] ... The only result of the method is that an
engine is conceptually placed into one or another abstract category [i.e.,
valid or invalid], a result which is neither concrete nor tangible." Ans. 7-8.
Further, to the extent Appellants rely on the fact that the recited "gas turbine
engine" is a physical structure, we note that our reviewing court has affirmed
rejections under § 101 when "the only physical step involves merely
gathering data for the algorithm." See In re Grams, 888 F.2d 835, 839 (Fed.
Cir. 1989). As such, claim 21 at most requires only "mathematical
algorithms to manipulate existing information to generate additional
information." Digitech, 758 F.3d at 1351. Thus, the limitations of claim 21
do not transform the abstract idea embodied in the claim.
Concerning Appellants' contention that the claimed invention solves
the problem of validating a gas turbine engine in a novel manner by using
the complexity of the gas turbine engine (see Appeal Br. 6), even assuming
that claim 21 is "a novel and nonobvious modification," as the Supreme
Court has stated, "[ t ]he 'novelty' of any element or steps in a process, or
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even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89
(1981 ). As such, we are not apprised of error based on this argument.
Accordingly, claim 21, when considered "both individually and 'as an
ordered combination,"' amounts to nothing more than an attempt to patent
the abstract idea embodied in the steps of the claim. See Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 78). Thus, the limitations of claim 21 fail
to transform the nature of the claim into patent-eligible subject matter. See
id. (citing Mayo, 566 U.S. at 78).
For the above reasons, Appellants fail to apprise us of error in the
Examiner's determination that claim 21 is directed to patent-ineligible
subject matter. Accordingly, we sustain the Examiner's rejection of claim
21 as being directed to patent-ineligible subject matter.
Obviousness over Alvanas and Adams
Claims 1, 4-10, and 13-16
Appellants do not offer arguments in favor of independent claim 10 or
dependent claims 4--9 and 13-16 separate from those presented for
independent claim 1. See Appeal Br. 6-7. We select claim 1 as the
representative claim, and claims 4--10 and 13-16 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend that the proposed combination of Alvanos and
Adams "would not have been obvious at least because the combination
would require a complete redesign of the engine systems of Alvanos."
Appeal Br. 6. In particular, Appellants contend that:
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[A ]ltering the structure of a gas turbine engine to incorporate a
different fan bypass ratio necessitates significant structural and
design changes to both the engine structure, and the operational
components. This may well necessitate alterations within the
turbine section driving the fan, within the compressor sections,
and within the structural supports. Such changes would
necessitate further changes to both the low pressure compressor
section and the turbine section including the corresponding stage
counts. In other words, alteration of the fan bypass ratio of the
engine of Alvanos would require a complete redesign of the
engme.
Appeal Br. 7 (emphasis added); see also Reply Br. 2 5.
As an initial matter, Appellants do not identify record evidence
supporting the contention that the proposed combination of Alvanos and
Adams "would require a complete redesign of the engine systems of
Alvanos." See Appeal Br. 6-7; See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence."). In particular, Appellants do not apprise us how altering the
structure of Alvanos' gas turbine engine to incorporate a different fan bypass
ratio, as taught by Adams, would (1) "necessitate[] significant structural and
design changes to both the engine structure, and the operational
components" of Alvanos and (2) "further [necessitate] changes to both the
low pressure compressor section and the turbine section including the
corresponding stage counts" of Alvanos. See Appeal Br. 6-7.
In this case, the Examiner finds that Alvanos discloses the turbine
engine of claim 1 except Alvanos does "not disclose a specific bypass ratio
5 Reply Brief (hereinafter "Reply Br.") (filed Oct. 1, 2015).
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or an epicyclic geartrain driving the fan." See Ans. 3--4; see also Final Act.
9--10. The Examiner relies on Adams
[to] teach a turbine engine having core and bypass flow paths,
where the low pressure turbine (27) drives a fan (42) via an
epicyclic gear train geared architecture [paragraph 0025], where
the epicyclic geared architecture includes a speed reduction
greater than about 2.3 .... As a result, the bypass ratio is greater
than about 6.0 ... , and, in at least one embodiment, about 8.0 ..
. . Note that the relatively high bypass ratio is achieved as a result
of the geared architecture.
Ans. 4 (citing Adams i-fi-14, 25, 29, 37); see also Final Act. 10.
The Examiner reasons that because both Alvanos and Adams
"disclose gas turbine engines having a bypass fan structure," it would have
been obvious "to modify the turbine engine of [ Alvanos] utilizing a geared
fan architecture, as taught by [Adams], in order to achieve a fan bypass ratio
greater than about 6.0 ... , using known methods." Ans. 4; see also Final
Act. 10. The Examiner's findings are sound and supported by a
preponderance of the evidence, and the Examiner's conclusions therefrom
are based on rational underpinnings. Appellants do not provide persuasive
evidence or argument apprising us of Examiner error.
Additionally, we disagree with Appellants that the Examiner's
statements in the Answer "implicitly acknowledge that one of skill in the art
would not know what changes would be necessary without undergoing a
complete redesign of the engine." Reply Br. 2. To the contrary, the
Examiner clarifies that:
It may be the case that no redesign is necessary at all, however
since the bypass ratio cannot be inferred from the figures [of
Alvanos ], a specific teaching [Adams] was used to show that a
bypass ratio in the claimed ranges is not only possible, but has
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been contemplated and practiced in the art for many years, as the
Appellant knows.
Ans. 9 (emphasis added).
The Examiner further takes the position that:
[W]hile the statements may well be true, such drastic changes
may not be necessary. Even if a substantial redesign were
necessary, ... every modification listed is well within the grasp
of the person having ordinary skill in the art of gas turbine engine
design. Furthermore, the art recognizes that the bypass ratio of
a gas turbine engine is a result effective variable, affecting thrust
specific fuel consumption and noise production, among other
design variables, making the bypass ratio ripe for optimization
by practitioners in the art.
Ans. 9.
Appellants do not provide persuasive evidence or argument to the
contrary. Nor is there an indication by Appellants that the Examiner's
proposed modifications are beyond the ability of one skilled in the art. See
id.
Appellants contend that "one of skill in the art would not have had a
reasonable expectation of success in creating the proposed combination.
Further, the fact that a complete redesign would be required renders it
apparent that the required degree of predictability is not present." Reply Br.
2; see also Appeal Br. 6-7.
As discussed above, Appellants do not identify record evidence
supporting the contention that "a complete redesign of the engine [of
Alvanos] would be required." See Appeal Br. 6-7; see also Reply Br. 2.
Further, Appellants have not explained with any specificity why a person of
ordinary skill in the art would not have had an expectation of success in
making the proposed modification. In re 0 'Farrell, 853 F.2d 894, 903 (Fed.
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Cir. 1988) (Absolute predictability that the substitution will be successful is
not required; all that is required is a reasonable expectation of success).
In summary, based on the record presented, we are not persuaded the
Examiner erred in rejecting independent claim 1 as unpatentable over
Alvanos and Adams. Accordingly, we sustain the Examiner's rejection of
claim 1 as unpatentable over Alvanos and Adams. We further sustain the
rejection of claims 4--10 and 13-16, which fall with claim 1.
Obviousness over Alvanas, Adams and either Dunbar or Suciu
Claims 17 and 18
Appellants contend that the addition of Dunbar or Suciu "does not
cure the deficiencies of the base combination, nor does the [E]xaminer
provide any further arguments or assertions in support of the base
combination." See Appeal Br. 7-8.
For the reasons discussed above, we find no deficiencies in the
Examiner's rejection of claims 1 and 10 as unpatentable over Alvanos and
Adams. Accordingly, for the same reasons discussed above for claims 1 and
10, we likewise sustain the Examiner's obviousness rejections of claims 17
and 18.
DECISION
We AFFIRM the decision of the Examiner to reject claim 21 as being
directed to patent-ineligible subject matter.
We AFFIRM the decision of the Examiner to reject claims 1, 4--10,
and 13-16 as unpatentable over Alvanos and Adams.
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We AFFIRM the decision of the Examiner to reject claim 17 as
unpatentable over Alvanos, Adams, and Dunbar.
We AFFIRM the decision of the Examiner to reject claim 18 as
unpatentable over Alvanos, Adams, and Suciu.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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