Ex Parte MEYNARDI et al

Patent Trial and Appeal Board

Oct 30, 2018

12915998 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/915,998 10/29/2010
25537 7590 11/01/2018
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Alessandro M. MEYNARD!
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.
20100519 8721
EXAMINER
NGHIEM, MICHAEL P
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALESSANDRO M. MEYNARD!,
Jean F. Dubois, Martin Doehring, and C. P. Cheng 1
Appeal2017-001069
Application 12/915,998
Technology Center 2800
Before BEYERL YA. FRANKLIN, MARK NAGUMO, and
MONTE T. SQUIRE, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Alessandro M. Meynardi, Jean F. Dubois, Martin Doehring, and
C. P. Cheng ("Meynardi") timely appeal under 35 U.S.C. § 134(a) from a
non-final Rejection2 of all pending claims 1--4, 6-13, and 15-25. We have
jurisdiction. 35 U.S.C. § 6.
We reverse.
1 The real party in interest is identified as Verizon Communications Inc.
(Appeal Brief, filed 16 March 2016 ("Br."), 3.)
2 Office Action mailed 2 October 2015 ("Office Action"; cited as "OA").
Several Requests for Continued Examination ("RCE") under
3 7 C.F .R. § 1.114 were filed, the last of which on 6 July 2015.
Appeal2017-001069
Application 12/915,998
A. Introduction 3
OPINION
The subject matter on appeal relates to methods (independent claims 1
and 6) of monitoring power outages of a power grid via network terminal
devices, and to a non-transitory computer-readable medium (independent
claim 18) comprising instructions to carry out such a process.
The '998 Specification explains that the power grid that transmits
electrical power includes a network of transmission lines, power generation
stations, and various users. (Spec. 1 [0001].) The power to the users may be
disrupted from time to time by various causes. According to the
Specification,
[p ]ower providers ( e.g., utilities, power utilities,
cooperatives, etc.) usually respond to an outage in a reactive
manner based on calls received from customers indicating
that power has been lost and/or calls received from local,
state or federal first responders associated with an incident
potentially affecting the power grid ( e.g., a vehicle hitting an
electric pole, etc.).
(Id. at [0002].) Similarly, the Specification teaches that "[g]enerally,
restoration of service is confirmed based on calls to and/or from customers
in areas affected by the outage and/ or based on physical inspections by field
force personnel." (Id.) As a result, power providers "may experience delay
when detecting an outage, isolating a cause of the outage, restoring power in
response to the outage, and/or confirming that power has been restored when
3 Application 12/915,998, Remote power outage & restoration notification,
filed 29 October 2010. We refer to the "'998 Specification," which we cite
as "Spec."
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Application 12/915,998
calls are not received from customers and/or when relying on maintenance
crews to perform the physical inspections." (Id. at [0002].)
The Specification discloses methods, intended to alleviate these
problems, in which network terminal devices (i.e., devices connected to a
network, that are also connected to the power grid) report, to a network
server, power outages from the power grid. (Id. at 5 [0017].) The instances
of outages are recorded by the server along with other data such as the
geographic and grid location of the affected terminal, and the time of the
outage. (Id. at 6-7 [0019].) This data enables further analysis, such as the
number and place of the outages, and the rate at which terminals are losing
power. (Id. at 7 [0020].) In the claimed methods, the server provides
"indications" of individual power outages, and a further indication if a
threshold rate of outage occurrences has occurred. (Id. at 9--10 [0024].)
Claim 1 is representative and reads:
A method comprising:
receiving, by a server device and from a first network
terminal device installed at a customer premise, an alert
that the first network terminal device has lost primary
power from a power grid;
analyzing, by the server device, the alert and a plurality of
alerts received from a plurality of respective network
terminal devices;
determining, by the server device and based on the
analysis, whether a power outage of the power grid has
occurred;
outputting, by the server device, an indication of the power
outage when the power outage is determined to occur;
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Application 12/915,998
determining that a quantity of other network terminal
devices, that have lost primary power from the power grid,
is increasing at a rate that is greater than a threshold,
wherein the rate is based on
a first quantity of the other network terminal devices that
have lost primary power at a present point in time and
a second quantity of the other network terminal devices
that have lost primary power at a prior point in time; and
outputting another indication that an outage event has been
triggered based on the determination that the rate is greater
than the threshold.
(Claims App., Br. 22; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following ground of rejection 4, 5, 6, 7 :
Claims 1--4, 6-13, and 15-25 stand rejected under 35 U.S.C. §101
as being drawn to judicially excepted subject matter.
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Meynardi raises arguments for patentability solely on the basis of
limitations recited in claim 1. Arguments for the patentability of the
4 Examiner's Answer mailed 25 August 2016 ("Ans.").
5 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
6 The Examiner states that the appealed claims would be patentable over the
prior art if the rejection under 35 U.S.C. § 101 were overcome. (Ans. 6-7.)
7 Meynardi (Br. 10-13) also seeks review of objections to claims 1, 6, 8, 9,
and 18 (OA 2-3). We do not, however, have jurisdiction over objections to
the claims, review of which is by petition under 3 7 C.F .R. § 1.181.
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Application 12/915,998
remaining independent claims (Br. 19, last para.), and for all dependent
claims (id. at 20, 1st para.), are expressly cumulative with the arguments for
claim 1. We therefore limit our discussion to claim 1.
The Supreme Court's decision in Alice8 identifies a two-step
framework for determining whether claimed subject matter is judicially-
excepted from patent eligibility under § 101. In step one, a determination is
made as to whether the claims are directed to an "abstract idea." If so, in
step two, the claims are analyzed to determine whether there are other
elements or combinations of other elements that amount to "significantly
more" than the abstract idea itself. If all the non-abstract elements,
considered individually and as the "ordered combination" recited in the
claim, are well-understood, routine, or conventional in the art, and they do
not, for example, effect an improvement in the technology or technical field,
then they are "not 'enough' to transform an abstract idea into a patent-
eligible invention." Alice, 134 S. Ct. at 2359--60.
Meynardi urges that the Examiner's determination that the claims are
directed to the abstract idea of analyzing alerts to determine whether a power
outage has occurred are not based on evidence, but are merely expressions of
an opinion. (Br. 14, 11. 9--12.)
While the discussions in the Office Action are terse, the Examiner
determined that the steps of receiving of data and the outputting of
"indications" are insignificant extra-solution activities (OA 6, 11. 9-10),
while the intermediate steps of characterizing and analyzing the data are
8 Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014).
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Application 12/915,998
abstract ideas (id. at 4---6). The further "evidence of court findings" (Ans. 5,
11. 3--4) is not, speaking strictly, "evidence" of what persons skilled in the
relevant arts would have understood claim terms to mean, or how the recited
steps would have been performed, etc. Rather, the court decisions illustrate
how the courts have applied terms such as "mental processes" to analyzing
data and making determinations based on that data. Meynardi' s generalized
procedural complaints regarding the step one determination are not
persuasive of harmful error.
We therefore proceed to consider Meynardi' s criticisms of the
step two analysis, the most significant of which is the argument that,
the features of claim 1 are not well-understood, routine and
conventional in the field. That is, the features of claim 1
allow customer premise equipment ( e.g., a network terminal
device) to be used to detect and report a power outage ....
Using network terminals in this manner is not well
understood, routine or conventional in this art. That is,
power providers do not use such information when
identifying an outage event ....
(Br. 18, 11. 14--19.)
Although the Examiner finds that "[t]he feature that is well-
understood, routine and conventional in the field is the server
(memory/processor)" (Ans. 9, 11. 20-21 ), the Examiner does not address the
alleged status of the network terminal device that detects and reports the
power outage as being not well understood, not routine, and not
conventional in the art of the power grid. While it might be objected that
Meynardi does not support its denial that such network terminal devices are
not well-understood, routine, and conventional with citations to evidence of
record, it has not escaped our attention that Meynardi' s position is not
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Application 12/915,998
inconsistent with the characterization of the state of the art in the
Specification at page 1, paragraph [0002], discussed supra at 2. 9 It is well-
settled that the representations of a Specification are presumed to be accurate
and enabled, the initial burden lying on the PTO to demonstrate a reasonable
basis to doubt the accuracy of the disclosure of the invention. See, e.g., In re
Marzocchi, 439 F.2d 220,224 (CCPA 1971) ("it is incumbent upon the
Patent Office, whenever a rejection on this basis is made, to explain why it
doubts the truth or accuracy of any statement in a supporting disclosure and
to back up assertions of its own with acceptable evidence or reasoning which
is inconsistent with the contested statement."). Moreover, as our reviewing
court has explained more recently, whether an element is well-understood,
routine, or conventional is a fact issue, and must therefore be supported by
the preponderance of the evidence. Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018),pet. reh 'gen bane den 'd, 890 F.3d 1369 (Fed. Cir. 2018);
Comm'r Patents Memorandum, Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (19 April 2018).
9 The disclosures at pages 11-12, paragraphs [0028]-[0031], describing the
overlapping capabilities of many of the components of devices illustrated by
Figure 2 that are connected to the network, including set top boxes,
processors, and servers, and at pages 13-16, paragraphs [0032]-[0038],
describing the network terminal illustrated in Figure 3, indicate the
sophistication and functional flexibility of various components of the system
in which the claimed process is conducted. We decline to undertake an
investigation of these disclosures de nova regarding the extent to which they
reveal the state of the art versus novel disclosure. Such an inquiry is highly
fact-specific, and, to be reasonably complete, would require familiarity with
state of the art that we consider best left, in the first instance, to the expertise
and the sound discretion of the Examiner and Appellants.
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On the present record, the Examiner has failed to come forward with
evidence supporting the finding that power-failure reporting network
terminals were well-understood, routine, and conventional in the power grid
art. Nor has the Examiner established that the Specification is inaccurate in
this regard. If such terminals were not in well known, were not in routine
use, or were not conventional in the art of power grid monitoring, their
modification and use would constitute a physical improvement to that
technical field. Such an improvement is perhaps comparable to modifying a
known tool, for use in a machine to accomplish a recognized goal. Whether
such a modification would be patentable on, for example, obviousness
grounds, is a distinct issue from determining patent eligibility under § 101.
Accordingly, we are persuaded on the present record that Meynardi has
demonstrated harmful error in the appealed rejection. 10
We therefore reverse the rejection under§ 101.
10 Our analysis should not be regarded as exclusive: a rejection under§ 101
may be shown to be improper if it can be shown that the step one analysis,
that the claim is directed to an abstract idea, is infirm. As the Federal Circuit
has instructed, "[ w ]e therefore look to whether the claims in these patents
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery." McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)
( determining that because the claimed subject matter did not pass step one of
the Alice analytical framework, it was not necessary to consider step two).
Nor should our holding be read as a determination that the claimed subject
matter is patent-eligible under § 101. Again, we stress that we neither
express nor insinuate any opinion on the ultimate question in this case.
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C. Order
It is ORDERED that the rejection of claims 1--4, 6-13, and 15-25 is
reversed.
REVERSED
9