Ex Parte Rai et al

Patent Trial and Appeal Board

Sep 21, 2017

13300216 (P.T.A.B. Sep. 21, 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.
13/300,216 11/18/2011 SudhenduRai 20101708USNP/106681.31901 2290
75313 7590 09/25/2017
YKROY TORPOR ATTON T/O FONT ROTHSOHTT D T T P
EXAMINER
Princeton Pike Corporate Center ROY, PUNAM P
997 Lenox Drive, Building 3
Princeton, NJ 08648-2311 ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
ipdocket @ foxrothschild. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUDHENDU RAI, MARC DENNIS DANIELS, and
CRAIG CHARLES LAMBRECHT
Appeal 2017-001393
Application HGOO^IO1
Technology Center 2800
Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the maintained final
rejection under 35 U.S.C. § 101 of claims 1-7, 9-20, 22, and 23 as directed
to non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
THE INVENTION
The subject matter of the claims on appeal relates to computational
methods and systems for carrying out computations to estimate heat
1 Xerox Corporation is identified as the real party in interest. Appeal Br. 3.
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emissions for a print shop. Specification filed November 18, 2011
(“Spec.”), Abstract.
Independent claims 1 and 15 are directed to a method and system,
respectively. Claim 1, reproduced below, is representative.
1. A method of estimating heat emissions for a print shop,
the method comprising:
determining a non-print production heat generation value
by receiving, from one or more light sources in a print shop, a
heat generation rate associated with the one or more light
sources;
determining a total heat generation value associated with
a print shop over the period of time by summing the non-print
production heat generation value associated with the print shop
over the period of time and a print production heat generation
value associated with the print shop over the period of time;
determining, by a computing device, a heat loss rate by:
identifying one or more portions of the print shop,
for each identified portion, determining a ratio by
dividing an area associated with the portion by a thermal
resistance value associated with the portion,
determining a sum by summing the ratios
associated with each identified portion,
estimating a temperature difference between
an internal temperature associated with the print
shop and an external temperature associated with
the print shop; and
multiplying the sum by the temperature difference;
determining, by a computing device, a net heat emission
value associated with the print shop over the period of time by
reducing the total heat generation value by the heat loss rate;
and
causing a display device to output one or more of the
non-print production heat generation value, the print production
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heat generation value, the total heat generation value, and the
net heat emission value.
Appeal Brief filed November 9, 2015 (“Appeal Br.”), 20-21.
DISCUSSION2
We have reviewed the ground of rejection set forth by the Examiner,
Appellants’ arguments, and the Examiner’s response. On this record, we are
unpersuaded that the Examiner erred reversibly in determining that the
claims do not comply with 35 U.S.C. § 101. We add the following.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include an implicit
exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. See, e.g., Alice Corp. Pty Ltd. v. CLSBankInt7, 134 S. Ct.
2347, 2354 (2014). In Alice, the Court reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs,
Inc., 566 U.S. 66 (2012), in which it is first determined whether the claims at
issue are directed to one of those patent-ineligible concepts and then, if they
are, to determine whether there are additional elements that “transform the
nature of the claim” into a patent-eligible application of the otherwise
ineligible concepts. Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at
78). Claims directed to, or reciting, systems are also ineligible under § 101
2 In this discussion, we refer to the Specification, the Final Office Action
dated May 21, 2015 (“Final Act.”), the Appeal Brief, the Examiner’s
Answer issued September 16, 2016 (“Ans.”), and the Reply Brief filed
November 2, 2016 (“Reply Br.”).
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if the hardware recited by the claims add nothing of substance to the
underlying abstract idea. Alice, 134 S. Ct. at 2360.
Regarding the first step of Alice, our reviewing court has “treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas.” Electric Power Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). Similarly, the Federal Circuit “treat[s] 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” and has “recognized that 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 ancillary part
of such collection and analysis.” Id. at 1354. Such claims “fall into a
familiar class of claims ‘directed to’ a patent-ineligible concept.” Id. at
1353.
Regarding the second step, an inventive concept that transforms an
abstract idea into a patent-eligible invention “may arise in one or more of the
individual claim limitations or in the ordered combination of the
limitations.” BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1349 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2355).
The Examiner determines the claims are directed to non-statutory
subject matter because “[t]he claims are directed to the abstract idea of
estimating heat emission values based on predetermined values or other
estimations” and that “[a]s claimed the invention is directed to instructing a
generic computer to retrieve predetermined and/or previously stored values
from some database[,] adds them together[,] and then display them.” Final
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Act. 2. The Examiner further determines that “[t]he method/system is
limited solely by mere instructions to implement the idea on a computer
and/or by recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine, and
conventional activities previously known to the industry.” Final Act. 3. As
set forth by the Examiner, “the light bulb is acted upon for retrieving said
[heat generation] value” and “[t]he light sources are not utilized to improve
another technology or technical field, they do not improve the recited
computer, nor are they utilized to transform or reduce a particular article to a
different state or thing.” Final Act. 2-3. Further, the Examiner determines
that “[t]he additional elements or combination of elements in the claims
other than the abstract idea per se amount to no more than[] mere
instructions to implement the idea on a computer.” Final Act. 3.
The Examiner de facto determines, inter alia, that the provision of
memory with each light source to store its heat generation value, and
communication means to convey each light source’s heat generation value to
the computing device, is equivalent to a single database that includes each
light’s heat generation value. See Ans. 7 (“The [light] sources themselves
have been clearly disclosed as equivalents to a database, a product
specification, and/or the like . . . .”); see also Final Act. 2-3 (“The light
sources have been disclosed as being equivalent to a database ... for the
purposes of providing the heat generation rate . . . [and the] heat generation
rate is taught to be a predetermined/measured value and the retrieval of the
value can be from various sources.” (citing Spec. 138)). In essence, the
Examiner maintains that data storage for each light source in communication
with the processor does not add significantly more to the abstract idea than a
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single database in operation with a processer, which would not be sufficient
to transform the abstract idea into patentable subject matter.
Appellants contend that the claims are not directed to an abstract idea
because the claims require specific electronic devices that are networked
together to provide a configuration that differs from a general purpose
computer performing generic functions and because there is no risk that the
claims would pre-empt any field of activity. Appeal Br. 8-9, 13-14.
Appellants’ argument that the claims require specific types of
electronic devices networked together to operate in a specific manner such
that the claims are not directed to an abstract idea (Appeal Br. 8, 13), is
unpersuasive. The recited devices are not particularly identified with the
necessary specificity for their recited use to constitute more than the
application of an abstract idea. See, e.g., Electric Power, 830 F.3d at 1351—
1353 (determining that the collection of information from various sources
from distributed elements over, inter alia, an interconnected electric power
grid and non-grid sources, was no more than application of an abstract idea).
Further, to the degree it could be argued that the method and system
necessitate the use of memory and communication between the one or more
light sources and the processor, an unpatentable principle is not transformed
into patentable subject matter by hardware that adds nothing of substance to
the underlying abstract idea. See Alice, 134 S. Ct. at 2355; see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (“[T]he use of generic computer elements like a microprocessor or
user interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”).
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Appellants’ pre-emption argument, likewise, does not alter our view
that the claims are properly rejected under § 101. First, the question of pre­
emption is not grounded on whether all methods for accomplishing the
intended goal are pre-empted, but rather on whether the claim pre-empts
application of the abstract idea embodied in the claim. It is, accordingly, of
no import that the claims do not read on existing, conventional methods.
Second, the absence of complete pre-emption does not demonstrate patent
eligibility because even though the principle of pre-emption is the basis for
the judicial exceptions to patentability, the concern is fully addressed and
rendered moot where the claim is determined to disclose patent ineligible
subject matter under the two-part framework described in Mayo and Alice.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). As explained in Alice, “the prohibition against patenting abstract
ideas cannot be circumvented by attempting to limit the use of [the idea] to a
particular technological environment.” Alice, 134 S. Ct. at 2538 (internal
citations and quotations omitted).
Citing the absence of citation to previous court decision, guidance
document, or other evidence, Appellants contend that the Examiner fails to
meet the Office’s initial burden to establish a prima facie case because the
Final Office Action provides no support for the assertion that “estimating
heat emission values” is an abstract idea. Appeal Br. 9-10, 14-15.
Appellants further argue, citing In reBrana, 51 F.3d 1560, 1566 (Fed. Cir.
1995), that “[i]t is only ‘[a]fter USPTO personnel identify and explain in the
record the reasons why a claim is for an abstract idea . . . [that] the burden
shifts to the applicant.’” Appeal Br. 9.
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Appellants’ argument is without persuasive merit because the
Examiner has identified “estimating heat emission values” as the retrieval of
data, its manipulation to obtain calculated data, and the display of data.
Final Act. 2-3; Ans. 5-6. As manifest in case law, including that cited by
the Examiner, these steps of manipulating, calculating, and displaying are
abstract ideas. Ans. 5. Further, on this record, we are apprised of no
shortcoming in the Examiner’s identification and explanation as set forth in
the record.
Appellants contend that the claims require significantly more than the
abstract idea. Appellants argue that the Specification describes three distinct
sources of a heat generation rate; a light source, a database, or other storage
medium, and that the light source differs from the database of a generic
purpose computer. Appeal Br. 10-11, 15-16 (citing Spec. ^ 34). Appellants
further contend that the claims recite light sources that generate heat, and
that these are not characteristics of a generic purpose computer. Appeal Br.
11-12, 16. Appellants argue that one of ordinary skill in the art would not
understand a light source to be the equivalent of a database. Appeal Br. 11-
12, 16-17. Finally, relying on the recitation of “one or more light sources”
and “plurality of print devices” in the print shop, as well as the print shop
having portions with an associated thermal resistance value, Appellants
contend the Examiner erred in “asserting] that ‘the claims fail to define
what a print shop is or comprises.’” Appeal Br. 12 (citing claims 15, 17), 17
(citing claim 1).
Appellants’ arguments do not apprise us of reversible, harmful error
because the issue is not that a light source is equivalent to the database of a
generic purpose computer, or to other storage medium, but rather that the
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addition of memory to each light source, and other necessary conventional
components such as a processor, did not add significantly more to the
abstract idea. See, e.g., Electric Power, 830 F.3d at 1351-1353 (determining
that the collection of information from various sources from distributed
elements over, inter alia, an interconnected electric power grid and non-grid
sources, was no more than application of an abstract idea); See also Alice,
134 S. Ct. at 2355; FairWarning IP, 839 F.3d at 1096.
In this regard, we discern no basis in the distribution of conventional
memory over the more than one light sources to distinguish the claimed
inventions from the abstract idea because the function of the memory is not
fundamentally altered. See Amdocs (Israel) Limited v. Openet Telecom, Inc.,
841 F.3d 1288, 1300-1301 (Fed. Cir. 2016) (in determining claims were
eligible, the court explained that the claims were tied to a specific structure
of various components and required those components to operate in an
unconventional manner to achieve an improvement in computer
functionality). In particular, on this record, we are apprised of no
improvement in functionality in the use of separately distributed memory
with each light source to provide the corresponding heat generation value for
each light source over that where a single database provides the values for
every light source. See generally Appeal Br.; Reply Br. As highlighted by
the Examiner, 138 of the Specification sets forth that the values “may be
determined by retrieving this information from a light source [as claimed], a
database or other storage medium” as equivalents (Ans. 7), and Appellants
fail to squarely contest the Examiner’s reasoning that these are equivalents
that result in the same functionality (see generally Appeal Br.; Reply Br.).
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As to Appellants’ argument that the Examiner erred in determining
that the recitation of what is included in the print shop failed to add
significantly more to the abstract idea so as to transform the abstract idea,
there is nothing of significance added where no limitation is provided as to
the character of the light sources, print devices, and print shop, or limitation
as to the portions of the print shop. See claims 1, 15, 17.
Appellants contend that the Office is inconsistent in maintaining the
rejection under § 101 on the basis that the claims are directed to an abstract
idea adding nothing more than well-understood, routine, and conventional
activity previously known to the industry while, at the same time,
“acknowledg[ing] that such computer functions are allowable over the prior
art.” Appeal Br. 12-13, 17-18.
Appellants’ contention is not persuasive of reversible error. The
analysis in the second step of the Alice!Mayo framework is not an evaluation
of novelty or non-obviousness, but rather, a search for “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.’” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 73).
Further, the novelty or non-obviousness of the claims does not necessarily
flow from what the claim adds to the abstract idea. Cf. Genetic Techs. Ltd.
v. MerialL.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“[A] claim directed
to a newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility . . . .”). For at least this reason, the absence
of a prior art rejection is of no import as to the propriety of the rejection
under 35 U.S.C. § 101.
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Appellants supplement their arguments relying on Federal Circuit
decisions issued subsequent to the filing of the Appeal Brief. See generally
Reply Br. Arguing the importance of considering preemption, Appellants
highlight that our reviewing court found that the claims in BASCOM
“do not merely recite the abstract idea of filtering content along
with the requirement to perform it on the Internet, or to perform
it on a set of generic computer components . . . [n]or do the
claims preempt all ways of filtering content on the Internet;
rather, they recite a specific discrete implementation of the
abstract idea of filtering content.”
Reply Br. 5 (quoting BASCOM, 827 F.3d at 1350).
What Appellants fail to address squarely, however, is that the
“specific method of filtering Internet content [that] cannot be said, as a
matter of law, to have been conventional or generic” was provided by
particularly structuring of elements that together operated in an
unconventional manner that provided improved function. BASCOM, 827
F.3d at 1350; see also Amdocs, 841 F.3d at 1300-1301. We are directed to,
and discern, no basis on this record for any particular structuring of element,
including the memory as distributed to the light sources, to operate in an
unconventional manner that provides improved function.
Appellants further rely on McRO, Inc. v. Bandai NAMCO Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), citing it for holding “that
‘ [b]y incorporating the specific features of the rules as claim limitations,
claim 1 is limited to a specific process . . . and does not preempt approaches
that use rules of a different structure or different techniques,’” and
contending that “[a] similar result should apply ... [in this case because]
each claim includes specific methods for estimating heat emissions in the
specific context of print shops, and the claims do not preempt all methods of
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doing so.” Reply Br. 6-7 (citing McRO, 837 F.3d at 1316). Appellants
further contend that “as with the claims of McRO, the claims in this case do
not cover the result itself, but a particular way to accomplish that result”
(Reply Br. 7), but, in doing so, fail to set forth the claimed process in McRO
for comparison (see generally Reply Br.).
In determining that the claims were not direct to an abstract idea, the
court in McRO held “the automation [enabled by the rules] goes beyond
merely ‘organizing [existing] information into a new form’ or carrying out a
fundamental economic practice” and that “[t]he claimed process uses a
combined order of specific rules that renders information into a specific
format that is then used and applied to create desired results: a sequence of
synchronized, animated characters.” McRO, 837 F.3d at 1315. In contrast,
the process of the claims on appeal (or that carried out by the claimed
system) is much simpler, and we are not persuaded that the claims on appeal
are not directed to an abstract idea. Further, also as explained above, we
determine nothing in the claims transforms the nature of the claims into
patent-eligible application of the otherwise ineligible concepts.
On this record, we are not persuaded that the claims are directed to
patent-eligible subject matter and, accordingly, we sustain the Examiner’s
rejection of the claims under 35U.S.C. § 101.
DECISION
The Examiner’s decision rejecting claims 1—7, 9-20, 22, and 23 is
AFFIRMED.
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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)(iv).
AFFIRMED
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