Ex Parte Runkle et al

Patent Trial and Appeal Board

Feb 28, 2019

13210241 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/210,241 08/15/2011
80944 7590 03/04/2019
Hoffman Warnick LLC
540 Broadway
4th Floor
Albany, NY 12207
FIRST NAMED INVENTOR
Mark Andrew Runkle
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.
248737-1 1741
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
ptocommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ANDREW RUNKLE and HAROLD EDWARD MILLER
Appeal2018-000105
Application 13/210,241 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify General Electric Company as the assignee (real party in
interest). Assignment recorded 9/92011.
Appeal2018-000105
Application 13/210,241
THE INVENTION
Appellants claim using motor protection measurements generated
from a motor protection system to assist in determining power plant metrics.
(Spec. ,r 1.)
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A system, comprising:
a power plant;
a plurality of motor-driven sub-processes operating within
the power plant;
a plurality of motor protection systems, each
correspondingly coupled to a different motor-driven sub-process,
wherein each motor protection system protects at least one motor
operating within the motor-driven sub-process coupled thereto
and generates a plurality of sub-process operational data from the
at least one motor, the plurality of sub-process operational data
including voltage, phase voltage, frequency, current, power,
V ARs, phase current, current unbalance, voltage unbalance and
statistical data; and
a controller that uses the plurality of sub-process
operational data generated from each of the plurality of motor
protection systems to determine power plant metrics including
net power plant output and costs that each of the plurality of
motor-driven sub-processes has on the overall operation of the
power plant, wherein the costs that each of the plurality of motor-
driven sub-processes has on the overall operation of the power
plant are used to manage at least one of the plurality of motor-
driven sub-processes.
THE REJECTIONS
The following rejections are before us for review.
Claims 18-20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
2
Appeal2018-000105
Application 13/210,241
Claims 1-5, 7-12, and 14--20 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Fehr (US 2008/0021675 Al; publ.
Jan. 24, 2008) in view of Dimino (US 2011/0257934 Al; publ. Oct. 20,
2011).
Claims 6 and 13 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Fehr in view of Dimino as applied to claims 1
and 10 above, further in view of Sharma (US 2011/0307110 Al; publ.
Dec. 15, 2011).
FINDINGS OF FACT
We adopt the Examiner's findings as set forth on pages 4--11 in the
Final Office Action and on pages 2-6 in the Examiner's Answer.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 18-20 under 35 U.S.C. § 101.
Appellants argued claims 18-20 as a group. We select claim 18 as the
representative claim for this group, and the remaining claims stand or fall
with claim 18. See 37 C.F.R. § 4I.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (internal quotation marks and citation omitted).
3
Appeal2018-000105
Application 13/210,241
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See id. at 219
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
4
Appeal2018-000105
Application 13/210,241
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract .... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("2019 Memorandum"). Under that guidance, we
first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
5
Appeal2018-000105
Application 13/210,241
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application, i.e., that "apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." 2019 Memorandum,
84 Fed. Reg. at 54; see also MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05 (a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Memorandum.
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is
6
Appeal2018-000105
Application 13/210,241
either on a specific improvement in relevant technology or on a process that
itself qualifies as an "abstract idea" for which computers are invoked merely
as a tool. See id. at 1335-36.
In so doing, as indicated above, we apply a "directed to" two-prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim "appl[ies ],
rel[ies] on, or use[ s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." See 2019
Memorandum, 84 Fed. Reg. at 54.
The Examiner found that the claims are
directed to the abstract idea of analyzing and generating reports
on power plant metrics ( as shown in the recited functions of
claims 18-20-including obtaining operational data on motor
protections systems, generating operation data for the systems,
determining metrics based on the operational data, partitioning
the metrics, generating a representation of the metrics, and
managing the sub-processes), which is an idea of itself involving
mathematical relationships.
(Final Act. 4.)
We agree that the claims are directed to a mental process in that the
steps:
determining a plurality of power plant metrics based on the
operational data generated from the plurality of motor protection
systems, the plurality of power plant metrics including net power
plant output and costs that each of the plurality of motor-driven
sub-processes has on the overall operation of the power plant;
partitioning the plurality of power plant metrics into one or more
predetermined groupings,
generating a representation of the plurality of power plant
metrics for at least one of the predetermined groupings in response
to receiving a user-specified grouping selection; and
7
Appeal2018-000105
Application 13/210,241
managing at least one of the plurality of motor-driven sub-
processes based on the costs that each of the plurality of motor-
driven sub-processes has on the overall operation of the power
plant,
constitute "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." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
Turning to the second prong of the "directed to" test, claim 18 only
generically requires "non-transitory computer-readable storage medium."
Only inferentially mentioned in the claim are a generically-recited computer
and a power plant. Nothing in the Specification restricts the motor
protection system to a device rather than leaving it open to human oversight,
e.g., reading of dials. We thus fail to see, even if positively recited, how the
generic recitation of a computer and a power plant "impose[] a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception." 2019 Memorandum
at 53.
Thus, we find that the claims recite the judicial exception of a mental
process.
That the claims do not preempt all forms of the abstraction or may be
limited to power plant metrics, does not make them any less abstract. See
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed.
Cir. 2015) ("And that 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.").
8
Appeal2018-000105
Application 13/210,241
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217-18 (quoting Mayo Collaborative Servs., 566 U.S.
at 72-73).
Concerning this step the Examiner found,
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because there are no meaningful limitations that transform the
exception into a patent eligible application. The additional
elements recited in the independent and dependent claims
beyond further refinements of the abstract idea identified above
(and its attendant data-gathering and outputting functions) are
known and conventional generic computing elements
("computer readable storage medium", "computer system").
Apart from being instructed to perform the abstract idea itself
they only serve to perform well-understood functions ( e.g.,
receiving, storing, transmitting, and displaying/outputting data).
The claims only manipulate abstract data elements. They do not
present improvements to another technological field or the
functioning of the computer itself. Looking at the limitations as
an ordered combination adds nothing that is not already present
when looking at the elements taken individually. There is no
indication that the combination of elements improves the
functioning of a computer or improves any other technology.
Their collective functions merely provide conventional computer
implementation. None of the additional elements recited "offers
a meaningful limitation beyond generally linking 'the use of the
[ method] to a particular technological environment,' that is,
implementation via computers."
(Final Act. 4--5.) We agree with the Examiner. "[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
9
Appeal2018-000105
Application 13/210,241
implement the abstract idea ... on a generic computer." Alice, 573 U.S.
at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, apply decision criteria to data, generate a result,
and store the result amounts to electronic data query and transmission of
data are some of the most basic functions of a computer. All of these
computer functions are well-understood, routine, and conventional activities
previously known to the industry. See Elec. Power Grp., 830 F.3d at 1354;
see also In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a
possible narrower construction of the terms 'processing,' 'receiving,' and
'storing,' ... those functions can be achieved by any general purpose
computer without special programming"). In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis
(receiving/transmitting/determine/generate) and storing is equally generic
and conventional or otherwise held to be abstract. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath
& Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence
of data retrieval, analysis, modification, generation, display, and
transmission was abstract), Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of
10
Appeal2018-000105
Application 13/210,241
processing, routing, controlling, and monitoring was abstract). The ordering
of the steps is, therefore, ordinary and conventional.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a mental process and a legal
interaction using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225-26.
We have reviewed all the arguments (Appeal Br. 6-9, Reply Br. 2-3)
Appellants have submitted concerning the patent eligibility of the claims
before us which stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue, the "Examiner has provided no additional rationale
or explanation of how the cases apply to or resemble the subject matter or
form of Appellants' claims 18-20. This appears to be an insufficient basis
for explaining such a rejection." (Appeal Br. 12.)
We disagree with Appellants. To the extent Appellants argue that the
Examiner erred in adequately supporting this determination by not providing
evidence, we are unpersuaded. In this regard, there is no requirement that
Examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
MPEP § 2106.07(a)(III) ("The courts consider the determination of whether
a claim is eligible (which involves identifying whether an exception such as
an abstract idea is being claimed) to be a question of law .... Thus, the court
does not require 'evidence' that a claimed concept is a judicial exception,
11
Appeal2018-000105
Application 13/210,241
and generally decides the legal conclusion of eligibility without resolving
any factual issues" (internal citations omitted.))
All that is required of the USPTO to meet its prima facie burden of
production is that the Examiner set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must "notify the applicant,"
"stating the reasons for such rejection," "together with such information and
references as may be useful in judging the propriety of continuing the
prosecution of his application." 35 U.S.C. § 132; see also In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011) (declining "to impose a heightened burden
on examiners beyond the notice requirement of§ 132"). Here, as we found
above, the Examiner has made these findings as required by the statute. (See
Final Act. 4----5.) Appellants' bare assertion here that evidence is needed,
without any supporting reasoning as to why, is insufficient to require the
Examiner to provide further evidentiary support.
We note the Examiner's reliance on prior court decisions in his
analysis. (Final Act. 4.) The Examiner further provides reasons why certain
computer functions are well-understood, routine, and conventional
functions. (Id. at 4-5.) These prior court decisions and reasons adequately
satisfy the requirement to set forth a prima facie case of unpatentability
under 35 U.S.C. § 101.
Appellants further argue that the claims recite additional elements that
amount to significantly more, asserting,
specific steps of obtaining particular operational data,
determining power plant metrics based on particular
relationships, partitioning metrics in specific groups, generating
12
Appeal2018-000105
Application 13/210,241
a representation, and managing motor-drive sub-processes each
involved additional details that go beyond the high-level
concepts that are meant to be excluded by the Alice/Mayo test.
(Appeal Br. 8.)
We disagree with Appellants. The claim limitations asserted by
Appellants are abstractions as found above, and, thus, cannot be an element
or combination of elements sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself because the
additional elements themselves must be other than the determined
abstraction. See Alice, 573 U.S. at 217-18.
35 U.S.C. § 103(a) REJECTIONS
The Appellants argued claims 1, 5, 7-12, and 14--20 as a group. We
select claim 1 as the representative claim for this group, and the remaining
claims standing or falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2015).
Appellants argue, "[n]either Fehr nor Dimino include a cost model for
motor-driven sub-processes." (Appeal Br. 10.)
In light of the breadth of the claim, the Appellants' argument is not
persuasive as to error in the rejection. Claim 1 does not require a "cost
model." Notwithstanding, our review of the Specification describes
subprocesses alternatively as "auxiliary systems." (Spec. ,r 2.) Fehr at
paragraph 12 discloses, "fuel constituency or composition; to synthesize the
performance of individual equipment into overall unit performance."
Thus, we find that Fehr meets the claim limitation of, "motor-driven
sub-processes" because we construe individual equipment as a motor-driven
sub-process.
13
Appeal2018-000105
Application 13/210,241
Claims 10 and 18 require, "partitioning the plurality of power plant
metrics into one or more predetermined groupings."
Appellants argue,
The Examiner has cited Fehr para. 12-14, 29, 38, Figs. 5A-5B as
showing "partitioning the plurality of power plant metrics into
one or more predetermined groupings" [Final Action, p. 8].
Appellants do not see a partitioning element in the cited sections
and contend that this element is not present in the references.
(Appeal Br. 10-11.)
We disagree with Appellants. Our review of Fehr at paragraph 12
reveals that Fehr discloses various equipment performance metrics, namely,
(i) current plant lineups and unit configuration; (ii) physical operating data
such as flow, pressure, and temperature; (iii) and fuel constituency or
composition. (Fehr ,r 12.) A such, we find that Fehr meets this limitation in
that the content of items i, ii, and iii above are power plant metrics, and we
find that each is partitioned by the topical content in which the data is
categorized.
Concerning dependent claim 2, Appellants argue, "[ s ]ub-process plant
output for prime mover systems in Fehr is not equivalent to sub-process
plant output for motor-driven sub-processes." (Appeal Br. 11.)
The Examiner found,
Fehr in view of Dimino teaches claim 1 as above. Fehr further
teaches the power plant metrics further includes sub-process
plant output for each of the plurality of sub-processes (i1i1 0012-
14, 35). Dimino further teaches the subprocesses are motor-
driven (i1i1 0016, 43), which would have been obvious to
incorporate for the same reasons as in claim 1 above.
(Final Act. 6.)
We are not persuaded by Appellants' argument. Appellants'
14
Appeal2018-000105
Application 13/210,241
arguments here amount to no more than an allegation of differences between
the prior art and the claim, which does not establish nonobviousness. Dann
v. Johnston, 425 U.S. 219,230 (1976). The issue is "whether the difference
between the prior art and the subject matter in question 'is a differen[ce]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art."' Id. at 228 (internal citation omitted).
Concerning claim 3, Appellants argue,
Fehr teaches determination of fuel consumption, but it is unclear
whether it teaches energy consumption as it relates to indirect
energy costs. The teachings of Fehr focus on modeling prime
mover systems and does not appear to concern itself with total
energy consumption. Dimino may measure energy inputs as
operational data, but it has no function for connecting those to
plant output. The combination of quantifying fuel consumption
of prime mover systems in Fehr and operational metrics of
Dimino does not result in the claimed function for determining
energy consumption based on sub-process plant output.
(Appeal Br. 11.)
The Examiner found,
Fehr further teaches the controller determines energy
consumption of each of the plurality of subprocesses as a
function of sub-process plant output (i1i10012-15, 44). Dimino
further teaches the sub-processes are motor-driven (i1i10016, 43),
which would have been obvious to incorporate for the same
reasons as in claim 1 above.
(Final Act. 7.)
We disagree with Appellants. Again, our review of the Specification
describes subprocesses alternatively as "auxiliary systems." (Spec.
,r 2.) Fehr at paragraph 12 discloses, "fuel constituency or composition; to
synthesize the performance of individual equipment into overall unit
performance." Thus, we find that Fehr meets the claim limitation of,
15
Appeal2018-000105
Application 13/210,241
"energy consumption of each of the plurality of motor-driven sub-processes
as a function," because we construe individual equipment as a motor-driven
sub-process. As to Appellants' argument that Fehr "does not appear to
concern itself with total energy consumption" (Appeal Br. 11 ), we find
Fehr's disclosure of "synthesiz[ing] the performance of individual
equipment into overall unit performance" by inference encompasses overall
unit performance. (Fehr ,r 12).
Claim 4 recites "wherein the controller determines whether each of
the plurality of motor-driven sub-processes is a chargeable thermodynamic
loss that can be deducted from the net power plant output."
The Examiner found, concerning this limitation,
Fehr further teaches the controller determines whether each of
the plurality of sub-processes is a chargeable thermodynamic
loss that can be deducted from the net power plant output
(i-f 0004; Table 3). Dimino further teaches the sub-processes are
motor-driven (i1i10016, 43), which would have been obvious to
incorporate for the same reasons as in claim 1 above.
(Final Act. 7.)
Appellants argue,
Fehr may teach the use of unit heat rate curves and calculation of
incremental heat rates, but that is not a determination of whether
any given sub-system is a chargeable thermodynamic loss.
Table 3 relates to the elements in the various models and does
not include any subsystem data in its IHR model. Dimino does
not address this at all.
(Appeal Br. 11-12.)
We disagree with Appellants. First, we construe the language of
claim 4 to be functional in that it uses a wherein clause to make the
recitation. As functional language, we are required only to give the involved
functional language weight to the extent that the prior art is or is not capable
16
Appeal2018-000105
Application 13/210,241
of meeting the limitation. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed.
Cir. 1997). Here, the Examiner found that Fehr at paragraph 4 discloses
"three curves-input/ output, heat rate and incremental heat rate----can be
presented as gross or net, depending on the operating and dispatch
philosophies of the company." We find that the system of Fehr, using this
heat rate data, would at least be capable of deducting thermodynamic loss
from the net power plant output, especially given that Fehr discloses that
incremental heat rate can be presented as gross or net.
Concerning claims 6 and 13, the limitation of claim 6 is again recited
as a wherein clause, i.e., "wherein the controller tracks an aggregate cost of
the overall operation of the power plant and generates a contractual
performance indicator that indicates whether the power plant is conforming
with predetermined contractual guarantees specified for operation of the
power plant." As such, it is functional language and as functional language,
we are required only to give the involved functional language weight to the
extent that the prior art is or is not capable of meeting the limitation. See In
re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
The Examiner found that Sharma discloses the limitation at
paragraphs 17, 36, and 40. (Final Act. 10.) In paragraph 36, Sharma
explicitly discloses "the capacity manager 106 monitor[ s] the operations of
the power generators 120a-120n to substantially ensure that the provisions of
one or more SLAs are being satisfied." (Emphases omitted.) Thus, we find
that because operations are monitored against SLA ( service level agreement
(Sharma ,r 17)) provisions, the system is at least capable of indicating if
performance is conforming with the SLA.
17
Appeal2018-000105
Application 13/210,241
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 18-20 under
35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claims 1-20 under
35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1-16 and 18-20 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
18