Foster-Miller, Inc.

Patent Trials and Appeals Board

Feb 10, 2022

2021002778 (P.T.A.B. Feb. 10, 2022)

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. 14/745,825 06/22/2015 David C. Meeker FM-631J 9061 32488 7590 02/10/2022 Iandiorio Teska & Coleman, LLP 255 Bear Hill Road Waltham, MA 02451 EXAMINER SENGDARA, VONGSAVANH ART UNIT PAPER NUMBER 2829 MAIL DATE DELIVERY MODE 02/10/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID C. MEEKER, JOSHUA BERGLUND, TIMOTHY J. MASON, MICHAEL L. MURPHREE, ALEXANDER E. POST, and JAMES F. GODFREY Appeal 2021-002778 Application 14/745,825 Technology Center 2800 Before JEFFREY T. SMITH, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 3-7, 10-14, 16-20, 23-34, and 36- 38 of Application 14/745,825, which constitute all the claims pending in this application. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 In our Decision, we refer to the Specification (“Spec.”) of Application 14/745,825 filed June 22, 2015 (“the ’825 App.”); the Final Office Action dated June 25, 2019 (“Final Act.”); the Appeal Brief filed May 13, 2020 (“Appeal Br.”); and the Examiner’s Answer dated Sept. 4, 2020 (“Ans.”). Appellant did not file a Reply Brief. 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Foster-Miller, Inc. as the real party in interest. Appeal Br. 1. Appeal 2021-002778 Application 14/745,825 2 For the reasons set forth below, we AFFIRM. We also enter a NEW GROUND OF REJECTION under 35 U.S.C. § 101. BACKGROUND The subject matter of the invention relates to weather resistant ungrounded power line sensors. Spec. 2. Appellant states that the presence of raindrops sitting on the surface of a power line sensor can change the capacitive coupling between the sensor and ground resulting in measurement errors in the line voltage. Id. at 3, ll. 13-18. Appellant describes an ungrounded power line sensor system comprising a housing configured for coupling about a power line, at least a first voltage sensing plate supported by the housing and exposed to rain and snow, and at least a second voltage sensing plate supported by the housing and shielded from rain and snow. Id. at 4, ll. 4-7. A processing subsystem is configured to measure a voltage sensed by the first voltage sensing plate, separately measure a voltage sensed by the second voltage sensing plate, and mitigate variations in said measurements due to a weather event. Id. at 4, ll. 7-10. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, illustrates the claimed subject matter: 1. An ungrounded power line sensor system comprising: a housing configured for coupling about a power line; at least a first voltage sensing plate supported by the housing and exposed to rain and snow, said first voltage sensing plate configured to sense a voltage from the power line; at least a second voltage sensing plate supported by the housing and shielded from rain and snow, said second voltage sensing plate configured to sense a voltage from the power line; and a processing subsystem configured to: Appeal 2021-002778 Application 14/745,825 3 measure the voltage sensed by the first voltage sensing plate, separately measure the voltage sensed by the second voltage sensing plate, and detect when the voltage sensed by the first voltage sensing plate is greater than the voltage sensed by the second voltage sensing plate by a predetermined amount due to moisture on the first voltage sensing plate; and in response logging an event. REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Name Reference Date Wiesman et al. (“Wiesman”) US 5,892,430 Apr 6, 1999 Coolidge et al. (“Coolidge”) US 6,677,743 B1 Jan. 13, 2004 Salaverry et al. (“Salaverry”) US 2011/0025638 A1 Feb. 3, 2011 Kalokitis et al. (“Kalokitis”) US 2014/0085095 A1 Mar. 27, 2014 REJECTIONS3 The Examiner maintains the following rejections: 1. Claims 1, 3-7, 10-14, 16-20, 23, 36, and 37 under 35 U.S.C. § 101 as directed to a judicial exception to patentability. Final Act. 7-11. 3 The Examiner’s objections to claims 1, 14, 25, 26, 31, and 38 are not within the Board’s jurisdiction to review. Manual of Patent Examining Procedure, § 1201. Appeal 2021-002778 Application 14/745,825 4 2. Claims 1, 10-14, 23, 30, 36, and 38 under 35 U.S.C. § 102(a)(1) as anticipated by Coolidge. Id. at 11-15. 3. Claims 3-7, 16-20, 24, and 26-29 under 35 U.S.C. § 103 as obvious over Coolidge. Id. at 16-22. 4. Claims 31-34 under 35 U.S.C. § 103 as obvious over Coolidge in view of Wiesman. Id. at 22-25. 5. Claims 25 and 37 under 35 U.S.C. § 103 as obvious over Coolidge in view of Kalokitis and Salaverry. Id. at 25-28. OPINION Rejection 1 under 35 U.S.C. § 101 A. The Examiner’s Position The Examiner finds that claims 1, 3-7, 10-14, 16-20, 23, 36, and 37 are directed to patent ineligible subject matter, specifically, a judicial exception without significantly more. Final Act. 7-11. Regarding claim 1, the Examiner finds that the claim term “detect when the first voltage sensed by the first voltage sensing plate is greater than the second voltage sensed by the second sensing plate” is based on a “mathematical concept” because it involves a mathematical comparison of numbers. Id. at 8. The Examiner finds that the same term further including “by a predetermined amount due to moisture on the first voltage sensing plate” is a “mental concept” because it is “based on a logic applied to [a] decision making process and involves observation, evaluation, judgment, and opinion characteristic of a mental process.” Id. at 8-9. The Examiner finds, without further explanation, that “in response [to detecting,] logging an event” is an abstract idea. Id. at 8. The Examiner finds that additional elements in claim 1 are not sufficient to Appeal 2021-002778 Application 14/745,825 5 make the claims as a whole amount to significantly more than the abstract idea, and the additional elements do not integrate the abstract idea into a practical application. Id. at 9. The Examiner finds that independent claim 14 is analogous to representative claim 1, and therefore directed to an abstract idea without significantly more. Id. at 10. The Examiner finds that claims that depend from claims 1 and 14 provide additional steps that are part of an expanded abstract idea or extra solution activities that fail to overcome the § 101 rejection. Id. at 10-11. B. Appellant’s Contentions Appellant does not argue any of the rejected claims separately from any other. See Appeal Br. 18-24. Appellant contends that (1) the claims are not directed to an abstract idea; (2) the claims as a whole integrate any judicial exception into a practical application of that exception by reducing errors in the measurement of line voltage in conditions such as rain or snow, providing a more accurate determination of power and energy; and (3) the claims result in improvements in the functioning of power line sensors and/or sensing methods and/or sensor technology. Id. Appellant also contends that the combination of elements in the claims amounts to more than conventional activity in the field. Id. at 23. C. Discussion We determine that all pending claims (including claims 24-26, 30, and 31 determined to be patent eligible by the Examiner for unexplained reasons) are directed to a judicial exception, their recited additional elements do not integrate the judicial exception into a practical application and do not Appeal 2021-002778 Application 14/745,825 6 amount to significantly more than the judicial exception. We focus on independent claim 1 as representative, and address other claims to the extent necessary below. 1. Principles of Law 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 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excepted category, we are guided by the Supreme Court’s two-step framework, described in Alice (see id. at 217-18), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 75-77 (2012). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219. Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (id. at 219-20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (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 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If a Appeal 2021-002778 Application 14/745,825 7 claim is “directed to” an abstract idea, we turn 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. “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. (quoting Mayo, 566 U.S. at 77). In January 2019, the PTO published revised guidance on the application of Section 101.4 The Manual of Patent Examining procedure (“MPEP”) now incorporates this revised guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020). Under MPEP § 2106, we first look to whether a claim recites (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two”).5 MPEP § 2106.04(a), (d). Only if a claim (1) recites a judicial 4 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Guidance, 84 Fed. Reg. at 51; see also October 2019 Update at 1. 5 “Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they Appeal 2021-002778 Application 14/745,825 8 exception and (2) does not integrate that exception into a practical application,6 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, 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.7 2. Step 2A, Prong One - The Judicial Exception Under Step 2A, Prong One, we first look to whether the claim recites a judicial exception to the statutory categories of patent-eligible subject matter, including one of the following groupings of abstract ideas: (1) mathematical concepts, e.g., mathematical relationships, mathematical formulas or equations, and mathematical calculations; (2) mental processes, e.g., concepts performed in the human mind, including observations, evaluations, judgments, and opinions; and (3) certain methods of organizing human activity. See Guidance, 84 Fed. Reg. at 52. The Supreme Court has established that a mathematical concept without more does not constitute patent-eligible subject matter. See Flook, 437 U.S. at 587-96 (“Here it is absolutely clear that respondent’s application integrate the exception into a practical application . . . .” MPEP § 2106.04(d)(II). 6 This corresponds to Alice part one where it is determined whether the claim is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not directed to an abstract idea under step one of the Alice analysis, we do not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). 7 This corresponds to Alice part two where it is determined whether the claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221. Appeal 2021-002778 Application 14/745,825 9 contains no claim of patentable invention. . . . Respondent’s application simply provides a new and presumably better method for calculating alarm limit values.”); Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) (“[A] scientific truth, or the mathematical expression of it, is not patentable invention . . . .”). Claim 1 recites a processing subsystem configured to measure voltage sensed by a first and separately, by a second voltage sensing plate, and detect when the first voltage is greater than the second by a predetermined amount. Appeal Br. 26 (Claims App.). Each of these limitations sets forth an abstract idea in the form of a mathematical concept. “Measuring” merely describes a mathematical calculation of determining a difference in numbers. “Detecting” a difference between two numerical values also sets forth a mathematical calculation. Like the claims in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016), claim 1 focuses on collecting information, which, as such, is an intangible. Collecting information does not change the character of the information. Id. Under the Guidance, “mental processes” are defined as concepts performed in the human mind, with examples including observations, evaluations, judgments, and opinions. Guidance, 84 Fed. Reg. at 52. Limitations in claim 1 that recite measuring, detecting, or logging fall into the mental process category, as they require observations and evaluations that can be done in the human mind or with no more than a generic computer. “But merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from Appeal 2021-002778 Application 14/745,825 10 § 101 undergirds the information-based category of abstract ideas.” Elec. Power Grp., 830 F.3d at 1355. Claim 1 thus recites mathematical concepts and mental processes, which are abstract ideas, which are judicial exceptions. 3. Step 2A, Prong Two - Integration into a Practical Application Having determined that claim 1 recites the abstract ideas of mathematical concepts and mental processes, we next look to determine whether the claim recites “additional elements that integrate the judicial exception into a practical application.” Guidance, 84 Fed. Reg. at 53-54. Integration into a practical application requires considering whether additional elements, individually or in combination, “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.” Id. at 53. The additional elements are the limitations in addition to the limitations that contain a judicial exception. Id. at 54-55; October 2019 Update 12. The October 2019 Update further explains that “[a]n important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology.” October 2019 Update 12. Limitations that are not indicative of “integration into a practical application” include adding insignificant extra-solution activity to the judicial exception (see MPEP § 2106.05(g)); and generally linking the use of the judicial exception to a particular technological environment or field of use (see id. § 2106.05(h)). See Guidance, 84 Fed. Reg. at 54-55 (“Prong Two”). Appeal 2021-002778 Application 14/745,825 11 In addition to abstract ideas, claim 1 recites the following elements: a housing configured for coupling about a power line; at least a first voltage sensing plate supported by the housing and exposed to rain and snow, said first voltage sensing plate configured to sense a voltage from the power line; at least a second voltage sensing plate supported by the housing and shielded from rain and snow, said second voltage sensing plate configured to sense a voltage from the power line. Appeal Br. 26 (Claims App.). These elements do not integrate the judicial exception into a practical application, but rather contribute to mere data gathering, which “cannot make an otherwise nonstatutory claim statutory.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011). The focus of claim 1 is not on an improvement in computers (processors) or other technology, but on using conventional technology to compare different sets of data obtained-one from a first voltage sensing plate, another from a second voltage sensing plate-which amounts to a judicial exception. See Appeal Br. 26 (Claims App.). Mere physicality or tangibility of the additional elements is not a relevant consideration in Step 2B. MPEP § 2106.05(I)(A) (citing Alice, 573 U.S. at 224). Additional elements in claim 1 do not integrate the abstract ideas into a practical application. 4. Step 2B - Inventive Concept The final step in our § 101 analysis, having determined that claim 1 is directed to an abstract idea, is evaluating whether additional elements in claim 1, individually and in combination, amount to significantly more than the judicial exception. Guidance, 84 Fed. Reg. at 56. Appeal 2021-002778 Application 14/745,825 12 The additional “housing” and “voltage sensing plate” elements, when considered individually and as an ordered combination, do not amount to significantly more than the judicial exception. The “housing” element provides a site for coupling to a power line and attachment of voltage sensing plates, the “voltage sensing plate” elements sense voltage. These elements, alone or together, fail to reflect any improvement in accuracy of measurement of voltage. See Spec. 9, l. 15-10, l. 2. These elements together perform the well-understood, routine, and conventional functions claimed at a high level of generality of extracting data from a physical source. See Content Extraction &Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348 (Fed. Cir. 2014). In view of our analysis under the steps of the PTO’s Revised Guidance as updated in October 2019, we conclude that claim 1 is directed to patent ineligible subject matter. We sustain the Examiner’s rejection as maintained against representative claim 1, and claims 3-7, 10-14, 16-20, 23, 36, and 37 pursuant to 37 C.F.R. § 41.37(c)(1)(iv). Claims 24-34 and 38 were not rejected under 35 U.S.C. § 101 in the Final Office Action. See generally, Final Act. However, the additional elements in independent claims 24 (“measuring power and energy”), 25 (“measuring power line current”), 26 (“a current sensor” and “measuring power and energy”), 30 (“reporting a snow event”), and 31 (“measuring a power line current and measuring power and energy”) do not render these claims patent eligible because they do not integrate the abstract idea into a practical application or amount to significantly more than the judicial exception. We designate the § 101 rejection as a new ground of rejection. Appeal 2021-002778 Application 14/745,825 13 Rejections 2-5 - Prior Art Rejections The Examiner’s prior art rejections rely on Coolidge as disclosing the claimed measuring the voltage sensed by the first voltage sensing plate and separately measuring the voltage sensed by the second voltage sensing plate. See Final Act. 11-28. Coolidge’s Figure 5 is reproduced below: Coolidge’s Figure 5 is a schematic diagram showing the electrical interconnection between the primary components of the powerline sensor of Coolidge’s invention. Coolidge col. 3, ll. 45-47. Power line 90 is connected to housing 12 by wire 92. Id. at col. 4, ll. 47-48. All of the inner plates of voltage sensors 24, 26, 28, and 30 are connected in series, and each inner plate is connected to powerline 90 via housing 12 by wire 94. Id. at col. 4, ll. 49-54. The outer plates of each voltage sensor, are connected to each other in series. Id. at col. 4, ll. 54-55. The potential across the inner and outer plates is indicative of the voltage on the powerline. Id. at col. 4, ll. 56- 57. Resistor 100, connected to inner plates by line 102 and to outer plates by line 104, and to amplifier 106 senses the voltage potential between inner and Appeal 2021-002778 Application 14/745,825 14 outer plates and thus for determining the voltage on the powerline. Id. at col. 4, ll. 57-62. The Examiner identifies element 70 as the first voltage sensing plate and element 74 as the second voltage sensing plate. Ans. 4. The Examiner finds that Coolidge separately measure[s] the voltage sensed by the second voltage sensing plate (see 102 into 106 in 106 into 108 and to get potential difference across the resistor 100 at two different points to get potential across 100 - see col. 4, lines 54-65 - the potential across the inner and outer plates is indicative of the voltage on the power line - which implies that the voltage sensed by the second voltage sensing plate is measure[d] and it is separate as the first voltage sensing plate is different from the second sensing plate). Id. at 5. Appellant argues that Coolidge’s inner plates are connected in series and to the power line, and the outer plates are connected in series, thus resistor 100 and amplifier sense only the voltage potential between all of the series connected outer plates and all of the series connected inner plates. Appeal Br. 6, 12. According to Appellant, Coolidge fails to disclose measuring different voltage levels by two voltage sensing plates. Id. at 12. Appellant’s argument is persuasive that the Examiner reversibly errs in finding that Coolidge discloses the claim limitations. Because the anticipation rejection and obviousness rejections all rely on Coolidge as disclosing a first voltage sensing plate sensing a first voltage and a second voltage sensing plate sensing a second voltage, we do not sustain the rejections. Appeal 2021-002778 Application 14/745,825 15 CONCLUSION The Examiner’s rejection of claims 1, 3-7, 10-14, 16-20, 23, 36, and 37 under 35 U.S.C. § 101 is sustained, and this rejection is designated as a new ground of rejection. Claims 24-34 and 38 are rejected under a new ground of rejection under 35 U.S.C. § 101. The prior art rejections are not sustained. More specifically, DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 3-7, 10- 14, 16-20, 23, 36, 37 101 Eligibility 1, 3-7, 10- 14, 16-20, 23, 36, 37 1, 3-7, 10- 14, 16-20, 23, 36, 37 24-34, 38 101 Eligibility 24-34, 38 1, 10-14, 23, 30, 36, 38 102 Coolidge 1, 10-14, 23, 30, 36, 38 3-7, 16-20, 24, 26-29 103 Coolidge 3-7, 16- 20, 24, 26-29 31-34 103 Coolidge, Wiesman 31-34 25, 37 103 Coolidge, Kalokitis, Salaverry 25, 37 Overall Outcome 1, 3-7, 10- 14, 16-20, 23, 36, 37 1, 3-7, 10- 14, 16-20, 23-34, 36- 38 This decision contains a new rationale for rejecting claims 1, 3-7, 10- 14, 16-20, 23-34, and 36-38 under 35 U.S.C. § 101 pursuant to 37 C.F.R. Appeal 2021-002778 Application 14/745,825 16 § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED; 37 C.F.R. § 41.50(b)