Humpert, Hans-Dieter et al.

Patent Trials and Appeals Board

Dec 18, 2019

13983115 - (D) (P.T.A.B. Dec. 18, 2019)

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.
13/983,115 10/22/2013 Hans-Dieter Humpert 2011P00935WOUS 6976
22116 7590 12/18/2019
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
EXAMINER
FEACHER, LORENA R
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/18/2019 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HANS-DIETER HUMPERT, DIETER KLEYER, and
KLAUS WENDELBERGER
___________

Appeal 2019-002535
Application 13/983,115
Technology Center 3600
_________________

Before HUNG H. BUI, ADAM J. PYONIN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16–24.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “[A]pplicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Siemens Aktiengesellschaft. Appeal Br. 2.
2 Claims 1–15 are cancelled. Non-Final Act. 2.
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STATEMENT OF THE CASE
Invention
Appellant’s recited “invention relates to a method for producing a
specific planning document for instrumentation and control equipment to be
planned for a technical system, in particular for power plant instrumentation
and control equipment to be planned for a power plant.” Spec. ¶ 2.3

Exemplary Claim
Independent claim 16 is exemplary of the claimed subject matter and
is reproduced below with claim element labels added in brackets and
limitations at issue in italics:
16. A method for controlling a power plant comprising:
[a] providing a database comprising selectable standard
objects including function plans, operator displays and
descriptions for designing power plants,
[b] providing a specification of a power plant including a
definition list and a function list for the power plant, the
definition list including a number of lines, a number of stages
including at least a first stage and a second stage, and presence
of gate valves including a complete gate valve of the power
plant and common gate valves of the first and second stages,
[c] generating a control system for the power plant
comprising:
[c1] selecting multiple standard objects including a
function plan, an operator display and a description from

3 We refer to: (1) the originally filed Specification filed August 1, 2013
(“Spec.”); (2) the Non-Final Office Action mailed April 20, 2018 (“Non-
Final Act.”); (3) the Appeal Brief filed October 22, 2018 (“Appeal Br.”); (4)
the Examiner’s Answer mailed December 12, 2018 (“Ans.”); and (3) the
Reply Brief filed February 11, 2019 (“Reply Br.”).
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the database based on the definition list and function list
of the specification,
[c2] adapting selected standard objects based on
the definition list and function list, thereby creating the
control system comprising selected and adapted standard
objects, the adapting comprising actuating switches in
the function plan depending on the presence of the
complete gate valve of the power plant,
[c3] implementing the control system comprising
the selected and adapted standard objects on a computer
of the power plant, and
[c4] controlling, by the computer, the power plant
based on the control system.
Appeal Br. 9 (Appendix of Claims on Appeal).

REJECTIONS
The Examiner rejects claims 16–24 under 35 U.S.C. § 101 as reciting
patent-ineligible subject matter. Non-Final Act. 5–6.
The Examiner rejects claims 16–24 under 35 U.S.C. § 103(a) as
obvious over S. Lu et al., “An Object-Oriented Power Plant Adaptive
Control System Design Tool,” IEEE Transactions on Energy Conversion,
Vol. 10, No. 3, September 1995, (“Lu”) in view of Parikh et al. (US
2005/0086635 A1, published April 21, 2005) (“Parikh”), and R. L. Clark,
“Effects of Aging and Service Wear on Main Steam Isolation Valves and
Valve Operators,” Oak Ridge National Laboratory, Prepared for U.S.
Nuclear Regulatory Commission, NUREG/CR-6246, ORNL-6814, March
1996 (“Clark”). Id. at 7–10.

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ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
Rejection under 35 U.S.C. § 101
I. 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.
However, the US 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. See, e.g., Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Alice and Mayo.
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 Alice, 573 U.S. at
217.
If the claim recites an abstract idea, we turn to the second step of the
Alice and Mayo framework, in which “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 quotation marks 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
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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 Office published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “Guidance”). Recently, the USPTO published an
update to that guidance. October 2019 Patent Eligibility Guidance Update,
84 Fed. Reg. 55,942 (hereinafter “Guidance Update”).4 Under the Guidance
and the Guidance Update, in determining whether a claim falls within an
excluded category, we first look to whether the claim recites:
(1) Step 2A — Prong One: 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); and
(2) Step 2A — Prong Two: additional elements that integrate
the judicial exception into a practical application (see MPEP5
§ 2106.05(a)–(c), (e)–(h)).
See Guidance, 84 Fed. Reg. 54–55 (“Revised Step 2A”). 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 (Step 2B):
(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 The Guidance, as revised by the October 2019 Update, supplements
previous guidance memoranda. Guidance, 84 Fed. Reg. 51 (“All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.”).
5 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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(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 id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).

II. The Examiner’s § 101 Rejection
The Examiner determines that exemplary6 claim 16 is directed to a
judicial exception: an abstract idea. Non-Final Act. 2–6; Ans. 3–5.
According to the Examiner, claim 16 recites a mental process “similar to
Electric Power Group7 where data is collected (e.g. selecting standard
objects), analyzed and certain results are produced (e.g. adapting the
standard objects to create the control system).” Non-Final Act. 5. The
Examiner identifies the claimed “database” and “computer” as additional
elements and determines “[t]he claim does not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the additional elements when considered both individually and as an
ordered combination do not amount to significantly more than the abstract
idea.” Id. at 5–6. We adopt the Examiner’s findings and conclusions as our
own and add the following primarily for emphasis.

6 Appellant argues claims 16–24 as a group with respect to the § 101
rejection. Appeal Br. 5–6. We, thus, select independent claim 16 as
representative of the claims. See 37 C.F.R. § 41.37(c)(1)(iv).
7 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
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III. Appellant’s Arguments
We summarize Appellant’s arguments in favor of eligibility as
follows: (1) “[t]he recited subject matter of the claims is directed to an
improvement to technology that can solve such a technological problem . . .
[and] is thus inherently a technical process in the field of planning and
controlling a technical system, i.e. power plant, and is not an abstract idea”
(Appeal Br. 5); (2) “the recited claims do not preempt all possible solutions
for controlling a power plant” (id.); (3) “the claims recite novel and non-
obvious steps/functions which clearly constitute(s) significantly more than
the alleged abstract idea, which is provided below with respect to the
rejections under 35 U.S.C. § 103” (id. at 6).

IV. Our Review, Guidance, Step 1
We analyze the exemplary claim and the Examiner’s rejection in view
of the Guidance, and we adopt the nomenclature for the steps used in the
Guidance. As an initial matter, the claims must recite at least one of four
recognized statutory categories, namely, machine, process, article of
manufacture, or composition of matter. MPEP § 2106(I); see 35 U.S.C.
§ 101. Appellant’s independent claim 16 recites a method (i.e., a “process”)
and independent claim 21 recites a system (i.e., a “machine”). Thus, the
pending claims recite a recognized statutory category of § 101 and we turn
to the two-step Alice/Mayo analysis applied in accordance with the
Guidance.

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V. Step 2A, Prong 1 in the Guidance (Alice/Mayo–Step 1)
(Judicial Exceptions)
Next, we determine whether claim 16, being directed to a statutory
class of invention, nonetheless falls within a judicial exception. Guidance,
84 Fed. Reg. 51.
Claim 16 recites “[a] providing a database,” “[b] providing a
specification of a power plant including a definition list and a function list
for the power plant,” “[c] generating a control system” . . . [by] “[c1]
selecting multiple standard objects,” and “[c2] adapting selected standard
objects based on the definition list and function list.” Appeal Br. 9. Apart
from additional elements and post-solution activity discussed separately
below, claim 16, under a broadest reasonable interpretation, recites “a
method” having steps that can be practically performed in the mind. We,
therefore, agree with the Examiner’s determination that claim 1 recites an
abstract idea because the “steps of generating a control system by selecting
standard objects and adapting the selected standard objects to create a
control system [are] similar to Electric Power Group where data is collected
(e.g. providing a database with standard objects), analyzed, and certain
results are produced (e.g. adapting the standard objects to create the control
system).” Non-Final Act. 5; see Guidance Update 7 (“a claim to ‘collecting
information, analyzing it, and displaying certain results of the collection and
analysis,’ where the data analysis steps are recited at a high level of
generality such that they could practically be performed in the human mind,
Electric Power Group, LLC v. Alstom, S.A.”); see also Spec. ¶¶ 10, 14.
Because claim 16 analyzes information by steps people may go
through in their minds or with pen and paper, we conclude the claim recites
a mental process as provided for in the Guidance.
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VI. Step 2A, Prong Two in the Guidance
(Integration into a Practical Application)
Because claim 16 recites an abstract idea, we now determine whether
the claim is directed to the abstract idea itself or whether it is instead
directed to some technological implementation or application of, or
improvement to, this idea, i.e., integrated into a practical application. See,
e.g., Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S. 175
(1981)). We determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception or exceptions; and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application. Guidance 84 Fed. Reg. 54–55. This
evaluation requires an additional element or a combination of additional
elements in the claim to 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
exception. See id.
The Examiner finds claim 16 recites additional elements including a
database and “a computer, where the control system is implemented on the
computer and the computer is used to control the power plant.” Non-Final
Act. 6. The Examiner determines the additional elements do not integrate
the exception into a practical application because “[t]he computer
components are recited at a high level of generality and recited as
performing generic computer functions routinely used in computer
applications.” Id.
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Appellant argues “[t]he recited subject matter of the claims is directed
to an improvement to technology that can solve such a technological
problem,” i.e., reducing expense and errors in “creating power plant
instrumentation and control equipment.” Appeal Br. 5.
We find Appellant’s argument unpersuasive. The Examiner points
out that “[b]ased on the Specification the described problems are related to
the control of a great number of variants used in each standard when
designing a control system which may lead to considerable expense,
probable errors, require expert knowledge, maintaining a library/database,
etc. in the planning process.” Ans. 3 (citing Spec. ¶¶ 23–28). We agree with
the Examiner that “[t]he described issues are related to the overall control
system planning process, not the actual controlling of the control system,
including producing planning documents and human activities (not an
automated process), which is more of a business challenge than a technical
problem.” Ans. 3. Here, the described improvement is to reduce expense
and errors because “[m]anual adaptation of a standard to the respective
project-specific requirements is always associated with considerable expense
and corresponding susceptibility to errors.” Spec. ¶ 14. Essentially, the
disclosed invention seeks to implement “the production of a planning
document for instrumentation and control equipment of a technical system
. . . at low cost and lower susceptibility to errors.” Spec. ¶ 17. To solve this
non-technical problem, claim 16 collects data ([a], [b]), selects multiple
standard objects from the collected data ([c1]), and adapts the selected
standard objects to create a control system ([c2]). Appeal Br. 9. Claim 16
does not, for example, use technology to improve how the control system is
implemented or how the database performs. Rather, claim 16 merely
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automates, using generic computer technology, a pre-internet process. In
this way, claim 16 is unlike the technology-based integrations cited by
Appellant. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed.
Cir. 2016) (holding that the patent-eligible claim was directed to a self-
referential table to improve computer databases). Considering the claim as a
whole, Appellant’s invention lacks a technical solution to a technical
problem.
Appellant argues “the Claims as a whole integrate the (alleged)
judicial exception into a practical application of that exception” because
“the present Claims are directed to improving a method for controlling a
power plant.” Reply Br. 4. This argument is unpersuasive because, as noted
by Appellant, claim 16 is actually directed to more efficiently “generating
and creating planning documents for the controlling of the power plant.” Id.
Thus, limitation [c4] recites insignificant post-solution activity. See MPEP
§ 2106.05(g); cf. ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 771
(Fed. Cir. 2019) (“[T]he fact that the electricity flow is modified based on
demand response principles does nothing to make this claim directed to
something other than the abstract idea.”). Considered in the context of claim
16 as a whole, the claimed additional elements do not integrate the abstract
idea into a practical application. Guidance, 84 Fed. Reg. 55 nn.25 & 27–32
(citing MPEP §§ 2106.05(a)–(c), (e)–(h)). Fundamentally, Appellant argues
that, because the claim uses a database and a computer, it is not directed to
an abstract idea. Reply Br. 3–4. We are unpersuaded, however, because the
mere presence of a database and computer in the claim does not necessarily
indicate a technical solution. So, although claim 16 recites a computer and a
database, this does not preclude the claim from being directed to the recited
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judicial exception. To be sure, the recited processor may perform the
calculations faster than a human could. Yet using a computer to achieve a
solution more quickly may not be sufficient to show an improvement to
computer technology. See Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015); see also MPEP § 2106.05(a)(II) (instructing
examiners that a “commonplace business method being applied on a general
purpose computer” may not be sufficient to show an improvement).
Likewise, Appellant has not disclosed a technical improvement to a
database—e.g., an improvement to the way the database stores or retrieves
information. Apart from the judicial exception, claim 16 does not use any
particular database feature. Using a database to store data in its ordinary
capacity, without more, is not sufficient to integrate the abstract idea into a
practical application. See, e.g., Accenture Glob. Servs. GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1343–44 (Fed. Cir. 2013) (explaining that the
generic database components did not make the claims patent eligible in that
case).
In addition, Appellant’s claimed additional elements do not transform
matter; at best, they transform information. That is, the claim simply
collects, manipulates, and outputs data, thereby “implementing the control
system comprising the selected and adapted standard objects on a computer
of the power plant.” Appeal Br. 9; see MPEP § 2106.05(c); see also
Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972) (holding that a computer
based algorithm that merely transforms data from one form to another is not
patent-eligible). As such, the claim has no other meaningful limitations (see
MPEP § 2106.05(e)), and merely recites instructions to execute an abstract
idea on generic computer hardware (see MPEP § 2106.05(f)).
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Moreover, we are not persuaded by Appellant’s argument that claim
16 does not “preempt all possible solutions for controlling a power plant.”
Appeal Br. 5. “While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015). “[Q]uestions on preemption are inherent in and
resolved by the § 101 analysis,” which has been applied here. Id.
We, therefore, determine claim 16 is not directed to a specific asserted
improvement in computer-related technology or otherwise integrated into a
practical application and thus is directed to a judicial exception.

VII. Step 2B in the Guidance (Alice/Mayo, Step 2) (Inventive Concept)
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 72–73). To determine whether the claim provides an inventive
concept, the additional elements are considered—individually and in
combination—to determine whether they (1) add a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field or (2) simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Guidance, 84 Fed. Reg. 56.
The Examiner identifies the claimed database, and computer
“implementing and controlling the system” as additional elements. Non-
Final Act. 6. Specifically, the Examiner finds:
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The computer components are recited at a high level of generality
and recited as performing generic computer functions routinely
used in computer applications. The database, specification, and
selecting/adapting elements are well-known in the art. Thus,
implementing and controlling the system is considered well-
understood, routine and conventional activity. Generic computer
components recited as performing generic computer functions
that are well-understood, routine and conventional activities
amount to no more than implementing the abstract idea with a
computerized system. Thus, taken alone, the additional elements
do not amount to significantly more than the above-identified
judicial exception (the abstract idea). Thus, implementing and
controlling the system is considered well-understood, routine
and conventional activity.
Id.
Appellant argues “the claims recite novel and non-obvious
steps/functions which clearly constitute(s) significantly more than the
alleged abstract idea, which is provided below with respect to the rejections
under 35 U.S.C. § 103 and thus cannot be construed as ‘well-understood,
routine and conventional activity previously known in the industry.’”
Appeal Br. 6.
We are unpersuaded. Although the second step in the Alice/Mayo
analysis includes a search for an inventive concept, the analysis 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, 573 U.S. at 217–18 (quoting Mayo, 566
U.S. at 72). A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 89 (rejecting the
suggestion that Sections 102, 103, and 112 might perform the appropriate
screening function and noting that in Mayo such an approach “would make
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the ‘law of nature’ exception . . . a dead letter”). Further, “under the
Mayo/Alice framework, 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.” Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Considering the additional elements individually, we agree with the
Examiner that the elements simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Non-Final Act. 6; Guidance, 84
Fed. Reg. 56.
“computer”
Claim 16’s method uses a computer for storing and manipulating data
and implementing the abstract idea. According to Appellant’s Specification,
the claimed computer/generator may be a general-purpose computer.
Spec. ¶ 95; Fig. 1. Thus, the claim essentially uses a general-purpose
processor to execute the abstract idea. We, therefore, agree with the
Examiner’s finding that claim 16’s “implementing and controlling the
system” with a computer “amount[s] to no more than implementing the
abstract idea with a computerized system.” Non-Final Act. 6. For these
reasons, the recited computer adds nothing more than well-understood,
routine, conventional activities, specified at a high level of generality, to the
abstract mental process. See MPEP § 2106.05(d)(II)(ii).
“a database”
The Federal Circuit has recognized that a generic database may not
satisfy the inventive-concept requirement. Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016). Also,
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the MPEP instructs examiners that courts recognize that storing and
retrieving information in memory may be well‐understood, routine, and
conventional when claimed generically. MPEP § 2106.05(d)(II)(iv) (citing
Versata, 793 F.3d at 1334; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015)).
In claim 16, the recited database stores various data structures that
include “function plans, operator displays and descriptions for designing
power plants.” Appeal Br. 9. The stored data structures are not defined with
particularity, nor does claim 16 use any specific technical features of
database technology in an unconventional way. In this regard, the claim
uses the database generically for data storage and retrieval. Thus, we agree
with the Examiner that the recited database is well‐understood, routine, and
conventional. Non-Final Act. 5; See MPEP § 2106.05(d)(II)(iv); see also
Spec. ¶ 29.
Next, considering the additional elements in combination, Appellant
fails to provide specific arguments indicating which limitations, in
combination, amount to more than the abstract idea. Analyzing the
additional elements as an ordered combination, we agree with the Examiner
that “[l]ooking at the limitations as an ordered combination adds nothing that
is not already present when looking at the elements taken individually.”
Non-Final Act. 6.
We, therefore, conclude that claim 16 does not provide an inventive
concept because the additional elements recited in claim 16 do not provide
significantly more than the recited judicial exception. For the reasons
discussed, claim 16 does not recite patent-eligible subject matter. Because
claim 16 is argued as representative of the other claims, we also conclude
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that claims 17–24, do not recite patent-eligible subject matter and we sustain
the rejection of claims 16–24 under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
Rejection under 35 U.S.C. § 103(a)
In rejecting claim 16 as obvious over Lu, Parikh, and Clark, the
Examiner finds the combination of Parikh and Clark teaches “adapting
selected standard objects . . . the adapting []comprising actuating switches in
the function plan depending on the presence of the complete gate valve of
the power plant[],” as recited in claim 16. Non-Final Act. 8–10 (citing
Parikh ¶¶ 42–47, Figs 1, 2, Clark 6–8, 22) (emphasis omitted).
Appellant argues: (1) “Lu . . . may describe valves such as main
steam valves and intermediate steam valves, but does not disclose that
selected standard objects are adapted such that switches are actuated
depending on a presence of a complete gate valve of the power plant”; (2)
“Parikh relates to a visual programming system and . . . may disclose valves
in general in connection with actuator/control devices, but does also not
disclose that selected standard objects are adapted such that switches are
actuated depending on a presence of a complete gate valve of the power
plant”; and (3) “While Clark may disclose actuation of certain switches,
Clark does not disclose that switches of a function plan are actuated
depending on a presence of a specific element as claimed.” Appeal Br. 6–7
(emphasis omitted).
The Examiner responds:
Examiner respectfully disagrees. Parikh discloses a visual
programming system using a GUI for selecting components and
linking the components to form logic strings to define a control
flow sequence (Abstract). The adapting of the standard objects is
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found in the control flow sequence process of Parikh where the
logic strings are examined to map the data associated with each
component to source code and generating the source code for
compiling (see ¶0042-¶0043). Clark discloses major components
of a nuclear power plant including valves that may operate in
manual mode or control switch actuation (see pg. 6). Clark in
combination with Lu and Parikh provide for additional
components that would be used in a control flow system such as
actuating switches. Therefore, Lu, Parikh and Clark do teach and
suggest these limitations.
Ans. 5–6.
We find Appellant’s arguments persuasive. The Examiner does not
establish that Parikh’s discussion of using a visual programming system to
define a control flow sequence in components and Clark’s discussion of
actuating switches of gate valves, alone or in combination, teach “actuating
switches in the function plan depending on the presence of the complete gate
valve of the power plant,” as recited in claim 16. Appeal Br. 9 (emphasis
added). Because we agree with at least one of the dispositive arguments
advanced by Appellant for claim 16, we need not reach the merits of
Appellant’s other arguments.
Accordingly, based on the record before us, we do not sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 16, and, for
the same reasons, the rejection of dependent claims 17–20, which depend
from claim 1. Independent claim 21 includes a substantially similar
limitation. Appeal Br. 11. We, therefore, do not sustain the Examiner’s 35
U.S.C. § 103(a) rejection of independent claim 21, and, for the same
reasons, the rejection of dependent claims 22–24, which depend from claim
21.
Appeal 2019-002535
Application 13/983,115

19
CONCLUSION
We affirm the Examiner’s patent eligibility rejections of claims 16–24,
under 35 U.S.C. § 101.
We reverse the Examiner’s rejection of claims 16–24 under 35 U.S.C.
§ 103(a) as obvious over Lu, Parikh, and Clark.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis  Affirmed Reversed
16–24 101 Eligibility  16–24
16–24 103(a) Lu, Parikh, Clark 16–24
Overall
Outcome
16–24

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED