Michael G. Glavicic et al.

Patent Trials and Appeals Board

Jan 23, 2020

13579770 - (D) (P.T.A.B. Jan. 23, 2020)

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.
13/579,770 12/20/2012 Michael G. Glavicic 1106-018US01 /
RCA-10667
6314
28863 7590 01/23/2020
SHUMAKER & SIEFFERT, P. A.
1625 RADIO DRIVE
SUITE 100
WOODBURY, MN 55125
EXAMINER
NGHIEM, MICHAEL P
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
01/23/2020 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICAHEL G. GLAVICIC and
JEFFREY A. GILBERT
____________________

Appeal 2018-002985
Application 13/579,770
Technology Center 2800
____________________

Before MICHELLE N. ANKENBRAND, MONTÉ T. SQUIRE, and
AVELYN M. ROSS, Administrative Patent Judges.

ROSS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1–3, 5–14, 17–21, 23, and 25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 In our Decision we refer to the Specification filed August 17, 2012
(“Spec.”), the Final Office Action appealed from dated March 29, 2017
(“Final Act.”), the Appeal Brief filed August 23, 2017 (“Appeal Br.”), the
Examiner’s Answer dated November 27, 2017 (“Ans.”), and the Reply Brief
filed January 25, 2018 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Rolls Royce Corporation is the real party
in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The subject matter on appeal relates to systems and methods for
determining the crystallographic texture of a polycrystalline material using
an ultrasonic waveform generator. Spec. ¶ 1. According to the
Specification, components used in high-temperature and severe
environments, such as gas-turbine engines, are often formed of
polycrystalline materials like titanium or titanium alloys. Id. ¶ 2. Because
properties such as “local yield strength, dwell fatigue resistance, or the like,
may be affected by the crystal orientation on a microscopic or macroscopic
level,” “knowledge of the orientation of crystal axes may be important.” Id.
¶ 3. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A system comprising:
an ultrasonic waveform generator configured to generate
an ultrasonic waveform that propagates through a sample;
an ultrasonic waveform detector configured to detect the
reflected ultrasonic waveform that propagated through the
sample; and
a data analysis device configured to:
receive from the ultrasonic waveform detector
ultrasonic waveform data representative of the reflected
ultrasonic waveform that propagated through the sample;
select a portion of the ultrasonic waveform data;
apply a Fast Fourier Transform to the portion of the
ultrasonic waveform data to transform the portion from a
time domain to a frequency domain;
identify a dominant frequency of the portion in the
frequency domain; and
determine a characteristic of a crystallographic
texture for the portion based on at least one equation that
relates the dominant frequency of the portion to the
characteristic of the crystallographic texture for the
portion.
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Appeal Br. 18 (Claims App.). Claims 13 and 25, the remaining independent
claims, are directed to a method and a non-transitory computer readable
storage medium having instructions for performing the method, respectively.
Id. at 22, 25.
REJECTION
The Examiner maintains the rejection of claims 1–3, 5–14, 17–21, 23,
and 25 under 35 U.S.C. § 101 as directed to non-statutory subject matter.
Final Act. 2.
Appellant argues independent claims 1, 13, and 25 and does not
separately argue the dependent claims. See generally Appeal Br. Appellant
does not present any argument for claims 13 and 25 separate from the
argument advanced in support of claim 1. We, therefore, limit our
discussion to claim 1, and claims 2 –3, 5–14, 17–21, 23, and 25 stand or fall
with that claim. 37 C.F.R. § 41.37(c)(1)(iv) (2016).
OPINION
We review the appealed rejection for error based upon the issues
Appellant identifies and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
persuaded that Appellant identifies reversible error. We add the following.

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Patent Eligible Subject Matter
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. However,
the Supreme Court has long recognized certain exceptions to this section
including “[l]aws of nature, natural phenomena, and abstract ideas.” Alice
Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
To determine whether a claim falls within an excluded category, the
Supreme Court’s two-step framework, described in Mayo and Alice, guides
us. 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” and whether that
concept is directed to an abstract idea. See Alice, 573 U.S. 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. Kappos, 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 methods for 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, 69 (1972)). However,
not every claim that recites a mathematical formula is patent ineligible.
If the claim is “directed to” an abstract idea, we then 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
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent
eligible application.” Alice, 573 U.S. at 221 (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 idea].’” Id. (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 USPTO published revised guidance on the application of § 101.
See Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”) updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://go.usa.gov/xp88j)
(“2019 Update”); see also October 2019 Patent Eligibility Guidance Update,
84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying public that October update
was available). Under Step 1 of the 2019 Guidance, we determine whether
the claimed subject matter falls within the four statutory categories: process,
machine, manufacture, or composition of matter. Step 2A of the Guidance is
two-pronged, under which we look to whether the claim recites:
(1) any judicial exception, 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) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See 2019 Guidance at 54–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then, under Step
2B, look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d));
(4) or 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 Guidance at 56.
Step 1 (statutory category)
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. Claim 1 recites a system, i.e., apparatus. Appeal Br. 18 (Claims
App.). Furthermore, there is no dispute that claim 1 falls within a statutory
category. See generally Final Act.
Step 2A, Prong 1 (recites a judicial exception)
According to Step 2A of the 2019 Guidance, we first consider whether
the Examiner erred in determining that the claim recites a judicial exception.
The Examiner determines that claim 1 “is directed to a judicial exception
(i.e., a law of nature, a natural phenomenon, or an abstract idea) without
significantly more.” Final Act. 2. In particular, the Examiner identifies
(1) “selecting a portion of the ultrasonic wave form data” as abstract and
“similar to the concept of data recognition and storage,” (2) “applying a Fast
Fourier Transform to the portion of the ultrasonic waveform data to
transform the portion from a time domain to a frequency domain” as abstract
and “similar to the concept of organizing information through mathematical
correlations,” (3) “identifying a dominant frequency of the portion in the
frequency domain” as abstract and “similar to the concept of data
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recognition and storage,” and (4) “determining a characteristic of a
crystallographic texture for the portion based on the dominant frequency” as
abstract and also “similar to the concept of data recognition and storage.”
Final Act. 2–3. The Examiner explains that the courts have determined the
identified concepts to be abstract ideas that “relate to a mental process that
can be transformed in the human mind, or by a human using a pen and
paper.” Id. at 3.
Appellant contends that “[t]he Examiner’s rejection was in error as the
Examiner failed to establish that the claimed subject matter is ineligible
under 35 U.S.C. § 101.” Appeal Br. 6. Appellant argues that the claimed
system is “a complex industrial process that recites meaningful limitations of
specific system features and transformations” and “is clearly not an attempt
to tie up use of mathematical relationships to relate (an identified) dominant
frequency of a (selected) portion (of ultrasonic waveform data received by
the data analysis device and transformed by Fast Fourier Transform) to the
characteristic of the crystallographic texture for the portion.” Reply Br. 4;
see also Appeal Br. 9 (same).
We are unpersuaded by Appellant’s arguments, and instead agree with
the Examiner that the claims recite abstract ideas, for the reasons that follow.
Applying the construct set forth in the 2019 Guidance, we must first
determine whether claim 1 recites a judicial exception to patent eligibility.
2019 Guidance at 54. The 2019 Guidance identifies three
judicially-excepted groupings:
(a) mathematical concepts including “mathematical
relationships, mathematical formulas or equations, mathematical
calculations”; (b) certain methods of organizing human activity,
such as “fundamental economic principles or practices,”
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“commercial or legal interactions,” and “managing personal
behavior or relationships or interactions between people”; and
(c) mental processes including “observation, evaluation,
judgment, [and] opinion.”
Id. at 52.
Based on existing Supreme Court and Federal Circuit precedent, the
2019 Guidance has identified “mental processes” as including “concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).” Id. at 52. The “mental processes” judicial exception
also includes concepts that a human can perform with a pen and paper, as
well as those that a human can perform entirely in the mind. See 2019
Update, 9 (“a claim that encompasses a human performing the step(s)
mentally with the aid of a pen and paper recites a mental process”).
Here, independent claim 1 recites, inter alia, “selecting a portion of
the ultrasonic wave form data,” “apply[ing] a Fast Fourier Transform to a
portion of the ultrasonic waveform data to transform the portion from a time
domain to a frequency domain,” “identifying a dominant frequency of the
portion in the frequency domain,” and “determining a characteristic of a
crystallographic texture for the portion based [on the] dominant frequency”
which involve mental processes, i.e., abstract ideas. Appeal Br. 18 (Claim
App.). These process limitations are shown below at 48, 50, 52, and 54 in
the process flow of Figure 4.
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Figure 4 “is a flow diagram of an example technique for performing an
ultrasonic crystallographic texture measurement.” Spec. ¶16; see also id.
¶ 96 (same). According to the Specification, analysis module 32 (not
shown) “select[s] a portion of the digital signal (48) by selecting a subset of
time values and associated amplitude values and frequency values,” that is,
identifying and isolating certain data associated with the digital signal. Id.
¶ 103. The Specification then explains that analysis module 32 “applies a
Fast Fourier Transform (FFT) to the selected portion to convert the portion
from the time domain to the frequency domain (50).” Id. ¶ 104. That
conversion, as the Examiner finds, involves applying an algorithm based on
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a mathematical relationship. Ans. 4–5. Once Fast Fourier Transform has
been applied 50, “[a]nalysis module 32 may automatically identify the
dominant frequency (52), or may output the signal transformed into the
frequency domain, enabling a user 42 to manually identify the dominant
frequency (52).” Spec. ¶ 104. After the dominant frequency is identified,
analysis module 32 “utilizes the identified dominant frequency of the portion
to calculate a crystallographic orientation of the portion (54)” by “utilizing
Equation 3.” Id. ¶¶ 105–106 (referencing Spec. ¶ 48). These limitations
recite mental processes because they identify portions of measured data for
analysis, which are concepts a human can perform with a pen and paper or
entirely in the mind. 2019 Update 7.
In view of the foregoing, we do not discern a reversible error in the
Examiner’s determination that claim 1 recites abstract subject matter.
Step 2A, Prong 2 (integration into a practical application)
Having determined that claim 1 recites a judicial exception, i.e., an
abstract idea, our analysis under the 2019 Guidance turns to whether the
claim includes additional elements that integrate the abstract idea into a
practical application. 2019 Guidance at 54. In other words, we must now
determine whether claim 1 is directed to the abstract idea itself, or whether it
is instead directed to some technological implementation or application of,
or improvement to, the abstract idea such that there is a meaningful limit
imposed on the judicial exception. See 2019 Guidance, 84 Fed. Reg. 54–55;
see also, e.g., Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S.
175 (1981)).
The Examiner finds that claim 1’s additional elements, that is, “the
sample[,] . . . [t]he data analysis device, computer/processor, [and the]
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ultrasonic waveform detector/generator are routine and conventional
features” do not “qualify as ‘significantly more’ than the claimed judicial
exception.” Final Act. 3. The Examiner further finds that “the ultrasonic
waveform detector and receiving data from an ultrasonic detector are
directed to an insignificant extra solution activity of data gathering” and do
not meaningfully limit or transform the abstract idea into patent eligible
subject matter. Id.
Appellant argues we should reverse the Examiner’s rejection because,
even if the claims do recite an abstract idea, “the claims are directed to
significantly more than the abstract idea.” Appeal Br. 6–7. Appellant
contends that the claims “recite[] meaningful limitations to sufficiently limit
its practical application.” Id. at 9. In particular, Appellant identifies the
ultrasonic waveform generator that propagates through a sample, the
waveform detector that receives the reflected waveform, and a data analysis
device as meaningful limitations to the practical application of the abstract
idea and assert that “the claimed features provide an improvement to the
technical field.” Id. at 6.
On this record, we are persuaded by Appellant’s arguments. Here, the
additional elements beyond the identified abstract mental processes include:
(i) “an ultrasonic waveform generator configured to generate an ultrasonic
waveform that propagates through a sample,” (ii) “an ultrasonic waveform
detector configured to detect the reflected ultrasonic waveform that
propagated through the sample, and” (iii) “a data analysis device” that
performs the process steps. See Appeal Br. 18 (Claims App.). The 2019
Guidance instructs that when the invention improves on the functioning of
conventional technology or “an additional element implements a judicial
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exception with, or uses a judicial exception in conjunction with a particular
machine or manufacture that is integral to the claim,” such implementation
may integrate the exception into a practical application. 2019 Guidance 55.
In evaluating these additional elements, we conclude that claim 1 as a whole
integrates the recited mental process steps into a practical application. In
particular, as Appellant explains, claim 1 is “an improvement to the
technical field of determining the local crystallographic texture of a
polycrystalline material.” Appeal Br. 6. Consistent with Appellant’s
explanation, the Specification states that “[s]uch an approach may speed
analysis of the digital signal by analysis module 32 by reducing a number of
calculations performed by analysis module 32, but may omit from the
analysis a portion of the digital signal, which may reduce resolution or
accuracy of the technique.” Spec. ¶ 118 (emphasis added). Therefore,
Appellant’s invention is an improvement to a technical field because it
improves the speed in measuring the crystallographic texture of a material.
Furthermore, the additional elements implement the judicial exception on a
particular machine (i.e., an ultrasonic waveform generator/detector) that is
integral to the claim because the waveform generator, detector, and analysis
device “play a significant part in permitting the claimed method to be
performed, rather than function solely as an obvious mechanism for
permitting a solution to be achieved more quickly.” See MPEP 2106.05(b)
(quoting Versata Development Group v. SAP America, 793 F.3d 1306, 1335,
115 USPQ2d 1681, 1702 (Fed. Cir. 2015)).
For the foregoing reasons, we determine that claim 1 integrates the
judicial exception into a practical application and we do not sustain the
Examiner’s rejection of claim 1 under 35 U.S.C. § 101. For the same
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reasons, we also do not sustain the Examiner’s rejection of claims 2–3, 5–14,
17–21, 23, and 25, under 35 U.S.C. § 101.
CONCLUSION
Appellant identifies a reversible error in the Examiner’s rejection of
claims 1–3, 5–14, 17–21, 23, and 25 under 35 U.S.C § 101 as directed to
non-statutory subject matter.
DECISION
For the above reasons, the Examiner’s rejection of claims 1–3, 5–14,
17–21, 23, and 25 is reversed.

Claims Rejected Basis Affirmed Reversed
1–3, 5–14, 17–21,
23, and 25
§ 101
Eligibility
1–3, 5–14, 17–21,
23, and 25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
REVERSED