Philip Young et al.

Patent Trials and Appeals Board

Jul 22, 2020

13704059 - (D) (P.T.A.B. Jul. 22, 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.
13/704,059 01/18/2013 Philip Young ELK10595P00330US 9952
32116 7590 07/22/2020
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
EXAMINER
RIVERA VARGAS, MANUEL A
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
07/22/2020 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):
docketing@woodphillips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP YOUNG and ANDREW JAMES HEATON1
____________

Appeal 2018-001659
Application 13/704,059
Technology Center 2800
____________

Before ROMULO H. DELMENDO, JAMES T. MOORE, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appellant files this appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1 and 3–12, which constitute all the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as “enModus
Limited.” Appeal Brief dated June 26, 2017 (“Appeal Br.”) at 1.

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BACKGROUND
The Appellant’s claims are directed to a power-consumption
monitoring device for taking measurements of the power consumed by an
appliance and transmitting the measurements to a master device.
Specification filed December 13, 2012 (“Spec.”) Abstr. The Specification
states that “existing equipment for addressing the monitoring market uses
wireless communication between the measurement devices and the central
(‘master’) aggregator.” Spec. 1:16–17. The Specification states “[t]he
present inventors have recogni[z]ed that wireless solutions will suffer from
limited communications range, interference, and significant node cost.” Id.
at 1:24–25. The Specification explains that power-line communications
have been proposed as an alternative to wireless monitoring systems, and
that there is a worldwide standard for broadband communications over
power-line networks. Id. at 1:18–23. The Specification states that “the
inventors have identified a need for a simpler and more economical power-
line based system” compared to existing high-speed power-line data
communications technology. Id. at 1:25–30.
Claims 1 and 12 are independent. Claim 1 is representative of the
subject matter on appeal and is reproduced below:
1. A power-consumption monitoring device, for taking
measurements of the power consumed by an appliance,

the device being connectable to a mains electrical circuit,
which provides power to the appliance, and operable to transmit
the measurements to a master device through the circuit,

wherein the device is adapted:
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to measure the energy consumed by the appliance
in each of a series of time intervals, and maintain a first
cumulative sum of the resulting energy measurements;
and

to periodically:

determine a first quantised value
representing the first cumulative sum, wherein
quantisation used to generate the first quantised
value is non-uniform such that the quantisation is
relatively more accurate for certain ranges of
values of the first cumulative sum;

transmit, to the master device, the first
quantised value representing the first cumulative
sum; and

subtract the transmitted quantised value
from the first cumulative sum so that a
subsequently transmitted quantised value
incorporates any subsequently measured energy
consumption as well as any residual quantisation
error from the transmitted quantised value, the
error corresponding to difference between the first
cumulative sum and the first quantised value,
whereby the overall residual quantisation error is
reduced by the subsequently transmitted quantised
values.

Appeal Br. 15 (Claims App.). Independent claim 12 recites “[a] method of
monitoring power-consumption.” Id. at 17–18.
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REJECTION ON APPEAL
The Examiner rejected claims 1 and 3–12 under 35 U.S.C. § 101 as
directed to patent ineligible subject matter. Final Office Action entered
January 26, 2017 (“Final Act.”) at 2–4; Examiner’s Answer entered October
6, 2017 (“Ans.”) at 3–5.
DISCUSSION
1. Patent Eligibility of Claims 1, 3–5, and 12
The Examiner finds that claims 1 and 12 recite mathematical
relationships used to determine a quantized value by subtracting a first
quantized value from a first cumulative sum. Final Act. 3. Therefore, the
Examiner finds the claims recite an abstract idea, i.e., a judicial exception to
patent eligibility. Id. (citing Elec. Power Grp., LLC, v. Alstom S.A., 830
F.3d 1350 (Fed. Cir. 2016)).
Having determined that the claims recite a judicial exception, the
Examiner finds that the claims do not include additional elements that
integrate the judicial exception into a practical application. Id. at 2.
Particularly, the Examiner finds that the additional element of measuring
energy consumed by an appliance is mere data gathering recited at a high
level of generality, and the additional element of storing and transmitting
measurements to a device through a circuit is insignificant extra-solution
activity using conventional equipment. Id. Therefore, the Examiner
determines the “claims as a whole do not amount to significantly more than
the abstract idea itself.” Id.
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The Appellant contends that the claims are directed to “a device
which has specific means or methods that improve monitoring of energy
consumption and are not directed to a result that is the abstract idea itself.”
Appeal Br. 4–5 (citing Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed.
Cir. 2016)). The Appellant contends that the “invention is directed towards
addressing a particular problem that exists due to the limited available
bandwidth for such a system communicating over a mains electrical circuit.”
Id. at 5. The Appellant argues that the Examiner has oversimplified claim 1,
and thus has erred in finding the claim is directed to an abstract idea. Id. at
7.
The Appellant argues further that additional limitations in the claims
impose meaningful limits to improve an existing technology “being
electrical measurement, and by improving and more efficiently transmitting
information, while maintaining accuracy.” Id. The Appellant contends that
“[t]he claim as a whole does confine itself to a particular useful application,
namely measuring energy consumed by an appliance and transmitting
measurements to a master device through a mains electrical circuit” and that
“[t]his is not merely manipulating an abstract idea.” Id. at 8. Moreover, the
Appellant argues that the claims are limited to a particular system and do not
preempt approaches that use different techniques to transmit energy
measurement values. Id. at 8.
We agree with the Examiner as to claims 1, 3–5, and 12. Our reasons
follow.
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
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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. 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 Supreme Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)
and Alice. Alice at 217–18 (citing Mayo, 566 U.S. at 75–77). In accordance
with that framework, we first determine what concept the claim is “directed
to.” 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 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, 69 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “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))).
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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
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 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 (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.
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The PTO has published revised guidance on the application of § 101
with regard to the first step of the Alice/Mayo test (i.e., Step 2A of the
USPTO’s Subject Matter Eligibility Guidance as incorporated into MPEP
§ 2106 and as updated in October 2019). See 2019 Revised Patent Subject
Matter Eligibility Guidance (“2019 Guidance”), 84 Fed. Reg. 50 (Jan. 7,
2019), as updated in October 2019. Thus, under Step 1 of the Guidance, as
revised, 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 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) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See 84 Fed. Reg. 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:
(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
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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 84 Fed. Reg. at 56.
Step 1: Whether the Claims are Directed to a Statutory Category
Claims 1 and 12 are directed to a “power-consumption monitoring
device” and to a “method of monitoring power-consumption.” Appeal Br.
15, 17–18. Therefore, we find that these claims are directed to statutory
categories of invention as a machine and a process, respectively. This
finding, however, does not end our analysis.
Revised Step 2A, Prong 1: Whether the Claims Recite a Judicial
Exception
Next, we consider the first prong of step 2A of the 2019 Guidance.
Claims 1 and 12 recite a mathematical formula that involves maintaining a
first cumulative sum of measurements, determining a first quantized value
representing the first cumulative sum, and subtracting the first quantized
value from the first cumulative sum to reduce error. See Appeal Br. 15.
There is, however, no distinction between claim 1, which is directed to a
device (machine), and claim 12, which is directed to a method (process), for
purposes of the patent eligibility analysis—i.e., the mathematical formula is
wholly integrated into the machine such that they are indivisible. Although
“these claims encompass both methods and systems, we find there to be no
distinction between them for § 101 purposes, as they simply recite the same
concept.” Voter Verified, Inc. v. Election Sys. & Software LLC, 887 F.3d
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1376, 1385 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 813 (2019). Therefore,
we consider claims 1 and 12 together.
The Specification explains that by subtracting a first quantized value
from a first cumulative sum, the process avoids the build-up of cumulative
errors at the master device and thus the subsequent quantized transmitted
values will correct the quantization error introduced in the previous values.
Spec. 14:8–14. The Specification further provides an example of an
algorithm for implementing the mathematical formula. See id. at 14:22–36.
Thus, like the Examiner, Final Act. 3, we find that claims 1 and 12 are
directed to the judicial exception of abstract ideas, in particular,
mathematical concepts.
In Diehr, the Supreme Court explained “that when a claim recites a
mathematical formula (or scientific principle or phenomenon of nature), an
inquiry must be made into whether the claim is seeking patent protection for
that formula in the abstract.” Diehr, 450 U.S. at 191. “A mathematical
formula as such 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. (internal citation
omitted) (citing Benson and Flook). Because the claims set forth
mathematical concepts, we determine that the first prong of revised Step 2A
is satisfied. See 2019 Guidance, 84 Fed. Reg. at 51–52.
Revised Step 2A, Prong 2: Whether the Judicial Exception is
Integrated into a Practical Application
We next consider whether any additional elements integrate the
judicial exception into a practical application. See 2019 Guidance, 84 Fed.
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Reg. at 54–55. The 2019 Guidance explains that additional elements, e.g.,
can “implement[] a judicial exception with, or use[] a judicial exception in
conjunction with, a particular machine or manufacture that is integral to the
claim” but that this is not exclusive. 2019 Guidance, 84 Fed. Reg. at 55
(citing Manual of Patent Examining Procedure § 2106.05(a)–(c), (e)–(h)).
Claim 1 recites that the monitoring device is adapted to measure
information, e.g., energy, determine values based on the information, and
transmit the values to a master device. Claim 1 also recites that the end
result of the mathematical formula is reducing “the overall residual
quanti[z]ation error . . . by the subsequently transmitted quanti[z]ed value.”
We find that these steps are insignificant extra-solution activity. These
elements do not transform claim 1 into a patent-eligible application of an
abstract idea.
As the Examiner found, the steps of gathering and transmitting data
used in the mathematical formula are insignificant pre-solution activity.
Final Act. 2. “Merely requiring the selection and manipulation of
information . . . by itself does not transform the otherwise-abstract processes
of information collection and analysis.” Elec. Power Grp., 830 F.3d at
1355. Likewise, the end result of reducing error is a post-solution activity
that is not a practical application of the formula. See Flook, 437 U.S. at 590
(holding that step of adjusting an alarm limit variable to a figure computed
according to a mathematical formula was “post-solution activity”).
That the claimed power-consumption monitoring device is for use in
the field of power-line data communications technology does not render the
claim patent eligible either. As explained in Diehr, it is not enough to limit
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the formula to a particular technological environment—here, power-line data
communications. See Diehr, 450 U.S. at 187; see also Affinity Labs of Tex.,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258–59 (Fed. Cir. 2016) (“All that
limitation does is to confine the abstract idea to a particular technological
environment—in this case, cellular telephones.”). The Federal Circuit has
explained that “limiting the claims to the particular technological
environment of power-grid monitoring is, without more, insufficient to
transform them into patent-eligible applications of the abstract idea at their
core.” Elec. Power Grp., 830 F.3d at 1354.
Finally, the power-consumption monitoring device of claim 1 is
claimed at a high level of generality and does not impose any meaningful
limits on claim 1. Rather, the device is merely an object on which the
claimed mathematical concept operates. Accordingly, because the
additional elements in claim 1 do not recite any limitations that integrate the
judicial exception into a practical application (i.e., a particular machine), we
determine the claims are directed to a judicial exception that has not been
integrated into a practical application.
Step 2B: Whether the Claims Include an Inventive Concept
If a claim recites a judicial exception, and does not integrate that
exception into a practical application, then we consider as the final step in
the patent eligibility analysis whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field. 2019 Guidance, 84 Fed. Reg. at 56. If so, then
the claim is eligible.
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Representative claim 1 recites the additional element of a
power-consumption monitoring device, connectable to a mains electrical
circuit and operable to transmit measurements to a master device. As
discussed above, the device is adapted to perform the abstract idea. The
Appellant’s Specification acknowledges that measurement devices are
known for monitoring power consumption and transmitting measurements to
a centralized monitoring station. Spec. 1:10–11. Moreover, the
Specification states that existing powerline technologies have been proposed
for smart grid/smart energy applications. Id. at 19–23. Despite this
background, the claims fail to add any other specific limitations—other than
the judicial exception itself— to the device that are beyond the well-known
elements as acknowledged in the Specification. Thus, we sustain the
Examiner’s rejection of claim 1 as being drawn to patent-ineligible subject
matter.
The Appellant has not presented separate arguments with respect to
claims 3–5 and 12. Accordingly, we sustain the Examiner’s rejection of
claims 1, 3–5, and 12 under 35 U.S.C. § 101 as being directed to a patent-
ineligible abstract idea, that is not integrated into a practical application, and
does not include an inventive concept.

2. Patent Eligibility of Claims 6–11
The Appellant argues claim 6 separately. Appeal Br. 11. Claim 6
includes additional limitations that the monitoring device is adapted to: 1.
receive a spread-spectrum timing-reference signal from the master device; 2.
detect a code-phase of the received reference signal; and 3. transmit the
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measurements to the master device with a timing that is defined relative to
the detected code-phase. Id. at 16. The Appellant argues that claim 6
corresponds to Example 1 in the 2014 Interim Eligibility Guidance. Appeal
Br. 11. According to the Appellant, “[c]laim 6 specifies a communication
protocol used to control communications between the master device and the
monitoring device.” Id. at 11. The Appellant contends that “claim 6 is
directed towards efficiently and accurately transmitting data to a master
device and using a protocol controlling timing of the transmissions” and that
“[t]his is a concept inextricably tied to electrical devices.” Id.
We agree with the Examiner that claim 6 is directed to unpatentable
subject matter. Ans. 5 (“Claim 6 does not add any meaningful limitations to
the judicial exception to make it patent eligible.”). As the Examiner found,
claim 6 depends from claim 1, Appeal Br. 16, and, therefore, recites the
abstract idea of claim 1. See id. Accordingly, claim 6 recites a judicial
exception under Step 2A, Prong One.
Applying Step 2A, Prong Two, claim 6 restricts the mathematical
formula of claim 1 to a specific device, i.e., a monitoring device adapted to
receive a spread-spectrum signal, detect a code-phase, and transmit
measurements. “That restriction, however, does not alter the result. All that
limitation does is to confine the abstract idea to a particular technological
environment.” See Affinity Labs, 838 F.3d at 1258–59. Claim 6 does not
integrate the judicial exception into a particular machine. Accordingly,
claim 6 is directed to the judicial exception of claim 1.
Applying Step 2B, the Appellant’s skeletal statements that “claim 6
[is] directed towards efficiently and accurately transmitting data to a master
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device and using a protocol controlling timing of the transmissions” and that
“[t]his is a concept inextricably tied to electrical devices,” Appeal Br. 11, do
not successfully rebut the Examiner’s position, Ans. 5, that the additional
elements in claim 6 merely amount to insignificant extra-solution activity.
The Appellant does not even assert—let alone establish—that the additional
elements are unconventional such that the combination gathers and
processes data in an unconventional way to result in an inventive concept,
rendering the claim eligible at Step 2B of the Guidance. Indeed, the
Appellant has not positively argued that the additional elements of claim 6
provide significantly more than the recited judicial exception. See 2019
Guidance, 84 Fed. Reg. at 56. “If an appellant fails to present arguments on
a particular issue . . . the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.” Ex Parte Frye, 94
USPQ2d 1072 (BPAI 2010). Accordingly, we affirm the Examiner’s
rejection of claim 6 (and claims 7–11 dependent thereon) as directed to
unpatentable subject matter.”
CONCLUSION
The Examiner’s rejection of claims 1 and 3–12 under 35 U.S.C. § 101
is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–12 101 Ineligible subject
matter
1, 3–12
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