SIEMENS AKTIENGESELLSCHAFT

Patent Trials and Appeals Board

Jul 20, 2020

2020001853 (P.T.A.B. Jul. 20, 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.
15/256,917 09/06/2016 ANDREA SASSETTI 2015P05018 4681
27350 7590 07/20/2020
LERNER GREENBERG STEMER LLP
Box SA
P.O. BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
STIVALETTI, MATHEUS R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
boxsa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREA SASSETTI

Appeal 2020-001853
Application 15/256,917
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
ULRIKE W. JENKS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 103 as obvious,
and under 35 U.S.C. § 101 as reciting patent ineligible subject matter.
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject the 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. Appellant identifies the real party in interest as Siemens
Aktiengesellschaft. Appeal Br. 2.
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STATEMENT OF THE CASE
The Examiner finally rejected the claims as follows:
Claims 1–4 and 6–10 under 35 U.S.C. § 103 as obvious in view of
Ryznar et al. (US 2013/0325155 A1, published Dec. 5, 2013) (“Ryznar”)
and Krishnamurthi (US 2013/0159939 A1, published June 20, 2013)
(“Krishnamurthi”). Final Act. 10.
Claims 5 and 11 under 35 U.S.C. § 103 as obvious in view of Ryznar,
Krishnamurthi, and Dempski (US 2006/0244677 A1, published Nov. 2,
2006). Final Act. 21.
Claims 1–11 under 35 U.S.C. § 101 because the claimed invention is
directed to an abstract idea. Final Act. 6.
There are two independent claims on appeal, claims 1 and 8. We
select claim 1 as representative. Claim 1, with the claim steps annotated with
bracketed numbering, is reproduced below:
1. A method of performing electronic validation of a completion
of manual manufacturing tasks (buyoff) in a computer-managed
production facility, which comprises the steps of:
[1] providing a natural user interface connected with a
management system of the computer-managed production
facility and the natural user interface provided for at least
tracking movements of operators’ bodies at workplaces of the
computer managed production facility and to process data of the
movements to recognize specific gestures indicating different
states of a manufacturing task;
[2] detecting, through the natural user interface, a presence
of operators in the workplaces;
[3] identifying an operator entrusted with a buyoff
operation for the manufacturing task through a first predefined
gesture performed by the operator, and allotting the operator the
natural user interface; and
[4] performing at an end of the manufacturing task,
communication to the natural user interface, by the operator
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having control, of a successful completion or a failure of the
manufacturing task, through a second and respectively a third
predefined gesture.

OBVIOUSNESS REJECTION
The Examiner found that Ryznar describes a motion sensor for
detecting three-dimensional motion of a person, meeting steps [1] and [2] of
claim 1 of “a natural user interface . . . for at least tracking movements of
operators’ bodies . . . and to process data of the movements to recognize
specific gestures indicating different states of a manufacturing task” and
detecting the presence of operators using the interface. Final Act. 10–11.
The Examiner also found that Ryznar describes detecting the person’s
compliance with a desired action with the motion sensor, meeting step [4] of
claim 1 of “communication to the natural user interface . . . of a successful
completion or a failure of the manufacturing task.” Id. at 11. While the
Examiner recognized that Ryznar does not disclose using second and third
gestures as part of the communication of step [4], the Examiner found that
Krishnamurthi describes recognizing one or more gestures and that it would
have been obvious to do so in Ryznar’s method to use a plurality of gestures
as a pattern of motion. Id. at 12.
With respect to step [3] of claim 1 of “identifying an operator
entrusted with a buyoff operation” with a predefined gesture, where the
buyoff is an “electronic validation of a completion of manual manufacturing
tasks,” the Examiner found that Krishnamurthi describes authenticating a
user using a gesture. Final Act. 12. The Examiner determined it would have
been obvious to one of ordinary skill in the art at the time of the invention to
have modified Ryznar’s system with the teachings of Krishnamurthi to
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identify and authenticate the user “in order for user to be recognized by the
guide system and be granted access to it.” Id. at 13.
Appellant contends that “Krishnamurthi does not teach or suggest
using particular gestures to input information, such as, a successful
completion or a failure of the manufacturing task” as recited in step [4] of
the claim Appeal Br. 10, 11 (emphasis omitted).
Appellant’s argument is not persuasive. The Examiner cited Ryznar as
describing the use of a gesture to confirm that a task has been completed.
Final Act. 12. Specifically, Ryznar discloses:
The motion sensor may output a confirmation signal when the
three dimensional spatial motion detected by the motion sensor
complies with a desired action, where the confirmation signal
may be transmitted to the guide system controller and/or other
controllers.
Ryznar ¶ 14.
Sensor 423 may, for example, be used to or as part of monitoring
that particular parts were properly selected from the correct bins
and placed for part kitting purposes or assembled to a work piece.
Sensor 423 may additionally function as a confirmation module,
such as confirmation module 28 discussed above, to provide
output confirmation signals 456 comprising data related to the
detected motion sensed by sensor 423, such as to guide controller
or guide control module 420, where the detected motion data
may be compared to predetermined required motions or actions
to thereby aid in indicating or determining that the operational
step indicated by the directional light device of guide system 400
has been properly completed. Alternatively, motion sensor 423
may itself include processing capability for comparing detected
motion to a predetermined desired action to thereby provide a
confirmation signal 456 if the guided action has been properly
completed.
Ryznar ¶ 97.
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As indicated in the disclosure reproduced above, Ryznar expressly
teaches that the motion sensor (the “natural user interface” of claim 1)
confirms “that particular parts were properly selected from the correct bins
and placed for part kitting purposes or assembled to a work piece” and
determines “that the operational step indicated by the directional light device
of guide system 400 has been properly completed” (Ryznar ¶ 97), which
meets the limitation of step [4] of claim 1 of “successful completion . . . of
the manufacturing task.” Appellant did not identify a defect in the
Examiner’s findings with respect to this limitation in the claim. While the
Examiner also relied on Krishnamurthi for step [4], it was cited only for its
teaching of using multiple gestures to represent an action. Final Act. 12.
Appellant also argues that Krishnamurthi does not enable one of
ordinary skill in the art to authenticate a user using a gesture as required by
step [3] of claim 1 (“identifying an operator entrusted with a buyoff
operation for the manufacturing task through a first predefined gesture
performed by the operator”). Appeal Br. 12–13.
Appellant’s argument does not persuade us that the Examiner erred.
As acknowledged by Appellant, Krishnamurthi discloses that “[i]n
some embodiments, a gesture may be used to authenticate the user.”
Krishnamurthi ¶ 8. Appellant states, however, that Krishnamurthi does not
explain or enable how the gesture is used to authenticate the user. Appeal Br.
12. We do not agree. As found by the Examiner (Final Act. 11–12),
Krishnamurthi discloses that a table of user preferences is loaded into the
computing device when initialized, where the preferences “include gesture
mapping information (e.g., a data table that may, in some instances, be
referred to as a gesture map) in which particular gestures are stored in
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association with particular user identifiers and particular commands.”
Krishnamurthi ¶¶ 33, 34 (emphasis added). As an example, “Table A” shows
that a “Left Swipe” is the “Command” for “Next Page” for “User”
“J_Doe_123.” Id. at ¶ 33. Thus, the table maps gestures to user identifiers
and commands. To identify the user, the table would map a predefined
gesture to the user identifier that identifies the specific user and informs the
device of the user identity, in the same way that the gesture is used to inform
the device to move to the “Next Page.” Appellant did not consider the
entirety of Krishnamurthi’s disclosure and what it teaches to one of ordinary
skill in the art.
In stating that Ryznar does not teach step [4] of claim 1, Appellant
underlined the phrase “by the operator having control,” although made no
arguments as to why Ryznar is deficient in this aspect. Appeal Br. 10 (also at
14 for claim 8). Neither the Specification nor Appellant provides a
definition of “control.” We understand it to mean, in the context of the
claim, that the interface is recognizing a specific user and then responding to
the commands of that user. This aspect of the claim is described by
Krishnamurthi. Specifically, Krishnamurthi allows for multiple users to
interact with a single device (¶ 4) by first authenticating the user so that the
device will know which gestures are associated with a specific user (¶ 5:
“particular gestures may be ‘overloaded’ or customized to correspond to
different commands for different users”).
Thus, for the foregoing reasons, and those explained in more detail by
the Examiner, the obviousness rejection of claim 1 is affirmed. Claim 8
comprises substantially the same limitations, and is affirmed for the same
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reasons. Dependent claims 2–4, 6, 7, 9, and 10 were not argued separately
and fall with claims 1 and 8. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant did not provide separate arguments for claims 5 and 11 and
these claims therefore fall with claims 1 and 8, respectively. Appeal Br. 15.

§ 101 REJECTION
Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S.Ct. 2347 (2014); Mayo Collaborative Servs. v. Prometheus
Labs, Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 134 S. Ct. at
2355. If it is determined that the claims are directed to an ineligible concept,
then the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. The Court explained that
this step involves a search for an ‘inventive concept’ — i.e., 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, 134 S. Ct. at 2355 (citing from Mayo, 566 U.S. at 75–
77).
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Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at
2355.
The PTO published revised guidance on the application of 35 U.S.C.
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
(“Eligibility Guidance”). The Eligibility Guidance provides additional
direction on how to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the Eligibility Guidance, looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
“inventive concept” to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. 84 Fed. Reg. 56.
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With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

Discussion
Claim 1 is directed to a method. We find that a “method” is also a
“process,” one of the broad statutory categories of patent-eligible subject
matter under 35 U.S.C. § 101. We thus proceed to Step 2A, Prong One, of
the Eligibility Guidance to determine the claim’s subject matter eligibility in
accordance with guidance under Mayo/Alice.

Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The Examiner stated that all the steps recited in claim 1 could be
performed by a supervisor or manager without using “electronic validation”
as recited in the claim. Ans. 4. The Examiner explained that “supervisor or
manager could easily identify the completion of a task by speaking to the
employee, or using hand signals such as a thumbs-up to indicate completion
of a task.” Id. For this reason, the Examiner found that the claim recites an
abstract idea. Id.
The Examiner did not specifically identify the abstract idea as a
“mental process,” one of the categories of abstract ideas listed in the
Eligibility Guidance and found by the courts to be an abstract idea.
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Eligibility Guidance, 84 Fed. Reg. 52 (n.14, 15). However, the Examiner’s
description of the steps as being capable of being performed by a human by
observation, meets the definition of a mental process as set forth in the
Eligibility Guidance (“concepts performed in the human mind (including an
observation.”). Id.
We agree with the Examiner’s determination. As the Examiner
explained, “detecting . . . a presence of operators” (step [2]), “identifying an
operator entrusted with a buyoff operation for the manufacturing task
through a first predefined gesture” (step [3]), and performing second and
third predefined gestures to show successful completion or failure of the
manufacturing (step [4]) could be performed by a manager or supervisor
observing persons in the room and determining the occurrence of predefined
gestures to indicate that a task has been completed or failed.
Appellant argues that it is not an abstract idea because “the invention
as defined by claims 1 and 8 relates to activities performed between a person
and a machine in order to communicate information between the person and
the machine.” Appeal Br. 5; see also Reply Br. 3. Appellant also states that
the Examiner’s description of performing the steps by a human, rather than
the interface, is an error because the “Examiner provides no evidence or
support that this is indeed how the electronic validation or buyoff is or was
achieved” and that “Appellant’s understanding is that a buyoff was never
achieved by performing the activities listed by the Examiner.” Reply Br. 3.
This argument is not persuasive. This rejection is based on patent
eligibility and not prior art. The Examiner’s explanation that the steps of the
claim could be performed by humans was not a statement, for the purpose of
making a prior art rejection, that it had been done that way before, but rather
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to show that the steps of the claim are abstract because they could be
performed by human observation. “Courts have examined claims that
required the use of a computer and still found that the underlying, patent-
ineligible invention could be performed via pen and paper or in a person’s
mind.” Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015). Therefore, while the interaction in the claim
may be between a machine and person, as asserted by Appellant,
accomplishing it on a machine does not confer patent-eligibility because the
steps could still be performed by a human (Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed Cir. 2016) (“Furthermore, with
the exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”)
For the foregoing reasons, we find that claim 1 recites an abstract
idea. Accordingly, we proceed to Step 2A, Prong Two, of the Eligibility
Guidance.

Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. We must look at the claim elements individually and
“as an ordered combination” to determine whether the additional elements
integrate the recited abstract idea into a practical application. “A claim that
integrates a judicial exception in a practical application will apply, rely on,
or use the judicial exception in a manner that places a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
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designed to monopolize the judicial exception.” Eligibility Guidance, 84
Fed. Reg. 54. Integration into a practical application is evaluated by
identifying whether there are additional elements individually, and in
combination, which go beyond the judicial exception. Id. at 54–55.
Appellant contends the claims are directed to a practical application
because the “natural user interface or natural user interface system enables
the recognition of gestures by the machine and thus enables the machine to
obtain information from the operator in this manner.” Appeal Br. 8.
Appellant also states that the “invention as defined by claims 1 and 8 are
directed to an improvement in manufacturing since an electronic validation,
i.e. ‘buyoff’ can be performed without requiring the operator to stop his or
her activity. Thus, relatively high downtimes of the production line are
avoided.” Id.
Appellant’s argument does not persuade us that the Examiner erred in
finding the claim ineligible for a patent. “[M]ere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). As explained in FairWarning
IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016):
The claims here . . . are not directed to an improvement in the
way computers operate, nor does FairWarning contend as
much. While the claimed system and method certainly purport
to accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself. See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.”).
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Appellant argues that the improvement results in avoiding relatively
high downtimes of the production line. Appeal Br. 8. However, this
improvement is accomplished by using gestures that are detected by a
natural user interface. The “gesture” itself is part of the abstract idea because
it can be detected by human observation. To confer eligibility, an additional
element, apart from the abstract idea, must be identified which transforms
the claim into a patent-eligible practical application. Appellant has not
established there is an improvement in how the gesture and motion detection
by the “natural user interface” is accomplished. Thus, this case is
distinguishable from cases in which eligibility was established when the
abstract idea improved a functionality of an additional element. For
example, in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir.
2016), a self-referential table recited in the claims was found by the court to
be “a specific type of data structure designed to improve the way a computer
stores and retrieves data in memory.” Here, Appellant has not identified an
improvement in the function of the natural user interface.
The claimed steps of tracking movements, detecting and identifying
operators, and performing gestures to indicate completion or failure of a
task, are not stated with sufficient specificity to confer patent eligibility. As
held in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed.
Cir. 2016), the “abstract idea exception has been applied to prevent patenting
of claims that abstractly cover results where ‘it matters not by what process
or machinery the result is accomplished.’ [O’Reilly v. Morse, 56 U.S. (15
How.) 62, 113,]; see also Mayo, 132 S. Ct. at 1301.” McRO, 837 F.3d at
1314. McRO stated that therefore, a court must “look to whether the claims
in these patents focus on a specific means or method that improves the
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relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery.”
McRO, 837 F.3d at 1314. The claim does not provide any detail in how the
claimed steps of “detecting,” “identifying,” and “performing” are
accomplished or implemented.
In sum, we have not been guided to an additional element in the
claim, beyond the abstract idea, that integrates the judicial exception into a
practical application.

Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B of the Eligibility
Guidelines, which asks whether there is an inventive concept. In making this
Step 2B determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” Eligibility
Guidance, 84 Fed. Reg. 56 (footnote omitted). We must also consider
whether the combination of steps perform “in an unconventional way and
therefore include an ‘inventive step,’ rendering the claim eligible at Step
2B.” Id. In this part of the analysis, we consider “the elements of each claim
both individually and ‘as an ordered combination’” to determine “whether
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the additional elements ‘transform the nature of the claim’ into a patent-
eligible application.” Alice, 134 S. Ct. at 2354.
As discussed above, there is no evidence in the record that the steps of
detecting movements, the presence of operators, and gestures, is
accomplished in a non-conventional way. To the contrary, as pointed out by
the Examiner, the Specification discloses that the commercially available
“Kinect for Windows” could serve as the claimed “natural user interface.”
Spec. ¶¶ 22, 24. This is the same device also used in Ryznar (¶ 98). The
Examiner therefore concluded that the claim used generic, conventional,
technology to implement the abstract idea of gesture detection and that there
is no improvement to an “existing technology.” Final Act. 4. In response to
this determination, Appellant did not explain how using this known
technology to detect gestures was accomplished any differently in the
claims. The Examiner’s determination, particularly in view of the Kinect
technology, is supported by a preponderance of the evidence.

Summary
For the foregoing reasons, the rejection under § 101 of claim 1 is
affirmed. Claim 8 has substantially the same limitations and is affirmed for
the same reasons. Separate arguments were not made for claims 2–7 and 9–
11; these claims therefore fall with claims 1 and 8. 37 C.F.R
§ 41.37(c)(1)(iv).

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–10 103 Ryznar,
Krishnamurthi
1–4, 6–10
5, 10 103 Ryznar,
Krishnamurthi,
Dempski
5, 10
1–11 101 Eligibility 1–11
Overall
Outcome
1–11

TIME PERIOD
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)(iv).

AFFIRMED