Yasuo Fujishima et al.

Patent Trials and Appeals Board

Oct 31, 2019

14052067 - (D) (P.T.A.B. Oct. 31, 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.
14/052,067 10/11/2013 Yasuo FUJISHIMA OBA-51751 1820
116 7590 10/31/2019
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
EXAMINER
LAU, TUNG S
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YASUO FUJISHIMA, KEIICHI KENMOTSU, MAYUMI SAITO,
and TOSHIYA NAKAYAMA
____________

Appeal 2019-001608
Application 14/052,067
Technology Center 2800
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
JAMES C. HOUSEL Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3, 5, 7, 9, 11, and 13–21. (Appeal Br. 4.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).

1 This Decision includes citations to the following documents:
Specification filed October 11, 2013 (“Spec.”); Final Office Action mailed
April 19, 2018 (“Final Act.”); Appeal Brief filed September 19, 2018
(“Appeal Br.”); Examiner’s Answer mailed October 24, 2018 (“Ans.”); and
Reply Brief filed December 19, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant, Mitsubishi Aircraft Corporation, is also
identified as the real party in interest. (Appeal Br. 2.)
Appeal 2019-001608
Application 14/052,067

2
We AFFIRM.
THE INVENTION
Appellant states the invention relates to a method of diagnosing
whether a machine is operating in a normal state. (Spec. 1, ll. 3–5.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
1. A condition diagnosing method comprising:
determining a presence or absence of an abnormality in
diagnosis data from a diagnosis target by using a latest one
class support vector machine applied to the diagnosis data,
wherein the presence of the abnormality indicates a failure in
the diagnosis target; and
when the presence of the abnormality is not determined,
determining the presence or absence of the abnormality in the
diagnosis data by using an initial one class support vector
machine applied to the diagnosis data, wherein the presence of
the abnormality indicates secular deterioration due to aging of
the diagnosis target, and the absence of the abnormality
indicates a normal condition of the diagnosis target, wherein
the latest one class support vector machine is constructed
by performing additional learning with the diagnosis data
obtained from the diagnosis target at a time of diagnosis,
the initial one class support vector machine is constructed
by training with data obtained from the diagnosis target at a
time when the diagnosis target was initially manufactured,
the time of diagnosis is different than the time when the
diagnosis target was initially manufactured, and
the condition diagnosing method distinguishes
characteristic changes in the diagnosis data due to aging of the
diagnosis target.
(Appeal Br. (Claims Appendix) 14.)
Appeal 2019-001608
Application 14/052,067

3
Claims 11 and 17 are also independent, where claim 11 recites a
condition diagnosing device including a controller configured to perform a
similar method as recited in claim 1, and claim 17 also recites a condition
diagnosing method. (Id. at 15–17.)

REJECTION
The Examiner rejected claims 1, 3, 5, 7, 9, 11, and 13–21 under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more. (Final Act. 2–7.)

PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. 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
and Alice. 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 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
Appeal 2019-001608
Application 14/052,067

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))).
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
Appeal 2019-001608
Application 14/052,067

5
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.
The PTO recently 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 M.P.E.P.
§ 2106). USPTO’s January 7, 2019, 2019 Revised Patent Subject Matter
Eligibility Guidance (“Revised Guidance”). 84 Fed. Reg. 50 (Jan. 7, 2019).
See also October 2019 Patent Eligibility Guidance Update. 84 Fed. Reg.
55942 (Oct. 18, 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
Appeal 2019-001608
Application 14/052,067

6
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
(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.

DISCUSSION
The Examiner’s Rejection
The Examiner stated that independent claims 1, 11, and 17 are
directed to a judicial exception without significantly more. (Final Act. 2;
Ans. 4.) In particular, the Examiner determined “the step of determining a
data, the support vector machine (SVM) the applicant rely on is clearly a
data processing step or data manipulation.” (Ans. 9, 24–25.) The Examiner
stated additionally that the “use of this process (SVM) represents data
manipulation and data processing and gathering after the first determining
step,” which “is similar or equivalent to the data gathering in [Electric
Appeal 2019-001608
Application 14/052,067

7
Power Group LLC v. Alstrom S.A., 830 F.3d 1350 (Fed. Cir. 2016)].” (Id.)
The Examiner determined the “machine” recited in the claims is generic and
the equivalent of a generic processor, which amounts to “generally linking
the use of the judicial exception to a particular technological environment or
field of use [that] can not [be considered] significantly more.” (Id. at 9–10.)

Appellant’s Arguments
Appellant argues when the “essence” of the claims is considered, the
claims are not abstract. (Appeal Br. 5.) Appellant contends the
Specification discloses accurately determining abnormal operations of a
machine, which has real effects on the safe operation of those machines. (Id.
at 5.) Appellant contends the purpose of the claims is to consider the effects
of aging when determining the normal or abnormal state of a machine. (Id.at
6.) Appellant argues the claims are directed to significantly more than the
abstract idea, because, as the Specification explains, current condition
diagnostic technologies do not properly analyze complex systems with a
high degree of accuracy because current technologies are unable to
distinguish the effects of aging from actual abnormalities. (Id. at 7.)
Appellant argues the use of two one class support vector machines are a new
apparatus that improves condition diagnostic technologies. (Id. at 8–10.)
Appellant argues that the current method improves the functioning of a
computer itself as a result of the machine learning system that can learn from
the data at the time of diagnosis. (Id.)

Appeal 2019-001608
Application 14/052,067

8
ANALYSIS
For the reasons discussed below, we are not persuaded the Examiner
erred in determining the claimed subject matter to be patent-ineligible as
directed to a judicial exception without reciting significantly more.
We select independent claim 1 as representative, and address claim 17
to the extent necessary based on Appellant’s arguments (see Appeal Br. 4,
11–12). 37 C.F.R. § 41.37(c)(1)(iv)(2016).
Initially, we find under Step 1 of the Guidance, that claim 1 is directed
to a process (a condition diagnosing method) including “determining a
presence of abnormality in diagnosis data from a diagnosis target by using a
latest one class support vector machine” and “when the presence of the
abnormality is not determined, determining the presence or absence of the
abnormality in the diagnosis data by using an initial one class support vector
machine applied to the diagnosis data” and “the condition diagnosing
method distinguishes the characteristic changes in the diagnosis state due to
the aging of the diagnosis target.” Accordingly, claim 1 falls within one of
the four statutory categories of invention. Therefore, we turn next to Step
2A(1) of the Revised Guidance.

The Judicial Exception
Under Step 2A(1) we find that claim 1 recites a judicial exception in
the form of mathematical concepts. According to the Specification, the
recited step in claim 1 of “determining a presence or absence of an
abnormality in diagnosis data from a diagnosis target by using a latest one
class support vector machine applied to the diagnosis data” and the recited
step of “determining the presence or absence of the abnormality in the
Appeal 2019-001608
Application 14/052,067

9
diagnosis data by using an initial one class support vector machine applied
to the diagnosis data” involve “Support Vector Machines (SVMs) which are
a kind of machine learning and have received attention for its high accuracy
. . . .” (Spec. 2.)
According to the Specification, a discriminant expressed by the
following formula (formula 4) executes (tests) clustering of test data (x) of
unknown classes that determines whether the test data belongs in the same
class as training data (a normal diagnosis) or a class other than the training
data (abnormal diagnosis). (Spec. 12–13.)

Formula 4, reproduced above, includes a “kernel” (κ), which
according to the Specification, “represents arithmetic of an inner product in
a feature space.” (Id. at 11–12.) The Specification states further that the
latest one class SVM and the initial one class SVM “represent such
discriminators.” (Id. at 13.)
As further recited in claim 1, “the latest one class support vector
machine is constructed by performing additional learning with the diagnosis
date obtained from the diagnosis target at a time of diagnosis” and “the
initial one class support vector machine is constructed by training with data
obtained from the diagnosis target at a time when the diagnosis target was
initially manufactured.” (See Id. at 14.) This additional learning is
performed by the “kernel method,” where “an optimum α is found in
connection with an evaluation function (formula (1)).” (Id. at 10.) Formula
1 is reproduced below:
Appeal 2019-001608
Application 14/052,067

10

In formula 1, “Xi (i = 1, 2, ... , and 1) and Xj (j = 1, 2, ... , and 1) are
training data, and training of finding optimum α is performed by applying
these data items. The number 1 is the number of training data items. The
letter ν is an upper limit value (between 0 and 1 inclusive) of a rate at which
the training data is regarded as an outlier, and the normal region does not
contain the training data regarded as the outlier.” (Id. at 11.)
Thus, we agree with the Examiner that claim 1 recites data processing
and data manipulation in the form of mathematical concepts. (See Ans. 9,
24–25.) However, the mere fact that the claim recites mathematical
concepts does not automatically render the claim patent-ineligible. Diehr,
450 U.S. at 187 (“[A] claim drawn to subject matter otherwise statutory does
not become nonstatutory simply because it uses a mathematical formula.”).
As a result, we now turn to Step 2A(2) of the Revised Guidance to determine
whether the claims integrate the judicial exception into a practical
application.

Integration into a Practical Application
In Step 2A(2) of the Revised Guidance, we evaluate whether there are
additional elements recited in the claim that integrate the mathematical
concepts into a practical application. Initially, we find that claim 1 recites
“[a] condition diagnosing method” and does not recite any particular field of
application. Claim 1 recites “diagnosis data” that is “obtained from the
diagnosis target at the time of diagnosis” and “obtained from the diagnosis
Appeal 2019-001608
Application 14/052,067

11
target at a time when the diagnosis target was initially manufactured.”
Considering claim 1 as a whole, we determine that these limitations merely
add generic computer activity to gather data for the judicial exception, which
amounts to no more than insignificant extra-solution activity and is
insufficient to integrate the judicial exception into a practical application.
In particular, the Specification broadly describes the condition
diagnosis “aims at diagnosis of failure signs of diagnosis targets such as
machines, devices, or the like.” (Spec. 9.) The Specification describes a
“detection sensor” that “is attached to a diagnosis target” to “obtain[] the
necessary measurement data (diagnosis data).” (Spec. 9.) Thus, the step of
obtaining diagnosis data amounts to a mere data-gathering step in a
condition diagnosis method. See Electric Power, 830 F.3d at 1355 (“merely
selecting information, by content or source, for collection, analysis, and
display does nothing significant to differentiate process from ordinary
mental processes . . . .”).
Although Appellant argues that abnormal determination of a machine,
for example, an airplane, is not abstract (Appeal Br. 5), the claims are not so
limited. In addition, we are not persuaded by Appellant’s arguments that the
latest one class SVM and the initial one class SVM are particular machines
that render the claim significantly more than the abstract idea. (Appeal Br.
9–10.) Rather, we agree with the Examiner that term “machine” in the term
“Support Vector Machine” is more accurately characterized as instructions
to implement an abstract idea on a computer. (Ans. 24–25.) As discussed
above, the latest one class SVM and initial one class SVM are better
understood as mathematical concepts, or algorithms, which may, particularly
with respect to the latest one class SVM, be updated, as opposed to an
Appeal 2019-001608
Application 14/052,067

12
improvement to the functioning of a computer. In this regard, we agree with
the Examiner that rather than an improvement to computer functionality
itself, the claims alter the data using computers as a tool, and as such, is not
similar to the technological improvement to the manual 3-D animation
techniques at issue in McRO. (Ans. 23; McRO, 837 F.3d at 1316 (“When
looked at as a whole, claim 1 is directed to a patentable technological
improvement over the existing, manual 3-D animation techniques”).) See
Alice, 573 U.S. at 225, cited in MPEP § 2106.05(a). See also Flook, 437
U.S. at 595–96 (merely reciting a new and presumably better method for
calculating an alarm limit as part of a catalytic conversion process with no
improvement to the catalytic process itself rendered a claim to such process
patent-ineligible).
For all these reasons, claim 1 does not integrate the judicial exception
into a practical application. Thus, claim 1 is directed to the recited abstract
idea.
The Inventive Concept
Appellant contends claim 1 provides a method that “can distinguish
the characteristic changes due to aging” and thus recites a technology based
solution over prior art methods that do not properly analyze complex
systems with a high degree of accuracy and are unable to distinguish the
effects of aging from actual abnormalities. (Appeal Br. 7.)
To determine whether claim 1 provides an inventive concept, we
consider whether claim 1 adds a specific limitation beyond the mathematical
concepts that is not well-understood, routine, or conventional in the field, or
simply appends well-understood, routine, conventional activities previously
Appeal 2019-001608
Application 14/052,067

13
known to the industry, specified at a high level of generality, to the
mathematical concepts. 84 Fed. Reg. at 56.
In this regard, claim 1 recites a latest one class SVM and initial one
class SVM, which as discussed above, are mathematical concepts, and do
not expressly recite the use of any particular computer components. Claim
11, directed to “[a] condition diagnosing device,” generally recites “a
controller.” The Specification discusses the use of detection sensors;
controllers formed of a Central Processing Unit, memories, such as Read
Only Memory (ROM) or Random Access Memory (RAM); storage, such as
Hard Disc Drive (HDD) or Solid State Drive (SSD); known input devices,
such as a keyboard and mouse; and displays such as a Liquid Crystal
Display (LCD). (Spec. 9–10.) These components are generally known as
conventional computer components. Thus, as a whole, claim 1 is directed to
an abstract idea, which relies on a computer used in its ordinary capacity
performing well-understood, routine, and conventional activities.
Claim 17
Regarding claim 17, which recites “constructing a first one class
support machine” and “constructing a second one class support vector
machine,” although Appellant points to such steps as “relat[ing] to the
construction of particular machines” (Appeal Br. 11), such limitations are
similar to the discussion of the latest one class SVM and initial one class
SVM “constructed” steps in claim 1 above. We are not persuaded by
Appellant’s arguments with respect to claim 17 as discussed above with
respect to claim 1. Similarly, Appellant’s arguments (Appeal Br. 11–12)
relating to the steps of “applying the diagnosis data” to the first and second
one class support vector machines recited in claim 17 are not persuasive for
Appeal 2019-001608
Application 14/052,067

14
similar reasons as the “determining” steps recited in claim 1 discussed
above.
To summarize, because claims 1 and 17 recite subject matter
judicially excepted from patent eligibility, do not integrate the judicially
excepted subject matter into a practical application, and simply append well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicially excepted
subject matter, we sustain the Examiner’s rejection of claims 1, 3, 5, 7, 9, 11,
and 13–21 under 35 U.S.C. § 101.
DECISION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5, 7, 9,
11, 13–21
101 Eligibility 1, 3, 5, 7,
9, 11,
13–21

FINALITY AND 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)(1)(iv).

AFFIRMED