ZEMACH, Shai

Patent Trials and Appeals Board

Sep 15, 2020

14178344 - (D) (P.T.A.B. Sep. 15, 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.
14/178,344 02/12/2014 Shai ZEMACH 5545/2 3820
44696 7590 09/15/2020
Dr. Mark M. Friedman
Moshe Aviv Tower, 54th floor
7 Jabotinsky St.
Ramat Gan, 5252007
ISRAEL
EXAMINER
WAI, ERIC CHARLES
ART UNIT PAPER NUMBER
2195
NOTIFICATION DATE DELIVERY MODE
09/15/2020 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):
friedpat.uspto@gmail.com
patents@friedpat.com
rivka_f@friedpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHAI ZEMACH
____________________

Appeal 2019-003479
Application 14/178,344
Technology Center 2100
____________________

Before JUSTIN BUSCH, JOYCE CRAIG, and JASON M. REPKO,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–36. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellant’s disclosure generally relates to “a system for monitoring
heated water in a boiler and forecasting usage needs.” Spec. 1:9–10; see id.,

1 We use the term Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Shai Zemach as the real party in interest.
Appeal Br. 3.
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Abstract. More specifically, the claimed subject matter includes methods
and systems to determine and display a real-time estimated amount of water
remaining in a water boiler, as well as additional values derived from the
amount of water remaining, based on measurements received from at least
three sensors outside the boiler tank that are retrofit to the water boiler—the
three sensors being (1) a temperature that measures the water in the cold-
water intake pipe, (2) a temperature sensor that measures the water in the
hot-water outlet pipe, and (3) a flow meter that measures the water flow rate
in the outlet pipe. Spec. 2:2–14, Figs. 1, 2. Claims 1, 23, 26, and 35 are
independent claims, and representative claim 23 is reproduced below:
23. A method for providing a real-time estimate of available
hot water in a water boiler tank, the method comprising the steps
of:
(a) retrofitting an intake temperature sensor and flow
meter on an intake pipe outside the water boiler tank and an outlet
temperature sensor on an outlet pipe outside the water boiler
tank;
(b) receiving flow data of water running through said
intake pipe connected to the water boiler, from said flow meter
operationally coupled to said intake pipe;
(c) receiving an outlet temperature measurement of water
in said outlet pipe connected to the water boiler tank from said
outlet temperature sensor in said outlet pipe; and
(d) receiving an intake temperature measurement of water
in said intake pipe connected to the water boiler tank from said
intake temperature sensor operationally coupled to said intake
pipe;
(e) calculating an estimated amount of hot water in the
water boiler tank based on said flow data, outlet temperature
measurement and intake temperature measurement.
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The Pending Rejections
Claims 1–36 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Ans. 5–6.
Claims 23–26 stand rejected under 35 U.S.C. § 103 as obvious in
view of Harbin (US 2010/0004790 A1; Jan. 7, 2010), Wacknov (US
2006/0230772 A1; Oct. 19, 2006), and Min (US 2012/0227681 A1; Sept. 13,
2012). Ans. 7–10.
Claims 27–35 stand rejected under 35 U.S.C. § 103 as obvious in
view of Harbin, Wacknov, Min, and Lahyani (WO 2012/081014 A1; June
21, 2012). Ans. 10–12.
ANALYSIS
Appellant argues the claims as a group. See Appeal Br. 10–23.2
Therefore, we select independent claim 1 as representative of all pending
claims rejected under 35 U.S.C. § 101, and we select independent claim 23
as representative of all pending claims rejected under 35 U.S.C. § 103.
See 37 C.F.R. § 41.37(c)(1)(iv).
REJECTION UNDER 35 U.S.C. § 101
If a claim falls within one of the statutory categories of patent
eligibility, the Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101—i.e., evaluating whether the claim
is directed to a judicially recognized exception. Alice Corp. v. CLS Bank

2 Appellant filed a first brief on August 6, 2018. In response to receiving a
Notice of Non-Compliant Appeal Brief that required a new Claims
Appendix, Appellant submitted a second brief on September 17, 2018.
Throughout this decision, we refer to first brief as “Brief” and cite to it as
“Appeal Br.,” and we refer to the second brief as “Supplemental Brief” and
cite to it as “Supp. Br.”
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Int’l, 573 U.S. 208, 217 (2014). We also consider the United States Patent
and Trademark Office’s revised guidance for applying the Alice framework
when evaluating subject matter eligibility under 35 U.S.C. § 101. USPTO,
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”); USPTO, October 2019 Patent Eligibility
Guidance Update (Oct. 18, 2019), https://www.uspto.gov/PatentEligibility
(“Guidance Update”); see also Manual of Patent Examining Procedure
(“MPEP”) §§ 2106.04, 2106.05 (9th ed., Rev. 10.2019, June 2020).
As part of our inquiry, we “look at the ‘focus of the claimed advance
over the prior art’ to determine if the claim’s ‘character as a whole’ is
directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016); see Alice, 573 U.S.
at 217 (“First, we determine whether the claims at issue are directed to one
of those patent-ineligible concepts.”). The Guidance breaks this “directed
to” inquiry (“Step 2A”) into two prongs of analysis: (i) does the claim recite
a judicial exception (e.g., an abstract idea) (“Prong 1”), and (ii) if so, is the
judicial exception integrated into a practical application (“Prong 2”).
Guidance, 84 Fed. Reg. at 54.
If we determine the claim is directed to an abstract idea, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
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upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73); see Guidance, 84 Fed.
Reg. at 56 (directing us to consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry” (“Step 2B”)).
Guidance Step 2A (The Alice “Directed To” Inquiry)
The Examiner determines the claims are directed to “receiving sensor
data, comparing said sensor data, and calculating using said sensor data.”
Final Act. 6; see Ans. 4–5 (explaining that “as a whole, the claims are
directed towards a system for collecting data and performing a calculation
for display” and the “focus or character of the claims is not directed to ‘the
simplicity and adaptability to existing boiler systems”). The Examiner
determines the claimed concept is “an idea of itself” similar to concepts the
Federal Circuit previously identified as abstract. Final Act. 6 (citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
In general, we agree with the Examiner that the claims as a whole are
directed to an abstract idea. See Guidance, 84 Fed. Reg. at 52. More
specifically, we determine the claims are directed to calculating a usage
value derived from the amount of hot water remaining in a water tank, which
is calculated based on received measurements from sensors in a retrofit
water boiler system (hereinafter, “calculating a water usage value”).3 We

3 Some claims calculate the amount of available hot water but do not
calculate a value based on that amount of available hot water.
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discuss our reasoning with respect to the Guidance’s two prongs of the
“directed to” inquiry in the following subsections.
The Examiner’s characterization of the claims as being directed to “an
idea of itself” is consistent with the Federal Circuit’s determination that
claims focusing on mental processes are abstract. Although we describe the
abstract idea slightly differently than the Examiner, the Examiner’s
characterization of the idea is not erroneous. “An abstract idea can generally
be described at different levels of abstraction.” Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The level of abstraction an
examiner uses to describe an abstract idea need not “impact the patentability
analysis.” Apple, 842 F.3d at 1241. That is true here. Regardless of the
level of generality used to describe the abstract idea recited, the claims are
directed to an abstract idea. Cf. Accenture Glob. Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1344–45 (Fed. Cir. 2013) (“Although not as
broad as the district court’s abstract idea of organizing data, it is nonetheless
an abstract concept.”).
This characterization is consistent with how Appellant describes the
claimed embodiments of the invention. At a high level, the claims
themselves recite that they are methods and systems “for providing a real-
time estimate of available hot water in a water boiler tank.” Supp. Br. 8
(claim 23); see also Supp. Br. 4 (claim 1 reciting a “retrofit water boiler
monitoring and forecast system,” emphasis added), 9 (claim 26 reciting
“method for calculating an estimated amount of hot water in a water boiler
tank”). Moreover, Appellant explicitly states that “[t]he claimed invention
relates to retrofit system and corresponding method for monitoring,
forecasting and providing a real-time estimate of the amount of available hot
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water in a water boiler tank.” Appeal Br. 8; see also Appeal Br. 15 (“The
instant solution resolves a specifically identified problem of providing real-
time information when the system is in use.”). The Specification also
supports this characterization. See, e.g., Spec. 1:9–11 (“The present
invention relates . . . to a system for monitoring heated water in a boiler and
forecasting usage needs.”), 7:17–20 (“it is to be understood that the
invention is not limited in its application to the details of design and the
arrangement of the components set forth in the following description or
illustrated in the drawings,” emphases added), 9:19–22 (“The processing
unit uses flow rate algorithms, and in some embodiments, additional
temperature and usage information ( e.g. the volume of the boiler tank,
thermostat activity, historical usage and the like), to deduce the approximate
amount of hot water remaining in the boiler.”) Figs. 6–7, Title (“REAL-
TIME BOILER FORECAST SYSTEM AND METHOD”).
Consistent with our Guidance and case law, and as explained further
below, we conclude that calculating a water usage value is directed to an
abstract idea because, similar to the claims held ineligible in Electric Power,
it is a process that could be performed mentally. See Guidance, 84 Fed. Reg.
at 52 (explaining that claims that recited concepts performed in the human
mind recite abstract ideas); Elec. Power, 830 F.3d 1350.
Appellant argues the “claims are directed to a retrofit system, unique
in its simplicity and adaptability to existing boiler systems” and the claimed
“uniqueness over the cited prior art is based on the placement of the sensors
(outside the water tank) and the fact that there are so few sensors.” Appeal
Br. 11. Appellant argues the Examiner failed to consider the claims as a
whole because, although the calculations are important, the calculations
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“have not been argued as unique over the prior art, rather the structure of the
machinery has been shown to be unique and unexpected.” Appeal Br. 11–
12.
We disagree. Although the claims recite the particular placement of
the temperature sensors and flow rate meter, the particular placement is
necessary to collect the measurements used in the claimed calculation. In
other words, the claims are directed to calculating a water usage value and,
in order to perform the abstract idea (i.e., the calculation), the water boiler
system must be able to measure the values used in the calculation.
Guidance Step 2A, Prong 1 (Recite an Abstract Idea)
The Examiner determines the recited steps—i.e., receiving sensor data
(from two temperature sensors and a flow rate meter), calculating an amount
of available hot water based on the received sensor data, and displaying a
real-time usage value calculated based on the amount of available hot water,
and displaying the calculated value—merely describe the concept of
collecting sensor data, calculating a value using the collected data, and
displaying the result. Ans. 4; see also Final Act. 6 (citing Elec. Power, 830
F.3d 1350). As such, and consistent with the Guidance, the Examiner
concludes the claims recite an abstract idea. We agree that the concept
recited in the claims is an abstract idea and, more specifically, falls within
the Guidance category of mental processes (alternatively, the focus of the
claim—calculating a water usage value based—falls within the category of
mathematical concepts). Ans. 4–5; Final Act. 6; see 84 Fed. Reg. at 52.
More specifically, claim 1 is reproduced below and includes the claim
limitations that recite aspects of the abstract idea emphasized in italics:
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1. A retrofit water boiler monitoring and forecast system, for
a water boiler system which includes a water boiler tank, a cold-
water intake pipe, a hot-water outlet pipe, the retrofit system
comprising:
(a) an intake temperature sensor, configured to measure a
water temperature in the cold-water intake pipe;
(b) a flow meter, configured to measure a flow rate of
water running through the water boiler system;
(c) an outlet temperature sensor, configured to measure a
water temperature in the hot-water outlet pipe;
(d) a processing unit, adapted to receive sensor data from
said intake temperature sensor, said flow meter, and said outlet
temperature sensor even when said water is running through the
boiler system, and configured to calculate an amount of
available hot water in the water boiler, said amount of available
hot water indicative of a delta value between a current time when
said water temperature of said water flowing through in said
outlet pipe is above a predetermined temperature and a future
time when said water flowing through said outlet pipe will drop
below said predetermined temperature, said amount of available
hot water being calculated according to said water temperature
in the intake pipe, a present said flow rate and said water
temperature in the outlet pipe and a heating duration of a heating
element of the water boiler; and
(e) a display panel operationally coupled to said
processing unit, said display panel configured to display at least
one estimated Real-Time Usage Value (RTUV), calculated by
said processing unit based on said amount of available hot water;
wherein all components of the retrofit system are added to
the water boiler system outside of the water boiler tank.
In other words, the abstract mental process or mathematical concept
of calculating a water usage value includes the portion of claim 1 that uses
the various input values received at the processing unit from the various
sensors to calculate an amount of available hot water in the water boiler and
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calculating a “Real-Time Usage Value” based on the amount of available hot
water.
Appellant argues that, under Step 1 of Alice, the Examiner has not
considered the claims as a whole because the Examiner has ignored the
unique placement of the sensors. See Appeal Br. 11–12. Appellant does not
dispute that the above-identified steps constitute mental processes and
mathematical concepts and, therefore, under this prong of our analysis,
Appellant does not contest that the claims recite an abstract idea. For the
reasons discussed above, we determine claim 1 recites an abstract idea.
Guidance Step 2A, Prong 2 (Integrate Into a Practical Application)
Because the claims recite an abstract idea, we next determine whether
the claims integrate the abstract idea into a practical application. Guidance,
84 Fed. Reg. at 54. To determine whether the judicial exception is
integrated into a practical application, we identify whether there are “any
additional elements recited in the claim beyond the judicial exception(s)”
and evaluate those elements to determine whether they integrate the judicial
exception into a recognized practical application. Guidance, 84 Fed. Reg. at
54–55 (emphasis added); see also MPEP §§ 2106.04(d), 2106.05(a)–(c), (e)–
(h).
As noted above, the portions of claim 1 not italicized—i.e., the inlet
and outlet temperature sensors, the flow rate meter, the processing unit that
receives the sensor data and calculates the two values (an amount of
available hot water and an estimated RTUV), a display panel that displays
the RTUV, and the fact that all these components “are added to the water
boiler system outside of the water boiler tank”—are the additional
limitations beyond the abstract idea. Appellant also separately argues claim
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3 is directed to eligible subject matter. Claim 3, which depends directly
from claim 1, further recites that the “processing unit activates said heating
element when said amount of available hot water is below a predefined
threshold.” Supp. Br. 5. We also treat claim 3’s additional limitation of the
processing unit activating a heating element to be an additional limitation
beyond the abstract idea.
Here, we determine the additional limitations do not integrate the
judicial exception into a practical application. More particularly, the claims
do not recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) use a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state (see
MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
§ 2106.05(e)). See also Guidance, 84 Fed. Reg. at 55.
The Examiner determines the additional limitations do not add
significantly more to the abstract idea because they do not improve the
functioning of a computer or another technology. Final Act. 6. The
Examiner explains that the processing unit and display panel and their
claimed functions “are merely a recitation of generic computer structure that
serves to perform generic computer functions.” Ans. 5; see FairWarning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016). The
Examiner determines the recited sensors (the two temperature sensors and
the flow meter) are merely data gathering, and the fact that the system
components are retrofit to the outside of a water boiler tank simply links the
abstract idea to a particular field of use. Ans. 5; see Ans. 6 (“adding sensors
to the exterior of pipes for collecting data is extra-solution activity for
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performing the data gathering”). Therefore, the Examiner concludes the
claims are directed to an abstract idea.
Appellant argues the “uniqueness [of the claims] over the cited prior
art is based on the placement of the sensors (outside the water tank) and the
fact that there are so few sensors.” Appeal Br. 11–12 (italics added).
Appellant argues that, “even if . . . the calculation is regarded as an abstract
idea, such a calculation is significantly more than an abstract idea and can
only be accurately calculated based on real-time sensor data received from
the aforementioned temperature sensors and flow meter.” Appeal Br. 13.
Appellant repeatedly argues that the sensor placement and the resulting
capabilities were not present in the prior art, and asserts that the “placement
and manner of receiving sensor data is not merely ‘extrasolution activity’ but
rather goes to the heart of the invention.” Appeal Br. 13. Relatedly,
Appellant contends the claims recite significantly more because they recite a
“specific structure to the retrofit system.” Appeal Br. 15 (citing Trading
Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017)).
Finally, Appellant argues claim 3’s recited limitation that activates a heating
element is similar to a robotic arm assembly. Supp. Br. 2.
As an initial matter, we note that Appellant’s repeated assertion that
the placement of the sensors is unique over the prior art does not directly
address whether the sensor placement integrates the abstract idea into a
practical application. See Diamond v. Diehr, 450 U.S. 175, 188–89 (1981)
(emphasis added) (“‘The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”). Furthermore, to the extent Appellant argues the
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claims recite significantly more than an abstract idea because they include
physical structure, the fact that the claims include components that
“‘necessarily exist[s] in the physical, rather than purely conceptual, realm’ is
beside the point.” Alice, 573 U.S. at 224 (citation omitted).
As discussed above, the particular placement of sensors outside the
water boiler tank is necessary to collect the particular data (i.e., the water
temperature in the cold-water intake pipe, the water temperature in the hot-
water outlet pipe, and the flow rate of water running through the system)
used in the calculations. Accordingly, we agree with the Examiner that the
limitations reciting sensors configured to collect various data constitute data
gathering because the limitations simply describe generic sensors to
measure/gather the required data, which is insufficient to integrate the
abstract idea into a practical application. Guidance, 84 Fed. Reg. at 55; see
MPEP § 2106.05(g). We also agree with the Examiner, see Ans. 5, that the
limitation reciting that “all components of the retrofit system are added to
the water boiler system outside of the water boiler tank” merely generally
links the use of the abstract idea to a particular technological environment or
field of use because the limitation merely describes the locations of the
sensors necessary to gather the data used in the calculation(s). This, too, is
insufficient to integrate the abstract idea into a practical application.
Guidance, 84 Fed. Reg. at 55; see MPEP § 2106.05(h).
Appellant does not argue that any of the components themselves (i.e.,
the sensors, processing unit, or display panel) improve a computer or other
technology, instead asserting the particular arrangement of the sensors
improves on conventional water boilers. See Appeal Br. 14. We agree with
the Examiner that the processing unit and display panel are generic computer
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components performing generic computer functions—processing and
displaying data, respectively. See Ans. 5; Spec. 8:20–24 (“Processor 120 is
a general purpose microprocessor . . . Processing unit 120 may include a
plurality of microprocessors and/or additional components known in the
art.”), 10:18–20 (describing the display panel only by its function of
displaying data); Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(f).
Similarly, the sensors are also generic components that measure either a
temperature or flow rate. See Spec. 9:6–13 (describing the temperature
sensors and flow meter at a high level of generality); Guidance, 84 Fed. Reg.
at 55; see MPEP § 2106.05(f).
To the extent Appellant’s claimed retrofit system provides an
improvement, the improvement lies in identifying a calculation using
particular data to calculate an amount of available hot water remaining and,
optionally, an additional water-usage value based on that amount. As such,
Appellant’s claims, at most, improve the abstract idea itself. For at least the
foregoing reasons, the claims do not integrate the judicial exception into a
practical application. Accordingly, the claims are directed to an abstract
idea.
Finally, the additional limitation of activating a heating element
recited in dependent claim 3 also is merely extra-solution activity because
the additional limitation merely requires sending a signal to the heating
element. Furthermore, this additional step simply applies the abstract idea
when the amount of available hot water is below a threshold.
Guidance Step 2B (Inventive Concept/Significantly More)
Because we determine representative claim 1 is directed to an abstract
idea, we evaluate whether the claims include an inventive concept. See
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Guidance, 84 Fed. Reg. at 56. As stated in the Guidance, many of the
considerations to determine whether the claims amount to “significantly
more” under step two of the Alice framework already are considered as part
of determining whether the judicial exception has been integrated into a
practical application. Guidance, 84 Fed. Reg. at 56. Thus, at this point of
the analysis, we determine whether the claims (1) add a specific limitation,
or combination of limitations, that is not well-understood, routine,
conventional activity in the field, or (2) simply append well-understood,
routine, conventional activities at a high level of generality. Guidance, 84
Fed. Reg. at 56.
As explained above, the additional elements recited in the claims are
the generic sensors, the processing unit, the display panel, and the fact that
the components are retrofit outside the water boiler tank. Appellant argues
that the “specific placement of the sensors” was not well-understood,
routine, and conventional in the field. See Appeal Br. 14. However, the
evidence of record does not support Appellant’s assertion, nor does
Appellant point to anything in the Specification suggesting that the
particular arrangement of sensors was beyond what was well-understood,
routine, and conventional in the art.
The Specification explains that it would “be highly advantageous to
have a real-time indication of the amount of available hot water for use in a
household.” Spec. 1:25–26. The Specification explains that the temperature
sensors and flow meter are adapted to be attached to either the outlet pipe or
the inlet/intake pipe and convey their measurements to a processing unit.
Spec. 9:7–13; see also Spec. 11:5–17 (describing that the sensors measure
temperatures and a flow rate of the water in the inlet and outlet pipes then
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transmit the sensed data to the processing unit). That the sensors are retrofit
to outside an existing water boiler’s water tank necessarily follows from the
fact that the abstract idea requires collecting data from the particular
locations (inlet and outlet pipes) that are outside the water tank. The
Specification does not place any emphasis on the sensor placement or
describe the placement in a way to suggest that the placement or
arrangement was beyond what was well-understood, routine, and
conventional. See Berkheimer Memorandum 3; MPEP § 2106.05(d).4
Additionally, Harbin describes retrofitting existing water heaters and
adding temperature sensors and a flow meter to the inlet and outlet pipes
outside the water tank in a water boiler system. See Harbin ¶¶ 71
(describing adding “optional sensors including an inlet temperature sensor
610, an outlet temperature sensor 608, and a flow rate sensor 606” to
existing water heaters and that “the sensors may be used to determine
existing or remaining water heater available hot water capacity at a given
point in the use cycle”), 114 (describing that water “usage may be estimated
by monitoring the upper and lower temperature sensors 608, 610” and that a

4 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum titled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing the Berkheimer decision, Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018)) (available at https://www.uspto.gov/sites/default/files/
documents/memo-berkheimer-20180419.PDF). A specification that
describes additional elements “in a manner that indicates that the additional
elements are sufficiently well-known that the specification does not need to
describe the particulars of such additional elements to satisfy 35 U.S.C.
§ 112(a)” can show that the elements are well-understood, routine, and
conventional. Berkheimer Memorandum at 3.
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“temperature sensor 610 may be installed at the inlet pipe”), 140–145
(describing retrofitting temperature sensors to the outside of a water tank),
Fig. 6 (depicting temperature sensors 608, 610 and flow rate meter 606
installed on the inlet and outlet pipes outside a water tank). Wacknov also
teaches sensors on water pipes outside a water tank. See Wacknov ¶¶ 45
(describing sensors to measure properties such as temperature, pressure, and
flow, in a plumbing system), 48 (describing temperature sensors to sense the
temperature of the hot water in an outlet pipe and the cold water in an inlet
pipe), 65 (“This sensor measures the outside surface temperature of the pipe
and can be mounted without cutting or modifying hot water piping 203 in
any way.”), Fig. 2 (depicting temperature sensor 204 measuring the water
temperature in outlet pipe 203, which is outside water tank 202). Min
depicts a flow rate sensor attached to the inlet pipe outside the water tank.
See Min ¶ 4, Fig. 1.
“Whether a particular technology is well-understood, routine, and
conventional goes beyond what was simply known in the prior art.”
Berkheimer v. HP Inc., 881 F.3d at 1369. “The mere fact that something is
disclosed in a piece of prior art, for example, does not mean it was well-
understood, routine, and conventional.” Id. Nevertheless, Harbin, Wacknov,
and Min provide evidence that the particular claimed arrangement of sensors
outside the water tank was at least known and used in the art. In
combination with Appellant’s minimal description in the Specification, the
weight of the evidence supports a finding that the recited sensor placement
was well-understood, routine, and conventional. For the reasons discussed
supra, we sustain the Examiner’s rejection of claims 1–36 under 35 U.S.C.
§ 101.
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18
REJECTION UNDER 35 U.S.C. § 103
The Examiner rejects claims 23–26 as obvious in view of Harbin,
Wacknov, and Min, and the Examiner rejects claims 27–35 as obvious in
view of Harbin, Wacknov, Min, and Lahyani. Final Act. 7–12. The
Examiner finds Harbin teaches: (1) receiving flow rate data of water
running through an intake pipe from a flow meter coupled to the intake pipe;
(2) receiving a temperature measurement of water running through an outlet
pipe from a temperature sensor coupled to the outlet pipe; and (3) receiving
a temperature measurement of water running through an intake pipe from a
temperature sensor coupled to the intake pipe, but Harbin fails to teach or
suggest retrofitting the three recited sensors on the respective pipes. Final
Act. 7–8 (citing Harbin ¶ 71); Ans. 8 (explaining “that Harbin explicitly
teaches the use of an inlet sensor 610, an outlet temperature sensor 608 and
flow rate sensor 606 in paragraph [0071] and Figure 6.”). The Examiner
finds Wacknov teaches attaching temperature sensors to the outside of a
water pipe and Min teaches attaching a flow rate meter on the outside of a
water pipe. Final Act. 8 (citing Wacknov ¶ 65; Min ¶ 58).
Appellant argues Harbin’s temperature sensors are inside the water
tank and, therefore, fail to teach or suggest water temperature sensors
located outside the water tank. Appeal Br. 17. Appellant asserts Wacknov
fails to cure this deficiency because “Wacknov does not in fact teach
retrofitting temperature sensors outside the water boiler tank.” Appeal
Br. 18. Specifically, Appellant acknowledges that Wacknov teaches
monitoring temperature sensors outside a water pipe, but contends this
teaching “is of no moment whatsoever” because the claims recite
“retrofitting temperature sensors outside the boiler tank, not outside the
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19
pipe as taught by Wacknov.” Appeal Br. 18. Appellant argues modifying
Harbin with Wacknov’s teachings to remove the sensors from inside the tank
would render Harbin inoperable for its intended purpose that need to
measure the water temperatures inside the tank. Appeal Br. 18–21.
Appellant’s arguments are not persuasive because they do not address
the Examiner’s findings. Appellant’s arguments all are based on an
assertion that Harbin’s upper and lower temperature sensors are used to
measure the temperature of the upper and lower volumes of water in the
tank. Appellant is correct that Harbin’s temperature sensors 301 and 302
(and elements 307a and 307b) are used to measure temperatures in the upper
and lower portions of the tank, respectively. See Harbin ¶¶ 51 (explaining
that thermostats 301 and 302 “measure[] the temperature in the
[lower/upper] portion of the water heater’s tank”), 53 (identifying
“temperature sensors 307a and 307b” that sense the temperature of the upper
and lower volumes, respectively), Fig. 3.
However, the Examiner does not find these thermostats or temperature
sensors teach the recited temperatures sensors. Instead, the Examiner finds
“optional sensors including an inlet temperature sensor 610, and outlet
temperature sensor 608, and a flow rate sensor 606” teach or suggest the
three recited sensors. Harbin ¶ 71; see Final Act. 8 (citing Harbin ¶ 71).
Figure 6 at least suggests locating these sensors outside the water tank. See
Harbin, Fig. 6. Harbin teaches the inlet sensor’s “preferred location would
be a distance from the upper portion of the water heater to avoid conducted
heat from the water heater.” Harbin ¶ 71 (emphasis added). We agree with
the Examiner that Harbin’s disclosures at least suggest that the sensors are
outside the water tank.
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20
As Appellant notes, the Examiner merely relies on Wacknov and Min
to teach that the sensors can be mounted outside the pipes, not outside the
water tank. Because we disagree with Appellant’s assertion that Harbin fails
to teach placing the sensors outside the tank, Appellant’s arguments that one
would not modify Harbin to place the sensors outside the tank and that doing
so would render Harbin inoperable also are unpersuasive.
For these reasons, we agree with the Examiner that the combination of
Harbin, Wacknov, and Min teaches or suggests the subject matter recited in
representative claim 23. Accordingly, we sustain the Examiner’s rejection
of representative claim 23 and claims 24–35, which Appellant does not
argue separately with particularity.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. § References / Basis Affirmed Reversed
1–35 101 Eligibility 1–35
23–26 103 Harbin, Wacknov, Min 23–26
27–35 103 Harbin, Wacknov, Min, Lahyani 27–35
Overall
Outcome 1–35

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED