Ex Parte Bedros et al

Patent Trial and Appeal Board

Dec 22, 2017

12269569 (P.T.A.B. Dec. 22, 2017)

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.
12/269,569 11/12/2008 Saad J. Bedros H0019992-0760 1560
92720 7590
HONEYWELL/MUNCK
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
PARK, HYUN D
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
12/27/2017 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):
patentservices-us @ honey well, com
patents @ munckwilson. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAAD J. BEDROS, KWONG WING AU, and
DARRYL BUSCH
Appeal 2017-002403
Application 12/269,569
Technology Center 2800
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
WESLEY B. DERRICK, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 seek our review under 35 U.S.C. § 134(a) from the non-
final rejection of claims 1—14, 17—20, and 23—25. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this Opinion, we refer to the Specification filed Nov. 12, 2008 (“Spec.”),
the Non-Final Office Action entered Aug. 28, 2015 (“Non-Final Act.”), the
Appeal Brief filed Feb. 29, 2016 (“App. Br.”), the Examiner’s Answer
entered Sept. 27, 2016, as corrected Oct. 25, 2016 (“Ans.”), and the Reply
Brief filed Nov. 25, 2016 (“Reply Br.”).
2 Honeywell International Inc. is identified in the Brief as the real party in
interest. App. Br. 3.
Appeal 2017-002403
Application 12/269,569
THE INVENTION
The invention relates to chemical detection. Spec. 12. According to
the Specification, the complexity in detecting a chemical is that its unique
infrared spectral characteristics change based on the characteristics of a
chemical cloud and its environment (e.g. a cloud at long distance). Id. 122.
Thus, a chemical can have multiple sets of spectral peaks (chemical
signatures) as well as feature signatures, which are salient features extracted
from a chemical signature. Id. Tflf 22, 23. The target chemical may also be
present with other interfering chemicals, therefore, the target chemical
features signature may be augmented with salient features of selected
interfering chemicals to create an augmented feature signature. Id. 124.
Claim 1 is illustrative, and is reproduced below from the Claims
Appendix to the Appeal Brief (bracketed matter added):
1. A method comprising:
[a] obtaining at least one measurement of a sample, wherein the
at least one measurement is within a spectral domain;
[b] computing at least one feature signature of the sample in the
spectral domain;
[c] classifying, using at least one processing device, the at least
one computed feature signature using multiple known chemical
feature signatures, wherein the multiple known chemical feature
signatures comprise at least one characteristic of a target
chemical in the spectral domain under different environmental
conditions; and
[d] determining if the target chemical is present in the sample
based on the classification;
[e] wherein classifying the at least one computed feature
signature comprises:
[el] using a first match filter template to detect a
primary peak associated with the target chemical and to
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detect a modest-amplitude positive peak present with a
modest slope that is a good fit with the primary peak
associated with one of the known chemical feature
signatures;
and [e2] using second and third match filter templates to
detect that the primary peak returns to a baseline on
different sides of the primary peak and to detect that the
modest-amplitude positive peak has appropriate
negative amplitudes relative to the detected modest-
amplitude positive peak, and
[f] wherein at least two chemical feature signatures used to
detect the target chemical are augmented chemical feature
signatures of the target chemical created by augmenting a
chemical feature signature of the target chemical to include one
or more features of one or more interfering chemicals, different
ones of the augmented chemical feature signatures associated
with different interfering chemicals.
Claims 13 and 17 are also independent and similar to claim 1, but
recite “[a] system comprising: a memory configured to store at least one
measurement of a sample, wherein the at least one measurement is within a
spectral domain” and “[a] non-transitory computer readable medium having
instructions for causing a processor to perform a method that comprises the
steps of,” respectively.
THE REJECTION
The Examiner maintains and Appellants appeal the rejection of
claims 1—14, 17—20, and 23—25 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Ans. 2; App. Br. 9.
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ANALYSIS
Appellants argue independent claims 1, 13, 17 and their respective
dependent claims as a group.3 See App. Br. 23; cf. id. at 31. We select
claim 1 as the representative claim for this group, and the remaining claims
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that the claims are directed to
an abstract idea since they are directed to a mathematical concept or
algorithm. Non-Final Act. 6; see also Ans. 6. According to the Examiner,
the “match filter” recited in claim 1 “is a linear filter that is designed to
detect the presence of a waveform based on [a] mathematical concept, as
3 Appellants additionally assert (App. Br. 24—30) that dependent claims 2, 4,
6, 10-12, 19, 24, and 25 are “patent eligible based on [their] own
recitations” and that, taken in combination with the other elements recited in
claim 1, add to the ordered combination of elements recited to further
demonstrate that the claim amounts to significantly more than the alleged
abstract idea. With respect to the alleged abstract idea, Appellants contend
that the recitations in claims 4, 6, and 25 are “significantly more than simply
a mathematical concept or an algorithm.” Id. at 25—26. These assertions do
not constitute separate arguments on the merits, because “[a] statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(l)(iv).
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evidenced by Ingram, Matched filter, (2006).” Ans. 6—7. The Examiner
further notes that the recitation of a “neural network” in dependent claim 7 is
also an algorithm. Id. at 7 (citing Basic Introduction to Neural Networks
(2007) (http://www.wisc.edu)).
Appellants contend that the Examiner erred in applying the first step
to conclude that claim 1 is directed to an abstract idea. App. Br. 14—19.
According to Appellants, the Examiner’s evidence that a match filter is a
linear filter based on a mathematical concept is insufficient because
the determination of what is an abstract idea is based on factual
evidence using a standard that is higher than even the standard
for prior art (i.e., not just “by others” and “before the invention”
as required by 35 U.S.C. § 102(a)—but known by so many
people so as to be “fundamental" and known for so long before
the invention so as to be a “longprevalent” practice).
Id. at 16.
There is no requirement that the Examiner must provide evidence in
support of a determination that the invention is directed to an abstract idea.
See Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 912
(Fed. Cir. 2017) (“this court has determined claims to be patent-ineligible at
the motion to dismiss stage based on intrinsic evidence from the
specification without need for ‘extraneous fact finding outside the record.’”);
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015)
(holding that a Section 101 inquiry is a question of law); see also para. IV
“July 2015 Update: Subject Matter Eligibility” to 2014 Interim Guidance on
Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014):
The courts consider the determination of whether a claim is
eligible (which involves identifying whether an exception such
as an abstract idea is being claimed) to be a question of law.
Accordingly, courts do not rely on evidence that a claimed
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concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any
factual findings.
Nevertheless, evidence may be helpful in certain situations where, for
instance, facts are in dispute. But it is not always necessary. It is not
necessary in this case. A factual dispute has not been raised. For instance,
Appellants have not submitted rebuttal evidence tending to show that the
claims are not directed to an abstract idea.
Appellants argue that the Examiner did not properly analyze the
claims (App. Br. 15—19). According to Appellants, the Examiner quotes the
elements of claim 1 “and declares those elements to be ‘mathematical
concepts’ and ‘algorithms’ in a conclusory manner.” Id. at 15. Appellants
contend that “[sjimply because a claim may involve, at some level, a
mathematical concept or algorithm does not mean that the claim is directed
to an abstract idea.” Id. at 18.
Appellants’ argument is unpersuasive because the Examiner did
address the claim elements, identify the judicial exception, and articulate the
abstract idea found in the claims. See pages 5—6 of the Non-Final Office
Action where the Examiner stated that the claimed steps of computing,
classifying, and determining are “an abstract idea, since they are directed to
[a] mathematical concept (algorithm, MPEP 2106).” We are satisfied that
the Examiner’s reasoning was sufficiently clear and specific to provide
applicant sufficient notice of the reasons for ineligibility. See May 2016
USPTO Memorandum (“Formulating a Subject Matter Eligibility Rejection
and Evaluating the Applicant's Response to a Subject Matter Eligibility
Rejection”), page 2 (“the rejection . . . must provide an explanation . . .
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which [is] sufficiently clear and specific to provide applicant sufficient
notice of the reasons for ineligibility.”).
The “directed to” inquiry applies a stage-one filter to the claims
which, when considered in light of the Specification, is based on whether
“their character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015);
see also Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1376 (Fed. Cir.
2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(“inquiring into ‘the focus of the claimed advance over the prior art.’”
(Citation omitted)).
“In determining the eligibility of respondents’ claimed process for
patent protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole “focus on a specific means or method that improves the
relevant technology” or are “directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.” McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
According to Enfish, the question is “whether the focus of the claims
is on [a] specific asserted improvement in computer capabilities ... or,
instead, on a process that qualifies as an ‘abstract idea’ for which computers
are invoked merely as a tool.” Enfish, 822 F.3d at 1335—36. The court
found in that case that the “plain focus of the claims” was on “an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity.” Id. at 1336.
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Here claim 1 sets forth
[a] obtaining at least one measurement of a sample . . . within a
spectral domain, [b] computing at least one feature signature of
the sample in the spectral domain, [c] classifying, using at least
one processing device, the at least one computed feature
signature using multiple known chemical feature signatures,
and [d] determining if the target chemical is present in the
sample based on the classification, [e] wherein classifying the at
least one computed feature signature comprises [el] using a
first match filter template to detect a primary peak associated
with the target chemical and to detect a modest-amplitude
positive peak present with a modest slope that is a good fit with
the primary peak associated with one of the known chemical
feature signatures, and [e2] using second and third match filter
templates to detect that the primary peak returns to a baseline
on different sides of the primary peak and to detect that the
modest-amplitude positive peak has appropriate negative
amplitudes relative to the detected modest-amplitude positive
peak, and [f] wherein at least two chemical feature signatures
used to detect the target chemical are augmented chemical
feature signatures of the target chemical created by augmenting
a chemical feature signature of the target chemical to include
one or more features of an one or more interfering chemicals.
Claim 1, as a whole, is plainly focused on an algorithm for matching a
characteristic property of a chemical in order to detect a target chemical.
Claim 1 is not focused on an improvement to the recited “processing device”
or other tools used to perform the claimed obtaining, computing, classifying,
and determining operations. Cf. In re TLI Communications LLC Patent
Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016) (The claims’ focus “was not
on an improved telephone unit or an improved server.”).
In addition, “[t]he ‘abstract idea’ step of the inquiry calls upon us to
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.”
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Affinity Labs of Texas, LLC v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016)); see also Enfish, 822 F.3d at 1335, quoted in Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
In that regard, the Specification discusses the problem as being that
“[t]he detection of nitric acid is difficult because of the reactivity of nitric
acid, the false positives created by the presence of other compounds in a
sample, and the interference caused by other compounds in a sample.” Spec.
120. According to the Specification, the inventors solved the problem by
“using feature signatures of nitric acid that has been obtained through
measurements in the infrared (IR) spectral domain.” Id. According to the
Specification, “[tjhese feature signatures are created from the extracted
features of the nitric acid as match to other near extracted features of typical
interferences.” Id. In light of the Specification’s description of the problem
and solution, we find that the invention’s advance over the prior art is in
improving the collection and evaluation of data for detecting the presence of
a chemical.
Given that the plain focus of claim 1, as a whole, is on data gathering
activities4 in support of detecting characteristic properties of a chemical and
the Specification’s description of the problem and that the solution is
improving the collection and evaluation of data measuring the characteristic
properties of a target chemical, claim 1 is properly characterized as being
4 Cf. Elec. Power Grp., LLC, 830 F.3d at 1353 (When “the focus of the
asserted claims” is “on collecting information, analyzing it, and displaying
certain results of the collection and analysis,” the claims are directed to an
abstract idea.)
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“directed to” a mathematical concept or algorithm for evaluating data to
detect or identify a target chemical. Algorithms or mathematical formulas
are, like a law of nature, abstract ideas. Diamond v. Diehr, 450 U.S. at 191;
Parker v. Flook, 437 U.S. 584, 589 (1978); Gottschalk v. Benson, 409 U.S.
63, 71—72 (1972). As such, the method of claim 1 is directed to an abstract
idea. Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea. Cf. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d at 1354
(claims directed to a “process of gathering and analyzing information of a
specified content,” i.e., data describing operations in a power grid, and then
displaying the results were directed to an abstract idea).
Step two of the Alice framework is “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 (alteration in
original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 73 (2012)).
In that regard, the Examiner found that:
In Claim 1, the limitations “obtaining at least one feature
signature of the sample in the spectral domain” are recited, but
said limitations are merely directed to data collection activity
that is previously known and conventional (similar to other
data collection activity held as insignificant by the Courts such
as in Electric Power Group vs Alstrom).
Ans. 7. The Examiner further found that:
In Claim 13, the limitations involving “a memory configured to
store at least one measurement of the sample, wherein the at
least one measurements is within a spectral domain,” are cited,
but said limitations would not be considered significantly more
and something that the industry had not been able to obtain,
since such step is a mere recitation of generic computer
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structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities
previously known to the pertinent industry. As such, the claims
are directed to data collection and abstract ideas, and taken as a
whole, are not eligible under the 35 USC 101.
Ans. 7 (emphasis omitted).
The Appellants contend that the Examiner “commits clear legal error
by failing to consider all the elements recited in Claim 1 both individually
and in an ordered combination as required under the second step of the Mayo
test.” Reply Br. 8. Appellants assert that the Examiner’s analysis is flawed
because it “only addresses the one claim feature not overgeneralized in the
directed to inquiry.” Id.
According to the Appellants, the Examiner fails to consider the recited
steps labeled [c], [d], and [f] in claim 1 above. Id. Appellants contend that
these steps “are specific features other than what is well-understood, routine
and conventional in the field, at least because no combination of prior art
discloses these elements as recited in Claim 1.” Id. at 9. Appellants argue
that “[t]he claim also provides improvement to another technical field of
target chemical detection by improving detection in the presence of
interfering chemicals through the augmented chemical feature signatures”
qualifying as “significantly more” than an algorithm or mathematical
concept. Id. But claim 1, as currently drafted, is not directed to a
technological process for sensing, measuring, or obtaining augmented
chemical feature signatures. See our analysis under Alice step 1. Rather, the
target chemical detection as claimed gives the claimed evaluation of data
scheme a particular context for its application. Cf. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011). “The Court
[Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation
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of a practical application for the calculation could alone make the invention
patentable.”
Also, claim 1 is not limited to any particular type or manner of
creating augmented chemical feature signatures. According to Appellants’
Specification, an augmented feature signature of the target chemical is the
target chemical feature signature or properties along with “salient features of
selected interfering chemicals” (Spec. 124). As such, the use of the recited
“augmented chemical feature signatures associated with different interfering
chemicals” for the recited “chemical feature signatures” in claim 1 is also
“merely directed to data collection activity” as determined by the Examiner
(Ans. 7). Therefore, considering all the elements recited in claim 1 both
individually and in an ordered combination, we agree with the Examiner that
the claim is patent ineligible subject matter because the claimed method uses
a computer to perform a series of mental steps comparing new and stored
information using rules to identify or match a target chemical. See
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx. 950, 955
(Fed. Cir. 2014) (finding patent-ineligible claims to a method performed by
or with a computer using expert rules for evaluating and selecting from a
stored plurality of different therapeutic treatment regimens).
In addition, we are not persuaded by Appellants’ argument that known
chemical features being augmented to include one or more features of one or
more interfering chemicals “is something that the industry had not been able
to obtain as evidenced by the fact that these elements of Claim 1 are not
disclosed by and patentable over the cited references of record.” App. Br.
21; Reply Br. 9. An abstract idea does not transform into an inventive
concept just because various features are not disclosed in or suggested by the
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prior art. See, e.g., Genetic Techs., 818 F.3d at 1376 (“[A] claim directed to
a newly discovered law of natural (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility.”).
Finally, we are not persuaded of error by the Appellants’ arguments
regarding pre-emption. See App. Br. 12—14; Reply Br. 2—3.
It is true that the Supreme Court has characterized pre-emption as a
driving concern for patent eligibility. See Alice, 134 S. Ct. at 2354. But
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the determinative test for patent
eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). However,
“[wjhile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Id. at
1379. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir.) (“[Tjhat the claims do not preempt all price optimization or may
be limited to price optimization in the e-commerce setting do not make them
any less abstract.”), cert, denied, 136 S. Ct. 701 (2015). “What matters is
whether a claim threatens to subsume the full scope of a fundamental
concept, and when those concerns arise, we must look for meaningful
limitations that prevent the claim as a whole from covering the concept’s
every practical application.” CLS Bank Intern, v. Alice Corp. Pty. Ltd.,
Ill F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here, we find
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the claimed subject matter covers patent-ineligible subject matter.
Accordingly, the pre-emption concern is necessarily addressed. “Where a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, . . . preemption concerns are fully addressed and
made moot.” Ariosa Diagnostics, 788 F.3d at 1379.
Appellants’ assertion that our reviewing court found claims patent-
eligible because the claim “does not preempt approaches that use rules of a
different structure or different techniques” is inaccurate. Reply Br. 2 n.2
(quoting McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d. 1299
(Fed. Cir. 2016)). The court determined that McRO’s claim was not directed
to an abstract idea because it “uses the limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice.” McRO, 837 F.3d at 1316. The court also explicitly
“recognized that ‘the absence of complete preemption does not demonstrate
patent eligibility.’” McRO, at 1315 (quoting Ariosa Diagnostics, 788 F.3d at
1379).
We have fully considered Appellants’ arguments. For the foregoing
reasons, they are unpersuasive as to error in the rejection of claim 1, and
claims which stand or fall with it.
The rejection is sustained.
CONCLUSION
Appellants have not shown that the Examiner erred in rejecting
claims 1—14, 17—20, and 23—25 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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DECISION
The decision of the Examiner to reject claims 1—14, 17—20, and 23—25
is affirmed.
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
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