Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardMay 30, 201713629827 (P.T.A.B. May. 30, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/629,827 09/28/2012 Weiwei Chen 258339-1 8301 6147 7590 06/01/2017 GENERAL ELECTRIC COMPANY GPO/GLOBAL RESEARCH 901 Main Avenue 3rd Floor Norwalk, CT 06851 EXAMINER HARRINGTON, MICHAEL P ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 06/01/2017 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): haeckl@ge.com gpo.mail@ge.com Lori.e.rooney @ ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WEIWEI CHEN, JASON WAYNE BLACK, RAJESH TYAGI, and XING WANG Appeal 2016-001402 Application 13/629,8271 Technology Center 3600 Before CAROLYN D. THOMAS, HUNG H. BUI, and JON M. JURGOVAN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1—20, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 According to Appellants, the Real Party in Interest is General Electric Company. App. Br. 2. 2 Our Decision refers to Appellants’ Appeal Brief filed May 15, 2015 (“App. Br.”); Reply Brief filed November 18, 2015 (“Reply Br.”); Examiner’s Answer mailed October 7, 2015 (“Ans.”); Final Office Action mailed December 19, 2014 (“Final Act.”); and original Specification filed September 28, 2012 (“Spec.”). Appeal 2016-001402 Application 13/629,827 STATEMENT OF THE CASE Appellants’ invention relates to “an electric power system and more specifically to management of a power demand during peak load conditions.” Spec. 11. Claims 1,13, and 20 are independent. Claim 1 is illustrative of Appellants’ invention and is reproduced below: 1. A method for demand response management comprising: determining a number of available demand response events; determining a number of opportunities available to issue the available demand response events; providing a priority for each demand response event; determining a threshold value for each demand response event; selecting a highest priority demand response event among the available demand response events whose threshold value is lower than an observed value of a selected demand response trigger; transmitting control signals to customer sites over a communication network to utilize the selected demand response event for a current opportunity; and disconnecting customer loads from power grid based on the received control signals during the current opportunity. App. Br. 9 (Claims App’x). Examiner’s Rejections and References (1) Claims 1—20 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject. Final Act. 6—8. 2 Appeal 2016-001402 Application 13/629,827 (2) Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tyagi et al. (US 2011/0153102 Al; published June 23, 2011; “Tyagi”) and Lane (US 2009/0240381 Al; Sept. 24, 2009). Final Act. 8-24. ANALYSIS 35 U.S.C. § 101: Claims 1-20 With respect to independent method claim 1, and similarly, system claim 13 and “computer-readable medium” claim 20, the Examiner finds these claims are directed to an abstract idea of “determining demand response events available, selecting a demand response event and utilizing the demand response event.” Final Act. 6. The Examiner also finds Appellants’ claims 1—20: do not amount to significantly more than the abstract idea itself since they require no more than a generic computer to perform generic computer functions (e.g. determining demand response events available, selecting a demand response event and utilizing the demand response event) that are well-understood, routine and conventional activities previously known to the industry. See Alice Corporation Pty. Ltd. v. CLS Bank International. Id. (emphasis modified). Appellants present several arguments against the § 101 rejection. First, Appellants argue “the claims are not directed to an abstract idea” and include “‘significantly more’ step of disconnecting loads which together with other limitations introduce improvements to technical field of reducing peak load usage.” App. Br. 4—6. 3 Appeal 2016-001402 Application 13/629,827 Second, Appellants argue “claim 13 includes limitations] such as local controllers including relay circuits and remote controllers transmitting signals remotely” and “[t]hese limitations certainly cannot be interpreted as human actions as they are part of an overall system that remotely controls loads.” Id. at 5 (emphasis in original). According to Appellants, “local controller and remote controller cannot be equated with a single general purpose computer; rather they are two different processing units exchanging signals over a communication network. . . . On this basis at least claim 13 includes patent eligible matter.” Id. Third, Appellants argue the limitation “disconnecting customer loads from power grid” as recited in method claim 20 and “computer-readable medium” claim 20 is “not a post-solution activity because the whole purpose is to reduce the peak load in the power grid” and, as such, is sufficient to qualify as “‘significantly more’” “when recited with a judicial exception of effecting a transformation or reduction of a particular article to a different state or thing.” Id. at 5. Lastly, Appellants argue the claims “are not directed to performing mathematical operation on a computer alone [but] rather the claim limitations in combination provide an advancement to the load reduction technology by combining operations of various demand response program events.” Id. at 6. We do not find Appellants’ arguments persuasive. Instead, we find the Examiner has provided a comprehensive response to Appellants’ arguments supported by a preponderance of evidence. Ans. 2—\. As such, we adopt the Examiner’s findings and explanations provided therein. Id. At 4 Appeal 2016-001402 Application 13/629,827 the outset, we note the Supreme Court has long held that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc, for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The “abstract ideas” category embodies the longstanding rule that an idea, by itself, is not patentable. Alice, 134 S. Ct. at 2355 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). In Alice, the Supreme Court sets forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Id. If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “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.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or 5 Appeal 2016-001402 Application 13/629,827 adding ‘insignificant postsolution activity’.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010). Turning to the first step of the Alice inquiry, we agree with the Examiner that Appellants’ method claim 1 and “computer-readable medium” claim 20 are directed to an abstract idea of “comparing new and old information concerning available demand response events and the number of opportunities available, and using mles to select demand response events.” Ans. 3. All the steps recited in Appellants’ method claims 1 and 20 including, for example: (i) “determining a number of available demand response events”; (ii) “determining a number of opportunities available”; (iii) “priority for each demand response event”; (iv) “determining a threshold value for each demand response event”; (v) “selecting a highest priority demand response event. . .”; (vi) “transmitting control signals to customer sites” and (vii) “disconnecting customer loads from power grid” are considered abstract processes of storing, collecting, and analyzing information of a specific content prior to output. System claim 13 recites similar limitations of claims 1 and 20 in the context of (i) “local controllers” and (ii) “a remote location controller” to process the recited functions. Nevertheless, information as such is intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007). Information collection and analysis, including when limited to particular content, is within the realm of abstract ideas. See, e.g., Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and displaying certain results of the collection and analysis” are “a familiar class of claims ‘directed to’ a patent-ineligible concept”); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 6 Appeal 2016-001402 Application 13/629,827 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). Turning to the second step of the Alice inquiry, we find nothing in Appellants’ claims 1 and 20 and its corresponding system claim 13 that adds anything “significantly more” to transform the abstract concept of collecting and analyzing information into a patent-eligible application. Alice, 134 S. Ct. at 2357. Appellants do not argue each of the steps recited in method claims 1 and 20 or elements of corresponding system claim 13 is individually inventive. None of Appellants’ arguments show that some inventive concept arises from the ordered combination of these steps, which, even if true, would be unpersuasive given that they are ordinary steps in data analysis and are recited in an ordinary order. Instead, Appellants’ method claims 1 and 20 simply recite collecting “new and old information concerning available demand response events and the number of opportunities available, and using rules to select demand response events,” as recognized by the Examiner. Ans. 3. Likewise, system claim 13 simply incorporates generic components such as “a remote location controller” and “local controllers” provided with “relay circuits” to perform the abstract concept of collecting “new and old information concerning available demand response events and the number of opportunities available, and using rules to select demand response events” i.e., collecting and analyzing information. Id. As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s “machine-or- 7 Appeal 2016-001402 Application 13/629,827 transformation” (MoT) test can also provide a ‘“useful clue’” in the second step of the Alice framework. See In re Bilski,3 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc). Under Bilski’s MoT test, a claimed process can be considered patent-eligible under § 101 if: (1) “it is tied to a particular machine or apparatus”; or (2) “it transforms a particular article into a different state or thing.” Bilski, 545 F.3d at 954 (citing Gottschalk, 409 U.S. at 70, 93 S. Ct. 253). However, Appellants’ method claims 1 and 20 and its corresponding system claim 13 are neither sufficiently “tied to a particular machine or apparatus” nor involved in any type of transformation of any particular article.4 Limiting such an abstract concept of collecting “new and old information concerning available demand response events and the number of opportunities available, and using rules to select demand response events” to generic components such as “a remote location controller” and “local controllers” provided with “relay circuits” recited in Appellants’ system claim 13 does not make the abstract concept patent-eligible under 35 U.S.C. §101. Ans. 3. As recognized by the Supreme Court, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a 3 In In re Bilski, the Federal Circuit adopted a “machine-or-transformation” (MoT) test to determine whether a process claim is eligible under 35 U.S.C. §101. However, the Supreme Court held, in Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010), that the “MoT” test, while a “useful and important clue,” is no longer the sole test for determining the patent-eligibility of process claims under § 101. Since Bilski v. Kappos, the Supreme Court has created a two-step framework in Alice, 134 S. Ct. at 2354 to address whether a claim falls outside of § 101, which we discuss infra. 4 Alice also confirmed that if a patent’s systems claims are no different in substance from its method claims, they will rise and fall together. 134 S. Ct. at 2360. The same was true of the Alice patent’s media claims. Id. 8 Appeal 2016-001402 Application 13/629,827 patent-eligible invention.” See Alice, 134 S. Ct. at 2359 (concluding claims “simply instructing] the practitioner to implement the abstract idea of intermediated settlement on a generic computer” not patent eligible); see also Ultramercial, 772 F.3d at 715—16 (claims merely reciting abstract idea of using advertising as currency as applied to particular technological environment of the Internet not patent eligible); Accenture Global Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) (claims reciting “generalized software components arranged to implement an abstract concept [of generating insurance-policy-related tasks based on rules to be completed upon the occurrence of an event] on a computer” not patent eligible); and Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012) (“[s]imply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible” (internal citation omitted)). Lastly, we note Appellants’ claims 1—20 are neither rooted in computer technology as outlined in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), nor do they seek to improve any type of computer capabilities, such as a “self-referential table for a computer database” outlined in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336— 37 (Fed. Cir. 2016). Instead, Appellants’ claims 1—20 simply recite an abstract concept of collecting “new and old information concerning available demand response events and the number of opportunities available, and using rules to select demand response events,” i.e., collecting and analyzing information. As further recognized by the Examiner, 9 Appeal 2016-001402 Application 13/629,827 the determining a number of demand response events, determining a number of opportunities available, providing a priority for each demand response event, and selecting a highest priority demand response event can all be interpreted as mental processes by a user. Ans. 3 (emphasis added). Because Appellants’ claims 1,13, and 20 are directed to a patent- ineligible abstract concept and do not recite something “significantly more” under the second prong of the Alice analysis, we sustain the Examiner’s rejection of these claims as well as respective dependent claims 2—12 and 14—19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter in light of Alice and its progeny. 35 U.S.C. § 103(a): Claims 1-20 In support of the obviousness rejection of method claim 1, and similarly, system claim 13 and “computer-readable medium” claim 20, the Examiner finds Appellants’ earlier work product — Tyagi teaches most of the limitations, including: (1) “[determining a number of available demand response events” (Final Act. 8 (citing Tyagi ^fl[ 12, 17—19)); (2) “[determining a number of opportunities available to issue the available demand response events” {id. (citing Tyagi 12, 13, 17-19)); (3) “[determining a threshold value for each demand response event” {id. (citing Tyagi 4, 12, 13, 17—21, 30, 31)); (4) “[selecting a demand response event among the available demand response events whose threshold value is lower than 10 Appeal 2016-001402 Application 13/629,827 an observed value of a selected demand response trigger” (id. at 8—9 (citing Tyagi H 4, 12, 13, 17-21, 30-32)); (5) “[transmitting control signals to customer sites over a communication network to utilize the selected demand response event for a current opportunity” (id. at 9 (citing Tyagi H 14—17)); and (6) “[disconnecting customer loads from power grid based on the received control signals during the current opportunity” (id. at 9 (citing Tyagi H 14-19)). The Examiner relies on Lane for teaching the feature “[providing a priority for each demand response event” and “[selecting a highest priority demand response event” to support the conclusion of obviousness. Final Act. 9-10 (citing Lane H 62—65). Appellants do not dispute the Examiner’s factual findings regarding Tyagi. Instead, Appellants argue “the cited paragraphs of Lane do not disclose providing priority for each demand response event” and, likewise, “do not show selecting the highest priority demand response event.” App. Br. 7. Rather, Appellants argue Lane simply teaches “each I/O point is assigned a priority” and “I/O point is not the same as demand response event,” as recited in claims 1, 13, and 20. We are not persuaded. The term “[djemand response” refers to “mechanisms used to encourage consumers to reduce demand or curtail loads, thereby reducing the peak demand for electricity.” Spec. 116; see also Tyagi 1 1 and Lane H 1, 5, 16. Typically, these “demand response” events are invoked during a given time period when utility demand and cost are among the highest. Tyagi 1 1. Contrary to Appellants’ arguments, Lane also teaches determining those “demand response event[s]” in the context of 11 Appeal 2016-001402 Application 13/629,827 load shedding at a certain level based on a certain priority. Spec. 116; Lane 112,5,16, 65. Obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). Based on the combined teachings of Tyagi and Lane, we find a skilled artisan would recognize, when Lane’s disclosure of load shedding based on a certain priority is taken into account, that incorporating the priority including selection of a highest priority event of Lane into Tyagi’s method would arrive at the subject matter of Appellants’ claims 1,13, and 20. For the reasons set forth above, Appellants have not persuaded us of Examiner error. Accordingly, we sustain the Examiner’s obviousness rejection of independent claims 1,13, and 20, and dependent claims 2—12 and 14—19, which Appellants do not argue separately. App. Br. 8. CONCLUSION On the record before us, we conclude Appellants have not demonstrated the Examiner erred in rejecting claims 1—20 under 35 U.S.C. § 101 and § 103(a). 12 Appeal 2016-001402 Application 13/629,827 DECISION As such, we AFFIRM the Examiner’s final rejections of claims 1—20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation