Ex Parte Chen et al

Patent Trial and Appeal Board

May 30, 2017

13629827 (P.T.A.B. May. 30, 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.
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.
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(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.
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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
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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
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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.
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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-
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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.
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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,
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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
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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
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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).
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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
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