Ex Parte Chouinard et al

Patent Trial and Appeal BoardAug 30, 2018

12242330 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/242,330 09/30/2008 42981 7590 09/04/2018 ROCKWELL AUTOMATION/ AT&W ATTENTION: Linda H. Kasulke, E-7F19 1201 SOUTH SECOND STREET MILWAUKEE, WI 53204 FIRST NAMED INVENTOR Julien Chouinard 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2008P-279-US/ALBRP663US 8519 EXAMINER QAYYUM, ZESHAN ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 09/04/2018 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): hmckee@thepatentattomeys.com raintellectualproperty@ra.rockwell.com docket@thepatentattomeys.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JULIEN CHOUINARD, GILLES BRUNET, DENIS LAV ALLEE, CHAN-DARA TRANG, JEAN-FRANCOIS LALIBERTE, FREDERIC DARVEAU, and OLIVIER LAROUCHE Appeal2017-001901 Application 12/242,330 Technology Center 3600 Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL 1 The Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1, 3-10, 12-16, and 18-21, which are all of the pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Throughout this opinion, we refer to the Appellants' Appeal Brief ("Appeal Br.," filed Mar. 10, 2016), Reply Brief ("Reply Br.," filed Nov. 18, 2016), and Specification ("Spec.," filed Sept. 30, 2008), and to the Examiner's Answer ("Ans.," mailed Sept. 22, 2016) and Final Action ("Final Act.," mailed Dec. 1, 2015). 2 According to the Appellants, the real party in interest is "ICS TRIPLEX ISAGRAF INC." Appeal Br. 2. Appeal2017-001901 Application 12/242,330 STATEMENT OF THE CASE The Appellants' invention "relates generally to industrial control systems and more particularly to a development tool that employs language independent models to facilitate automation software design." Spec. ,r 1. Claims 1, 16, and 20 are the independent claims on appeal. Claim 16 is illustrative of the subject matter on appeal and is reproduced below (with added bracketing for reference): 16. A method, comprising: [(a)] determining, by a system including a processor, a first industrial automation programming language being associated with a first industrial controller associated with an industrial automation process, wherein the first industrial automation programming language facilitating operation of the first industrial controller in controlling at least one device being associated with the industrial automation process; [ (b)] determining, by the system, a second industrial automation programming language being associated with a second industrial controller associated with the industrial automation process, wherein the second industrial automation programming language facilitating operation of the second industrial controller in controlling a second device being associated with the industrial automation process, the first industrial automation programming language and the second industrial automation programming language are disparate; [ ( c)] abstracting, by the system, the first industrial automation programming language and the second industrial automation programming language to a common representation, wherein the common representation facilitating interaction with the first industrial automation programming language and the second industrial automation programming language; and [(d)] controlling, by the system, operation of the common representation based at least in part on an access right associated with an entity attempting to access the common representation, a security mechanism associated with the 2 Appeal2017-001901 Application 12/242,330 common representation, or at least one event associated with the common representation. Appeal Br. 41--42 (Claims App.) REJECTIONS I. Claims 1, 3-10, 12-16, and 18-21 stand rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. II. Claims 16, 18, 19, and 21 stand rejected under pre-AIA 35 U.S.C. Â§ 112, second paragraph, as being indefinite. III. Claims 1, 3-6, 8, 9, 12-16, and 19-21 stand rejected under pre- AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Clinton (US 2003/0236577 Al, pub. Dec. 25, 2003) and Lim (US 2008/0294586 Al, pub. Nov. 27, 2008). IV. Claims 7 and 18 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Clinton, Lim, and de Bonet (US 2003/0167326 Al, pub. Sept. 4, 2003). V. Claim 10 stands rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Clinton, Lim, and Pulsipher et al. (US 2003/0120701 Al, pub. June 26, 2003) (hereafter "Pulsipher"). ANALYSIS Re;ection I - 35 U.S. C. Â§ 1 OJ The Appellants argue the claims as a group. See Appeal Br. 11, 19. We select claim 16 as representative of the group; claims 1, 3-10, 12-15, and 18-21 stand or fall therewith. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Under 35 U.S.C. Â§ 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new 3 Appeal2017-001901 Application 12/242,330 and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 588-89 (2013)). The Supreme Court in Alice reiterated the two-step framework, set forth previously in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78-79 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. (emphasis added) ( citing Mayo, 566 U.S. at 79). If so, the second step is to consider the elements of the claims "individually and 'as an ordered combination'" to determine whether the additional elements "'transform the nature of the claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S. at 78-79). The First Step Turning to the first step of the Mayo/Alice framework, we consider the claims "in their entirety to ascertain 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). 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 4 Appeal2017-001901 Application 12/242,330 machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In other words, the claims are assessed as to whether they "do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem." Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) cert. denied, 137 S. Ct. 1596 (2017). Under the first step of the Alice/Mayo framework, the Examiner determines that claim 16 is "directed to standardizing different industrial automation programming language[ s] into to [sic] a common language which is considered to be an abstract idea inasmuch as such activity is considered both a fundamental economic practice and a method of organizing human activity by determining, abstracting and controlling operations." Final Act. 5; see also Ans. 16. The Examiner cites to and compares the claim with those of prior judicial decisions with "claims that has [sic] been held by the court to be directed toward abstract idea[s]." Ans. 17. The Appellants do not state precisely to what they consider the claim to be directed, but argue that the claim "is clearly distinguishable from the novel and non-obvious improvements over existing technological systems ( e.g., existing automated Manufacturing Execution systems, existing industrial automation control systems, existing industrial control programming systems, etc.) disclosed by the present application, and thus the present application is a clear improvement over existing computerized technologies." Appeal Br. 11; Reply Br. 11. We agree with and adopt the Examiner's determination that the claim is directed to "standardizing different industrial automation programming 5 Appeal2017-001901 Application 12/242,330 language[s] into to [sic] a common language." Here, according to the Specification, the invention relates "particularly to a development tool that employs language independent models to facilitate automation software design." Spec. ,r 1. The Background section of the Specification discusses that the available software platforms "are often designed in an inflexible manner where newer versions of software paradigms and models are unsupported unless a new platform is designed to support such versions." Id. ,r 4. The claimed invention thus provides a "development platform [that] employs abstract programming models that enable developers to design control solutions in an abstract setting while facilitating code deployment and execution on substantially any type of end hardware platform." Id. ,r 7. Independent claim 16 provides for a method comprising the steps of (a) determining a first programming language, (b) determining a second programming language, ( c) abstracting the two languages to a common representation, and ( d) controlling operation of the representation. See Appeal Br. 41--42. (Claims App.). The apparatus for performing these steps comprises a system including a processor. See id. It is not clear whether the system is shell interface 100 (see Spec. ,r 25, Fig, 1 ), or development platform 200 (see id. ,r 30, Fig. 2). Regardless, the Specification provides that the "terms such as 'component,' 'module,' 'shell,' 'model,' and the like are intended to refer to a computer-related entity, either hardware, a combination of hardware and software, software, or software in execution as applied to an automation system for industrial control." Spec. ,r 24. "[A] component may be, but is not limited to being, a process running on a processor, a processor, an object, an executable, a thread of execution, a program and a computer." Id. 6 Appeal2017-001901 Application 12/242,330 For the steps of determining a first and second language, steps (a) and (b ), and abstracting the languages, step ( c ), the Appellants direct attention to paragraphs 6, 7, 23, 25-30, 49, 53-56, 58---67, 69-72, and 84--86 of the Specification as support. Appeal Br. 8. The cited portions provide for deriving an Abstract Automation Model (AAM) from common base model solutions or standards, and that the AAM defines "control structures that represent abstract data objects having properties of a configuration, resource, program, and so forth." Spec. ,r,r 7, 27, 85. They also discuss the components of the platform and shell interface. Id. ,r,r 23, 25-30, 49, 84--86. Paragraphs 53 through 56 discuss considering project types whereby "[p]ackages a [sic] provide deep integration directly in the IDE [integrated development framework] 510 by enabling access to the same tools and components used by the IDE frameworks" (id. ,r 53), "[i]mplementing a project type implies to manage the project file system hierarchy tree according to desired behavior" (id. ,r 54), "[a] distinct project type represents each supported programming language" (id.), and that the IDE is usable in an integrated or isolated mode (id. i-fi-f54-57). Paragraphs 58 through 67 provide for "a common API to manage dialog, download, upload and on-line change with targets" (id. ,r 58), and an abstract structure that provides methods to "subscribe on [sic] a group of variables and to set or lock/unlock variable values," to "perform step-by-step debugging, to manage break-point notifications and stack frames," and to "support downloading, uploading and on-line change" (id. ,r 59). They also provide for an Application Builder that "provides a common data model, UI components, and collection of processing services to manage automation projects" (id. ,r,r 60, 61) with an abstract model that "captures an automation domain's commonly used data 7 Appeal2017-001901 Application 12/242,330 structures [and] groups programming interfaces, where each one reflects a possible aspect that could be exposed in data of an automation project" (id. ,r 63) and "is a set of abstract interfaces" that each "defines an aspect of project element with the related basic edition method (id. ,r 66), and for data processing units/components that use or change data exposed by the abstract model (id. ,r,r 64, 67), and "user interface controls for presenting data to a user" (id. ,r 65). Paragraphs 69 through 72 provide an Import/Export component that "standardizes calls" (id. ,r 69) with importing including parsing archive files and performing an analysis (id. ,r,r 69, 70) and exporting including generating archive files and writing formatted files according to a project format (id. ,r,r 69, 71 ), and a Global Find/Replace controller that defines an abstract fa9ade interface and "performs a tree traversal in the Abstract Model" (id. ,r 72). There is no particular discussion as to how the languages are determined, i.e., by what algorithm or technical process. As such, to the extent understood, the determining steps can comprise any receiving, parsing, and/or analyzing of data. It is also not clear how the languages are abstracted to a common representation, i.e., what algorithm or process is used to perform the abstraction. Based on the Specification, the abstracting step, to the extent understood, can comprise processing data by such operations as setting, locking/unlocking, changing, debugging, capturing, parsing, and/or traversing. For step ( d) of controlling operation of the common representation, the Appellants cite to paragraphs 3 0 through 48 of the Specification as support. Appeal Br. 8-9. These paragraphs discuss the example platform architecture with a core and common namespaces (Spec. ,r,r 30, 36-48) that provides security mechanisms to "mitigate possibilities of project data 8 Appeal2017-001901 Application 12/242,330 hijacking and corruption" (Spec. ,r,r 30-31) that include protecting components with security roles (id. ,r,r 31, 32), role mapping with authentication (id. ,r 33), secure auditing (id. ,r 34), and restricting deployment components (id. ,r 35). As such, the step of controlling operation comprises restricting or authorizing access to the use/ operation of the representation. In that context, we agree with the Examiner that independent claim 16 is directed to determining and processing data, and controlling access to the results of the processing to standardize different programming languages into a common representation. 3 The claim is directed to an idea similar to ideas deemed abstract by our reviewing court in Electric Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (collecting information and "analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category"), Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147 (Fed. Cir. 2016), cert. denied sub nom., 13 8 S. Ct. 71 (201 7) ("method of changing one description of a level sensitive latch (i.e., a functional description) into another description of the level sensitive latch (i.e., a hardware component description) by way of a third description of that very same level sensitive latch (i.e., assignment conditions)," and Novo Transforma Techs., LLC v. Sprint Spectrum L.P., 2015 WL 5156526, at *2-3 (D. Del. Sept. 2, 2015), aff'd, 669 Fed. 3 We note that "[a]n 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 Board's "slight revision of its abstract idea analysis does not impact the patentability analysis." Id. at 1241. 9 Appeal2017-001901 Application 12/242,330 App'x. 555 (Fed. Cir. 2016) (claim reciting generating a payload, defining parameters, converting the payload into a different form, and delivering the converted payload directed to the abstract idea of translation). Here, the claims involve nothing more than determining and processing data by receiving, parsing, setting, changing, debugging, capturing, and/or analyzing data and controlling access to and/or use of the resulting data without any particular inventive technology- an abstract idea. See Elec. Power, 830 F.3d at 1354. As such, we find unpersuasive the Appellants' argument that the Examiner "has clearly described the claims at a high level of abstraction that is untethered from the language of the claim when determining the focus of the claimed invention." Reply Br. 21. We also find unpersuasive the Appellants' argument that the claim is not directed to an abstract idea because "the various novel and non-obvious improvements over technological systems ( e.g., existing automated Manufacturing Execution systems, existing industrial automation control systems, existing industrial control programming systems, etc.) disclosed by and claimed in the present application are clearly not an abstract idea per Part 1 of the Preliminary Examination Instructions." Appeal Br. 11; see also id. at 12; Ans. 11-12. As discussed above, the Specification, including the claims, does not provide technological details on the manner in which the determining and abstracting steps of the method are performed nor any details on how the processor or system itself is improved. The claim does not recite a particular way of programming or designing the processor/ component to abstract the languages, but instead merely claims the functional results. Apple, 842 F.3d at 1241. Moreover, an abstract idea does not transform into an inventive concept just because the prior art does not 10 Appeal2017-001901 Application 12/242,330 disclose or suggest it. See Mayo, 132 S. Ct. at 1304. "Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the Â§ 101 inquiry." Ass 'nfor Molecular Pathology, 133 S. Ct. at 2117. Indeed, "[t]he '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 theÂ§ 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981); see also Mayo, 132 S. Ct. at 1304 (rejecting "the Government's invitation to substituteÂ§Â§ 102, 103, and 112 inquiries for the better established inquiry under Â§ 101 "). We further find unpersuasive the Appellants' argument that the claim is not directed to an abstract idea because the claim "inherently cannot be done by humans because humans cannot electronically communicate with an industrial controller in order to perform said functions, and furthermore, the claimed steps could not have existed before the recent development of computerized industrial automation systems." Appeal Br. 12; Reply Br. 12. "[M]erely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims less abstract." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016). The use of the claimed computer technology involved uses the components of the processor and system in conventional ways to determine, process, and control access to data. See id. at 1261. Thus, we are not persuaded of error in the Examiner's determination that claim 16 is directed to an abstract idea. The Second Step The second step of the Mayo/Alice framework is to "search for an 'inventive concept'-i.e., an element or combination of elements that is 11 Appeal2017-001901 Application 12/242,330 '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, 566 U.S. at 72-73). Under the second step of the Mayo/Alice framework, we agree with and find supported the Examiner's determination that the elements of claim 16, individually or as an ordered combination, do not amount to significantly more than the above-identified abstract idea. See Final Act. 5- 6; Ans. 9-16. We are not persuaded of Examiner error by the Appellants' arguments that assert the opposite. See Appeal Br. 13-17; Reply Br. 13-23. We find unpersuasive the Appellants' arguments that the claim is significantly more than that abstract idea because it "provide[ s] improvements to the functionality and use of a conventional computerized device ( e.g., a server, computer, controller device, a wireless device, etc.) with respect to programming a set of industrial control equipment using a plurality of industrial programming languages in an industrial automation environment." Appeal Br. 11-12; Reply Br. 11-12. As discussed above, the Specification, including the claims, does not provide technological details on the manner in which the steps of the method are performed nor any details on how the hardware itself is improved. Further, "merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims less abstract." DIRECTV, LLC, 838 F.3d at 1259. For the reasons discussed above with regard to step one, we find unpersuasive the Appellants' arguments that the claim is significantly more than an abstract idea because it "represents a variety of improvements over another technology system" (Appeal Br. 13; Reply Br. 13, 21-22) and "a 'meaningful limitation' exists in the present application beyond just linking 12 Appeal2017-001901 Application 12/242,330 the use of the 'abstract idea' to a particular technological environment" in determining, abstracting and controlling as claimed "in a complex, and innovative way" (Appeal Br. 14; Reply Br. 14). We further note that a complex abstract idea is still an abstract idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (claim with 11 limitations, some of which added "a degree of particularity," only further described the abstract idea). We also find unpersuasive the Appellants' arguments that the claims are significantly more than an abstract idea because they are analogous to those of DDR Holdings LLC v. Hotels.com, LP., 773 F.3d 1245 (Fed. Cir. 2014). Appeal Br. 14--1; Reply Br. 14--5. In DDR Holdings, the Federal Circuit determined that the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be transported instantly away from a host's website after clicking on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal Circuit, thus, held that the claims were directed to statutory subject matter because they claim a solution "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." Id. The court cautioned that "not all claims purporting to address Internet- centric challenges are eligible for patent." Id. at 1258. And the court contrasted the claims to those at issue in Ultramercial, in that, in DDR Holdings, the computer network was not operating in its "normal, expected manner" and the claims did not "recite an invention that is ... merely the routine or conventional use of the Internet." Id. at 1258-59. 13 Appeal2017-001901 Application 12/242,330 In contrast, here, the Appellants do not specify what problem the claim addresses. See Appeal Br. 15. As discussed above, the Specification indicates that the problem addressed by the invention is to allow more flexibility in the ability to design software platforms. See Spec. ,r 4. Although the item designed, i.e., the software platforms, is computer-centric, less flexibility in designing items is not a problem rooted in technology arising out of computer networks, but rather a problem that existed prior to the Internet and computers. See Novo Transforma, 2015 WL 5156526, at *3 ("Incompatible communication types have existed since before the emergence of computers and the Internet."). Also, unlike DDR Holdings, here, the purported solution requires a generic processor and computer system operating in their normal capacities to perform the functions of determining, processing, and controlling access to data. See Smartjlash LLC v. Apple Inc., 680 F. App'x 977, 984 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 687 (2018) ("Smartflash's asserted claims recite reading, receiving, and responding to payment validation data and, based upon the amount of payment, and access rules, allowing access to multimedia content. This is precisely the type of Internet activity that we found ineligible in Ultramercial."). The Appellants do not direct attention to, and we do not see, where the Specification provides that the processing device acts in an abnormal manner or outside of its ordinary capacity. Rather, the claim recites an invention that is merely the routine or conventional use of a generic computer. See Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1097 (Fed. Cir. 2016); DDR Holdings, 773 F.3d at 1258-59. 14 Appeal2017-001901 Application 12/242,330 The Appellants' reliance on the district court cases is misplaced. See Appeal Br. 15-17. In Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017), the Federal Circuit held that the claims "at their core, [were] directed to the abstract idea of collecting, displaying, and manipulating data." The application to XML documents at best limited the invention to a technological environment to apply the underlying abstract concept. Id. And, there was "no 'inventive concept' that transform[ ed] the abstract idea of collecting, displaying, and manipulating XML data into a patent-eligible application of that abstract idea." Id. at 1341. The claims' recitation of generic computer elements of a processor and components "that merely restate[d] their individual functions-i.e., organizing, mapping, identifying, defining, detecting, and modifying ... [and] merely describe[d] the functions of the abstract idea itself, without particularity" was not enough under this second step. Id. To the extent the Appellants argue that the claim here is similar (Appeal Br. 15), it likewise contains no inventive concept to transform the underlying abstract concept. Similarly, in Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1319-20 (Fed. Cir. 2016), the Federal Circuit held that the claim was "directed to the use of well-known virus screening software within the telephone network or the Internet." That the abstract activity was performed on the Internet did not save it from being a patent-ineligible abstract idea. Id. And, the claim's recitation of generic technology that used generic virus screening technology did not "improve or change the way the computer function[ed]." Id. at 1320. To the extent the Appellants argue that the claim here is similar (Appeal Br. 17), it likewise contains no inventive concept to transform the underlying abstract concept. 15 Appeal2017-001901 Application 12/242,330 Citing Messaging Gateway Solutions, LLC v. Amdocs, Inc., No. 14- 732-RGA, 2015 WL 1744343 (D. Del. Apr. 15, 2015), the Appellants contend that the claim is "tethered to the technology ( e.g. networks and industrial automation devices) that created issues with interacting with and programing industrial automation devices, and addresses issues related to the diversity of industrial automation hardware and programming languages used to configure said devices," and therefore is patent eligible under step two. Appeal Br. 17; Reply Br. 17. However, there, the district court determined that the asserted claims resembled the patent-eligible claims in DDR Holdings because they addressed a "problem specifically arising in the realm of computer networks," i.e., a "problem unique to text-message telecommunication between a mobile device and a computer." 2015 WL 1744343, at *5 (quoting DDR Holdings, 773 F.3d at 1257). As explained above, however, the claim here does not address a "problem specifically arising in the realm of computer networks" and does not contain a similar inventive concept as the patent-eligible claims in DDR Holdings. In response to the Appellants' argument that "the claims do not pre- empt the field of industrial automation programming" and are thus patent- eligible (Appeal Br. 18; Reply Br. 18), we note that although the Supreme Court has described "the concern that drives this exclusionary principle[, i.e., the exclusion of abstract ideas from patent eligible subject matter,] as one of pre-emption" (see Alice, 134 S. Ct. at 2354), characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole 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 16 Appeal2017-001901 Application 12/242,330 on preemption are inherent in and resolved by theÂ§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). Although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Thus, we are not persuaded of error in the Examiner's determination that the limitations of claim 16 do not transform the claim into significantly more than the abstract idea. The Appellants also contend the Examiner fails to establish a prima facie case that the claims are directed to an unpatentable abstract idea. See Appeal Br. 18-19; Reply Br. 18-19. We disagree. Contrary to the Appellants' assertion (Appeal Br. 18), this Board also did not hold in PNC Bank N.A. v. Secure Axcess, LLC, CBM2014-00100, 2014 WL 4537440 (PTAB Sept. 9, 2014) that there is a requirement that various references need to be cited. 4 Although evidence may be helpful, e.g., where facts are in dispute, this is not always the case. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325-26 (Fed. Cir. 2016) ("[I]t is also possible, as numerous cases have recognized, that a Â§ 101 analysis may sometimes be undertaken without resolving fact issues."). The Appellants' bare assertion that evidence is needed here, without any supporting reasoning as to why, is insufficient to require the Examiner to provide evidentiary support in the form of references. Moreover, the Federal Circuit has repeatedly observed that "the prima facie case is merely a procedural device that enables an appropriate shift of 4 We would not be bound, in any event, by a non-precedential decision of a different panel of the Board. 17 Appeal2017-001901 Application 12/242,330 the burden of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. Â§ 132 by notifying the applicant of the reasons for the rejection, "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original). Thus, all that is required of the Office is that it sets forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement ofÂ§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) ("Section 132 is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection."). In rejecting the pending claims underÂ§ 101, the Examiner analyzed the claims using the Mayo/Alice two-step framework, in accordance with the guidance set forth by the USPTO. See Final Act. 2-6. Specifically, the Examiner notified the Appellants that the claims are directed to "standardizing different industrial automation programming language into to [sic] a common language," which the Examiner determined is a fundamental economic practice and method of organizing human activity, and therefore, an abstract idea. Id. at 5. The Examiner further notified the Appellants that there are no meaningful limitations in the claims that transform the abstract idea into a patent-eligible application of the abstract idea. Id. at 5---6. The Examiner, thus, notified Appellants of the reasons for the rejection in a 18 Appeal2017-001901 Application 12/242,330 sufficiently articulate and informative manner as to meet the notice requirement ofÂ§ 132. The Appellants do not contend that theÂ§ 101 rejection was not understood or that the rejection otherwise fails to meet the notice requirements of 35 U.S.C. Â§ 132. Instead, the Appellants' understanding of the rejection is clearly manifested by Appellants' response as set forth in the briefs. Further, contrary to the Appellants' assertion (Appeal Br. 19; Reply Br. 23), there is no specific requirement that each claim be examined individually by the Examiner in determining that the claims are directed to an abstract idea. See Alice, 134 S. Ct. at 2355-57 (addressing the claims together). The Examiner includes the dependent claims in the heading of the rejection (Final Act. 4) and the analysis (id. at 6). There is no indication that the Appellants were not put on notice of the Examiner's rejection regarding the dependent claims, or that the rejection otherwise failed to satisfy the requirements of 35 U.S.C. Â§ 132. And, the Appellants do not provide separate arguments for the dependent claims. For these reasons, we are not persuaded the Examiner failed to make a prima facie case of patent ineligibility under Â§ 101. Based on the foregoing, we are not persuaded of Examiner error in the rejection under 35 U.S.C. Â§ 101 of claim 16, and of claims 1, 3-10, 12-15, and 18-21, which fall with claim 16, and we sustain the rejection. 19 Appeal2017-001901 Application 12/242,330 Reiection II- 35 U.S. C. Â§ 112. second paragraph The Examiner rejects claims 16, 18, 19, and 21 as being indefinite for having insufficient antecedent basis for the limitation of "the first automation programming language protocol." Final Act. 7. The Appellants do not provide arguments against the substance of this rejection. See Appeal Br. 19-20; Reply Br. 23-24. Rather, the Appellants content that the amendment filed December 16, 2015 in response to the Final Action would have addressed this issue, had it been entered. Appeal Br. 20; Reply Br. 24. However, we note that any protest regarding the Examiner's refusal to enter an amendment must be made by petition to the Director. See 37 C.F.R. Â§ 1.127. Because the Appellants do not present any substantive arguments contesting the Examiner's rejection under 35 U.S.C. Â§ 112, second paragraph, the Appellants have waived any argument of error. Thus, we summarily sustain the rejection of claims 16, 18, 19, and 21 under 35 U.S.C. Â§ 112, second paragraph as being indefinite. See, e.g., In re Berger, 279 F.3d 975, 984--85 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. Â§ 112, second paragraph, when the applicant failed to contest the rejection on appeal); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection). 20 Appeal2017-001901 Application 12/242,330 NEW GROUND OF REJECTION UNDER 35 U.S.C. Â§ 112 Claims 1, 3-10, 12-16, and 18-21 are rejected underpre-AIA 35 U.S.C. Â§ 112, second paragraph. The text of 35 U.S.C. Â§ 112, second paragraph requires "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." "As the statutory language of 'particular[ity]' and 'distinct[ ness]' indicates, claims are required to be cast in clear - as opposed to ambiguous, vague, indefinite-terms." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Claims are in compliance with 35 U.S.C. Â§ 112, second paragraph if "the claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)). Thus, the test for determining the question of indefiniteness may be formulated as whether the claims "set out and circumscribe a particular area with a reasonable degree of precision and particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With regard to the reasonableness standard, one must consider the language in the context of the circumstances. Packard, 751 F.3d at 1313. Language is an imprecise method of drawing boundaries delineating patent rights, thus unreasonable precision cannot be demanded. Id. On the other hand, the claims must notify the public of what they are excluded from making and using. Id. For this reason, while exact precision is not required, an applicant 21 Appeal2017-001901 Application 12/242,330 is required to use language as precise as the subject matter reasonably permits. Id. The subject matter of independent claims 1, 16, and 20 encompasses a component that determines first and second programming languages wherein the languages "are disparate" and that abstracts the languages into a common representation. However, there is a lack of clarity as to the recited term "disparate." After careful review of the record before us, we determine that the Specification does not provide guidance as to what is meant by the languages being "disparate." This term does not appear anywhere in the Specification, including the original claims. The prosecution history shows that the limitation of the languages being "disparate" first appears in the amended claims filed October 16, 2013, after the Final Office Action mailed August 16, 2013. The Specification, including the claims, does not reveal any definition of the term "disparate" that would lead one skilled in the art to ascertain the metes and bounds of that term. The ordinary and customary definition of "disparate" is "distinct in kind; essentially different; dissimilar." httns://www.dictionary.com/browse/dis:garate?s=t, last visited Aug. 24, 2018. However, it is unclear how different or dissimilar the languages need to be to require an abstraction to a common representation. For example, the C programming language is the grandfather of C++ and C#; they are all similar, yet in some ways different. Would these differences be distinct enough to be "disparate" languages requiring abstraction, or would 22 Appeal2017-001901 Application 12/242,330 "disparate" require the languages to be completely different, such as C# and Ruby? The Specification, including the claims, does not apprise one skilled in the art both of the utilization and scope of the invention in a manner that is as precise as the subject matter reasonably permits to notify the public of what they are excluded from making and using. Therefore, we are unable to determine the metes and bounds of the subject matter of independent claims 1, 16, and 20. For the foregoing reasons, the scope of the claimed invention cannot be determined. Accordingly, on this record, claims 1, 3-10, 12-16, and 18- 21 are indefinite for the reasons given above. Re;ections!II-IV-35 U.S.C. Â§103(a) The Appellants contend that the Examiner does not adequately show that the prior art teaches abstracting two disparate programming languages to a common representation, as recited in limitations (b) and ( c) of independent claim 1 and similarly recited in independent claims 16 and 20. See Appeal Br. 21-23; Reply Br. 25-27. Having determined that this subject matter of claims 1, 3-10, 12-16, and 18-21 is indefinite, we are unable to determine the propriety of the prior art rejections of claims 1, 3- 10, 12-16, and 18-21. The review of the rejections of claims 1, 3-10, 12- 16, and 18-21 under 35 U.S.C. Â§ 103 would require considerable speculation as to the scope of the claims. Such speculation would not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962). We, therefore, reverse proforma the prior art rejections of claims 1, 3-10, 12-16, and 18-21 under 35 U.S.C. Â§ 103. We emphasize that this is a 23 Appeal2017-001901 Application 12/242,330 technical reversal of the rejections under 35 U.S.C. Â§ 103, and not a reversal based upon the merits of the rejections. DECISION The Examiner's rejection of claims 1, 3-10, 12-16, and 18-21 under 35 U.S.C. Â§ 101 is AFFIRMED. The Examiner's rejection of claims 16, 18, 19, and 21 under 35 U.S.C. Â§ 112 is AFFIRMED. The Examiner's rejections of claims 1, 3-10, 12-16, and 18-21 under 35 U.S.C. Â§ 103(a) are REVERSED. A NEW GROUND OF REJECTION has been entered for claims 1, 3-10, 12-16, and 18-21 under 35 U.S.C. Â§ 112, second paragraph, as indefinite. In addition to affirming the Examiner's rejection of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). 37 C.F.R. Â§ 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 4I.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . 24 Appeal2017-001901 Application 12/242,330 (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same Record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED; 37 C.F.R. Â§ 4I.50(b) 25