Ex Parte Dillon

Patent Trial and Appeal Board

Aug 28, 2017

13362476 (P.T.A.B. Aug. 28, 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.
13/362,476 01/31/2012 Steven R. Dillon 30203/45564 3669
45372 7590 08/30/2017
Marshall, Gerstein & Borun LLP (Emerson)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606
EXAMINER
SWARTZ, STEPHEN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN R. DILLON
Appeal 2016-006805
Application 13/3 62,4761
Technology Center 3600
Before THU A. DANG, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-31, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Fisher-Rosemount
Systems, Inc. App. Br. 1.
Appeal 2016-006805
Application 13/362,476
STATEMENT OF THE CASE
Introduction
Appellant’s application relates to process control systems within
process plants and, more particularly, to dynamically generating and
updating maintenance routes in a process control system having a wireless
network based on network topology. Spec. 11. Claim 1 is illustrative of the
appealed subject matter and reads as follows:
1. A method of automatically generating a maintenance route
in a process control system, wherein the process control system
includes a wireless gateway network device and a plurality of
process devices in wireless communication with the wireless
gateway network device, the method implemented via one or
more processors, the method comprising:
for each process device, beginning with the first process
device, in an initial list of process devices in direct wireless
communication with the wireless gateway network device,
where the process devices of the initial list are ranked therein
according to a signal strength of a wireless connection with the
wireless gateway network device, iteratively selecting the
process devices from the initial list; and
with each iteration, appending the initial list with the
remaining process devices from the plurality of process devices
until the plurality of process devices are included in the appended
initial list by:
creating a subsequent list of process devices in
direct wireless communication with the process device
selected from the initial list, wherein the process devices
of the subsequent list are ranked therein according to a
signal strength of a wireless connection with the process
device selected from the initial list; and
appending the initial list with the process devices in
the subsequent list, wherein each process device appended
to the initial list is ranked therein after the process device
selected from the initial list according to the signal
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strength of its wireless connection with the process device
selected from the initial list, unless the process device
from the subsequent list is already ranked in the initial list
ahead of the selected process device from the initial list.
The Examiner’s Rejections
Claims 1-31 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 7-8.
Claims 1—12, 14, 17—24, and 27—31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Desphande et al. (US 8,811,349 B2; Aug. 19,
2014) and McKinney (US 7,525,420 B2; Apr. 28, 2009). Final Act. 8-24.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Desphande, McKinney, and Wang et al. (US 2013/0219034 Al; Aug.
22,2013). Final Act. 24-25.
Claims 15, 16, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Desphande, McKinney, and Pandian et al. (US
2008/0146230 Al; June 19, 2008). Final Act. 25-29.
ANALYSIS
Ineligible Subject Matter — Independent Claims
Alice identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§ 101. In Alice, the Supreme Court reiterated the framework set out in Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012), for
“distinguishing patents that claim . . . abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S.Ct. 2347, 2355 (2014). Assuming that a claim nominally
falls within one of the statutory categories of machine, manufacture, process,
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or composition of matter, the first step in the analysis is to determine if the
claim is directed to a law of nature, a natural phenomenon, or an abstract
idea (judicial exceptions). If so, the second step is to determine whether any
element or combination of elements in the claim is sufficient to transform
the nature of the claim into a patent eligible application, that is, to ensure
that the claim amounts to significantly more than the judicial exception.
With respect to step one of the Alice analysis, the Examiner finds
claim 1 is directed to the abstract idea of “of generating a maintenance route
by ranking and ordering information that was gathered from a wireless
network.” Final Act. 7-8. Appellant argues the Examiner misinterpreted
the claim because “nothing within the claim recitations involves determining
or scoring which tasks are more important to be completed.” App. Br. 6-7.
Appellant further argues the claim is directed to a method that may be
useful for organizing human activities, but the claim itself is not directed to
organizing human activities. Id. at 8. According to Appellant, the method is
“entirely technical in nature,” involving measurements of signal strength and
based on network topology. Id. at 9. Appellant also argues the Examiner
has failed to explain why the purported method of organizing human activity
is abstract. Id. at 10.
Appellant has not persuaded us of Examiner error. Claim 1 recites a
method of automatically generating a maintenance route in a process control
system. The method recites selecting process devices from an initial list of
devices ranked according to signal strength, creating a subsequent list of
devices in communication with the selected device, wherein the subsequent
list is ordered by signal strength, and appending the initial list with any
device in the subsequent list that is not already included in the initial list. In
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other words, the method is directed to creating two lists of devices where the
lists are ranked according to respective signal strengths of the devices. The
claim does not recite measuring signal strength of the devices, instead
reciting using the measurement of signal strength.
The steps recited in the claims, therefore, involve nothing more than
collecting, normalizing, analyzing, and acting upon data. The subject matter
of the claims can be performed either mentally or with “pencil and paper.”
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.
2011). “A method that can be performed by human thought alone is merely
an abstract idea and is not patent-eligible under § 101.” Id. at 1373. In this
regard, the claims are similar to the claims that the Federal Circuit
determined are patent ineligible in Elec. Power Grp. LLC v. Alstom, 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”), OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362—63 (Fed. Cir. 2015) (offer-based price optimization), Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed.
Cir. 2015) (tailoring information presented to a user based on particular
information), Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014) (employing mathematical algorithms to
manipulate existing information), Accenture Global Servs., GmbHv.
Guidewire Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating
tasks in an insurance organization), and Versata Dev. Grp. v. SAP Am., 793
F.3d 1306, 1333—24 (Fed. Cir. 2015) (price-determination method involving
arranging organizational and product group hierarchies).
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Appellant’s argument that the claims are not directed to a method of
organizing human activity, but instead are a method that may be useful for
organizing human activity are unavailing. The claims are directed to a
method of creating a list of information (in particular, an ordered list of
process devices according to specific criteria). We agree with the Examiner
that the creation of this list is a method of organizing human activity because
a human could create this list by performing each of the recited steps by
hand with pen and paper.
Appellant’s argument that the Examiner confuses the potential use of
the method (a maintenance technician traversing a maintenance route) with
the method itself (App. Br. 9) is unavailing because both the method itself
and its potential use involve organizing human activity. Appellant’s
argument that the claims are technical in nature (id.) is also unpersuasive as
discussed in more detail below regarding step two.
Regarding step two, Appellant argues “each of the claims as a whole
amounts to significantly more than such a judicial exception[,] . . .
particularly when taking into account the additional elements both
individually and as an ordered combination.” App. Br. 10. In particular,
Appellant argues claim 1 recites improvements to the technical field of
maintenance of a process plant and process devices, which is different than
the field of wireless network devices. Id. at 11.
Appellant further argues “the particular manner in which signal
strength is used in the recited claims, and, more particularly, the manner in
which the list of process devices is created based on signal strength among
the wireless gateway network device and the process devices, is not routine
or conventional for wireless network transmissions.” Appellant argues the
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claimed solution is highly unconventional because it generates the route
based on signal strength of the networked process devices instead of the
physical layout of the control system. Id. at 11-12.
Finally, Appellant argues claim 1 provides other meaningful
limitations beyond linking the abstract idea to a particular technological
environment, using “specific information from the wireless environment in a
particular manner that results in a list of process devices that is otherwise
useless to the wireless environment.” Id. at 12.
Appellant has not persuaded us of Examiner error. We disagree with
Appellant’s contentions that the claims are directed to improving the
technical field of maintaining process control systems. Claim 1 is directed
to generating a maintenance control program by creating an ordered list of
devices, ranked according to respective signal strengths. The details of
creating this ordered list is not an improvement to the technical field of
maintaining process control systems, but instead is merely an automation of
a process that could be performed by a human using pen and paper.
Our reviewing court has “made clear that mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v.
Westlake Svcs., 2016-2001, at 19 (Fed. Cir. June 9, 2017). Like the claims
in Credit Acceptance, the focus of the claims is on the business/management
practice, “and the recited generic computer elements ‘are invoked merely as
a tool.’” Id. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016)); see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1334 (Fed. Cir. 2015) (collecting cases).
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Appellant’s argument that the particular manner of using signal
strength to rank the devices in the list is highly unconventional is also
unavailing. Although the second step of the Alice framework is termed a
search for an ‘“inventive concept,”’ the analysis is not an evaluation of
novelty or non-obviousness, but rather a search for “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 Corp., 134 S. Ct. at 2355. “[T]he § 101 patent-
eligibility inquiry and, say, the § 102 novelty inquiry might sometimes
overlap.” Mayo, 132 S.Ct. at 1304. “But, a claim for a new abstract idea is
still an abstract idea. The search for a § 101 inventive concept is thus
distinct from demonstrating § 102 novelty.” Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Thus, a novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
Appellant’s argument regarding the conventionality of us signal
strength rather than network topology to rank the process devices in the
ordered list focuses on whether this practice is novel or non-obvious, rather
than whether such a use transforms the claims into something more than the
abstract idea itself. Accordingly, we find it unpersuasive.
We are also unpersuaded by Appellant’s contentions that the claims
recite meaningful limitations beyond tying the method to a particular
technological environment. Claim 1 recites “a process control system,” “a
wireless gateway network device,” “a plurality of process devices in wireless
communication with the wireless gateway network device,” and “a signal
strength of a wireless connection.” The method uses information about
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these devices, but the devices do not perform any activities or even transmit
any data. Accordingly, each of these limitations merely describes the
environment in which the method of creating an ordered list is performed.
We, therefore, disagree that these limitations meaningfully transform the
abstract idea of automatically generating a maintenance route.
For the reasons identified above, we agree with the Examiner that the
claims do not recite an “inventive concept” sufficient to transform the claims
from an abstract idea to a patent eligible application. Accordingly,
Appellant has not persuaded us the Examiner erred in rejecting claim 1 as
patent-ineligible subject matter. We, therefore, sustain the subject matter
ineligibility rejection of claim 1. Appellant argues the patentability of
independent claims 14 and 23 for the same reasons. App. Br. 5. We,
therefore, sustain the subject matter ineligibility rejection of claims 14 and
23 for the same reasons.
Ineligible Subject Matter — Dependent Claims
Appellant argues the Examiner erred in rejecting dependent claims 2-
13, 15-22, and 24-31 because the Examiner improperly grouped these
claims with their respective independent claims. App. Br. 13-14. Appellant
has not persuaded us the Examiner erred. These claims do nothing more
than append conventional components performing certain functionality, or
insignificant post-solution activity, to the independent claims the Examiner
found to be directed to patent-ineligible subject matter. See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241—42 (Fed. Cir. 2016). Accordingly, we
are not persuaded the Examiner erred in finding the dependent claims
directed to patent-ineligible subject matter.
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Obviousness
The Examiner finds the combination of Deshpande and McKinney
teaches or suggests “creating a subsequent list of process devices in direct
wireless communication with the process device selected from the initial list,
wherein the process devices of the subsequent list are ranked therein
according to a signal strength of a wireless connection with the process
device selected from the initial list,” as recited in claim 1. Final Act. 9. In
particular, the Examiner finds Deshpande teaches or suggests this limitation
by disclosing creating a neighbor set that provides information regarding
access points in the vicinity of a first access point. Ans. 10.
Appellant argues the Examiner erred because Deshpande teaches
determining signal strength of an access point (which the Examiner maps to
the claimed “process device”) with an access terminal (which the Examiner
maps to the claimed “wireless gateway device”). App. Br. 15. Appellant
argues Deshpande does not teach or suggest determining signal strength
between from one access point to another access point as required in the
disputed limitation. Id.
Appellant has persuaded us of Examiner error. The Examiner’s
finding that “a neighbor set is created that provides information it collects
regarding access points in the vicinity to the associated access terminal” fails
to establish that Deshpande teaches or suggests determining signal strength
between two access points as claimed. Accordingly, on the record before us
we do not sustain the obviousness rejection of claim 1. We also do not
sustain the obviousness rejections of independent claims 14 and 23, which
contain similar limitations, or dependent claims 2-13, 15-22, and 24-31.
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DECISION
We affirm the decision of the Examiner to reject claims 1-31.
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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