Ex Parte Gillis

Patent Trial and Appeal Board

Nov 13, 2018

13206188 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/206, 188 08/09/2011
63759 7590 11/15/2018
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
James Ridgeway Gillis
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.
11-0756-US-NP 3329
EXAMINER
SUGLO, JANET L
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
11/15/2018 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES RIDGEWAY GILLIS
Appeal 2017-011836
Application 13/206, 18 8
Technology Center 2800
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1-3, 5-18, and 20-22 of Application
13/206,188 under 35 U.S.C. § 101 as directed toward patent-ineligible
subject matter and under 35 U.S.C. § 103(a) as obvious. Non-Final Act.
(April 10, 2015). Appellant 1 seeks reversal of these rejections pursuant to
35 U.S.C. § 134(a). Because at least one of the appealed claims has been
twice-rejected, we have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.
1 The Boeing Co. is identified as the real party in interest. Appeal Br. 2.
Appeal 2017-011836
Application 13/206,188
BACKGROUND
The '188 Application describes methods for identifying objects in
images. Spec. ,r 1. In particular, the Specification describes methods and
apparatus "for identifying information about parts of spatially unresolved
objects using hyperspectral radiant intensity measurements for the objects."
Id. These methods may allow for identification of the type of object being
detected at much greater distances than would otherwise be possible.
Id. ,r,r 52-74. For example, these methods might allow identification of the
type of aircraft detected by the sensor array when the aircraft's image
consists of less than a pixel.
Claim 1 is representative of the '188 Application's claims and is
reproduced below from the Claims Appendix.
1. A method for identifying a unique temperature and an
emissivity area for each part among parts of an object, the
object being unresolved, the method comprising:
receiving, in a sensor system, a measurement of a radiant
intensity of the object, such that the object occupies less than a
single pixel of the sensor such that the object is spatially
unresolved by the sensor system, the radiant intensity being a
power of electromagnetic radiation per unit solid angle from the
object;
assuming that each part projects information to the
sensor, the information being unique to each part and remaining
constant during a time of the measurement;
identifying, from the measurement, a plurality of bands
of electromagnetic radiation;
selecting, using a processor and based upon an
assumption of a number of parts in the object, a number of
bands from the plurality of bands;
identifying, using the processor and based upon the
measurement, a radiant intensity for each of the number of
bands;
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Application 13/206,188
generating a system of equations that includes the radiant
intensity for each of the number of bands; and
identifying, via solving the system of the equations, the
unique temperature and the emissivity area for each part in the
parts of the object.
Appeal Br. 29.
REJECTION
On appeal, the Examiner maintains2 the following rejection:
Claims 1-3, 5-18, and 20-22 are rejected under 35 U.S.C. § 101
because the claims are directed to a judicial exception-i.e., a law of nature,
a natural phenomenon, or an abstract idea-without significantly more.
Non-Final Act. 4.
DISCUSSION
The Patent Act defines patent-eligible subject matter as including
"any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof." 35 U.S.C. § 101. In
particular, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71 (2012).
Since the Supreme Court's decision in Alice Corp. v. CLS Bank
International, 134 S. Ct. 2347 (2014), patent-eligible subject matter has been
distinguished from patent-ineligible laws of nature, natural phenomena, and
abstract ideas using a two-step process. Id. at 2355. The first step requires
2 The Examiner has withdrawn the rejection of claims 1-3, 5-18, and 20-22
under 35 U.S.C. § 103(a). Answer 3.
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us to "determine whether the claims at issue are directed to one of the
patent-ineligible concepts." Id. If they are, we must then analyze whether
the claim elements, either individually or as an ordered combination, contain
an "inventive concept" that "'transform[s] the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 566 U.S. at 72-73).
Appellant argues that the rejection of claims 1-3, 5-18, and 20-22 as
directed to patent-ineligible subject matter should be reversed. Appeal
Br. 12-18. For the following reasons, we do not find Appellant's arguments
to be persuasive.
Streamlined Analysis. Appellant first argues that the Examiner erred
by not using the streamlined analysis exemplified in example 27 of the July
2015 Update: Subject Matter Eligibility, Appendix 1, 22. Appeal Br. 14--15;
Reply Br. 15-16. See also MPEP §2106.06 (describing the streamlined
analysis).
This argument is not persuasive for two reasons: (1) it assumes the
outcome of the application of the Alice test, and (2) it is based upon the idea
that claims that do not completely preempt use of the abstract idea are
patent-eligible.
First, properly understood, the "streamlined analysis" is the July 2015
Update 's description of an abbreviated statement of reasons why a particular
claim is patent-eligible. See July 2015 Update, Appendix 1, 19-22.
Appellant's contention that the Examiner should have used the streamlined
analysis assumes that claim 1 is patent-eligible. For reasons we will explain
more fully below, we are not persuaded that the Examiner erred by
determining otherwise.
Second, the exemplary reasoning provided in Example 27 suggests
that the sample claim is patent-eligible because it does not completely
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preempt a judicial exception. See id. at 22 ("[W]hen the claim is reviewed,
it is immediately evident that even if the claim did recite a judicial exception
the claim is not attempting to tie up any such exception so that others cannot
practice it."). Appellant's argument echoes this reasoning:
[NJ one of the independent claims make use of any particular
equations in a way which would preempt the use of those
equations by any party or for any purpose other than as one part
of the specifically described systems and process that recite "a
novel and useful structure created with the aid of knowledge of
the scientific truth," which is eligible as a "patentable
invention."
Appeal Br. 14--15 (quoting Diamond v. Diehr, 450 U.S. 175, 188 (1981));
see also Reply Br. 3--4.
To the extent that Appellant is arguing that the alleged lack of
preemption is outcome determining, they are mistaken. "While preemption
may signal patent[-]ineligible subject matter, the absence of complete
preemption does not demonstrate patent[-]eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
( emphasis added).
In sum, the streamlined analysis merely represents the Office's
guidance to examiners that, when a claim's subject matter is determined to
be patent-eligible, a detailed recitation of the analysis need not be set forth.
To the extent that the streamlined analysis relies upon the lack of complete
preemption as dispositive to the question of patent-eligibility, it is no longer
applicable. What remains of the streamlined analysis set forth in Example
27's reasoning is the standard two-step Alice test. We, therefore, determine
whether Appellant has demonstrated reversible error in the Examiner's
application of that test.
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Alice Step 1. In rejecting the claims at issue, the Examiner
determined that "[ t ]he claims are directed to an abstract idea, namely the
recited mathematical calculations using hyperspectral data to identify
information ( e.g. temperature and emissivity area) about parts of an object."
Non-Final Act. 4. The Examiner, therefore, considered the issue presented
by the first step of the Alice analysis.
Appellant argues that this determination is clearly erroneous because
"[r]eview of independent claims 1, 13, and 15[3J show[s] no mathematical
calculations. Hence the claims cannot be directed to mathematical
calculations." Appeal Br. 12-14; see also Reply Br. 2-11.
This argument is not persuasive. Claim 1 is directed to a method for
identifying a unique temperature and an emissivity area for each part among
the parts of an object including the steps of "generating a system of the
equations" and "identifying, via solving the system of the equations, the
unique temperature and the emissivity area for each part in the parts of the
object." Claims 13 and 15 contain similar language. Appellant does not
explain how the system of equations can be solved to yield the unique
temperature and emissivity area for each part of the object without
performing mathematical calculations. After review of the Specification, we
are not persuaded that the Examiner erred in determining that claims 1, 13,
and 15 are directed to an abstract idea in the form of mathematical
calculations. Appellant's arguments to the contrary elevate form over
substance.
3 We note that Appellant did not argue that the rejection of independent
claim 12 should be reversed for this reason.
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In Appellant's Reply Brief, they argue that claim 1 is not necessarily
directed to an abstract idea merely because it involves mathematical
calculations. Reply Br. 2-3 (citing Diehr, 450 U.S. at 187). To the extent
that this argument is directed to Alice step 1, it is untimely because it is first
presented in the Reply Brief. 3 7 C.F .R. § § 41.3 7, 41.41; see also Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative).
Alice Step 2. Appellant presents two arguments regarding the second
step of the Alice test: (a) the appealed claims are directed to significantly
more than the abstract idea, and (b) the appealed claims are analogous to the
patent-eligible claims discussed in SiRF Technology, Inc. v. International
Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010). See Appeal Br. 14--18;
Reply Br. 3-18.
In presenting these arguments, Appellant does not differentiate
between independent claims 1, 12, 13, and 15, nor do they argue any of the
dependent claims separately. We, therefore, select claim 1 as representative
of the claims on appeal. 37 C.F.R. § 4I.37(c)(l)(iv).
For the following reasons, we are not persuaded by Appellant's
arguments.
First, we are not persuaded that claim 1 is directed to significantly
more than the judicial exception.
Appellant argues that claim 1 amounts to significantly more than the
judicial exception because, when considered as an ordered whole, claim 1 is
directed to a technical improvement over the limitations of current sensors.
Appeal Br. 15-16; Reply Br. 12-15.
This argument is not persuasive. As discussed above, claim 1 is
directed to mathematical calculations-a species of abstract idea. The
portions of claim 1 that do not require mathematical calculations merely
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recite, at a high level of generality, conventional processes. Specifically,
claim 1 includes the steps of data acquisition ("receiving, in a sensor system,
a measurement") and data processing ("identifying, from the measurement, a
plurality of bands;" "selecting ... a number of bands from the plurality of
bands;" and "identifying, using the processor and based upon the
measurement, a radiant intensity for each of the number of bands"). The
Federal Circuit has held that such steps cannot confer patent-eligibility upon
patent-ineligible subject matter. See, e.g., OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015) (explaining that "well-
understood, routine, conventional data-gathering activities ... do not make
the claims patent eligible."); Digitech Image Techs., LLC v. Elecs.for
Imaging Inc., 758 F.3d 1341, 1351 (Fed. Cir. 2014) ("Without additional
limitations, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
eligible."). As the Supreme Court has stated, "[i]f a claim is directed
essentially to a method of calculating, using a mathematical formula, even if
the solution is for a specific purpose, the claimed method is nonstatutory."
Parker v. Flook, 437 U.S. 584, 595 (1978) (internal quotation marks
omitted). The remaining portion of claim 1 states the conditions imposed
upon the data processing steps.
In sum, considered individually, these additional claim elements do
not result in a claim that is directed to significantly more than the patent-
ineligible abstract idea. Moreover, when claim 1 is considered as a whole,
the ordered combination of steps does not result in a claim that is directed to
significantly more than the patent-ineligible subject matter.
Second, Appellant argues that the Examiner erred in the second step
of the Alice test because the claims at issue are analogous to those found
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patent-eligible in SiRF Technology. See Appeal Br. 16-17; Reply Br. 16-
18. In particular, Appellant argues that
like the claims in SiRF, the claims at issue bring usefulness to a
previously unusable image and recite a particular sensor ... that
is integral to each of the claims at issue and receives a
measurement of a radiant intensity of the object, as recited in
the claims at issue and transforms the received data into a
previously unknown information to a process or that performs
analysis that-out of a signal that previously was too weak-
unresolved-to use.
Appeal Br. 16 (internal quote marks omitted).
The Examiner responds that SiRF Technology was decided before the
Supreme Court's decisions in Mayo and Alice. According to the Examiner,
SiRF Technology has little persuasive value because it was decided in 2009,
prior to the Mayo and Alice decisions, so it was not decided
under the Mayo/Alice framework and there was therefore no
explicit consideration in that decision as to whether 'additional
elements' beyond the abstract idea were sufficient to make the
claim as a whole significantly more than the abstract idea.
Answer 13.
The Examiner also states that the appealed claims are more closely
analogous to the claims determined to be patent-ineligible in Flook; In re
Grams, 888 F.2d 835 (Fed. Cir. 1989); Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011); and Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Answer 13.
We agree with the Examiner that the persuasive value of SiRF
Technology is limited. The claims at issue in SiRF Technology were
determined to be patent-eligible using the (now superseded) machine-or-
transformation test. See SiRF Tech., 601 F.3d at 1331-1332.
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Appellant responds that "the Examiner's Answer assertion is not in
accordance with the validity that the USPTO affords SiRF by listing this
precedential CAFC holding as one of the cases provided in the USPTO
'Chart of Subject Matter Eligibility Court Decisions' (updated July 31,
2017)[] for use with the USPTO '2014 Interim Guidance on Patent Subject
Matter Eligibility."' Reply Br. 16-17. This argument is not persuasive.
The mere inclusion of the SiRF Technology decision in a list of court
decisions is not a statement that the reasoning or conclusions reached in that
case would be unchanged if current law were applied to the facts. Indeed,
we note that Example 4 provided with the 2014 Interim Guidance on Patent
Subject Matter Eligibility was modeled after the technology at issue in SiRF
Technology. 2014 Interim Guidance, Appendix 1, 10-13. Rather than apply
the two-step Alice test to the actual claims discussed in SiRF Technology,
however, the Example uses hypothetical claims. Id. at 10. This reflects the
fact that, to the best of our knowledge, the Office has not taken a position on
whether the claims at issue in SiRF Technology would be considered patent-
eligible using the Alice test.
Because we agree with the Examiner that SiRF Technology has little
persuasive value because it was decided prior to the decisions in Mayo and
Alice, we tum to the Examiner's suggestion that the claims at issue in this
case are more analogous to the claims at issue in Flook, Grams, Classen, and
Electric Power Group. See Answer 13. The Examiner's suggestion has
little persuasive merit because the Examiner did not support it with any
analysis. Furthermore, as Appellant points out, the decisions in Flook,
Grams, and Classen were also issued prior to the Mayo and Alice decisions.
See Reply Br. 1 7. Thus, these cases are also of little persuasive value as
examples of the application of the Alice test.
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Nonetheless, we determine that the appealed claims are analogous to
those at issue in Electric Power Group. In that case, the Federal Circuit
selected claim 12 of U.S. Patent No. 8,401,710 as representative of the
claims involved in that appeal. Elec. Power Grp., 830 F.3d at 1351. Claim
12 is directed to "'[a] method of detecting events on an interconnected
electric power grid in real time over a wide area and automatically analyzing
the events on the interconnected electric power grid."' Id. ( quoting claim
12). The claimed method comprises multiple data reception steps, data
manipulation steps, and concludes by "'deriving a composite indicator of
reliability that is an indicator of power grid vulnerability and is derived from
a combination of one or more real-time measurements or computations of
measurements from the data streams and the dynamic stability metrics
covering the wide area as well as non-power grid data received from the
non-grid data source."' Id. at 1351-52 (quoting claim 12). The Federal
Circuit affirmed the district court's determination that claim 12 is directed to
patent ineligible subject matter, namely an abstract idea. Id.
Similarly, claim 1 of the '188 Application comprises a data reception
step, data manipulation steps, and mathematical calculation steps. See claim
1. The data manipulation and calculations derive information from the data
received by the sensor system. Because the appealed claims are analogous
to the claims the Federal Circuit found to be directed to patent ineligible
subject matter in Electric Power Group, we can be assured that claim 1 is
properly rejected as being directed to a concept----data manipulation and
mathematical calculations-that the courts have identified as an abstract
idea.
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CONCLUSION
In view of the foregoing, we affirm the rejection of claim 1 as directed
to patent-ineligible subject matter. We, therefore, also affirm the rejection
of claims 2, 3, 5-18, and 20-22 on this basis.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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