Ex Parte Hoitsma et al

Patent Trial and Appeal Board

Mar 4, 2016

12501542 (P.T.A.B. Mar. 4, 2016)

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.
12/501,542 07/13/2009 David H. Hoitsma NORT-79137 4567
67766 7590 03/07/2016
PIETRAGALLO GORDON ALFANO BOSICK & RASPANTI, LLP
ONE OXFORD CENTRE, 38TH FLOOR
301 GRANT STREET
PITTSBURGH, PA 15219-6404
EXAMINER
CRAIG, DWIN M
ART UNIT PAPER NUMBER
2123
MAIL DATE DELIVERY MODE
03/07/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID H. HOITSMA and STEPHEN J. ENGEL
____________________

Appeal 2014-003035
Application 12/501,542
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, HUNG H. BUI, and
JON M. JURGOVAN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4–12, and 15–20. Claims 2, 3, 13, and 14 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and, pursuant to our authority under 37 C.F.R.
§ 41.50(b), enter a new ground of rejection for claims 1, 4–12, and 15–20
under 35 U.S.C. § 101 as being directed to ineligible subject matter.

Exemplary Claims
Exemplary claims 1, 4, and 6 under appeal read as follows (emphasis
added):
1. A method comprising:
receiving a plurality of values of an input variable at an input to
a processor, wherein the input variable is representative of a physical
characteristic of a component or system; and
using the processor to implement a physics model to produce an
estimate of an output for each of the input values;
wherein the processor maps the output estimates to the input
values by fitting the estimates to a plurality of curves; selects values
from corresponding points on the curves to produce an output
probability density or cumulative distribution function for the physical
characteristic at a future time; and outputs the probability density or
cumulative distribution function.

4. The method of claim 1, wherein the physical characteristic
comprises a crack length as a function of time or a time to failure as a
function of crack length.

6. The method of claim 1, wherein the curves are
equi-probability curves.

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Rejections
1. The Examiner rejected claims 1 and 11 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Barajas et al. (US
2007/0179753 A1; August 2, 2007) and Zhang et al. (Envelopes Around
Cumulative Distribution Functions from Interval Parameters of Standard
Continuous Distributions; PROCEEDINGS, NORTH AMERICAN FUZZY
INFORMATION PROCESSING SOCIETY 407–412 (NAFIPS 2003)).
2. The Examiner rejected claims 4–10, 12, and 15–20 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Barajas,
Zhang, and Tryon, III (US 7,016,825 B1; March 21, 2006). 1
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[W]hile Barajas et al. mentions the use of probability functions,
it does not disclose or suggest any specific way to compute a
probability function . . . .
App. Br. 5.
2. Appellants also contend that the Examiner erred in rejecting claim
1 under 35 U.S.C. § 103(a) because:
[T]he Office Action asserts on page 5 that Barajas et al. teaches
curve fitting and “selects values from corresponding points on
the curve to produce an output probability density or [sic] for
the physical characteristic at a future time[]”, citing paragraph
[0063]. However, a review of Barajas et al. and particularly
paragraph [0063] fails to find any such teaching. Paragraph
[0063] of Barajas et al. lists a plurality of well known curve
fitting techniques, but does not disclose or suggest that an

1 Separate patentability is not argued for claims 5, 10, 12, and 15–20. Except
for our ultimate decision, these claims are not discussed further herein.
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output probability density or [sic] for the physical characteristic
at a future time can be produced by selecting values from
corresponding points on a plurality of curves.
App. Br. 5, emphasis added.
Barajas et al. cannot possibly disclose the selection of
corresponding points on multiple curves. Furthermore, Barajas
et al. does not disclose or suggest that a probability density or
cumulative distribution function for a physical characteristic at
a future time can be produced by selecting values from
corresponding points on a plurality of curves.
App. Br. 6, emphasis added.
3. Appellants also contend that the Examiner erred in rejecting claim
1 under 35 U.S.C. § 103(a) because:
Zhang et al. does not disclose or suggest selecting values from
corresponding points on the curves to produce an output
probability density or cumulative distribution function for the
physical characteristic at a future time. The process of Zhang et
al. starts by already knowing a family of cumulative
distribution function.
App. Br. 6.
4. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[A] fuzzy interval is not equivalent to an output probability
density or cumulative distribution function as set forth in claims
1 and 11. In column 2 of page 407, Zhang et al. states: “Thus
we seek to obtain the left and right envelopes around the family
of CDFs for a random variable whose distribution is expressed
in closed form with interval parameters.” The fuzzy interval of
Zhang et al. relates to an envelope around a family of CDFs.
The envelopes of cumulative distribution function described in
Zhang et al. are not equivalent to a probability density or
cumulative distribution function as set forth in claim 1. There
is no teaching or suggestion that the vertical slice of Zhang et
al. can be used to identify points on multiple curves, wherein
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those points are subsequently used to produce an output
probability density or cumulative distribution function for the
physical characteristic at a future time.
App. Br. 6–7, emphases added.
5. Appellants contend that the Examiner erred in rejecting claim 11
under 35 U.S.C. § 103(a) because:
Barajas et al. and/or Zhang et al. do not disclose or suggest that
their teachings can be used to process a variable for a stochastic
process.
App. Br. 7, emphasis added.
6. Appellants also contend that the Examiner erred in rejecting claim
11 under 35 U.S.C. § 103(a) because:
Barajas et al. and/or Zhang et al. do not disclose or suggest a
processor that is programmed to use a mapping function, which
relates outputs to inputs, to produce an exact representation of
an output distribution for the stochastic process.
App. Br. 8.
7. Appellants also contend that the Examiner erred in rejecting claim
11 under 35 U.S.C. § 103(a) because:
By using a processor to perform the mapping function, the
Appellant has defined an apparatus in which the number of
function evaluations needed to produce the approximation is
much less than the number of function evaluations needed for
the Monte Carlo method, (see the Appellant’s specification,
paragraphs [0041], [0045] and [0046]). Various techniques for
implementing the mapping step are described in the Appellant’s
specification.
App. Br. 8.
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8. Appellants also contend that the Examiner erred in rejecting claim
11 under 35 U.S.C. § 103(a) because:
[T]he Office Action asserts on page 5 that Barajas et al. teaches
curve fitting and “selects values from corresponding points on
the curve to produce an output probability density or [sic] for
the physical characteristic at a future time[]”, citing paragraph
[0063]. However, a review of Barajas et al. and particularly
paragraph [0063] fails to find any such teaching. Paragraph
[0063] of Barajas et al. lists a plurality of well known curve
fitting techniques, but does not disclose or suggest that an
output probability density or [sic] for the physical characteristic
at a future time can be produced by selecting values from
corresponding points on a plurality of curves.
App. Br. 8, emphasis added.
9. Appellants also contend that the Examiner erred in rejecting claim
11 under 35 U.S.C. § 103(a) because:
Zhang et al. does not disclose or suggest selecting values from
corresponding points on the curves to produce an output
probability density or cumulative distribution function for the
physical characteristic at a future time. The process of Zhang et
al. starts by already knowing a family of cumulative
distribution function.
App. Br. 9.
10. Appellants contend that the Examiner erred in rejecting claim 11
under 35 U.S.C. § 103(a) because:
[A] fuzzy interval is not equivalent to an output probability
density or cumulative distribution function as set forth in claims
1 and 11. In column 2 of page 407, Zhang et al. states: “Thus
we seek to obtain the left and right envelopes around the family
of CDFs for a random variable whose distribution is expressed
in closed form with interval parameters.” The fuzzy interval of
Zhang et al. relates to an envelope around a family of CDFs.
The envelopes of cumulative distribution function described in
Zhang et al. are not equivalent to a probability density or
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cumulative distribution function as set forth in claim 1 [sic].
There is no teaching or suggestion that the vertical slice of
Zhang et al. can be used to identify points on multiple curves,
wherein those points are subsequently used to produce an
output probability density or cumulative distribution function
for the physical characteristic at a future time.
App. Br. 9, emphases added.
11. Appellants also contend that the Examiner erred in rejecting claim
4 under 35 U.S.C. § 103(a) because:
Tryon does not disclose that the step of mapping the output
estimates to the input values is performed by fitting the
estimates to a plurality of curves and selecting values from
corresponding points on the curves to produce an output
probability density or cumulative distribution function for the
physical characteristic at a future time.
App. Br. 10–11.
12. Appellants also contend that the Examiner erred in rejecting claim
4 under 35 U.S.C. § 103(a) because:
By including the mapping and selection elements of claims 1
and 11, the Appellant has defined a method and apparatus in
which the number of function evaluations needed to produce an
approximation is much less than the number of function
evaluations needed for the Monte Carlo method, (see the
Appellant’s specification, paragraphs [0041], [0045] and
[0046]).
App. Br. 11.
13. Appellants also contend that the Examiner erred in rejecting claim
4 under 35 U.S.C. § 103(a) because:
MPEP 2143.0l(VI), states that “[i]f the proposed modification
or combination of the prior art would change the principle of
operation of the prior art invention being modified, then the
teachings of the references are not sufficient to render the
claims prima facie obvious.” In the present case, modifying the
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system of Barajas et al. and/or Zhang et al. to use the Monte
Carlo method in Tryon would change the principle of operation
of the prior art invention being modified.
App. Br. 11.
14. Appellants also contend that the Examiner erred in rejecting claim
6 under 35 U.S.C. § 103(a) because:
The cited references do not disclose or suggest that
corresponding points on equi-probability curves can be used to
produce an output probability density or cumulative distribution
function for the physical characteristic at a future time. The
Office Action points to paragraph [0022] of Barajas as showing
this feature. However, a review of paragraph [0022] of Barajas
has failed to find any such teaching.
App. Br. 11.
15. Appellants also contend that the Examiner erred in rejecting claim
7 under 35 U.S.C. § 103(a) because:
While Barajas et al. describes curve fitting and Zhang et al. uses
the phrase “vertical slice”, the cited references do not disclose
or suggest selecting values from corresponding points on the
curves to produce an output probability density or cumulative
distribution function for the physical characteristic at a future
time. Zhang et al. mentions the use of vertical slice through a
graph of envelopes of a normal (Figure 5) or lognormal (Figure
6) distribution to yield “a fuzzy interval for the cumulative
probability”. However, the fuzzy interval of Zhang et al. is not
equivalent to an output probability density or cumulative
distribution function as described above with respect to claims
1 and 11.
App. Br. 11–12.
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16. Appellants also contend that the Examiner erred in rejecting claim
8 under 35 U.S.C. § 103(a) because:
There is no teaching or suggestion that the vertical slice of
Zhang et al. can be used to identify points on multiple curves,
wherein those points are subsequently used to produce an
output probability density or cumulative distribution function
for the physical characteristic at a future time. The cited
references do not disclose or suggest computing a probability
density or cumulative distribution function using points on a
vertical slice of a plurality of curves.
App. Br. 12.
17. Appellants also contend that the Examiner erred in rejecting claim
9 under 35 U.S.C. § 103(a) because:
The Office Action points to paragraph [0067] of Barajas as
showing interpolation. However, while the references refer to
Interpolation of points on a curve, the references do not disclose
or suggest that a probability density or cumulative distribution
function can be computed using interpolation of corresponding
points from a plurality of curves.
App. Br. 12.
18. In the Reply Brief, further as to above contentions 1 and 2,
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
On page 2, paragraph 3 of the Examiner’s Answer, the
Examiner has misquoted the Appellant’s argument. Appellant
had argued that “while Barajas et al. mentions the use of
probability functions, it does not disclose or suggest any
specific way to compute a probability function, other than the
following broad statement in paragraph [0037]: ‘“Moreover,
fitting an analytic form to the empirical data may provide for
estimation of parameters characterizing the CDF or a related
probability density function (PDF)’.” The Examiner’s Answer
removed the underlined portion of the Appellant’s argument
and asserts that Barajas “. . . computes both the claimed
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cumulative distribution function (CDF) derived from binned
data see paragraph [0036] as well as the claimed probability
density, see paragraph [0037].” The Examiner further refers
to paragraph [0036] of Barajas as teaching, “Alternatively or in
addition, an analytic form may be found by fitting an equation
to the empirical data”, as a basis for the Examiner's assertion
that “ . . . the act of ”fitting” data requires computation”.
However, claim 1 specifies that the processor “selects values
from corresponding points on the curves to produce an output
probability density or cumulative distribution function for the
physical characteristic at a future time”. This feature is not
disclosed or suggested by Barajas. If anything, Barajas teaches
away for the Appellant’s technique of producing an output
probability density or cumulative distribution function by using
binned data to compute a cumulative distribution function or a
probability density.
Reply Br. 2–3.
19. In the Reply Brief, further as to above contention 4, Appellants
contend that the Examiner erred in rejecting claim 1 under 35 U.S.C.
§ 103(a) because:
On page 6 of the Examiner's Answer, the Examiner
asserts that “Zhang et al. provides a suggestion that after a CDF
is generated, there can be conditions under which a single CDF
is not specified, instead a family (i.e. multiple) CDF’s are
specified (i.e. an envelope)”. Then the Examiner asserts that
Barajas was relied upon for the initial generation of a CDF,
after a curve fit has been performed. This is an incorrect
interpretation of the teachings of Barajas.
Reply Br. 4.
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20. In the Reply Brief, further as to above contention 4, Appellants
contend that the Examiner erred in rejecting claim 1 under 35 U.S.C.
§ 103(a) because:
The Examiner further refers to Zhang et al. [Ans. 6] as showing
that the generated CDF’s are point values, without identifying
where this is shown in Zhang et al.
Reply Br. 4–5.
21. In the Reply Brief, Appellants contend that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because:
Any attempt to modify Barajas to change the method of
producing an output probability density or cumulative
distribution function would change the operating principle of
Barajas. If Barajas teaches the initial generation of a CDF as
asserted by the Examiner, there is no reason why one skilled in
the art would modify Barajas to produce another CDF.
MPEP 2143.01(VI), states that “[i]f the proposed
modification or combination of the prior art would change the
principle of operation of the prior art invention being modified,
then the teachings of the references are not sufficient to render
the claims prima facie obvious.” In the present case, modifying
Barajas to include completely different technique for
determining a CDF (when Barajas already previously
determined a CDF as asserted by the Examiner) would change
the principle of operation of the prior art invention being
modified.
Reply Br. 5.
Issues on Appeal
Did the Examiner err in rejecting claims 1, 4, 6–9, and 11 as being
obvious?
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
Appeal Brief arguments that the Examiner has erred.
As to Appellants’ above contention 14 covering claim 6 (and claim
16), we agree because the Examiner’s Final Action (and Answer 14) does
not provide an sufficient articulated reason as to why the use of equi-
probability curves would have been obvious to one of ordinary skill in the
art.
As to Appellants’ above contentions 1–13 and 15–21 covering all
other claims, we disagree with Appellants’ conclusions. Except as noted
herein, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer (2–15) in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight the following.
As to Appellants’ above contention 1, we disagree for the reasons set
forth by the Examiner. Ans. 2. Further, Appellants’ argument that Barajas
“does not disclose or suggest any specific way to compute a probability
function” is not commensurate with the scope of the claim which does not
require “compute” and instead more broadly recites “selects values.” Id.
As to Appellants’ above contentions 2, 3, 8, and 9, we disagree for the
reasons set forth by the Examiner. Ans. 3–7, 11–12.
As to Appellants’ above contention 18 (related to contentions 1 and
2), we disagree. We find no merit to Appellants’ position that “the Examiner
has misquoted the Appellant’s argument” for the simple reason that the
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Examiner did not quote the portion of Appellants’ argument which
Appellants argue was misquoted. App. Br. 2. Rather, the Examiner merely
(and properly) summarized Appellants’ position. Further, as to Appellants’
assertion that “Barajas teaches away for the Appellant[s’] technique . . .”
(Reply Br. 2–3), we disagree. As the United States Court of Appeals for the
Federal Circuit has counseled:
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. . . . [I]n general, a reference will teach
away if it suggests that the line of development flowing from
the reference’s disclosure is unlikely to be productive of the
result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Beyond stating that
“Barajas teaches away,” Appellants have not attempted to persuade us that
as to the argued limitation, the Barajas reference suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the Appellants. At most, Appellants have
simply argued that Barajas alone does not teach the argued limitation. Even
if we agree, that is not sufficient to “teach away” from using the limitation.
Unsupported attorney argument, is entitled to little probative value. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
As to Appellants’ above contentions 4 and 10, we disagree for the
reasons set forth by the Examiner. Ans. 6–7. Further, Appellants’ own
Specification (¶ 28) states the desire (“we wish”) to intersect plural curves to
generate plural values within a maximum and a minimum. An artisan would
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understand Zhang also teaches determining the maximum and minimum
curves at page 408, first two lines of the first column, and vertically slicing
those curves (and other curve within the max/min envelope) at page 412,
first 6 lines of the first column, to get plural values within those maximum
and minimum.
As to Appellants’ above contention 20 (related to contention 4), we
disagree. The abstract of Zhang was specifically cited by the Examiner at
page 7 of the Final Action. Zhang’s abstract states (emphasis omitted):
Closed form expressions for important CDFs have parameters,
such as mean and variance. If these parameters are not point
values but rather intervals, sharp or fuzzy, then a single CDF is
not specified. . . . We investigate the bounds on families of
CDFs implied by interval values for their parameters.
An artisan would understand “are not point values” to be “are not [single]
point values” and “intervals” or “interval values” to be “plural interval point
values.” Further Zhang states at the last paragraph of page 407 that “a
parameterized CDF” is represented as “a vector of one or more parameters”
where the vector “can be an interval” (i.e., plural point values).
As to Appellants’ above contention 19 (also related to contention 4),
we disagree. Appellants’ arguments fail because they misstate the
Examiner’s position. Appellants argue “[t]hen the Examiner asserts that
Barajas was relied upon for the initial generation of a CDF, after a curve fit
has been performed.” App. Br. 4. This argument misstates the Examiner’s
position as the “after a curve fit has been performed” is a condition on “the
initial generation of a CDF.” Id. A proper reading the Examiner’s full
sentence shows that “after a curve fit has been performed” is a condition on
the second half of the full sentence “Zhang et al. was relied upon for a
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teaching of the special case where the generated CDF’s are point values, in
which case CDF envelopes have to be analyzed, i.e. a plurality of curves.”
Ans. 6.
As to Appellants’ above contentions 5 and 6, we disagree for the
reasons set forth by the Examiner. Ans. 9–10. Stochastic means (emphasis
added) “of or relating to a process involving a randomly determined
sequence of observations each of which is considered as a sample of one
element from a probability distribution.”2 The Examiner correctly points out
that “Zhang et al. expressly teaches a collection of random variables.” Ans.
10. Zhang was also cited for teaching “random variables” at page 7 of the
Final Action.
As to Appellants’ above contentions 7 and 12, we disagree for the
reasons set forth by the Examiner. Ans. 11, 13–14. The Examiner correctly
points out that the argued improvement over the Monte Carlo method is
“unclaimed.” Id. That is, Appellants’ argument is not commensurate with
the scope of the claim. Stated differently, Appellants’ Specification sets
forth two alternative embodiments, and we find both covered by the scope of
Appellants’ claim. The first embodiment described at paragraphs 20–38 of
Appellants’ Specification would be recognized by an artisan as some form of
the Monte Carlo method, and the second at paragraphs 39–60 of Appellants’
Specification is the improvement (¶ 41) now argued by Appellants.
As to Appellants’ above contention 11, we disagree for the reasons set
forth by the Examiner. Ans. 13. Further, Appellants are attacking the
references singly (Tyron) for lacking a teaching that the Examiner relied on

2 Dictionary.com Unabridged; Based on the Random House Dictionary, ©
Random House, Inc. 2016.
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a combination of references (Barajas-Zhang-Tryon) to show. We conclude
that Appellants’ argument ignores the actual reasoning of the Examiner’s
rejections. It is well established that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants are raising and then knocking down a straw man rejection that
was never made by the Examiner. As the Examiner relied on Barajas and
Zhang, and not Tyron, for the argued limitations, Appellants are arguing
Examiner findings that were never made. This form of argument is
unavailing to show Examiner error.
As to Appellants’ above contentions 13 and 21, we disagree for the
reasons set forth by the Examiner. Ans. 14. Further, beyond mere assertion,
Appellants fail to explain how they believe there is a change in the principle
of operation of the prior art invention being modified. Appellants quote the
first sentence of MPEP § 2143.01(VI), but do not cited or comply with the
remaining implicit requirements to actually show the change in the principle
of operation (e.g., prior art “requires” not plural curve, claimed invention
“requires” plural curves).
If the proposed modification or combination of the prior
art would change the principle of operation of the prior art
invention being modified, then the teachings of the references
are not sufficient to render the claims prima facie obvious. In
re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959)
(Claims were directed to an oil seal comprising a bore engaging
portion with outwardly biased resilient spring fingers inserted
in a resilient sealing member. The primary reference relied
upon in a rejection based on a combination of references
disclosed an oil seal wherein the bore engaging portion was
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reinforced by a cylindrical sheet metal casing. Patentee taught
the device required rigidity for operation, whereas the claimed
invention required resiliency. The court reversed the rejection
holding the “suggested combination of references would require
a substantial reconstruction and redesign of the elements shown
in [the primary reference] as well as a change in the basic
principle under which the [primary reference] construction was
designed to operate.”).
MPEP § 2143.01(VI), reproduced in full, emphasis added.
As to Appellants’ above contention 15 and 16, we disagree for the
reasons set forth by the Examiner. Ans. 15. Further, as noted above, Zhang
teaches determining the maximum and minimum curves at page 408, first
two lines of the first column, and vertically slicing those curves (and other
curve within the max/min envelope) at page 412, first 6 lines of the first
column, to get plural values within those maximum and minimum.
As to Appellants’ above contention 17 (covering claim 9), we
disagree for the reasons set forth by the Examiner. Ans. 15. Further,
computing by interpolation is routine in the art as shown throughout Barajas
(e.g. ¶ 67, last sentence).

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1, 4–12, and 15–20 under 35 U.S.C. § 101, as being directed to ineligible
subject matter.
Legal Principles
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
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contains an important implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67
(1972) (“Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work.”). The Supreme Court has also
held that a mathematical formula is like a law of nature. Parker v. Flook,
437 U.S. 584, 589 (1978) (“Reasoning that an algorithm, or mathematical
formula, is like a law of nature, Benson applied the established rule that a
law of nature cannot be the subject of a patent.”).
Notwithstanding that a law of nature or an abstract idea, by itself, is
not patentable, the application of these concepts may be deserving of patent
protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an
unpatentable law of nature into a patent-eligible application of such a law,
one must do more than simply state the law of nature while adding the words
‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo “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
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis 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
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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). “A claim that recites an abstract idea must
include ‘additional features’ to ensure ‘that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea].’” Id. at 2357
(brackets in original) (quoting Mayo, 132 S. Ct. at 1297). 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
adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593,
610–11 (2010) (citation and internal quotation marks omitted). The Court in
Alice noted that “‘[s]imply appending conventional steps, specified at a high
level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive
concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300,
1297, 1294).
Rejection Analysis
We apply the framework as set forth by the Court in Mayo and
reaffirmed by the Court in Alice for determining whether claims 1, 4–12, and
15–20 are directed to patent-eligible subject matter.
Step one: Are the claims at issue directed to a patent-ineligible
concept?
We conclude that they are: Claims 1, 4–12, and 15–20 are directed to
a mathematical algorithm in the form of a probability distribution mapping
function.
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In one aspect, this invention provides an exact
representation of the output distribution for a stochastic process
in terms of an input probability distribution and a mapping
function (which can be defined by a physics model) relating the
output to the input. For the purposes of this description, a
mapping function is described by an equation or procedure that
relates the output of a physics model with its inputs. An
example physics model is a software application that calculates
the crack (defect) length as a function of time given inputs of an
initial crack size, material parameters, and loads.
FIG. 1 is a schematic diagram of a system 10 that can be
used to implement an embodiment of the invention. The
system includes a processor 12 that includes one or more inputs
14 for receiving input data, which can be represented by one or
more random variables, and an output 16 for delivering a
computed result. The processor implements a physics model to
calculated output values. The output values of the physics
model are mapped to the input variables to produce a
probability distribution function or a cumulative distribution
function related to a physical characteristic represented by the
input variables.
Spec. ¶¶ 18–19. See also Spec. ¶¶ 20–38, 39–60 (The mathematical
algorithms encompassed by the alternative calculation methods).
Our conclusion, that claims 1, 4–12, and 15–20 are directed to a
patent-ineligible concept, is reinforced by Appellants’ arguments directed to
the Examiner’s rejection of claims 1 and 11 under 35 U.S.C. § 103.
Appellants’ arguments are focused solely on the probability density or
cumulative distribution function (mathematical algorithm) encompassed by
claims 1 and 11. For example, Appellants argue “Barajas et al. does not
disclose or suggest that a probability density or cumulative distribution
function for a physical characteristic at a future time can be produced by
selecting values from corresponding points on a plurality of curves.” App.
Br. 6.
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Step two: Is there something else in the claims that ensures that they
are directed to significantly more than a patent-ineligible concept?
As we noted above, according to Alice, the question to be settled next
is whether claims 1, 4–12, and 15–20 recite an element, or combination of
elements, that is enough to ensure that the claim is directed to significantly
more than the mathematical algorithm (the “ineligible concept”) itself.
We conclude that claims 1 and 11, which merely require a generic
“processor” (claims 1 and 11, line 2 of each) and an “input variable [which]
is representative of a physical characteristic of a component or system”
(claim 1, line 3), fail to transform that mathematical algorithm into a patent-
eligible invention.
Taking the claim elements separately, the processor (i.e., computer
element) is purely conventional. The processor is well-understood, routine,
conventional elements previously known to the industry. As to the input
variable representative of a physical characteristic of a component or system,
it might be tempting to argue that Appellants’ claims are statutory because
they are directed to predicting a real-world physical characteristic at a future
time based on inputs of real-world measured values of a component or
system. However, the claims are not so limited, and they encompass purely
theoretical (made-up) input values to produce theoretical predictions of a
theoretical component or system. Further, even if so limited, it not clear
under the Alice-Mayo framework that the claims would be directed to a
patent-eligible application absent real-world measuring steps and/or
measuring means being claimed. In summary, the claims do no more than
require generic computer elements to perform generic computer functions to
perform a mathematical algorithm.
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Considered as an ordered combination, the processor and input
variable of Appellants’ claims add nothing that is not already present when
these elements are considered separately. Viewed as a whole, Appellants’
claims simply recite the concept of a mathematical algorithm as performed
by a generic computer processor. The claims do not, for example, purport to
improve the operation of the computer itself, e.g., an inventive processor
being used. Nor do they effect an improvement in any other technology or
technical field, e.g., a computer program for performing inventive functions
is executed by the generic processor. Instead, the claims at issue amount to
nothing significantly more than an instruction to apply a mathematical
algorithm using some unspecified, generic computer element. That is not
enough to transform a mathematical algorithm into a patent-eligible
invention.
None of the hardware recited by the claims offers a meaningful
limitation beyond generally linking the use of the mathematical algorithm to
a particular technological environment, that is, implementation via
computers. Simply appending a conventional “processor,” specified in
general terms, is not enough to transform a mathematical algorithm into a
patent-eligible invention. See Alice, 134 S. Ct. at 2357–60. These
recitations are similar to the recitation of a conventional “computer”
discussed in Alice.

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37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, 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. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 4, 5, 7–12, 15,
and 17–20 as being unpatentable under 35 U.S.C. § 103(a).
(2) Appellants have established that the Examiner erred in rejecting
claims 6 and 16 as being unpatentable under 35 U.S.C. § 103(a).
(3) We reject claims 19 and 20 as being directed to ineligible subject
matter under 35 U.S.C. § 101.
(4) Claims 1, 4–12, and 15–20 are not patentable.
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DECISION
The Examiner’s rejections of claims 1, 4, 5, 7–12, 15, and 17–20 are
affirmed.
The Examiner’s rejection of claims 6 and 16 as being unpatentable
under 35 U.S.C. § 103(a) is reversed.
Claims 1, 4–12, and 15–20 are newly rejected under 35 U.S.C. § 101.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)