Ex Parte Montrone et al

Patent Trial and Appeal Board

Dec 28, 2018

13028304 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/028,304 02/16/2011
22116 7590 01/02/2019
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Francesco Montrone
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.
2010P25253US 8485
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCESCO MONTRONE, ROBERT SCHULTE,
WOLFGANG STREER, and ARIANE SUTOR
Appeal2017-007145
Application 13/028,304 1
Technology Center 3600
Before JAMES R. HUGHES, JENNIFER L. McKEOWN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 6-10, 13, and 14, which are all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Siemens
Aktiengesellschaft. Br. 1.
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Application 13/028,304
STATEMENT OF THE CASE
Introduction
Appellants' application relates to optimizing a maintenance plan for a
plant using constraints related to planned outages of the plant. Spec. ,r,r 1-5.
Claim 1 illustrates the appealed subject matter and read as follows:
1. A method for optimization of maintenance plans for a
plant, comprising:
using input data comprising at least one of a plurality of
indicia regarding a configuration of the plant wherein the
configuration of the plant includes a plurality of plant modules
and a plurality of constraints regarding planned outages of the
plant;
optimizing said input data by a computer processor, the
optimizing comprising,
creating a random sequence of plant modules to
traverse by the computer processor,
for each module in the sequence, constructing a set
of planned outages , and choosing a plurality of random
sequence offsets of planned outages in the set of planned
outages,
for each offset of planned outages of the sequence,
constructing a set of representative starting dates, and
choosing a random sequence of the planned outages in
the offset of planned outages,
for each planned outage in the sequence of
choosing random sequence of the planned outages,
assigning an outage to the starting date which gives best
evaluation results for the plant's output; and
generating a maintenance plan using the optimized input
data by the computer processor with maximum equivalent
power output and availability of the plant per a defined
observation period,
wherein the constraint data comprises minimum and
maximum operational time between outages, the duration of the
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Application 13/028,304
outages, date constraints, and staff constraints, and
wherein each plant module comprises a separate system
of the plant.
The Examiner's Rejections
Claims 13 and 14 stand rejected under pre-AIA 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
Non-Final Act. 2-3.
Claims 1, 6-10, 13, and 14 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Id. at 3--4.
Claims 1, 6-10, 13, and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Iino et al. (US 2005/0246039 Al; Nov. 3, 2005) and Hotta
et al. (US 2008/0172267 Al; July 17, 2008). Id. at 4-8.
ANALYSIS
Written Description
Claims 13 and 14 stand rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
Non-Final Act. 2-3. In particular, the Examiner finds the claim limitation
"shutting down the plant module" is not supported by the Specification. Id.
at 3.
Appellants argue the Examiner erred because the Specification
supports the disputed limitation. Br. 4. According to Appellants, the
Specification discusses plant outages, including outages for modules and
sub-modules. Id. (citing Spec. ,r,r 15, 16, 29-32). Appellants argue these
outages would necessitate shutting down the plant module, as claimed. Id.
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Appellants have persuaded us of Examiner error. The Specification
teaches maintenance plans that distinguish between operational time and
outages. See, e.g., Spec. ,-r,-r 15, 16, 29-32. We agree with Appellants that an
ordinarily skilled artisan would have understood that the planned outages
involve shutting down the relevant modules to achieve an outage. We,
therefore, do not sustain the written description rejection of claims 13 and
14.
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
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.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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.
Assuming that a claim nominally falls within one of the statutory categories
of machine, manufacture, process, or composition of matter, the first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
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relationships. Id. at 2355-57. If the claim is directed to a judicial exception,
such as an abstract idea, the second step is to determine whether additional
elements in the claim "'transform the nature of the claim' into a patent-
eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This
second step is described as "a search for an "'inventive concept"'-i.e., an
element or combination of elements that is ' ... significantly more than ...
the [ineligible concept] itself."' Id. (alteration in original) (quoting Mayo,
566 U.S. at 72-73).
Alice Step One
"[T]he first step in the Alice inquiry ... asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016). "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1854)). "We therefore look to whether
the claims ... focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
Appellants do not specifically argue the Examiner erred in concluding
the claims are directed to an abstract idea. See Br. 4-5. Instead, Appellants
argue the Examiner erred in applying Alice step two. Accordingly, we are
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not persuaded of Examiner error with respect to Alice step one and tum to
Alice step two.
Alice Step Two
The second step in the Alice analysis requires a search for an
"inventive concept" that "must be significantly more than the abstract idea
itself, and cannot simply be an instruction to implement or apply the abstract
idea on a computer." Bascom Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). There must be more than
"computer functions [that] are 'well-understood, routine, conventional
activit[ies]' previously known to the industry." Alice, 134 S. Ct. at 2359
(second alteration in original) (quoting Mayo, 566 U.S. at 73).
Appellants argue claims 1 and 10 are directed to significantly more
than an abstract idea. Br. 4-5. Appellants also argue the Examiner provides
no details, rationale, or application for Appellants to address. Id. Appellants
argue the claims are directed to an improvement for optimizing maintenance
plans for a plant that has not been long prevalent or fundamental to the
practice. Id. at 5. Appellants argue that the Examiner has not established
that it is "unquestionably well-known" that the claims are directed solely to
the abstract idea because, for example, "creating a random sequence of plant
modules to traverse by the computer processor" is more than merely data
collection and/or data analysis. Id.
Appellants also argue the claims amount to more than mere
instructions to implement the idea on a computer. Br. 5. Appellants argue
the claims are not solely directed to data collection and analysis, and include
specific steps to achieve the claimed optimization, thus amounting to
significantly more than the asserted judicial exception. Id.
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Appellants have not persuaded us of Examiner error. Claim 1 is
generally directed to a method for optimization of maintenance plans for a
plant. The method includes using input data comprising indicia regarding a
configuration of the plan, where the configuration includes plant modules
and constraints regarding planned outages. The optimization includes
creating a random sequence of plant modules and, for each module,
performing a sequence of steps to create and test a planned outage,
determining which outage works best for the plant's output. Next, a
maintenance plan is generated using the optimized data. Thus, claim 1
recites a business method for generating a maintenance plan for a plant using
information regarding the plant's modules and business constraints, such as
operational time between outages, outage duration, and data and staff
constraints. The computer limitations in claim 1 are merely tools to achieve
this method. Our reviewing court has also "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 Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in
Credit Acceptance, the focus of the claims is on the business practice, "and
the recited generic computer elements 'are invoked merely as a tool."' Id.
(citing Enfzsh, 822 F.3d 1327); see also Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases).
The claims at issue here are different than in cases such as DDR
Holdings. The Federal Circuit in DDR Holdings found claims necessarily
rooted in computer technology to be patent eligible, but issued a relevant
wammg:
We caution, however, that not all claims purporting to
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address Internet-centric challenges are eligible for patent. For
example, in our recently-decided Ultramercial opinion, the
patentee argued that its claims were "directed to a specific
method of advertising and content distribution that was
previously unknown and never employed on the Internet
before." But this alone could not render its claims patent-
eligible. In particular, we found the claims to merely recite the
abstract idea of "offering media content in exchange for
viewing an advertisement," along with "routine additional steps
such as updating an activity log, requiring a request from the
consumer to view the ad, restrictions on public access, and use
of the Internet."
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir.
2014) ( citations omitted).
The claims in DDR Holdings addressed a problem unique to the
Internet in a manner that was "not merely the routine or conventional use of
the Internet." Id. at 1259. In particular, rather than the expected behavior of
simply sending the website visitor to a third-party website, the claimed
invention behaved in a manner different than expected by sending a website
visitor to a hybrid web page presenting information from a third-party with
the look and feel of the host website. Id. at 1258-59. In contrast, Appellants
have not identified any unconventional behavior by the recited computer
limitations in claim 1. Instead, claim 1 recites using conventional computer
techniques such as retrieving data, comparing data, and making
determinations based on these comparisons. The nature of claim 1 as a
whole is not to define a specific technological improvement, but to recite the
steps necessary to perform the abstract idea itself. Claim 1 employs "generic
processes and machinery" to achieve results, and is not focused on "a
specific means or method that improves the relevant technology." McRO,
837 F.3d at 1314.
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We, therefore, sustain the patent-ineligible subject matter rejection of
claim 1. We also sustain the rejection of independent claim 10, for which
Appellants provide no separate argument. See Br. 4-5. We also sustain the
patent-ineligible subject matter rejection of dependent claims 6-9, 13, and
14, for which Appellants provide no separate argument. See id.
Obviousness
The Examiner finds the combination of Iino and Hotta teaches or
suggests "using input data comprising at least one of a plurality of indicia
regarding a configuration of the plant wherein the configuration of the plant
includes ... a plurality of constraints regarding planned outages of the
plant" and "wherein the constraint data comprises minimum and maximum
operational time between outages, the duration of the outages, date
constraints, and staff constraints." Non-Final Act. 5-6; Ans. 3--4. In
particular, the Examiner finds Iino teaches using a known shutdown and
startup time of a plant, which necessarily fixes the duration of a shutdown
period. Ans. 3--4. The Examiner finds Iino teaches "greater detail
concerning the operation of the plant, but this greater detail necessarily reads
on the broader claim language of simply optimizing on a time period." Id. at
4.
Appellants argue the Examiner erred in finding Iino teaches the
claimed "constraints," including "minimum and maximum operation time
between outages, the duration of the outages, date constraints, and staff
constraints." Br. 6-9. In particular, Appellants argue Iino teaches startup
and shutdown times for the plant, but these teachings do not relate to
constraints on outages, such as the minimum and maximum operational time
between outages, date constraints, and staff constraints. Id. at 6-7.
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Appellants have persuaded us of Examiner error. The Examiner has
not sufficiently explained how Iino' s teachings regarding the startup and
shutdown times of a plant comprise the claimed "minimum and maximum
operation time between outages" or "staff constraints," as recited in claim 1.
Although these dates may be related to outages, the Examiner has not
explained how the startup and shutdown times of a plant relate to constraints
on determining a maintenance plan for that plant, where the constraints
include these additional features.
Accordingly, on this record we do not sustain the obviousness
rejection of independent claim 1. We also do not sustain the obviousness
rejection of independent claim 10, which recites commensurate limitations,
or dependent claims 6-9, 13, and 14, which depend from claim 1.
DECISION
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the decision of the Examiner
rejecting claims 1, 6-10, 13, and 14. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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