Ex Parte O

Patent Trial and Appeal Board

Feb 15, 2019

14467566 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/467,566 08/25/2014
80944 7590 02/20/2019
Hoffman Warnick LLC
540 Broadway
4th Floor
Albany, NY 12207
FIRST NAMED INVENTOR
Keegan Saunders O'Donnell
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.
275992-1 1555
EXAMINER
KUAN, JOHN CHUNY ANG
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
ptocommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEEGAN SAUNDERS O'DONNELL
Appeal2018-003863
Application 14/467,566
Technology Center 2800
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 General Electric Company is the Applicant/ Appellant. Appellant does not
identify a real party in interest. See generally App. Br. Therefore, we
assume the real party in interest is the inventor. 37 C.F.R. § 41.37(c)(i).
Appeal2018-003863
Application 14/467 ,566
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A system comprising:
an oil sensor system for sampling a lubrication oil from a
reciprocating engine coupled with an oil reservoir, the oil
sensor system including a housing having: an oil intake conduit
connected with the oil reservoir and configured to extract oil
from the oil reservoir, and an oil analyzer configured to
measure a characteristic of the lubrication oil extracted from the
oil reservoir; and
at least one computing device coupled with the oil sensor
system, the at least one computing device configured to monitor
the lubrication oil from the reciprocating engine by performing
actions including:
determining an initial ideal remaining life for the
lubrication oil from the reciprocating engine;
determining a temperature-based remaining life for the
lubrication oil based upon a temperature measurement of the
lubrication oil;
calculating a contamination factor of the lubrication oil
based upon a contamination sample of the lubrication oil from
the oil sensor system;
determining an updated ideal life remaining for the
lubrication oil based upon the contamination factor, the initial
ideal remaining life, and the temperature-based remaining life;
and
determining an actual life remaining for the lubrication
oil based upon the updated ideal life remaining and a life loss
factor.
Independent claim 1 7, also directed to a system, differs from claim 1
in that it requires the at least one computing device to perform some
different action steps. Independent claim 10 is directed to non-transitory
2
Appeal2018-003863
Application 14/467 ,566
computer-readable medium comprising a computer program product having
program code stored thereon, which essentially performs the action steps of
claim 1 when executed by at least one computing device.
REJECTIONS
Appellant requests review of the Examiner's final decision to reject
claims 1-20 under 35 U.S.C. § 101 because the claimed invention is directed
to non-statutory subject matter (i.e., an abstract idea) without significantly
more. Final Act. 5; App. Br. 6.
In addition, the Examiner maintains the following obviousness-type
double patenting rejections of claims 1-20:
a. under nonstatutory obviousness-type double patenting as
unpatentable over claims 1-16 of O'Donnell (US 9 ,354,221 B2,
issued May 31, 2016) in view ofBlossfeld (US 8,482.420 B2, issued
July 9, 2013) and Song (US 2006/0169031 Al, published August 3,
2006); and
b. under provisional nonstatutory obviousness-type double
patenting as unpatentable respectively over claims 1-20 of
copending Application No. 14/467,549; claims 1-20 of copending
Application No. 14/467,538; claims 1-20 of copending Application
No. 14/467,534; claims 1-20 of copending Application No.
14/467,555; and claims 1-20 of copending Application No.
14/467 ,526 in view of Blossfeld and Song.
Final Act. 4; Ans. 19-20.
ANALYSIS
Rejection under 35 USC§ 101 (ineligible subject matter)
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
3
Appeal2018-003863
Application 14/467 ,566
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk . . . . ").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices, Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611;
mathematical formulas, Parker v. Flook, 437 U.S. 584, 594--95 (1978); and
mental processes, Gottschalk v. Benson, 409 U.S. 63, 69 (1972). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products," Diamond v. Diehr, 450 U.S. 175, 192
( 1981 ); "tanning, dyeing, making waterproof cloth, vulcanizing India rubber,
smelting ores," id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-
68 (1854)); and manufacturing flour, Benson, 409 U.S. at 69 (citing
Cochrane v. Deener, 94 U.S. 780, 785 (1876)).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
4
Appeal2018-003863
Application 14/467 ,566
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment."
Id. (internal citation omitted) ( citing Benson and Flook); see, e.g., id. at 187
("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an "'inventive
concept"' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "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. (alterations in original) (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
35 U.S.C. § 101, the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (the "Guidance"). 2 Under the
2 We note that the Guidance was not available to the Examiner during the
prosecution of the instant Application.
5
Appeal2018-003863
Application 14/467 ,566
Guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental processes),
( designated as Step 2A (Prong 1) in the Guidance); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)) (designated as
Step 2A (Prong 2) in the Guidance).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception ( designated as Step 2B in the Guidance).
Step 2A (Prong 1) and Step 2A (Prong 2) are used for the analysis
under the first step of Alice, while Step 2B informs the analysis under the
second step of Alice.
Determination of Claims ' Statutory Category
Before any consideration as to whether a claim is directed to a patent
ineligible subject matter, such as an abstract idea, we must first determine if
the claim falls under a statutory category, a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
6
Appeal2018-003863
Application 14/467 ,566
There appears to be no dispute between Appellant and the Examiner
that the claims fall under a statutory category under 35 U.S.C. § 101.
For completeness, we note that independent claims 1, 17, and their
respective dependent claims are system claims. Appellant asserts that these
claims comprise physical systems or components such as an oil sensor
system and computing device. See, e.g., App. Br. 10-11. The Examiner
does not contest this assertion. See generally Final Act. and Ans. Therefore,
we interpret claims 1, 1 7, and their respective dependent claims as falling
under the statutory category of "machine," i.e. a structure which can be
termed a machine under 35 U.S.C. § 101.
On the other hand, independent claim 10 and its dependent claims
recite a computer readable medium, which the Specification describes as
"one or more portable storage articles of manufacture; one or more
memory/storage components of a computing device; paper; etc." Spec. ,r 52.
Manufactures are articles that result from the process of manufacturing, i.e.,
they were produced "from raw or prepared materials by giving to these
materials new forms, qualities, properties, or combinations, whether by
hand-labor or by machinery." Samsung Elecs. Co. v. Apple Inc., 137 S. Ct.
429, 435 (2016) (quoting Diamond v. Chakrabarty, 447 U. S. 303, 308,
(1980)); In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007).
Manufactures also include "the parts of a machine considered separately
from the machine itself." Samsung Elecs., 137 S. Ct. at 435 (quoting 1 W.
Robinson, The Law of Patents for Useful Inventions §183, p. 270 (1890)).
Therefore, we interpret claim 10 and its dependent claims as falling under
the statutory category of "manufacture" under 35 U.S.C. § 101.
Having established that the claims fall in a statutory category, we now
7
Appeal2018-003863
Application 14/467 ,566
proceed to analyze the claims to determine if they are directed to a patent
ineligible subject matter following the Guidance.
Determination of Patent Subject Matter Eligibility
Independent claims 1 and 17 (system claims)
a. Alice Step !(Office Revised Step 2A (Prong 1))
The Examiner determined that the subject matter of independent
claims 1 and 17 are directed to an abstract idea. Ans. 2--4, 19.
Under Step 2A (Prong 1) of the Guidance, we must first determine
whether the claims include any limitations that fall within the subject matter
groupings of abstract ideas enumerated in Section I of the Guidance.
Guidance, 84 Fed. Reg. at 51-54.
As the Examiner notes, 3 independent claim 1 comprises an oil sensor
system and at least one computing device and also includes the following
limitations:
determining an initial ideal remaining life for the
lubrication oil from the reciprocating engine;
determining a temperature-based remaining life for the
lubrication oil based upon a temperature measurement of the
lubrication oil;
calculating a contamination factor of the lubrication oil
based upon a contamination sample of the lubrication oil from
the oil sensor system;
3 We disagree with Appellant's assertion that grouping limitations that may
be directed to an abstract idea skirts the analysis of each and every feature of
the claim. App. Br. 12. The identification of limitations that may be
directed to an abstract idea is a necessary step to "first determine whether the
claims at issue are directed to a patent-ineligible concept." Alice, 573 U.S.
at 218.
8
Appeal2018-003863
Application 14/467 ,566
determining an updated ideal life remaining for the
lubrication oil based upon the contamination factor, the initial
ideal remaining life, and the temperature-based remaining life;
and
determining an actual life remaining for the lubrication
oil based upon the updated ideal life remaining and a life loss
factor.
Ans. 3.
Like claim 1, claim 1 7 recites a system that comprises an oil sensor
system and at least one computing device and also includes the following
limitations:
predicting an initial ideal remaining life for the
lubrication oil from the reciprocating engine;
determining a temperature-based remaining life of the
lubrication oil based upon a measured temperature of the
lubrication oil;
determining a contamination factor of the lubrication oil
based upon a measured contaminant level of the lubrication oil
from the oil sensor system;
determining a life loss factor of the lubrication oil based
upon the initial ideal remaining life, the temperature-based
remaining life, and the contamination factor;
determining an amount of life lost from the lubrication oil
based upon the life loss factor and a sampled frequency of the
lubrication oil;
calculating a refined ideal remaining life for the
lubrication oil based upon the amount of life lost and the initial
ideal remaining life; and
predicting an actual remaining life of the lubrication oil
based upon the refined ideal remaining life and the life loss
factor.
Even though the limitations for the actions to be performed in system
claims 1 and 17 by the at least one computing device are different, we
9
Appeal2018-003863
Application 14/467 ,566
address these claims together because the patent subject matter eligibility
analysis for both claims is the same. See Ans. 19.
Claims 1 and 1 7 recite various determining steps and a calculating
step. Claim 17 additionally recites various predicting steps. Under their
broadest reasonable interpretation, these steps, as drafted, are processes that
cover performance of the limitations in the mind but for the recitation of
generic computing device. That is, other than reciting "the at least one
computing device," nothing in the claims precludes each step from
practically being performed in the human mind. For example, but for "the at
least one computing device" language, the claims encompass the user
manually calculating an actual life remaining for the lubrication oil based
upon the updated ideal life remaining and a life loss factor from temperature
observations. The mere nominal recitation of a generic computing device
does not take the claim limitations out of the mental processes grouping.
Thus, claims 1 and 17 recite a mental process. Therefore, we agree
with the Examiner's overall determination that claims 1 and 17 are directed
to an abstract idea. Ans. 3--4.
We understand that the Examiner evaluated independent claims 1 and
1 7 as broadly encompassing the abstract idea of a mathematical concept in
view of the mathematical formulae and/or relationships recited in dependent
claims 2-7, 9, and 20. See Ans. 2--4. However, under the Guidance, claims
1 and 17 are best described as being directed to mental processes given that
they do not explicitly recite a mathematical concept.
10
Appeal2018-003863
Application 14/467 ,566
b. Alice Step 1 (Office Revised Step 2A (Prong 2))4
Having determined that the subject matter of claims 1 and 17 are
directed to an abstract idea, we now consider under Step 2A (Prong 2) of the
guidance whether each claim as a whole integrates the recited judicial
exception into a practical application of the exception. Guidance, 84 Fed.
Reg. at 54. "A claim that integrates a judicial exception into a practical
application will apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception."
Id.
Independent claims 1 and 17 recite an oil sensor system and at least
one computing device. These additional elements do not recite a specific
use for the determined actual life remaining for the lubrication oil to provide
a specific improvement over prior systems and only add insignificant extra-
solution activity to the judicial exception. That is, the additional elements
do not apply, rely on, or use the judicial exception in a manner that imposes
a meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.
Appellant asserts that the claimed invention improves the technology
relating to computers. App. Br. 12. Appellant cites to paragraphs 3-5, 18,
and 19 of the Specification to support the assertion that the invention
improves the technology relating to computers. Id. at 13. We have
4 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See generally
Guidance, 84 Fed. Reg. 50.
11
Appeal2018-003863
Application 14/467 ,566
reviewed the noted portions of the Specification and find no support for the
stated assertion. The cited portions of the Specification primarily provide an
overview of the state of the art and do not adequately discuss a specific
improvement of technology related to computers. Moreover, Appellant does
not address the reference to Song relied upon by the Examiner, which
discloses an oil monitoring system comprising an oil sensor system and a
computing device (Song Figure 1 and ,r,r 10-11). Appellant does not explain
how the claimed invention is an improvement over Song's system.
Appellant additionally argues that there is no preemption because the
claims are directed to approaches for determining lubrication oil quality
which includes various specific processes in operational order. App. Br. 13-
14.
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); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-
13 63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the ecommerce
setting do not make them any less abstract."). And, "[ w ]here a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot." Ariosa, 788 F.3d at 1379.
We, thus, find nothing in the claims which goes beyond the abstract
idea to transform the claim into eligible subject matter. Therefore, each
claim as a whole does not integrate the mental process into a practical
application.
12
Appeal2018-003863
Application 14/467 ,566
c. Alice Step 2 (Office Step 2B)
We next determine whether additional elements recited in the claims
provide "significantly more" than the recited judicial exception. That is,
whether additional elements provide an inventive concept. Our
consideration includes whether the additional elements represent well
understood, routine, and conventional activity.
As noted above, independent claims 1 and 1 7 recite an oil sensor
system and at least one computing device.
We agree with the Examiner that Song establishes the claimed oil
sensor system and its use to measure a characteristic of the lubrication oil
extracted from the oil reservoir as a well understood, routine, conventional
activity. Ans. 4; see Song Figure 1 (element 5) and ,r,r 2, 6, 10.
We also agree with the Examiner's determination that the claimed
computing device is a well understood, routine and conventional activity.
Ans. 4; Final Act. 6-7. Further, courts have recognized the performance of
repetitive calculations by a computer as a well understood, routine,
conventional activity. Flook, 437 U.S. at 594 (recomputing or readjusting
alarm limit values); Bancorp Servs. L.L. C. v. Sun Life Assurance Co,, 687
F.3d 1266, 1278 (Fed. Cir. 2012) ("The computer required by some of
Bancorp' s claims is employed only for its most basic function, the
performance of repetitive calculations, and as such does not impose
meaningful limits on the scope of those claims.").
Appellant appears to argue that the claimed oil sensor system is not
conventional because of the individually claimed components that form the
oil sensor system. App. Br. 8-9. We find this argument unavailing because
Appellant does not address the Examiner's reliance on Song to establish oil
13
Appeal2018-003863
Application 14/467 ,566
sensor systems as well understood, routine and conventional. Ans. 4; see
Song Figure 1 (element 5) and ,r,r 2, 6, 10. Further, Appellant does not
adequately explain how the claimed oil sensor system provides an inventive
concept.
With respect to the inconsistency regarding the Examiner's
determinations over the prior art and the patent-ineligible subject matter
(App. Br. 13), a novel or nonobvious way of analyzing data would not
normally render patent-eligible a claim directed to an oil sensor system and
generic computer functioning as they are always expected to. This is so
because a finding of novelty or nonobviousness does not necessarily lead to
the conclusion that subject matter is patentable eligible. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). The question in step two of the Alice framework is not
whether an additional feature, i.e., the calculation, is novel but whether the
implementation of the abstract idea involves "more than performance of
'well-understood, routine, [and] conventional activities previously known to
the industry."' Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (alteration in
original) (quoting Alice, 573 U.S. at 225). This will depend on whether or
not the oil sensor system and computer device are simply acting as a conduit
for the data-manipulating abstract idea, as novel/nonobvious as that might
be. Cf In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607,612 (Fed. Cir.
2016).
Song's oil monitoring system comprising an oil sensor system and a
computing device (Song Figure 1 and ,r,r 10-11) supports the view that the
14
Appeal2018-003863
Application 14/467 ,566
claimed oil sensor system and computing device are merely conduits for the
abstract idea of determining an actual life remaining for the lubrication oil
based upon other determined parameters.
"Taking the claim elements separately, the function performed by the
computer at each step of the process is '[p ]urely conventional."' Alice,
573 U.S. at 225 (alteration in original) (citing Mayo, 566 U.S. at 79)
("Considered 'as an ordered combination,' the computer components of
petitioner's method 'ad[d] nothing ... that is not already present when the
steps are considered separately.")
Therefore, the additional elements recited in independent claims 1 and
1 7 do not provide "significantly more" than the recited judicial exception.
Appellant does not present separate arguments for claims 2-9, all
ultimately dependent from claim 1, and for claims 18-20, all ultimately
dependent from claim 17. See generally App. Br. These claims do not add
any limitations that would take them out of the mental processes grouping or
add additional elements that integrate the mental process into a practical
application or provide an inventive concept for the reasons given above. In
fact, claims 2-7, 9, and 20 specify mathematical equations and/ or
relationships to be used in performing the claimed actions. This lead us to
conclude that these claims, in addition to being directed to a mental process,
are also directed to the abstract idea of mathematical concepts involving
mathematical relationships, mathematical formulas or equations. Based on
our analysis above, we also find that these claims, when considered as a
whole, do not integrate the mathematical concept into a practical application
nor do they include additional elements that provide "significantly more"
than the recited judicial exception.
15
Appeal2018-003863
Application 14/467 ,566
Independent claim 10
a. Alice Step 1 (Office Revised Step 2A (Prong 1))
Independent claim 10 recites a non-transitory computer-readable
medium comprising a computer program product having program code
stored thereon that, when executed by at least one computing device, causes
the at least one computing device to monitor a lubrication oil from a
machine by performing actions essentially recited in claim 1. We note that
the claim is directed only to a non-transitory computer-readable medium and
no additional elements, such as the oil sensor system and the at least one
computing device, are positively recited in the claim.
The Examiner determined that the subject matter of independent claim
10 is directed to an abstract idea. Ans. 19.
As previously indicated, claim 10 recites a computer program product
having program code stored thereon that causes the at least one computing
device to monitor a lubrication oil from a wind turbine by performing
actions essentially recited in claim 1. Therefore, claim 10 recites a mental
process for the reasons presented above.
b. Alice Step 1 (Office Revised Step 2A (Prong 2))
Independent claim 10 is limited to a non-transitory computer-readable
medium and, as such, does not positively recite additional elements, such as
the oil sensor system and the at least one computing device. Therefore, we
find claim 10 as a whole does not integrate the mental process into a
practical application because it lacks additional elements that apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.
16
Appeal2018-003863
Application 14/467 ,566
c. Alice Step 2 (Office Step 2B)
Having determined that claim 10 lacks additional elements under Step
2A (Prong 2), it follows that claim 10 also lacks additional elements that
provide "significantly more" than the recited judicial exception.
Appellant does not present specific arguments addressing the rejection
of claim 10. To the extent that Appellant relies on arguments presented for
claims 1 and 17 to address the rejection of claim 10 (see generally App. Br.),
we have addressed these arguments above.
Appellant also does not present separate arguments for claims 11-16,
all ultimately dependent from claim 10. See generally App. Br. These
claims do not add any limitations that would take these claims out of the
mental processes grouping or add additional elements that integrate the
mental process into a practical application or provide an inventive concept
for the reasons given above. In fact, claims 11 and 13-16 recite
mathematical equations/formulae and/or relationships to be used in
performing the claimed actions. Thus, similar to some of the claims that
depend from claims 1 and 17, we conclude that claims 11 and 13-16, in
addition to being directed to a mental process, are also directed to the
abstract idea of mathematical concepts involving mathematical relationships,
mathematical formulas or equations. Based on our analysis above, we also
find that these claims, when considered as a whole, do not integrate the
mathematical concept into a practical application nor do they include
additional elements that provide "significantly more" than the recited
judicial exception.
Accordingly, we affirm the Examiner's rejection of claims 1-20 under
35 U.S.C. § 101 for the reasons given above and presented by the Examiner.
17
Appeal2018-003863
Application 14/467 ,566
Nonstatutory obviousness-type double patenting
The Examiner rejects claims 1-20 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over O'Donnell's claims
in view of Blossfeld and Song and on the ground of provisional nonstatutory
obviousness-type double patenting as unpatentable over the claims of several
copending Applications, each in view of Blossfeld and Song. Final Act. 4.
Appellant does not substantively address the nonstatutory double
patenting rejection in the Appeal or Reply Briefs. See App. Br. 15-16 and
Reply Br. 13-14.5
Accordingly, we summarily sustain the Examiner's rejection of claims
1-20 on the grounds of nonstatutory double patenting and provisional
nonstatutory double patenting. See MPEP § 1205.02 (2017) ("If a ground of
rejection stated by the examiner is not addressed in the appellant's brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it."); see also Ex parte Frye, 94 USPQ2d 1072, 1075
(BP AI 2010) (precedential) ("If an appellant fails to present arguments on a
particular issue----or more broadly, on a particular rejection-the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection.").
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 are
affirmed.
5 Appellant indicated a willingness to consider filing a terminal disclaimer to
address these rejections should any claim be indicated as allowable. App.
Br. 16; Reply Br. 14.
18
Appeal2018-003863
Application 14/467 ,566
The Examiner's rejections of claims 1-20 on the grounds of
nonstatutory double patenting and provisional nonstatutory double patenting
are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
19