Ex Parte SIMCOCK et al

Patent Trial and Appeal Board

Mar 28, 2019

14888198 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/888,198 10/30/2015
27683 7590 04/01/2019
HA YNES AND BOONE, LLP
IP Section
2323 Victory A venue
Suite 700
Dallas, TX 75219
FIRST NAMED INVENTOR
MICHAEL N. SIMCOCK
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.
7523.536US01 1306
EXAMINER
AMARA, MOHAMED K
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL N. SIMCOCK and DAVID L. PERKINS
Appeal2018-003421
Application 14/888, 198
Technology Center 2800
Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
LILAN REN, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-26 under 35 U.S.C. § 102(a)(l) as
anticipated by U.S. Patent Application Publication No. 2012/0150451 Al,
published June 14, 2012 ("Skinner") and provisionally rejecting claims 17-
21 under the ground of non-statutory obviousness-type double patenting as
1 Our decision refers to the Specification ("Spec.") filed October 30, 2015,
the Examiner's Final Office Action ("Final") dated May 25, 2017,
Appellant's Appeal Brief ("Appeal Br.") filed August 24, 2017, the
Examiner's Answer ("Ans.") dated December 11, 2017, and Appellant's
Reply Brief ("Reply Br.") filed February 9, 2018.
2 Appellant is the Applicant, Halliburton Energy Services, Inc., which is
identified in the Appeal Brief as the real party in interest (Appeal Br. 2).
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Application 14/888, 198
unpatentable over claims 1 and 11-13 of copending U.S. Patent Application
No. 13/657,981, filed October 23, 2012 ("Jones"). We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE, but designate a NEW GROUND OF REJECTION as
to claims 1-15 pursuant to 37 C.F.R. § 4I.50(b).
STATEMENT OF THE CASE
The invention relates to multivariate optical computing devices and
methods that utilize an Integrated Computational Element ("ICE") designed
to detect multiple sample characteristics (Spec. 1 :5-6). Appellant discloses
that one type of an ICE is an optical thin film interference device, also
known as a Multivariate Optical Element ("MOE") (id. at 1: 17-18).
Claims 1, 17, and 19, reproduced below from the Claims Appendix to
the Appeal Brief, are illustrative of the subject matter on appeal.
1. A method for designing an Integrated Computational Element
("ICE"), comprising:
defining a preliminary ICE design;
defining a first chemical system having one or more
components;
defining a second chemical system having one or more
components;
determining a first performance factor of the preliminary ICE
design which corresponds to the first chemical system;
determining a second performance factor of the preliminary
ICE design which corresponds to the second chemical system;
summing the first and second performance factors to produce a
total performance factor; and
determining a final ICE design based upon the total
performance factor.
17. An Integrated Computational Element ("ICE") which
approximates a regression vector of a plurality of chemical systems.
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19. An optical computing device, comprising:
an electromagnetic radiation source which produces
electromagnetic radiation that optically interacts with a fluid sample
to produce sample-interacted light;
at least one Integrated Computational Element ("ICE") that
approximates a regression vector of a plurality of chemical systems,
the at least one ICE being positioned to optically interact with the
sample-interacted light to produce optically-interacted light that
corresponds to at least one characteristic within the fluid sample; and
an optical transducer positioned to receive the optically-
interacted light and thereby generate a signal corresponding to the at
least one characteristic of the fluid sample.
ANALYSIS
Obviousness-type Double Patenting Rejection
As an initial matter, we note that the Jones application is no longer
pending. Therefore, this rejection is moot.
Anticipation Rejection
Anticipation under 35 U.S.C. § 102 requires that each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference. In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999). But, disclosure of each element is not quite enough.
Anticipation also requires the presence of a single prior art disclosure of all
elements of a claimed invention arranged as in the claim. Finisar Corp. v.
DirecTV Group, Inc., 523 F.3d 1323, 1334-35 (Fed. Cir. 2008); Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008)
( Clarifying that an anticipation "test is thus more accurately understood to
mean 'arranged or combined in the same way as in the claim."').
The issue before us on appeal of this rejection is whether the
Examiner reversibly erred in finding that Skinner's ICE, the method of its
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design, as well as optical computing device and method of using it,
anticipates Appellant's claimed invention. For the reasons presented in the
Appeal and Reply Briefs and below, we answer this question in the
affirmative and, therefore, do not sustain this rejection. We note that claims
1-15 recite methods for designing an Integrated Computational Element
("ICE"), whereas claims 16-18 recite ICE devices, claims 19-21 recite
optical computing devices using at least one ICE device, claims 22-25 recite
optical computing methods with an ICE device, and claim 26 recites a
system comprising processing circuitry to implement the method of claim 1.
For the reasons given below, we treat each of these claim groupings
separately.
Claims 1-15
The Examiner finds that Skinner teaches a method for designing an
ICE comprising defining a preliminary ICE design, defining first and second
chemical systems each having one or more components, determining first
and second performance factor of the preliminary ICE design corresponding,
respectively, to the first and second chemical systems, summing these
performance factors to produce a total performance factor, and determining a
final ICE design based upon the total performance factor (Final 14--15). The
Examiner specifically finds that Skinner's ICE is designed to measure
different fluids, e.g., petroleum and drilling oil, and also finds that the
chemical compounds in petroleum can be chosen to offer first and second
chemical systems, thereby ensuring that each chemical system has its own
spectral signature (id. at 14). In addition, the Examiner finds that Skinner's
dot products correspond to the recited first and second performance factors,
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wherein at least two dot products calculated using vector regression are
added or summed (id.).
Appellant argues that Skinner differs from the claimed invention in
that Skinner fails to teach a single ICE predictive of multiple, different
chemical systems ( Appeal Br. 6-7). 3 Appellant contends that unlike the
claimed invention, Skinner's ICE is only predictive of a single chemical
system (id. at 7). In order to detect a plurality of chemical systems,
Appellant asserts that Skinner utilizes multiple ICEs, rather than a single
ICE (id. at 7-8). Appellant concedes that it is possible to design an ICE to
be predictive for any number of chemical systems, but argues that such an
ICE, once fabricated in accordance with Skinner's disclosure, is only
predictive for a single chemical system (id. at 8). In this regard, Appellant
contends that a "chemical system" is defined as comprising "one or more
chemical components," wherein the "components are a spectral data set
representing a target characteristic and interferents associated with the
chemical system" (id. at 6-7).
Appellant's arguments are persuasive of reversible error. As
Appellant concedes, there is little doubt that Skinner teaches an ICE that can
be designed to be used with a variety of chemical systems. However, as
3 We note Appellant construes the claims as requiring that the plural
chemical systems are different. We further note that the Examiner does not
offer a different construction. Because the entire application is directed to
producing and using an ICE that approximates the regression vector for
plural chemical systems that are different, we likewise accept this
construction as the broadest reasonable construction consistent with the
Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004).
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Appellant contends, Skinner fails to teach designing a single ICE based on
plural, different chemical systems. See Skinner, Figs. 10 and 11 (requiring
multiple MO Es to measure different chemical systems). Thus, the record
does not support the Examiner's findings that Skinner teaches defining first
and second chemical systems each having one or more components, and
determining a first and a second performance factor of the preliminary ICE
design corresponding, respectively, to the first and second chemical systems,
where these performance factors are summed to provide a total performance
factor from which the final ICE design is based. Although Skinner appears
to provide an ICE for each of different fluids, such as petroleum and drilling
oil, where each fluid would be a different chemical system each having a
data set with its own spectral signature (id.; see also ,r,r 62, 75, and 76), the
Examiner fails to support the finding that Skinner ever combines spectral
data sets from different chemical systems when designing a single ICE.
Indeed, Skinner's teaching of summing dot products of the passed
wavelengths and corresponding vectors is performed on a single spectral
data set (id. i-fi-f 60-61 ), and is not a step of summing performance factors of a
preliminary ICE design for different chemical systems.
Accordingly, we are persuaded of reversible error in the Examiner's
finding that Skinner anticipates claims 1-15.
Claim 16
Claim 16 recites an ICE fabricated by the method of claim 1. Here,
the Examiner does not specifically address this product-by-process claim,
instead relying on the earlier finding that Skinner anticipates method claim
1. Because we determine that this finding is erroneous, we likewise find
reversible error in the Examiner's rejection of claim 16.
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Claims 17-18
Claim 17 recites an ICE "which approximates a regression vector of a
plurality of chemical systems." Claim 18 depends from claim 17 and further
requires that the chemical systems comprise a single characteristic in
different fluids, a single characteristic having differing concentration ranges
in a single fluid, or different characteristics.
The Examiner finds Skinner teaches an ICE designed to
detect/measure chemical elements of a chemical makeup of samples which
allow measuring the amount of fuel and/or its chemical makeup from the
intensity of the spectral optical signal as known in spectroscopy, by using a
regression vector (Ans. 8). The Examiner also finds Skinner teaches
employing plural ICE devices sequentially to measure the concentration of
various chemical species burning in a flare (id. at 8-9).
As above, the Examiner reversibly errs in finding that Skinner
anticipates the ICE of claims 17 and 18 because there is no support that
Skinner's ICE is designed so as to approximate a regression vector of plural,
different chemical systems. The fact that Skinner requires plural ICE
devices to detect or measure the various chemical species burning in a flare
supports Appellant's argument that Skinner's individual ICEs are each
designed for a single chemical system, not plural, different chemical
systems.
Claims 19-25
Claims 19 and 22 recite an optical computing device and an optical
computing method, respectively, which include at least one ICE that
"approximates a regression of a plurality of chemical systems." As
discussed above, we are persuaded of reversible error in the finding that
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Skinner anticipates such an ICE. Likewise, we are persuaded that Skinner
fails to anticipate an optical computing device and method using such an
ICE.
Claim 26
Claim 26 recites a system comprising processing circuitry to
implement the method of claim 1. The Examiner finds that Skinner teaches
a computer and electric circuitry used to produce an ICE according to claim
1. As discussed above, Appellant persuades us that the Examiner reversibly
erred in finding that Skinner anticipates the method of claim 1. For the same
reasons, we are also persuaded that Skinner fails to anticipate the system
comprising processing circuitry to implement the method of claim 1.
New Ground of Rejection
Claims 1-15 and 26 are newly rejected under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter.
Legal Framework
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
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, our
inquiry focuses on 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."
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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, 191
( 1981) ); "tanning, dyeing, making water-proof 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
mathematical formula." Diehr, 450 U.S. at 176; 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
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environment." Id. ( 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 (quotation marks 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. (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 Office recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"), 84 Fed. Reg. 50.
Under that 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 activity such as a fundamental
economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim recites a judicial exception and 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
is not "well-understood, routine, conventional" in the field
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(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.
See generally Memorandum.
Analysis
Applying the guidance set forth in the Memorandum, we conclude
that claims 1-15 and 26 do not recite patent-eligible subject matter.
Revised Step 2A, Prong One-Directed to a Judicial Exception
The Memorandum instructs us first to determine whether each claim
recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The
Memorandum identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. Id. at 52.
We primarily focus here on the third grouping-mental processes. 4
Although the Specification describes the invention as directed to a
structure that Appellant refers to as an ICE, and, more particularly, to a
multivariate optical element designed to detect multiple sample
characteristics in a plurality of different chemical systems, claims 1-15 and
26 are not directed to such a structure, but to methods and a system for its
design. These design methods and system are directed to the abstract
concept of mental processes, wherein the defining steps merely present the
information that will be processed and the determining steps merely present
a parameter or parameters from the defined information that are summed so
as to determine a final design. Appellant's design process is analogous to an
4 As discussed further below, the "summing" step of the method also
implicates the first grouping-mathematical concepts.
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engineer designing, for instance, the structure of a house to stand up to a
hurricane and a flood by selecting a preliminary design composed of two-by-
fours, trusses, and other structures needed to hold up the roof and keep the
house from falling down, based on the known ability of the various lumber
structures to bear weight, determining the performance factor for the
preliminary design withstanding the force of hurricane winds and the
performance factor for the preliminary design withstanding flood waters,
summing both performance factors, and then determining a final design
capable of withstanding both a hurricane and a flood by reviewing and
resetting the placement of the various structures in the basic design. These
are mental steps whether they are performed on a computer or in one's mind.
With regard to claim 1, in particular, each of the defining steps is
recited at a high level of generalization and merely provides information to
be used in the process. Providing information is a step that can be
performed in the human mind. As such, these defining steps, including the
steps of (1) "defining a preliminary ICE design," (2) "defining a first
chemical system having one or more components," and (3) "defining a
second chemical system having one or more components," are mental steps
directed to a mental process. Similarly, each of the determining steps is also
recited at a high level of generalization and merely provides information, as
a result of reasoning, observation, research, or calculation, to be used in the
process. Again, determining information is a step that can be performed in
the human mind. As such, these determining steps, including
(4) "determining a first performance factor of the preliminary ICE design
which corresponds to the first chemical system," (5) "determining a second
performance factor of the preliminary ICE design which corresponds to the
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second chemical system," and ( 6) "determining a final ICE design based
upon the total performance factor," are mental steps directed to a mental
process. The remaining step recited in claim 1, the step of "summing the
first and second performance factors to produce a total performance factor,"
recites a basic mathematical operation, addition, and is directed to a
mathematical concept.
Independent claim 12 recites a single defining step, specifically,
( 1) "defining a plurality of chemical systems that each represent one or more
components," and a single determining step, specifically, (2) "determining a
single ICE design that corresponds to the plurality of chemical systems"
(Appeal Br. 14 (Claims App'x)). Thus, claim 12 recites the defining and
determining steps at an even higher level of generality that claim 1.
Fundamentally, this claim is directed to a mental process for substantially
the same reasons as provided above regarding claim 1. The defining step
merely provides information that can be used in the process, wherein
providing information is a step that can be performed in the human mind.
The determining step merely provides information, as a result of reasoning,
observation, research, or calculation, to be used in the process, wherein the
determining information is a step that can be performed in the human mind.
As such, the defining and determining steps are mental steps, and claim 12,
therefore, is directed to a mental process.
We further note that these steps are similar to other concepts the
courts have identified as abstract mental processes. See Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016) (methods of logic
circuit design, comprising converting a functional description of a level
sensitive latch into a hardware component description of the latch); Digitech
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Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014) ( organizing information through mathematical correlations). In
Electric Power Group, our reviewing court explained that concepts of
collecting and analyzing information, when broadly claimed, fall within the
"realm of abstract ideas":
Information as such is an intangible. See Microsoft Corp. v. AT
& T Corp., 550 U.S. 437,451 n.12 (2007); Bayer AG v. Housey
Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003).
Accordingly, we have treated collecting information, including
when limited to particular content ( which does not change its
character as information), as within the realm of abstract ideas.
See, e.g., Internet Patents, 790 F.3d at 1349; OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015);
Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). In a similar vein,
we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea
category. See, e.g., TL! Commc 'ns, 823 F.3d at 613; Digitech,
758 F.3d at 1351; SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F. App'x 950, 955 (Fed. Cir. 2014); Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Canada (US.), 687
F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRF
Tech., Inc. v. Int'! Trade Comm 'n, 601 F.3d 1319, 1333 (Fed.
Cir. 2010); see also Mayo, 132 S. Ct. at 1301; Parker v. Flook,
437 U.S. 584, 589--90 (1978); Gottschalkv. Benson, 409 U.S.
63, 67 (1972). And we have recognized that merely presenting
the results of abstract processes of collecting and analyzing
information, without more ( such as identifying a particular tool
for presentation), is abstract as an ancillary part of such
collection and analysis. See, e.g., Content Extraction, 776 F.3d
at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014).
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Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016).
Dependent claims 2-11 and 13-15 recite additional limitations on the
information the defining steps provide and/or the manner by which the
determining steps are performed. As discussed above, merely limiting the
type and/or format of the information here does not render the mental
process any less abstract. With regard to the manner by which the
determining steps are performed, we note that claim 5 recites, (1) "applying
a regression vector of the preliminary ICE design to the first data set," and
(2) "applying the regression vector of the preliminary ICE design to the
second data set" (Appeal Br. 14 (Claims App'x)), whereas claim 14 recites,
(3) "applying a regression vector to the calibration data sets to thereby
determine a performance factor" (id.). Regression vector analysis is a
mathematical operation and, therefore, is an abstract concept. Accordingly,
applying the guidance in the Memorandum, we conclude that claims 1-15
and 26 each recite a mental process, and thus recite abstract ideas.
Revised Step 2A, Prong Two - Practical Application
Having determined that claims 1-15 and 26 recite the abstract concept
of a mental process, we next look to determine whether the claims recite
"additional elements that integrate the judicial exception into a practical
application." MPEP § 2106.05(a}-(c), (e}-(h); Memorandum, 84 F.3d at
53-54. Integration into a practical application requires an additional element
or a combination of additional elements in the claim to "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 exception." Memorandum, 84 Fed. Reg. at 53-54; see
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also id. at 55 (setting forth exemplary considerations indicative that an
additional element or combination of elements may have integrated the
judicial exception into a practical application).
Here, we find none. We find that the additional elements claims 1-15
and 26 recite do not integrate the judicial exception into a practical
application. Notably, the claims do not recite, and the Specification does not
describe, an improvement to the functioning of a computer, or to any other
technology or technical field. Nor are the additional elements directed to a
particular machine or transformation. The claims do not require any step of
actually fabricating the ICE as, for example, shown in Figure 1, based on the
final ICE design. Further, we note that Appellant's design method and
system both utilize regression analysis to determine performance factors,
which are then summed to arrive at a final performance factor. Regression
analysis and summation are abstract mathematical concepts. With regard to
the system comprising processing circuitry for implementing Appellant's
design method as recited in claim 26, we note that Appellant merely
discloses a general computer processing environment comprising at least one
processor, a non-transitory, computer readable storage, a network
communication module, and optional I/0 devices and display, all
interconnected via a system bus (Spec. 7:3-13). 5 But such disclosure does
not integrate the mental processes recited in the claims into a practical
application. See Memorandum, 84 Fed. Reg. at 55 (setting forth examples in
5 Although some of these considerations also may be properly evaluated
under Step 2 of Alice (Step 2B of Office guidance), consistent with the
Memorandum, we evaluate them under Step 1 of Alice (Step 2A of Office
guidance). See Memorandum, 84 Fed. Reg. at 55.
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which a judicial exception has not been integrated into a practical
application).
Step 2 B-Inventive Concept
Because we determine that claims 1-15 and 26 are directed to an
abstract idea and they do not include additional elements that integrate the
abstract idea into a practical application, we look to whether each claim
provides an inventive concept, i.e., adds a specific limitation beyond the
judicial exception that is not "well-understood, routine, conventional" in the
field. Memorandum, 84 Fed. Reg. at 56. Again, we find none. Although
some of the dependent claims recite the differences between the chemical
systems as presented in the spectral data sets, these differences merely exist
in the information upon which the mental process is applied. As such, these
differences in information are part of the abstract idea and are not limitations
beyond the judicial exception. Further, although other dependent claims
recite that the performance factor determining steps apply a regression
vector to these data sets, such is merely an abstract mathematical concept.
Therefore, these steps applying a regression vector to the data sets are also
part of the abstract idea and are not limitations beyond the judicial
exception. Appellant also discloses that the prior known ICE design process
entailed performing a process similar to that of claim 1, albeit only for a
single chemical system (Spec. 2:3-15).
As for claim 26, this claim broadly recites any system comprising any
processing circuitry for implementing the process of claim 1. Processing
circuitry is so well-understood, routine, and conventional that we take
Official Notice of this fact. We note, as set forth above, that Appellant
merely discloses a general computer processing environment comprising at
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least one processor, a non-transitory, computer readable storage, a network
communication module, optional I/0 devices and display, all interconnected
via a system bus (Spec. 7:3-13). Indeed, Appellant describes further that the
method may be practiced on a wide variety of computer system
configurations (id. at 7 :20-31 ), thus recognizing the well-understood,
routine, and conventional nature of the system comprising processing
circuitry that may implement claim 1 's design method. See TL! Commc 'ns
LLC v. AV Auto. LLC, 823 F.3d 607 (Fed. Cir. 2016). As stated in Alice,
"the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." Alice, 573 U.S.
223.
Accordingly, we conclude that method claims 1-15 and system claim
26 are directed to patent ineligible subject matter under 35 U.S.C. § 101.
They ensnare the basic idea of creating a product design based on abstract
mental processes and do not recite additional elements that integrate those
mental processes into a practical application. Further, implementing the
abstract idea on a general purpose computer does not transform it into a
patentable apparatus; the idea remains a pre-empted mental process. Alice,
573 U.S. 208,216 (2014) ("We have described the concern that drives this
exclusionary principle as one of pre-emption.") ( citing Bilski v. Kappas, 561
U.S. 593, 612 (2010) ("[U]pholding the patent 'would pre-empt use of this
approach in all fields, and would effectively grant a monopoly over an
abstract idea."')). Here, the decision-making processes and design output of
the claims are abstract ideas, and the use of a general computer does not
transform the nature of the abstract decision-making process design output
into something that is patent eligible.
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Appeal2018-003421
Application 14/888, 198
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1-26 under 35 U.S.C. § 102(a)(l) as anticipated by Skinner is
reversed.
However, for the reasons given above, claims 1-15 and 26 are newly
rejected under 35 U.S.C. §101 as being directed to patent ineligible subject
matter.
This decision contains a new ground of rejection pursuant to 37 CPR
§ 4I.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CPR
§ 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review."
37 CPR § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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 ....
REVERSED
37 C.F.R. § 4I.50(b)
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