Ex Parte Tarassenko et al

Patent Trial and Appeal Board

Aug 30, 2017

13201082 (P.T.A.B. Aug. 30, 2017)

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.
13/201,082 09/27/2011 Lionel Tarassenko 150417 6821
759027049
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
09/01/2017 EXAMINER
STIFTER JR, TERENCE E
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
OfficeAction27049@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIONEL TARASSENKO, DAVID A. CLIFTON,
DENNIS KING, STEVEN P. KING,
and DAVID J. AULT
Appeal 2017-0082781
Application 13/201,082
Technology Center 2800
Before ST. JOHN COURTENAY III, JOHN A. EVANS, and
SCOTT B. HOWARD, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge JOHN A.
EVANS.
Opinion Concurring filed by Administrative Patent Judge SCOTT B.
HOWARD.
Opinion Concurring filed by Administrative Patent Judge ST. JOHN
COURTENAY III.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
1 An oral hearing was conducted August 15, 2017. A transcript of the
hearing will become part of the Record.
2 The Appeal Brief identifies Rolls Royce Controls and Data Services
Appeal 2017-008278
Application 13/201,082
Examiner’s Final Rejection of Claims 1, 3—8, and 11—17. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.* 3
STATEMENT OF THE CASE
The claims relate to a method of monitoring vibration amplitude and
frequency in a rotary machine by spectral analysis of the vibration data. See
Abstract.
INVENTION
Claims 1 and 17 are independent. An understanding of the invention
can be derived from a reading of exemplary Claim 1, which is reproduced
below:
1. A method of monitoring vibration amplitude and
frequency in a rotary machine, comprising:
receiving measurements of vibration amplitude and
rotation speed of the machine from at least one sensor;
recording as a data point each amplitude measurement as
a function of vibration frequency and rotational speed;
storing a plurality of different amplitude thresholds each
representing a noise floor for a respective one of a first set of sub­
ranges of vibration frequency and rotational speed,
Limited, as the real party in interest. App. Br. 1.
3 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed January 5, 2017, “App. Br.”), the Reply Brief
(filed May 11, 2017, “Reply Br.”), the Examiner’s Answer (mailed March
13, 2017, “Ans.”), the Final Action (mailed June 15, 2016, “Final Act.”),
and the Specification (filed August 11, 2011, as amended July 21, 2014
“Spec.”) for their respective details.
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wherein each sub-range includes a sub-range of speeds
and a sub-range of frequencies,
wherein the different amplitude thresholds are set in a
training process using training data points comprising vibration
data from a run of the rotary machine deemed to be normal, and
wherein the different amplitude thresholds are set by
fitting an amplitude distribution to the training data points in each
sub-range of vibration frequency and rotational speed;
comparing each amplitude measurement to the amplitude
threshold for a corresponding sub-range of vibration frequency
and rotational speed for the data points within which the
amplitude measurement falls;
determining the amplitude measurement to represent noise
if it falls below the amplitude threshold and as significant
spectral content if it is above the amplitude threshold;
using the amplitude measurement determined to be
significant spectral content, assessing abnormalities of at least a
component of the rotary machine; and
when an abnormality is assessed, generating a signal
configured to indicate the abnormality of at least a component of
the rotary machine.
Rejection
Claims 1, 3—8, and 11—17 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception to statutory subject matter. Final Act. 3^4.
ANALYSIS
We have reviewed the rejections of Claims 1, 3—8, and 11—17 in light
of Appellants’ arguments that the Examiner erred. We consider Appellants’
arguments seriatim, as they are presented in the Appeal Brief, pages 7—16.
Appellants, in particular counsel’s discussion during the oral hearing of
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Thales Visionix Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017), persuade us that
the claims recite patent-eligible subject matter.4
The rejection
The Examiner finds the claimed invention is directed to a judicial
exception, i.e., a law of nature, natural phenomenon, or an abstract idea,
without significantly more. Final Act. 3; Ans. 3^4. The Examiner finds
various steps of the claimed method are abstract ideas as directed to
mathematical concepts analogous to the formula for computing an alarm
limit and an algorithm for computing parameters indicating an abnormal
condition. Id. The Examiner finds the remaining steps do not amount to
“significantly more than the judicial exception” because they are merely
data-gathering steps, considered to be routine operations in the claimed
environment of monitoring rotating machinery. Id. at 4.
Appellants’ arguments5
USPTO July 2015 Update on Subject Matter Eligibility.
Appellants contend independent Claims 1 and 17 are eligible under
the USPTO July 2015 Update on subject Matter Eligibility. App. Br. 7. We
disagree.
4 The Majority agrees with Administrative Patent Judge Howard that we
could similarly find the claims to be patent-eligible under Diamond v. Diehr,
450 U.S. 175 (1981).
5 Because we do not sustain the Examiner’s rejection for the reasons
discussed herein, we need not address Appellants’ further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).
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The USPTO’s guidance materials concerning the subject
matter eligibility requirements of 35 U.S.C. § 101, including the
above-mentioned memorandum, do not constitute substantive
rulemaking and do not have the force and effect of law. These
guidance materials set out examination policy on rejections with
respect to the Office’s interpretation of the subject matter
eligibility requirements of 35 U.S.C. § 101 in view of decisions
by the U.S. Supreme Court and the U.S. Court of Appeals for the
Federal Circuit (Federal Circuit). The guidance materials were
developed as a matter of internal Office management and are not
intended to create any right or benefit, substantive or procedural,
enforceable by any party against the Office. Rejections will
continue to be based upon the substantive law, and it is these
rejections that are appealable. Failure of Office personnel to
follow the USPTO’s guidance materials is not, in itself, a proper
basis for either an appeal or a petition.
May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27381, 27382
(May 6, 2016). We must decide the present appeal based on 35 U.S.C.
§ 101 as interpreted by the Supreme Court and the Court of Appeals for the
Federal Circuit. Guidance materials, developed for internal Office
management, have no force or effect upon our deliberations.
The Alice analysis
The Supreme Court has established a two-part test to distinguish
patents that claim one of the patent-ineligible exceptions to statutory subject
matter from those that claim patent-eligible applications of those concepts.
See Alice Corp. Pty Ltd v. CLS Bank Inti., 134 S. Ct. 2347, 2354 (2014)
(citing Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66,
72-73, 77-78 (2012)).
Our analysis begins with Alice step one. Although the two steps in the
Alice framework “involve overlapping scrutiny of the content of the claims,”
the “Supreme Court’s formulation makes clear that the first-stage filter is a
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meaningful one, sometimes ending the § 101 inquiry.” Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). In this regard,
we must articulate with specificity what the claims are directed to, Thales,
850 F.3d at 1347, and “ask whether the claims are directed to [a
technological improvement] versus being directed to an abstract idea.”
Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016),
(“[S]ome improvements in computer-related technology when appropriately
claimed are undoubtedly not abstract, such as a chip architecture, an LED
display, and the like.”).
In Enfish, the Federal Circuit held claims reciting a self-referential
table for a computer database were patent-eligible under Alice step one
because the claims were directed to an improvement in the computer’s
functionality. Id. at 1336.
Thales Visionix
After the Appeal Brief was filed, the Federal Circuit decided Thales,
850 F.3d 1343, on March 8, 2017. We permit new argument based on
Thales because Appellants did not have the opportunity to argue in light of
this new case law. 37 C.F.R. § 41.41(b)(2).6
Appellants contend the “Federal Circuit’s recent decision in Thales
Visionix confirms that independent claims 1 and 17 are patent-eligible under
the second step of the Alice analysis (USPTO step 2B) for at least the same
reasons identified in the Supreme Court’s discussion of the Diehr claims in
Alice.'” Reply Br. 1.
6 The Examiner has not had the opportunity to evaluate the claims in light of
the Federal Circuit’s teachings in Thales.
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The Federal Circuit determined the Thales claims used sensors and
mathematical equations and “achieved greater accuracy than . .. prior art
systems.” Visual Memory LLC, v. Nvidia Corp., No. 2016-2254, slip op. at
8—9 (Fed. Cir. Aug. 15, 2017). The Court found, under Alice step one, that
the Thales claims were not directed at the abstract idea of using
mathematical equations to determine the position of a moving object.
Rather, the Court found the claims were directed to “systems and methods
that use inertial sensors in a non-conventional manner to reduce errors in
measuring the relative position and orientation of a moving object.” Visual
Memory, slip op. at 9.
The Visual Memory Court discussed the Enfish and Thales
specifications disclosed how the improved technological benefits flowed
from their respective claims. See Visual Memory, slip op. at 10-11.
Appellants contend that, similar to Thales, the present claims “improve the
use [of] particular sensor data [to] assess component failures or
abnormalities in a component of a rotary machine more accurately than
could be done according to prior vibration monitoring techniques.” Reply
Br. 3 (citing Spec. 1—3).
Appellants disclose that to monitor the operation of rotary machines it
is known to analyze the spectra of vibration data obtained using transducers
mounted on the machine. Spec. 1. Typically, the time-dependent vibration
signal, output by the transducer, is transformed into vibration spectra using
the Fast Fourier Transform resulting in a time-series of spectra. Id. Plotting
vibration spectra against time results in a time-frequency vibration plot (e.g.,
Figure 1). Id. Appellants disclose that it is known that within time-
frequency vibration plots are frequency peaks corresponding to the
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machine’s fundamental and harmonic vibration modes. Tracking the
amplitude of these peaks results in a time-series, called “tracking orders”
(TO), which are characteristic of the machine. Id. These “orders,” i.e.,
modes of vibration, can be tracked through frequency space with changes in
rotational speed. Id. Tracked order values from test datasets were compared
against model behavior observed during a normal training period to
determine “abnormal” behavior. Id. at 2.
Appellants disclose that many failure modes result in energy not
observed over the sub-range of frequency spectrum of the training data. Id.
In order to observe tracked orders and other spectral content not observed
during normal training, it is necessary to observe and discard the spectral
components of background noise. Id.
Appellants disclose the present invention records vibration amplitudes
as a function of frequency and the rotational speed of the machine, rather
than frequency and time. Id. at 3. Appellants find this non-conventional
approach to be “a particularly good way to characterize the behavior of
rotary machines as their vibration spectra typically vary as a (non-linear)
function of rotation speed.” Id.
We are persuaded that Appellants’ non-conventional use of vibration
sensors or transducers and Fast Fourier Transforms advances the technology
by permitting the detection of failure modes that were not possible to detect
by conventional methods.
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DECISION
The rejections of Claims 1, 3—8, and 11—17 under 35U.S.C. § 101 is
REVERSED.
REVERSED
9
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIONEL TARASSENKO, DAVID A. CLIFTON,
DENNIS KING, STEVEN P. KING,
and DAVID J. AULT
Appeal 2017-008278
Application 13/201,082
Technology Center 2800
HOWARD, Administrative Patent Judge, concurring.
Although I agree in the result reached by the Majority in determining
that the claims are not directed to patent-ineligible subject matter, I would do
so based on Diehr,1 not Thales J
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
1 Diamond v. Diehr, 450 U.S. 175 (1981).
8 Thales VisionixInc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017).
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S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea, itself, is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
134 S. Ct. at 2355. Thus, we must consider “the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (citing Mayo, 566 U.S. at 79, 78). The claim must contain
elements or a combination of elements that are “sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[abstract idea] itself.” Id. (citing Mayo, 566 U.S. at 72—73).
The Supreme Court set forth a two-part “framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Id. at
2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo,] 132 S.Ct., at
1296—1297. If so, we then ask, “[w]hat else is there in the claims
before us?” Id., at------- , 132 S.Ct., at 1297. To answer that
question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. Id., at------- , 132 S.Ct.,
at 1298, 1297. We have described step two of this analysis as a
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., at------- , 132 S.Ct., at
1294.[]
Id.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim's
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‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases.” Enfish, 822 F.3d at 1334; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent eligible under § 101, “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided”).
Unlike the Majority, I do not believe the claims at issue are similar to
those in Thales. In determining that the claims in Thales were not directed
to patent-ineligible subject matter, our reviewing court focused on the
unconventional use of the inertial sensors:
The ’159 patent claims provide a method that eliminates
many “complications” inherent in previous solutions for
determining position and orientation of an object on a moving
platform. ’159 patent at 5:62—6:32. Because the motion of a
moving platform like a plane “is more dynamic and
unpredictable than the earth’s rotation,” a traditional system
(which measured inertial data with respect to the earth) had
difficulty accurately calculating inertial data of an object on a
moving platform. Id. at 5:60-6:16. Though the unconventional
utilization of inertial sensors as specified by the ’159 patent
“may seem somewhat strange” to those within the field, id. at
7:19—21, this combination of sensor placement and calculation
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based on a different reference frame mitigates errors by
eliminating inertial calculations with respect to the earth. Id. at
7:41—8:41. The resulting system works with any type of moving
platform and is simpler to install than conventional systems. Id.
at 7:5—8. The system is also beneficially self-contained: it
requires no external information about the orientation or position
of the platform. Id. at 8:34-41, 11:34—38.
These claims are not merely directed to the abstract idea
of using “mathematical equations for determining the relative
position of a moving object to a moving reference frame,” as the
Claims Court found. Thales, 122 Fed.Cl. at 252. Rather, the
claims are directed to systems and methods that use inertial
sensors in a non-conventional manner to reduce errors in
measuring the relative position and orientation of a moving
object on a moving reference frame. At step one, “it is not
enough to merely identify a patent-ineligible concept underlying
the claim; we must determine whether that patent-ineligible
concept is what the claim is ‘directed to. RapidLitig., 827 F.3d
at 1050.[9] Just as a natural law can be utilized to create an
improved laboratory technique for preserving liver cells, id. at
1048, so can the application of physics create an improved
technique for measuring movement of an object on a moving
platform. Just as claims directed to a new and useful technique
for defining a database that runs on general-purpose computer
equipment are patent eligible, Enfish, 822 F.3d at 1337—38, so
too are claims directed to a new and useful technique for using
sensors to more efficiently track an object on a moving platform.
That a mathematical equation is required to complete the claimed
method and system does not doom the claims to abstraction.
We hold that the ’159 patent claims at issue in this appeal
are not directed to an abstract idea. The claims specify a
particular configuration of inertial sensors and a particular
method of using the raw data from the sensors in order to more
accurately calculate the position and orientation of an object on
a moving platform. The mathematical equations are a
9 Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042 (Fed. Cir.
2016).
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consequence of the arrangement of the sensors and the
unconventional choice of reference frame in order to calculate
position and orientation. Far from claiming the equations
themselves, the claims seek to protect only the application of
physics to the unconventional configuration of sensors as
disclosed. As such, these claims are not directed to an abstract
idea and thus the claims survive Alice step one.
850 F.3d at 1348—49 (emphasis added).
Appellants do not identify any unconventional configuration of
sensors. See App. Br. 10. Although I agree with the Majority Decision that
the claimed invention involves an unconventional analysis of the data from
the sensors (slip op. at 7—9), that is different from an unconventional
arrangement of the sensors. Accordingly, the claims on appeal are not of a
sufficiently similar nature to Thales.
However, because the claims on appeal and sufficiently similar to
those the Supreme Court found patent-eligible in Diehr,1 would reverse
the Examiner’s rejection. Although the claimed invention in Diehr used a
mathematical formula, it improved upon prior art inventions by constantly
measuring the temperature and opening the press when the ideal time
elapsed. 450 U.S. at 177—79. The Supreme Court held that the claims in
Diehr covered patent-eligible subject matter because they “describe[d] a
process of curing rubber beginning with the loading of the mold and ending
with the opening of the press and the production of a synthetic rubber
product that has been perfectly cured—a result heretofore unknown in the
art.” Id. at 193 n.15. Accordingly, claims are patent-eligible under section
10 Diehr preceded the Supreme Court’s enunciation of the two-step
framework and, therefore, did not separate its analysis into the two Alice
steps. However,
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101 “when a claim containing a mathematical formula implements or applies
that formula in a structure or process which, when considered as a whole, is
performing a function which the patent laws were designed to protect.” Id.
at 192.
We agree with Appellants that, like the claims in Diehr, the claims on
appeal
also adds meaningful limitations on the use of recited the
mathematical relationships by specifying the types of variables
used (vibration amplitude and rotation speed), how they are
selected (their representing a noise floor for a respective one of a
first set of sub-ranges of vibration frequency and rotational
speed), how the process uses the variables in determining an
abnormality (using thresholds for sub-ranges of speeds and sub­
ranges of frequencies established during a normal run of the
rotary machine to identify significant spectral content), and how
the result is employed (using the significant spectral content to
assess abnormalities and generating a signal indicating the
assessed abnormalities) to improve the diagnostics of the rotary
machine.
App. Br. 12.
Moreover, the similarities between the claims on appeal can be seen
by direct comparison of pending claim 1 with claim 1 in Diehr (450 U.S. at
179-80 n.5:
Pending Claims 1 Diehr Claim 111
A method of monitoring
vibration amplitude and frequency
in a rotary machine, comprising:
A method of operating a
rubber-molding press for precision
molded compounds with the aid of a
digital computer, comprising:
11 The order “providing said computer” limitation has been changed to assist
in the comparison with claim 1 on appeal.
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receiving measurements of
vibration amplitude and rotation
speed of the machine from at least
one sensor;
initiating an interval timer in
said computer upon the closure of
the press for monitoring the elapsed
time of said closure,
constantly determining the
temperature (Z) of the mold at a
location closely adjacent to the
mold cavity in the press during
molding,
constantly providing the
computer with the temperature (Z),
recording as a data point each
amplitude measurement as a
function of vibration frequency and
rotational speed;
storing a plurality of different
amplitude thresholds each
representing a noise floor for a
respective one of a first set of sub­
ranges of vibration frequency and
rotational speed,
wherein each sub-range
includes a sub-range of speeds and a
sub-range of frequencies,
wherein the different
amplitude thresholds are set in a
training process using training data
points comprising vibration data
from a run of the rotary machine
deemed to be normal, and
wherein the different
amplitude thresholds are set by
fitting an amplitude distribution to
the training data points in each sub­
range of vibration frequency and
rotational speed;
providing said computer with a data
base for said press including at
least, natural logarithm conversion
data (In), the activation energy
constant (C) unique to each batch of
said compound being molded, and a
constant (x) dependent upon the
geometry of the particular mold of
the press,
comparing each amplitude
measurement to the amplitude
repetitively calculating in the
computer, at frequent intervals
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threshold for a corresponding sub­
range of vibration frequency and
rotational speed for the data points
within which the amplitude
measurement falls;
determining the amplitude
measurement to represent noise if it
falls below the amplitude threshold
and as significant spectral content if
it is above the amplitude threshold;
during each cure, the Arrhenius
equation for reaction time during
the cure, which is
In v = CZ + x
where v is the total required
cure time,
using the amplitude
measurement determined to be
significant spectral content,
assessing abnormalities of at least a
component of the rotary machine;
and
repetitively comparing in the
computer at said frequent intervals
during the cure each said calculation
of the total required cure time
calculated with the Arrhenius
equation and said elapsed time, and
when an abnormality is
assessed, generating a signal
configured to indicate the
abnormality of at least a component
of the rotary machine.
opening the press
automatically when a said
comparison indicates equivalence.
The Examiner concludes that the pending claims are not similar to
those in Diehr because the claims do “not include limitations that control,
adjust or change any physical feature or operation or process of the rotatory
machine, nor do they control any function or process implemented in
performing the physical operations of the testing.” Ans. 5 (emphasis
omitted). The Examiner further determines that the signal “is not applied to
the industrial process such as by controlling the rotary machine to stop,
speed up, speed down, activate an additional sensor, running the machine at
further specific speeds based on the result, or start a further process that
improved by identifying an abnormality.” Id. at 5—6. Accordingly, the
Examiner concludes that “the claims recite an improved algorithm for
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analyzing the measurement data of a rotary machine using a series of
mathematical calculations, relationships, and comparisons.” Id. at 6.
I am not persuaded by the Examiner’s conclusions. Although the
signal in Diehr resulted in the door opening, that was not the focus of the
Supreme Court’s analysis. Instead, the Court’s reasoning in Diehr turned on
how the equation in the claim was used to improve upon the prior art, not
whether or not the door opened. That is, the Supreme Court held the claims
in Diehr patent-eligible because they “were directed to an improvement in
the rubber curing process.” Thales, 850 F.3d at 1348 (discussing Diehr)-, see
also Alice, 134 S. Ct. 2358 (“In other words, the claims in Diehr were patent
eligible because they improved an existing technological process, not
because they were implemented on a computer”). In Diehr it was not the
computer signal opening a door—which is an insignificant post-solution
activity—that made the claims patent-eligible, but it was the identification of
the best time for the doors to be opened.
Similarly, in this case the claims are directed to an improvement in the
identification of when an abnormality occurs. It does not matter that the
signal does not directly cause something to happen, like the opening of a
door in Diehr. It is enough that based on the non-conventional data analysis
a signal is sent that abnormality is detected.
Accordingly, because of the similarity between the claims on appeal
and those found not patent-ineligible in Diehr, I do not sustain the
Examiner’s rejection of claims 1, 3—8, and 11—17.
9
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIONEL TARASSENKO, DAVID A. CLIFTON,
DENNIS KING, STEVEN P. KING,
and DAVID J. AULT
Appeal 2017-008278
Application 13/201,082
Technology Center 2800
COURTENAY, Administrative Patent Judge, concurring.
I find our reviewing court’s analysis of the claim involving the
processing of sensor data, as considered in Thales (850 F.3d at 1343),
provides sufficient guidance to reverse the Examiner’s rejection under § 101.
For the additional reasons discussed infra, I am further convinced the claims
before us on appeal are not directed to an abstract idea. Because the claims
before us on appeal are not directed to an abstract idea under step one of the
Alice analysis, I find it unnecessary to proceed to step two of that analysis.
In Thales, the court concluded that the “claims [were] directed to a
new and useful technique for using sensors to more efficiently track an
object on a moving platform. That a mathematical equation is required to
complete the claimed method and system does not doom the claims to
abstraction.” Thales, 850 F.3d at 1349 (emphasis added).
Applying this guidance here, it is my view that Appellants’ claims are
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directed to a new and useful technique for using sensors to more accurately
monitor vibration amplitude and frequency in a rotary machine to identify
both serious and subtle engine abnormalities, taking into account rotational
speed and levels of noise in the data. See, e.g., claim 1.
I am also of the view that Appellants’ claims accomplish the inventive
improvement by applying technology in a manner that is not reasonably
capable of being performing by a person as a mental step, and in a manner
that additionally furthers a public policy goal of ensuring the safety of the
flying public, including safeguarding and protecting the men and women who
serve in our armed services.
I particularly note that Appellants’ claimed invention is not limited to
assembly-line testing and quality control. The invention on appeal may also
be used for real-time monitoring, for example, by monitoring a rotary engine
during flight (such real-time monitoring was discussed during the oral
hearing held on August 15, 2017). Appellants’ Specification {id. at 15)
describes, according to a non-limiting embodiment:
it is possible to re-train the model at any point, or on a continuous
basis, based on real data which is regarded as normal. Thus in
use of the technique for monitoring an engine or other machine,
any run which is normal can be utilised [(Brit, sp.)] to refine the
noise floor estimates and to refine the detection of known
significant spectral content.
Although a trained mechanic can readily hear and identify some types
of rotary engine abnormalities,12 modem jet engines, turboshaft engines, gas
turbines (for electric power generation), and the like, are extremely complex
12 For example, when driving down the road in an automobile, if the oil is
not properly lubricating the valve train, a clicking or tapping noise will be
heard that would be instantly identifiable to a trained mechanic.
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machines, which typically generate very high sound pressure levels in
normal operation.
Thus, when a subtle aircraft engine abnormality occurs, it may not be
audible to a human observer, even at close range. It is not feasible for a
human observer to monitor a jet engine at a close range, listening for
particular sounds, because deafness would soon result. Similarly, it is not
feasible for a human observer to be in close physical proximity to the
engine(s) during flight. Indeed, modem airplanes are designed to insulate
the passengers and crew from engine noise, to the maximum extent possible.
Accurate early detection of engine abnormalities can provide useful
and timely information regarding the need for maintenance and servicing.
Timely maintenance of aircraft rotary engines, and other types of rotary
engines, helps ensure safe and reliable operation. Appellants’ claimed
signal that indicates abnormalities is directed to “assessing abnormalities of
at least a component of the rotary machine.” (Claim 1) (emphasis added).
Thus, Appellants’ invention offers the significant advantage of facilitating
the identification and replacement of specific component(s) that have failed
during operation.
Accurate detection of engine abnormalities can also provide a pilot
with meaningful real-time information regarding the status, and extent of
damage to the engine(s), in the event of an unexpected malfunction, such as
a bird strike. Was it a small bird, or a large bird that stmck the engine? Is
the engine out completely? Using the abnormality signal of Appellants’
invention, a pilot could make a timely, informed decision based upon real­
time data which accurately reflects the urgency of the situation, and take
appropriate actions. Time is of the essence in such emergency situations,
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and accurate, timely data can mean the difference between life and death.
Therefore,
This is no abstract idea.
As a real world example, Captain Chesley “Sully” Sullenberger had
less than a minute to survey the extent of damage to his engines and make a
decision that resulted in the successful landing of his aircraft and passengers
on the Hudson River, on January 15, 2009. He had no time to ask his copilot
to collect sensor data, and mentally (or with the aid of pen and paper)
perform a Fast Fourier Transform (FFT), and correlate the resultant
frequency domain spectral data (including vibration frequency and
amplitude) with rotational speed and noise data.
The copilot would not have been capable of performing the complex
steps of Appellants’ claimed invention, as a series of mental steps, even with
the aid of pen and paper.13 (Claim 1). The copilot had the essential duty of
running through the emergency engine failure checklist. The calculations
required to perform Appellants’ claimed steps are too extensive to be
performed quickly and accurately by any human as manual steps in real
time.
To protect the safety of the pilot, crew, and passengers, an automated
system is clearly required to collect the sensor data and perform the
necessary real-time calculations in milliseconds. Although Captain
Sullenberger is a brilliant pilot who performed the most successful water
13 See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373
(Fed. Cir. 2011) (“[A] method that can be performed by human thought
alone is merely an abstract idea and is not patent-eligible under § 101”).
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ditching of a passenger aircraft in aviation history, it is unlikely that even
Captain Sullenberger would have been able to fly his plane and perform Fast
Fourier Transforms in his head (at the same time) under such a dire
emergency situation. Therefore, it is my view regarding Appellants’
claimed invention,
This is no abstract idea.
As an example pertaining to military applications, the V-22 Osprey
tiltrotor military aircraft has operational capabilities unmatched by any other
aircraft. It is powered by Rolls-Royce14 turboshaft engines. By applying
Appellants’ claimed invention to monitor the vibration amplitude and
frequency over changing rotational speeds, operational safety and readiness
can be further enhanced, by detecting any abnormalities from normal,
baseline data signatures. Under actual battlefield conditions, the improved
detection and diagnostic capabilities of Appellants’ claimed invention could
mean the difference between life and death for the brave men and women
who serve in our military. The claimed invention can also be applied during
engine manufacture and maintenance to ensure a safe and reliable engine.
For these additional reasons,
This is no abstract idea.
Given the absence of clear, bright line guidance from our reviewing
courts concerning the precise contours of what is an abstract idea, we
should not lose sight of the forest by getting lost in the trees. We must
consider the claims as a whole and the impact of Appellants’ invention on
the real (not abstract) world. Case law pertaining to section 101 continues to
14 The real party in interest is given by Appellants as “ROLLS-ROYCE
CONTROLS AND DATA SERVICES LIMITED.” (App. Br. 1).
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evolve on a weekly basis, and the specific public safety issue presented in
this case has not yet had opportunity for review.
It is my view that Appellants’ claimed invention is an important and
significant invention that offers the promise of saving lives by helping to
ensure the safety and reliability of rotary machines, including jet engines.
As emphasized by our reviewing court in Thales, 850 F.3d at 1349, “[t]hat a
mathematical equation is required to complete the claimed method and
system does not doom the claims to abstraction.”
I find this guidance is applicable here and conclude unequivocally
regarding Appellants’ claimed invention:
This is no abstract idea.
Nevertheless, for the sake of completeness, and in the alternative, if
arguendo step one of Alice was not satisfied, I conclude Appellants’ claims
are directed to a patent-eligible application of a mathematical algorithm
that uses sensors to provide an unconventional technological solution over
prior art technologies in a manner that improves the performance of the
system itself. See, e.g., Amdocs, 841 F.3d at 1302. Thus, I conclude
Appellants’ claims on appeal also recite a series of limitations that, when
considered individually and as an ordered combination, provide an
inventive concept sufficient to confer patent eligibility.
6