Ex Parte Westerman

Patent Trial and Appeal Board

Jan 29, 2018

11440742 (P.T.A.B. Jan. 29, 2018)

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.
11/440,742 05/25/2006 Everett A. Westerman 05-1004-US-NP 8745
63759 7590 01/31/2018
DTTKFW YFF
EXAMINER
YEE & ASSOCIATES, P.C. DINH, LYNDA
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
patentadmin @ boeing. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EVERETT A. WESTERMAN
Appeal 2017-0044151
Application 11/440,742
Technology Center 2800
Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
WESLEY B. DERRICK, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest as indicated in the Appeal Brief is “Boeing
Company of Chicago, Illinois.”
Appeal 2017-004415
Application 11/440,742
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1—3, 5, 6, 8—14, 16, and 17. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to a method, system and non-
transitory computer readable medium for determining the remaining life of
damaged composite structures (Spec. 11).
Claim 1 is illustrative:
1. A method implemented in a computing system for
assessing an ability to rework a composite structure with a heat
induced inconsistency, the method comprising:
performing a non-destructive inspection of the composite
structure using a physical inspection tool;
providing to the computing system a database having
stored therein assessment signatures, wherein the assessment
signatures are obtained by applying heat at various temperatures
to sample composite structures to accelerate a life of the sample
composite structures;
acquiring by the computing system information related to
the composite structure with the heat induced inconsistency,
wherein the information is obtained from the nondestructive
inspection;
comparing using the computing system the information
related to the composite structure with the heat induced
inconsistency with the assessment signatures stored in the
database to determine a matching assessment signature as one
of the assessment signatures in the database that most closely
matches the information related to the composite structure with
the heat induced inconsistency;
determining in the computing system a remaining service
life of the composite structure with the heat induced
inconsistency using the matching assessment signature;
determining in the computing system a remaining
structural capability of the composite structure;
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Application 11/440,742
determining in the computing system a rework or
replacement result using the remaining service life and the
remaining structural capability, wherein the rework or
replacement result indicates if the composite structure with the
heat induced inconsistency requires immediate rework or
replacement; and
displaying by the computing system the matching
assessment signature.
Appellant appeals the following rejection2:
Claims 1—3, 5, 6, 8—14, 16, and 17 are rejected 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Appellant argues subject matter common to independent claims 1, 8,
and 12 (App. Br. 9-12). We select claim 1 as representative of the group.
37 C.F.R. §41.37(c)(l)(iv).
FINDINGS OF FACT & ANALYSIS
Appellant argues that the claim is not directed to only software
because the claim requires a physical inspection tool (App. Br. 10).
Appellant contends that the physical inspection tool is necessary to acquire
the data on the physical structures which would render the rest of the claim
meaningless without the physical inspection tool (App. Br. 11; Reply Br. 4)
Appellant argues that claim 1 is not directed to any judicial exception
because “the claim recites performing a non-destructive inspection of the
composite structure using a physical inspection tool as part of a solution of
2 The Examiner withdrew the 35 U.S.C. § 112, first paragraph rejection, and
the 35 U.S.C. § 103(a) rejection (Ans. 2). Therefore, the only remaining
rejection on appeal is the 35 U.S.C. § 101 rejection.
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Appeal 2017-004415
Application 11/440,742
assessing an ability [to] rework a composite structure (which is itself
physical)” (App. Br. 11). Appellant contends that even if claim 1 is found to
contain an abstract idea, the physical inspection tool adds significantly more
than the abstract idea of identifying parts by actually modifying a physical
platform using the identified part (App. Br. 12).
The Examiner finds that the process of claim 1 includes the abstract
idea of performing a non-destructive inspection, comparing information, and
determining steps (Final Act. 7). The Examiner finds that the claim
limitations of providing a database, acquiring information, and displaying
the matching use a generic computer which is insignificant extra solution
activity (Final Act. 7). The Examiner finds that the generic computer uses
conventional equipment and a computing system that is a generic computer
which executes generic functions (i.e., acquiring and displaying information)
(Final Act. 7). The Examiner finds that claim 1 recites the general concept
for assessing an ability to rework a composite structure with a heat induced
inconsistency by comparing a sample with a database, but fails to specify the
necessary limitations such as information related to the composite structure
and heat induced damage (Final Act. 8). The Examiner finds that the
physical inspection tool is well-known and conventional in the art (Ans. 3).
The Examiner finds that using a physical inspection tool to gather/collect
data is insignificant extra-solution activity (i.e., well known and
conventional activities) that does not add to significantly more than the
abstract idea itself (i.e., performing a non-destructive inspection) (Ans. 3).
The Examiner finds that Appellant fails to disclose any algorithm calculation
showing the remaining service life and determining the necessary rework
such that one of ordinary skill in the art could not envision the steps, the
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Appeal 2017-004415
Application 11/440,742
relationship of the steps, and the outcomes (Final Act. 8). The Examiner
finds that the claims as a whole do not confine the claims to a particular
useful application and they do not amount to significantly more than the
abstract idea itself (Final Act. 8). The Examiner finds that the claim 1
limitation that requires the step of performing a non-destructive inspection
of the composite structure using a physical tool is an idea standing alone
such as an unsubstantiated concept, plan, or scheme as well as a mental
process (Ans. 4). The Examiner finds that the acquiring, comparing,
determining steps recited in claim 1 are mathematical relationships/formulas,
and algorithms that the courts have identified as abstract ideas (Ans. 4).
The Supreme Court’s two-step framework, described in Mayo and
Alice, guides our analysis. Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134 S. Ct.
2347, 2355 (2014). (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 76-77, 132 S. Ct. 1289, 1296-97(2012)). We first
determine whether a claim is “directed to” a patent-ineligible abstract idea.
If so, we then consider the elements of the claim—both individually and as
an ordered combination— to assess whether the additional elements
transform the nature of the claim into a patent-eligible application of the
abstract idea. Id. This is the search for an “inventive concept”—something
sufficient to ensure that the claim amounts to “significantly more” than the
abstract idea itself. Id.
Both the Examiner and Appellant agree that claim 1 is directed to a
process (App. Br. 11; Ans. 4). Appellant and the Examiner differ on
whether claim 1 recites an abstract idea of 1) collecting data, 2) recognizing
certain data within the collected data set, and 3) comparing the recognized
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Application 11/440,742
data to data stored in a database. Appellant contends that the physical
inspection tool used in the inspection step takes the claim out of the realm of
“pure software” (App. Br. 10-11). Although Appellant contends that the
physical inspection tool is necessary in order for the process to work, the
courts have held that tying an abstract idea to generic or conventional
devices (e.g., generic computing devices) does not qualify as significantly
more to thereby render the abstract idea patent eligible. Alice, 134 S. Ct. at
2357. See also Content Extraction and Transmission LLC v. Wells Fargo
Bank, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (arguments that claims required
a generic scanner and computer to interpret bits of information was not
found to make the claim that included an abstract idea patent eligible).
Appellant has not established that the use of a physical inspection tool for
inspection of a composite structure was not previously known. We agree
with the Examiner’s finding that the physical inspection tool recited in the
claims is merely a generic inspection tool3 that acquires data for further
processing using the steps recited in the claim. Appellant has not established
in “inventive concept” in the use of a generic physical inspection tool and
computer to perform well-understood, routine, and conventional activities
commonly used in industry. See Alice, 134 S. Ct. at 2359. At most,
Appellant’s claims attempt to limit the abstract idea of gathering, storing,
and analyzing information from composite structures using a physical
inspection tool and a computer. Such a limitation has been held insufficient
to save a claim in this context. See Alice, 134 S. Ct. at 2358; Electric Power
3 The broadest reasonable interpretation of physical inspection tool may
even include human operator inspection of the composite part. The
Specification does not limit the physical inspection tool to any particular
device.
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Application 11/440,742
Group, LLCv. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed Cir. 2014);
Content Extraction and Transmission LLC v. Wells Fargo Bank, 776 F.3d
1343, 1348 (Fed. Cir. 2014). Accordingly, the claims are directed to the
abstract idea of performing a non-destructive inspection as found by the
Examiner (Ans. 3). As discussed above, the generic physical inspection tool
and steps that are implemented on a generic computer do not add
significantly extra considerations that would render the claim patent eligible.
The claims fail to satisfy the requirements of 35 U.S.C. § 101.
On this record, we affirm the Examiner’s rejection of claims 1—3, 5, 6,
8-14, 16, and 17 under 35 U.S.C. § 101.
DECISION
The Examiner’s decision is 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)(l)(iv). See
37 C.F.R. § 41.50(f).
ORDER
AFFIRMED
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