GRANTA DESIGN LIMITED

Patent Trials and Appeals Board

Dec 30, 2021

2021000683 (P.T.A.B. Dec. 30, 2021)

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.
14/865,795 09/25/2015 Nicholas Ekow Austin 106042P038 1311
8791 7590 12/30/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
HINZE, LEO T
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
12/30/2021 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@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS EKOW AUSTIN, DAVID CEBON, THOMAS
JAMES ALEXANDER PRANKERD SMITH, and
THOMAS HUGH RIDDELL SMITH
Appeal 2021-000683
Application 14/865,795
Technology Center 2800

Before BEVERLY A. FRANKLIN, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–20, and 35. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Granta Design
Limited. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A system for identifying a corrosion risk during the
design of a mechanical assembly, the system comprising:
design data stored in the system for representing
components of the mechanical assembly, the design data
comprising:
for each component of the mechanical assembly, a
representation of the component and an indication of a
constituent material of the component; and
a representation of an environment in contact with
a component of the mechanical assembly and an indication of a
constituent material of the environment, wherein in the design
data, the representation of the environment is a child node
linked to a representation of the component of the mechanical
assembly that is in contact with the environment;
corrosion data stored in the system; and
a processor configured to:
obtain the design data;
store the design data in a first data structure and a
second data structure, wherein representations of the
components of the mechanical assembly are stored as items of
the first data structure, and wherein the representation of the
environment is stored as an item of the second data structure,
wherein each item of the first data structure is associated with at
least one other item of either the first or the second data
structure, and wherein the item of the second data structure is
associated with at least one item of the first data structure;
obtain corrosion data relevant to the obtained design
data;
for each respective item of the first data structure,
identify a corrosion risk associated with the respective item
based on the associations between items of the first and second
data structures, and the obtained corrosion data; and
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provide, based on said identifications associated with the
items of the first data structure, an indication of the corrosion
risk.
Appeal Br. 19 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Rutka US 8,195,322 B2 June 5, 2012
Philip A. Schweitzer, Fundamentals of Metallic Corrosion: Atmospheric
and Media Corrosion of Metals, Corrosion Eng’g Handbook 8–10 (2nd
Ed.) (2007) (“Schweitzer”)
REJECTIONS
1. Claims 1, 3–20, and 35 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to abstract ideas without
significantly more.
2. Claims 1, 3–20, and 35 are rejected under 35 U.S.C. § 103 as
being unpatentable over Rutka in view of Schweitzer.
OPINION
Appellant’s arguments focus on limitations similarly shared by
independent claims 1 and 19. In accordance with 37 C.F.R.
§ 41.37(c)(1)(iv), we consider claims 1 and 19 collectively.
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
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the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections, essentially for the reasons
provided by the Examiner in the record, with the following emphasis.

Rejection 1
A. Standard for Patent Ineligibility
With regard to the 35 U.S.C. § 101 rejection, we note that 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, 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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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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
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.”).
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If the claim is “directed to” an abstract idea, we turn 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 PTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”). Under the 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 (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
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
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(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 Guidance.

We turn now to our analysis below.

B. Analysis
For the reasons stated below, and based essentially on the findings
and analysis provided by the Examiner at pages 4–8 of the Final Office
Action and pages 3–11 of the Answer, we determine that claim 1 (and
similarly claim 19) 2 are directed to an abstract idea and do not contain
an inventive concept sufficient to transform the claimed abstract idea
into a patent-eligible application. We therefore sustain the Examiner’s
rejection under 35 U.S.C. § 101.
1. Guidance Step 1
Under Step 1 of the Guidance, we consider whether the claimed
subject matter falls within one of the four statutory categories set forth in
§ 101, namely a “[p]rocess, machine, manufacture, or composition of
matter.” Guidance, 84 Fed. Reg. at 53—54; see 35 U.S.C. § 101. On page 4
of the Final Office Action, the Examiner finds (and we agree) that claims 1,
3–18, 19, 30 and 35, 19 fall within a statutory category for the reasons stated
therein. Consequently, we proceed to the next step of the analysis.

2 Claims 1 and 19 are the independent claims. Claim 1 is directed to a
system for identifying a corrosion risk and claim 19 is directed to the method
of identifying a corrosion risk.
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2. Guidance Step 2A Prong 1
Under Step 2A Prong 1 of the Guidance, we evaluate “whether
the claim recites a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon.” Guidance, 84 Fed. Reg. at 54; see
Alice, 573 U.S. at 216.
Claim 1 recites a system for identifying a corrosion risk during
the design of a mechanical assembly. The system comprises design
data stored in the system for representing components of the
mechanical assembly, the design data comprising, for each component
of the mechanical assembly, a representation of the component and an
indication of a constituent material of the component; and a
representation of an environment in contact with a component of the
mechanical assembly and an indication of a constituent material of the
environment.
Claim 1 also recites wherein in the design data, the
representation of the environment is a child node linked to a
representation of the component of the mechanical assembly that is in
contact with the environment, corrosion data stored in the system, and
a processor configured to obtain the design data, store the design data
in a first data structure and a second data structure, wherein
representations of the components of the mechanical assembly are
stored as items of the first data structure, and wherein the
representation of the environment is stored as an item of the second
data structure, wherein each item of the first data structure is
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associated with at least one other item of either the first or the second
data structure.
Claim 1 also recites wherein the item of the second data
structure is associated with at least one item of the first data structure,
obtain corrosion data relevant to the obtained design data, for each
respective item of the first data structure, identify a corrosion risk
associated with the respective item based on the associations between
items of the first and second data structures, and the obtained
corrosion data, and provide, based on said identifications associated
with the items of the first data structure, an indication of the corrosion
risk. See Appeal Br. 19, (Claims Appendix). As mentioned in
footnote 2, supra, Claim 19 is directed to the method of identifying a
corrosion risk. See Appeal Br. 22–23, (Claims Appendix).
On page 5 of the Final Office Action, the Examiner states that
claim 1 recites an abstract idea in the form of a mental process. Stated
another way, it is the Examiner’s position that claim 1 is directed to a
form of organizing human activity (a mental process being a specific
example).3
Appellant argues that “claims do not recite a mental process
when they do not contain limitations that can practically be performed
in the human mind, for instance when the human mind is not equipped
to perform the claim limitations.”4 Appeal Br. 6. Applicant submits

3 The Examiner takes a similar position with respect to claim 19. Final
Act. 6.
4 Appellant cites to October 2019 Update: Subject Matter Eligibility at 7.
Appeal Br. 6.
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that the claims do not recite a mental process because the claimed
invention cannot practically be performed in the human mind. Appeal
Br. 6.
Appellant argues that claims 1 and 19 recite “in the design data,
the representation of the environment is a child node linked to a
representation of the component of the mechanical assembly that is in
contact with the environment,” and “representations of the
components of the mechanical assembly are stored as items of the first
data structure, and wherein the representation of the environment is
stored as an item of the second data structure.” Appeal Br. 6.
Appellant argues that these features are specific to the computer aided
design (CAD) software structure of the mechanical design and are
used by the computer to identify and determine associations between
the different components of the design and environments in contact
with those components. Id.
Appellant also argues that claims 1 and 19 recite that “each
item of the first data structure is associated with at least one other item
of either the first or the second data structure, and wherein the item of
the second data structure is associated with at least one item of the
first data structure.” Appeal Br. 6–7.
Appellant submits that the aforementioned data structures and
their associations are particular to a computer simulated design
environment and cannot be performed in the human mind. Appeal Br.
7. Appellant therefore submits that the claimed invention is
particular to a computer environment (i.e., with respect to CAD
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software) and thus could not be practically performed in the human
mind. Id.
The Examiner’s response is set forth on pages 3–6 of the
Answer. Therein, the Examiner explains how each of the
aforementioned claim elements reasonably correspond to a mental
process of the human mind. Ans. 4–5. We agree with the Examiner’s
position therein, and are unpersuaded by Appellant’s arguments in
response thereto in the Reply Brief (on pages 1–2 of the Reply Brief,
Appellant reiterates the position that each of the discussed claim
features therein are particular to a computer environment and utilize
elements that are uniquely suited to be used in a computer
environment, and not directed to abstract ideas).
The mere fact, however, that claims 1 and 19 each recite an
abstract idea in the form of mental processes does not automatically
render the claim patent-ineligible. Diehr, 450 U.S. at 187 (“A claim
drawn to subject matter otherwise statutory does not become
nonstatutory simply because it uses a mathematical formula.”). Thus,
we proceed to the Step 2A Prong 2 of the Guidance.
3. Guidance Step 2A Prong 2
Under Step 2A Prong 2 of the Guidance, we must “(a) [i]dentify
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluate those additional elements individually
and in combination to determine whether they integrate the exception into a
practical application.” Guidance, 84 Fed. Reg. at 54—55. Additional
elements that merely add insignificant extra-solution activity to an abstract
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idea fail to integrate the abstract idea into a patent-eligible practical
application. See id. at 55.
We refer to pages 6–7 of the Final Office Action wherein the
Examiner discusses the additional elements of claim 1, and states that claim
19 does not recite additional elements5. On the record before us, we agree
with the Examiner that claim 1, as a whole, does not integrate the judicial
exception into a practical application. As stated by the Examiner, claim 1
includes the additional element of a “processor configured to” do computer
functionsto perform the abstract mental process steps. Final Act. 6.
Also, as stated by the Examiner, the computer in these steps is recited
at a high level of generality, i.e., is a generic processor performing a generic
computer function of processing data. This generic processor limitation is
no more than mere instructions to apply the judicial exception using a
generic computer component. We therefore agree with the Examiner that
this additional element does not integrate the abstract idea into a practical
application because it does not impose any meaningful limits on practicing
the abstract idea. Thus, this additional element does not integrate
the abstract idea into a practical application. Guidance, 84 Fed. Reg. at 55,
55 n.31; MPEP § 2106.05(g). We also agree with the Examiner that claim
19 recites no additional element for consideration under Step 2A Prong 2.
Final Act. 7.

5 With regard to claim 19, because claim 19 does not recite a processor, the
Examiner views claim 19 as not reciting additional elements under Step 2A
Prong 2. We note that claim 19 does recite data collecting steps and these
steps are treated in Step 2B, infra.
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Appellant’s arguments on pages 5–9 of the Appeal Brief do not reveal
reversible error in the Examiner’s analysis and findings in this regard.
Appellant’s contentions are not persuasive for the reasons stated by the
Examiner in the Answer on pages 8–11. We add that to the extent the
arguments are conclusory, we are unpersuaded by such argument. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (explaining that mere lawyer’s arguments or
conclusory statements, which are unsupported by concrete factual evidence,
are entitled to little probative value).
Having determined that claim 1 recites a judicial exception but the
additional elements recited in the claim do not integrate the judicial
exception into a practical application, i.e., the claim is directed to mental
processes, we proceed to Step 2B of the Guidance.
4. Guidance Step 2B
Under Step 2B of the Guidance, we determine whether the claim
provides an “inventive concept,” i.e., whether the additional
elements beyond the judicial exception, individually and in combination,
amount to “significantly more” than the judicial exception itself. Guidance,
84 Fed. Reg. at 56. According to the Guidance, “simply appending well-
understood, routine, conventional activities previously known to
the industry, specified at a high level of generality,” is indicative that
an inventive concept is absent. Id. at 56.
Consistent with the Examiner’s findings and analysis (Final Act. 7–8),
we agree with the Examiner that claim 1 (as well as claim 19) are directed to
an abstract idea, e.g., mere instructions to apply an exception using a generic
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computer and insignificant extra-solution activities (mere data gathering, for
example, as recited in claim 19)), cannot integrate a judicial exception into a
practical application. As such, they do not meaningfully limit the claim to
be more than just the abstract idea. Appellant’s arguments are not
persuasive of error in the Examiner’s analysis and findings in this regard for
the reasons expressed by the Examiner on pages 10–11 of the Answer.
Thus, we determine the additional elements recited in the claims
beyond the abstract idea, individually and in combination, do not amount to
“significantly more” than the abstract idea itself. Alice, 573 U.S. 217–218.
Accordingly, we affirm the Examiner’s rejection of claims 1, 3–20,
and 35 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.

Rejection 2
With regard to the obviousness rejection, we refer to the Examiner’s
statement of the rejection set forth on pages 9–21 of the Final Office Action.
In response thereto, Appellant argues that configuring a processor to
be able to differentiate between components and environments requires
special knowledge that is inventive and patentably distinguishing over the
prior art for the reasons presented on pages 10–13 of the Appeal Brief. We
are unpersuaded by such argument for the reasons presented by the
Examiner on pages 11–12 of the Answer. Therein, the Examiner explains
that it was already known in the prior art to differentiate between
components and environments when identifying a corrosion risk during the
design of a mechanical assembly and to store component data and
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environment data in separate data structures. The Examiner refers to
Schweitzer in this regard. Ans. 12. The Examiner also states that it was also
known in the art to store data in such a way that a component of a
mechanical assembly has various bits of child data that are stored in separate
data structures associated with the component data. The Examiner refers to
Rutka in this regard. Ans. 12–13.
The Examiner reiterates that as stated on pages 11–12 of the Final
Office Action, it would have been obvious to have combined the teachings
of Rutka and Schweitzer to arrive at the claimed subject matter. The
Examiner explains that Rutka teaches the configuring a processor to
associate child data with component data, each of the component data and
child data stored in separate data structures, as well as the importance of
using the child data associated with each of two components to determine
the galvanic compatibility of galvanic pairs. Ans. 13. The Examiner
explains that Schweitzer teaches that in determining galvanic compatibility
of two parts, it is important to consider the environment associated with two
components that are in contact with each other. Id. The Examiner concludes
that it would have been obvious to have stored information about the
particular environment associated with each component as another piece of
data in a data structures available in the processor of Rutka, and associate
the piece of data about the environment as a “child” of the component data,
thereby allowing the environment taught by Schweitzer to become part of
the determination of incompatibility of galvanic pairs already performed by
Rutka. We agree.
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The Examiner then states that whether the combination of Rutka and
Schweitzer sets forth a prima facie case of obviousness depends on whether
Appellant’s invention requires particular or special knowledge not found in
the prior art to configure a processor to differentiate between components
and environments by storing component and environment information as
separate data structures and associating the data in such a way that the
environment data is a child of the parent component data. Ans. 13. The
Examiner states that the Office can find no disclosure by Appellant of
patentably distinguishing particular or special knowledge required to
configure a processor in the claimed manner to differentiate between
components and the environment for the reasons presented on pages 13–14
of the Answer (which we adopt as our own). We agree.
In response to Appellant’s allegation that the Office is engaging “in an
impermissible hindsight reconstruction by using Applicant’s claims to fill
the gaps in the cited art” (Appeal Br. 14), we agree with the Examiner’s
response made on pages 14–15 of the Answer that the combination of Rutka
and Schweitzer suggests the claimed subject matter as discussed throughout
the record.
Appellant argues on pages 16–17 of the Appeal Brief that storing data
on a computer, including storing data in “structures”, is not well-known or
commonplace in the art, and that the Office improperly takes Official Notice
by implying that the claimed data structures are no different than the
conventional way in which a general purpose computer stores data in
associated memory. We are unpersuaded by this line of argument for the
reasons presented by the Examiner on pages 15–16 of the Answer. No
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additional arguments are presented in the Reply Brief regarding the
obviousness rejection.
In view of the above, we affirm Rejection 2.
CONCLUSION
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–20, 35 101 Eligibility 1, 3–20, 35
1, 3–20, 35 103 Rutka, Schweitzer

1, 3–20, 35
Overall
Outcome
1, 3–20, 35

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED