GRANTA DESIGN LIMITEDDownload PDFPatent Trials and Appeals BoardDec 30, 20212021000683 (P.T.A.B. Dec. 30, 2021) Copy Citation 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. Appeal 2021-000683 Application 14/865,795 2 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 Appeal 2021-000683 Application 14/865,795 3 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 Appeal 2021-000683 Application 14/865,795 4 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.”). Appeal 2021-000683 Application 14/865,795 5 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.”). Appeal 2021-000683 Application 14/865,795 6 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 Appeal 2021-000683 Application 14/865,795 7 (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. Appeal 2021-000683 Application 14/865,795 8 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 Appeal 2021-000683 Application 14/865,795 9 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. Appeal 2021-000683 Application 14/865,795 10 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 Appeal 2021-000683 Application 14/865,795 11 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 Appeal 2021-000683 Application 14/865,795 12 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. Appeal 2021-000683 Application 14/865,795 13 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 Appeal 2021-000683 Application 14/865,795 14 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 Appeal 2021-000683 Application 14/865,795 15 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. Appeal 2021-000683 Application 14/865,795 16 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 Appeal 2021-000683 Application 14/865,795 17 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 Copy with citationCopy as parenthetical citation