HONEYWELL INTERNATIONAL INC.

Patent Trials and Appeals Board

Nov 16, 2020

2020000597 (P.T.A.B. Nov. 16, 2020)

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.
13/928,538 06/27/2013 Surendra Singh H0036504 (002.4650) 5036
89955 7590 11/16/2020
HONEYWELL/LKGLOBAL
Intellectual Property Services Group
300 S. Tryon Street
Suite 600
Charlotte, NC 28202
EXAMINER
LARKIN, DANIEL SEAN
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
11/16/2020 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):
DL-PMT-SM-IP@Honeywell.com
honeywell@lkglobal.com
patentservices-us@honeywell.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SURENDRA SINGH, JIM MICHAEL OHM,
FREDERICK WILLIAM VENSEL, and RICHARD LEE KRANTZ
____________

Appeal 2020-000597
Application 13/928,538
Technology Center 2800
____________

Before ADRIENE LEPIANE HANLON, MONTÉ T. SQUIRE, and
SHELDON M. MCGEE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1 and 3–6.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 This Decision refers to the Specification filed June 27, 2013 (“Spec.”);
Non-Final Office Action dated Apr. 25, 2018 (“Non-Final Act.”); Appeal
Brief filed Oct. 1, 2018 (“Appeal Br.”); Examiner’s Answer dated Jan. 28,
2019 (“Ans.”); and Reply Brief filed May 13, 2019 (“Reply Br. “).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Honeywell International Inc., as the
real party in interest. Appeal Br. 1.
3 Claims 2 and 7 are canceled and claims 8–14 are withdrawn. Non-Final
Act. 1.
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CLAIMED SUBJECT MATTER
The invention relates to non-destructive evaluation (NDE) methods
for calculating the thickness of a coating layer on a turbine engine
component. Spec ¶¶ 1, 7, 8, 24; Abstract. The method includes, among other
steps, directing an acoustic wave into a turbine engine component, receiving
a return time-domain signal reflected from the turbine engine component,
transforming the time-domain signal into a frequency-domain signal,
subtracting a baseline signal from the frequency-domain signal, and
calculating the thickness of the coating layer based on a determined local
minimum frequency. Spec. ¶¶ 8, 30–32, 34.
Claim 1 illustrates the subject matter on appeal and is reproduced
below from the Claims Appendix to the Appeal Brief:
1. A method of non-destructively evaluating a thickness of a
coating layer on a coated turbine engine component, the method
comprising:
directing a first ultrasonic wave into a non-coated turbine
engine component, the first ultrasonic wave comprising a first
frequency and a first wavelength;
receiving a first return time-domain signal reflected from
the non-coated turbine engine component;
transforming the first return time-domain signal into a first
frequency domain signal, the first frequency domain signal
comprising a baseline frequency-domain signal;
directing a second ultrasonic wave into the coated turbine
engine component, the second ultrasonic wave comprising a
second frequency and a second wavelength;
receiving a second return time-domain signal reflected
from the coated turbine engine component;
transforming the second return time-domain signal into a
second frequency-domain signal;
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subtracting the baseline frequency-domain signal from the
second frequency-domain signal to obtain a baseline-subtracted
frequency-domain signal;
determining a local measured minimum frequency of the
baseline-subtracted frequency-domain signal; and
calculating the thickness of the coating layer based on the
measured local minimum frequency, wherein calculating the
thickness is performed according to the following equation:

Appeal Br. 11 (Claims Appendix).4
REJECTION
On appeal, the Examiner maintains (Ans. 3) the following rejection:
claims 1 and 3–6 rejected under 35 U.S.C. § 101 as being directed to a
judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract
idea) without significantly more. Non-Final Act. 2.
OPINION
Having considered the respective positions the Examiner and
Appellant advanced in light of this appeal record, based essentially on the
factual findings and reasons the Examiner provides in the Answer
and Non-Final Office Action dated April 25, 2018, and the reasons we
discuss below, we affirm the Examiner’s § 101 rejection.

4 Of the claims on appeal, claim 1 is the only independent claim.
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A. Principles of Law
Section 101 of the Patent Act provides “[w]hoever 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.” 35 U.S.C. § 101. The Supreme Court, however, 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) (internal quotation marks and citation
omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-part 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.”).
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, 67 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
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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 (1853))); 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 187; 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).
If the claim is “directed to” an abstract idea, we turn to the second
part 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 (citation 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).
The USPTO has published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
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Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).5 According to the
2019 Revised Guidance, under Step 1, we first look to whether the claimed
subject matter falls within the four statutory categories set forth in § 101,
namely a process, machine, manufacture, or composition of matter. 2019
Revised Guidance, 84 Fed. Reg. at 53–54. Next, under Step 2A, which
includes two prongs, we 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) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (Step 2A,
Prong 2).
Id. at 52, 55–56.6
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look,
under Step 2B, to determine whether the claim contains an inventive

5 In response to received public comments, the Office issued an update on
October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October
2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
6 This evaluation is performed by (1) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(2) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55.
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concept, in which we consider whether an additional element or
combination of elements:
(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
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
Id. at 56.
B. Examiner’s Findings and Conclusion
The Examiner rejects claims 1 and 3–6 under 35 U.S.C. § 101 as
being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. Non-Final Act.
2–5; Ans. 3–6.
The Examiner determines claim 1 is directed to a method, which
recites a combination of abstract ideas, including obtaining and collecting
data and mathematical manipulation of data. Non-Final Act. 3–4; Ans. 3–4.
In particular, the Examiner determines the “receiving a first return
time-domain signal” and “receiving a second return time-domain signal”
steps of claim 1 recite abstract ideas in the form of obtaining and collecting
information, which are similar and correspond to concepts found to be
abstract ideas by the courts in cases, such as Smart Systems Innovations,
LLC v. Chicago Transit Authority, 873 F.3d 1364 (Fed. Cir. 2017) and
Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016).
Non-Final Act. 4.
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The Examiner determines the majority of the remaining claim steps
recite abstract ideas in the form of mathematical manipulation of data. Id. at
4; see also Ans. 3–4 (determining “[c]laim 1 is mainly about the
mathematical manipulation of data” and “describes mathematical
algorithms”). For example, the Examiner determines the “transforming the
first return time-domain signal” and “transforming the second return
time-domain signal” steps recite abstract ideas involving converting
ultrasonic signal data from time-domain signal data to frequency-domain
signal data, which the Examiner finds, is essentially the application of a
mathematical formula/algorithm and similar to concepts identified as
abstract ideas in Gottschalk v. Benson. Non-Final Act. 4; see also Ans. 4,
Table 1 (identifying “[r]ecitations of the mathematical algorithms” in
Appellant’s claim 1).
The Examiner determines the “subtracting the baseline
frequency-domain signal,” “determining a local measured minimum
frequency,” and “calculating the thickness of the coating layer” steps recite
abstract ideas involving mathematical manipulation of data, which are
similar and correspond to concepts courts have found to be abstract ideas in
cases, such as Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014) and In re Grams, 888 F.2d 835 (Fed. Cir. 1989).
Id. at 4.
The Examiner determines the additional elements claim 1 recites,
individually and as a whole, do not integrate the recited abstract ideas into a
practical application. Ans. 4–5; Non-Final Act. 4. The Examiner determines
the additional elements claim 1 recites, for example, the recitations
“directing a first ultrasonic wave” and “directing a second ultrasonic wave”
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describe directing ultrasonic waves into various components to obtain data
using techniques “common and well-known within the field of
non-destructive inspection.” Non-Final Act. 4; Ans. 6. The Examiner further
determines the claim does not recite any particular machine or general
purpose computing system to perform the steps nor does it recite any kind of
transformation or reduction of a particular article to a different state or thing.
Ans. 5. Rather, the Examiner determines that “[o]utside of the math itself,
the rest of the claim describes the general process of obtaining ultrasonic
data from components to be compared.” Id. at 5.
The Examiner also determines the additional elements claim 1 recites,
individually and as a whole, do not amount to significantly more than the
judicial exception and thus, the claim does not contain an inventive concept
sufficient to transform the judicial exception into a patent-eligible
application. Ans. 5–6; Non-Final Act. 4 (determining “the claim does not
include additional elements that are sufficient to amount to significantly
more than the above judicial exceptions”). The Examiner determines claim 1
is directed to “the abstract idea of processing data via mathematical
manipulation” and recites additional elements/steps that amount essentially
to “a general description of obtaining ultrasonic data through non-destructive
inspection.” Ans. 5. The Examiner explains that because
[t]his kind of inspection is well-known within in the art
and one of ordinary skill in the art would not find the steps
of directing an ultrasonic wave into components for
comparison and receiving sensed results to be significantly
more[,] . . . [t]hese steps taken individually do not
represent something significantly more than the judicial
exception since they describe a commonly-used practice.
Furthermore, as a whole, in order to perform the abstract
idea in the first place . . . [i]t would not be considered
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significantly more to perform the basic data gathering
steps of Claim 1.
Id. at 5; see also id. at 6 (citing Sukahara et al., US 4,625,556, issued Dec. 2,
1986 (“Sukahara”)).
With respect to dependent claims 3–6, the Examiner determines the
claims recite the same abstract ideas as claim 1 and “do not add significantly
more” than the combination of abstract ideas claim 1 recites. Non-Final Act.
4 (“Ultrasonic transducers are common and well-known devices for the
transmission and reception of ultrasonic transducers and do not represent
anything significantly more.”), 4 (determining additional steps do not alter
“the context of the abstract ideas . . . in a way that would amount to
significantly more”). Thus, for principally the same reasons the Examiner
provides as to claim 1, the Examiner determines claims 3–6 are
patent-ineligible under 35 U.S.C. § 101.
B. Appellant’s Contentions
In response to the Examiner’s rejection, Appellant presents arguments
for the patentability of claim 1 and relies essentially on those same
arguments for the patentability of dependent claims 3–6. Appeal Br. 5, 9–10.
We select claim 1 as representative of the claims on appeal and claims 3–6
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that the Examiner’s rejection should be reversed
because claim 1 is not directed to an abstract idea. Appeal Br. 5. Appellant
further argues that, even if claim 1 were asserted to be directed to an abstract
idea, the claim elements individually and in combination amount to
significantly more than the abstract idea. Id. at 5. Appellant contends that, in
contrast to the Examiner’s findings, the “claims do not simply require
various measurements and computations related to disparate items” but
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instead, “each step in the method is integrally related to the ultimate
determination of the coating thickness of the coated object.” Id. at 5 (stating
“transmitting the ultrasonic waves into each object and retrieving their return
signals are related in that they both return signals used to determine a
baseline signal” and “the baseline signal is then used to determine the
coating thickness); see also Reply Br. 1 (arguing “the claim as a whole
integrate[s] the recited judicial exception into a practical application”).
Appellant also argues that, in contrast to the claims at issue and found
patent-ineligible in Alice, claim 1 is more similar to claims found
patent-eligible in other cases. Appeal Br. 5–6 (summarizing cases). In
particular, Appellant argues claim 1 is most comparable and analogous to
the claims at issue in Thales Visionix Inc. v. United States, 850 F.3d 1343
(Fed. Cir. 2017). Id. at 6–8 (comparing claim 1 in Thales Visionix with
Appellant’s claim 1). Appellant contends that, like claim 1 in Thales
Visionix, Appellant’s
claim 1 is not directed to a mathematical equation for
calculating coating thicknesses, rather, claim 1 uses
sensors in a non-conventional way (note the absence of
any section 102 or 103 rejections outstanding in the
Application) to obtain a determination of coating thickness
in a manner that has never been done before.
Id. at 8. Appellant contends its claimed method “employ[s] an admittedly
unconventional combination of use of sensors on both a non-coated / coated
substrate, and using the resulting data in conjunction with the equation to
determine a coating thickness in an unconventional manner.” Id. at 8.
C. Analysis
For the reasons we discuss below, and based essentially on the factual
findings, analysis, and conclusions the Examiner provides in the Answer and
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Non-Final Action dated April 25, 2018, we determine claims 1 and 3–6 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.
Step 1: Whether the Claim is Directed to a Statutory Category
We first consider whether the claimed subject matter falls within the
four statutory categories set forth in § 101, namely a process, machine,
manufacture, or composition of matter. 2019 Revised Guidance, 84 Fed.
Reg. at 53–54. Claim 1 recites a “method of non-destructively evaluating a
thickness of a coating layer on a coated turbine engine component” and,
thus, falls within the process category. We therefore proceed to the next step
of the analysis.
Step 2A, Prong 1: Whether the Claim Recites a Judicial Exception
We next evaluate whether the claim recites a judicial exception, i.e.,
an abstract idea, a law of nature, or a natural phenomenon. 2019 Revised
Guidance, 84 Fed. Reg. at 54; see Alice, 573 U.S. at 216. Claim 1 recites a
method that includes: (1) directing a first ultrasonic wave into a non-coated
turbine engine component; (2) receiving a first return time-domain signal
reflected from the non-coated turbine engine component; (3) transforming
the first return time-domain signal into a first frequency domain signal; (4)
directing a second ultrasonic wave into the coated turbine engine
component; (5) receiving a second return time-domain signal reflected from
the coated turbine engine component; (6) transforming the second return
time-domain signal into a second frequency-domain signal; (7) subtracting
the baseline frequency-domain signal from the second frequency-domain
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signal; (8) determining a local measured minimum frequency of the
baseline-subtracted frequency-domain signal; and (9) calculating the
thickness of the coating layer based on the measured local minimum
frequency. Appeal Br. 11 (Claims Appendix).
Consistent with the Examiner’s analysis (Ans. 3–4), we determine
claim 1 recites a judicial exception, i.e., an abstract idea in the form of
mathematical concepts because the claim recites steps, which involve
mathematical manipulations of collected data. 2019 Revised Guidance, 84
Fed. Reg. at 52 (identifying mathematical concepts as a category of abstract
ideas); see also Diehr, 450 U.S. at 191 (“A mathematical formula as such is
not accorded the protection of our patent laws.”). The “transforming” steps
claim 1 recites, for example, involve converting time-domain signals into
frequency-domain signals through the use of mathematical formulas and by
performing mathematical operations on the data. Spec. ¶ 30 (describing
mathematical relationship between the signals’ wavelength, sound velocity,
and ultrasonic frequency), ¶ 31 (describing “digitizing the ultrasonic
waveform” and “computing the Fourier Transformation”).
The “subtracting,” “determining,” and “calculating” steps the claim
recites also involve mathematical manipulations of data, including through
the use of mathematical relationships/equations and by performing
mathematical calculations. Spec. ¶ 31 (disclosing “the baseline signal power
is subtracted from the current spectrum”), ¶ 32 (describing using frequency
equation to determine sample thickness), ¶ 33 (disclosing equation where
“the obtained minimum frequency is used to calculate coating thickness”).
The mere fact, however, that claim 1 recites an abstract idea in the
form of mathematical concepts does not automatically render the claim
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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 Step 2A, Prong 2 of the
analysis.
Step 2A, Prong 2: Whether the Judicial Exception is
Integrated into a Practical Application

We must next identify whether there are any additional elements
recited in the claim beyond the judicial exception, and then evaluate those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application. 2019 Revised
Guidance, 84 Fed. Reg. at 54–55. Additional elements that merely add
insignificant extra-solution activity to an abstract idea fail to integrate the
abstract idea into a patent-eligible practical application. Id. at 55.
Consistent with the Examiner’s analysis (Ans. 4–5), we determine the
additional elements claim 1 recites, which we consider individually and in
combination, do not integrate the judicial exception into a practical
application. In particular, we agree with the Examiner that the “receiving a
first return time-domain signal” and “receiving a second return time-domain
signal” recitations of claim 1 are merely data gathering steps, which
essentially involve collecting information in the form of time-domain signal
data necessary to conduct the recited abstract idea. 2019 Revised Guidance,
84 Fed. Reg. at 55, n.31 (identifying “mere data gathering” as an
“insignificant extra-solution activity”); see also OIP Techs., Inc. v.
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Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (holding that mere
data gathering is insufficient to confer patent eligibility).
We also agree with the Examiner that the “directing a first ultrasonic
wave,” “directing a second ultrasonic wave,” and “receiving . . . a signal
reflected from” recitations of claim 1, individually and in combination, do
not integrate the recited abstract idea into a practical application. Rather, as
the Examiner finds (Ans. 3–4, 6) and Appellant does not dispute, directing
ultrasonic waves into components and receiving reflected signals using
sensors to obtain data to calculate the layer thickness of such components, is
a conventional and well-known technique in the field of non-destructive
inspection/evaluation. See Sukahara, Abstract, 1:5–41, 1:9–11 (“Methods are
conventionally known in which the thickness of a layer formed on a
substrate is measured by means of ultrasonic waves.”).
Moreover, as the Examiner finds (Ans. 4–5), these additional elements
do not add any meaningful limitations that amount to more than generally
linking the use of the abstract idea to a particular technological environment
or field of use (i.e., turbine engine components). The fact that the claim
includes additional elements that “generally link the use of a judicial
exception to a particular technological environment or field of use,” without
more, is insufficient to integrate a judicial exception into a practical
application. 2019 Revised Guidance, 84 Fed. Reg. at 55.
As explained in Diehr, it is not enough to limit the formula to a
particular technological environment. See Diehr, 450 U.S. at 187; see also
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258–59 (Fed.
Cir. 2016) (“All that limitation does is to confine the abstract idea to a
particular technological environment--in this case, cellular telephones.”).
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The Federal Circuit has explained that “limiting the claims to the particular
technological environment . . . is, without more, insufficient to transform
them into patent-eligible applications of the abstract idea at their core.” Elec.
Power Grp., 830 F.3d at 1354.
Having determined claim 1 recites a judicial exception but the
additional elements the claim recites do not integrate the judicial exception
into a practical application, i.e., the claim is directed to the abstract idea of
mathematically manipulating collected data for calculating the thickness of a
coating layer, we proceed to Step 2B of the analysis.
Step 2B: Whether the Claim Contains an Inventive Concept
Under Step 2B, we determine whether the claim contains an inventive
concept sufficient to transform the judicial exception into a patent-eligible
application, i.e., whether the additional elements beyond the judicial
exception, considered individually and in combination, amount to
significantly more than the judicial exception itself. 2019 Revised Guidance,
84 Fed. Reg. at 56. According to the 2019 Revised Guidance, “simply
append[ing] 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 analysis (Ans. 5–6), we determine
claim 1 is directed to the abstract idea of mathematically manipulating
collected ultrasonic data for calculating the thickness of a coating layer and
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, and thus, fails
to provide an inventive concept sufficient to transform the abstract idea into
patent-eligible subject matter. As the Examiner determines (Ans. 6), beyond
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the abstract idea of mathematically manipulating ultrasonic data, the
additional elements the claim recites involve directing an ultrasonic wave
into components for comparison and receiving sensed results, which, as
Sukahara evidences (Sukahara, 1:9–11, 8:47–52), are conventional and
well-known in the field.
As the Examiner explains (Ans. 6), because the type of
non-destructive inspection technique the claim recites for obtaining data is
conventional and well-known in the field, one of ordinary skill in the art
would not have considered the additional steps of directing an ultrasonic
wave into a component and receiving signals reflected from a component to
be substantially more than merely data gathering/collection for use as input
to perform the recited mathematical manipulations of the collected data. See
In re Gitlin, No. 2018-1461 (Fed. Cir. June 13, 2019), slip op. at 5 (“But
merely calling for a mathematical concept to be performed . . . with a
particular input does not amount to an application of the mathematical
concept that is patent-eligible.”).
Thus, on this appeal record, we agree with the Examiner (Ans. 5–6) in
determining that, beyond the abstract idea, the additional elements claim 1
recites, individually and in combination, do not amount to significantly more
than the abstract idea itself. Alice, 573 U.S. 217–218.
We do not find Appellant’s arguments persuasive of the Examiner’s
rejection. Appellant’s contentions that the “claims do not simply require
various measurements and computations related to disparate items” and
“each step in the method is integrally related to the ultimate determination of
the coating thickness of the coated object” (Appeal Br. 5) and “the claim as a
whole integrate[s] the recited judicial exception into a practical application”
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(Reply Br. 1) are not persuasive because they are conclusory and Appellant
does not direct us to persuasive evidence in the record or provide an
adequate technical explanation to support them. 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).
Appellant’s arguments regarding the Thales Visionix case and that
claim 1 is analogous to the claims found patent-eligible in that case are
equally unpersuasive. In Thales Visionix, the claims were directed to an
unconventional physical arrangement of inertial sensors and a new method
for using the sensors to process signals, and the mathematical concepts
involved were used to improve that particular technology. Thales Visionix,
850 F.3d at 1348–1349 (finding patent-eligibility upon considering “claims
directed to a new and useful technique for using sensors to more efficiently
track an object on a moving platform”). See also MPEP § 2106.05(a)(II)
(“The courts have also found that improvements in technology beyond
computer functionality may demonstrate patent eligibility”). In contrast,
claim 1 does not involve implementing an unconventional method or
technique for using sensors to process ultrasonic signals in a way which
provides a technological improvement over the prior art.
Rather, as the Examiner determines (Ans. 5–6) and we discuss above,
beyond the abstract idea of mathematically manipulating ultrasonic data, the
additional elements claim 1 recites involve directing an ultrasonic wave into
components for comparison and receiving reflected signals using sensors to
obtain data to calculate a coating thickness in a way, which is conventional
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and well-known in the field. See Sukahara, Abstract, 1:5–41, 1:9–11
(“Methods are conventionally known in which the thickness of a layer
formed on a substrate is measured by means of ultrasonic waves.”).
Contrary to what Appellant’s argument seems to imply, claim 1 does
not recite or involve any non-conventional use or unconventional
combination/arrangement of sensors. The claim also does not recite or
involve any improvement in the functionality or operation of any sensor, for
example, to the manner in which the ultrasonic signals are directed into the
turbine engine components and/or the manner in which the signals are
received or reflected.
Appellant’s assertions that “claim 1 uses sensors in a
non-conventional way” and “employ[s] an admittedly unconventional
combination of use of sensors . . . to determine a coating thickness in an
unconventional manner” (Appeal Br. 8) are not persuasive because they are
conclusory and Appellant does not identify or direct us to evidence in the
record to support those allegations. De Blauwe, 736 F.2d at 705. For
example, Appellant does not identify or direct us to any specific description
or disclosure in the Specification or elsewhere in the record indicating the
claimed method uses sensors in a non-conventional way or in any
unconventional combination or manner.
To the extent Appellant is arguing that the “non-conventional way”
(Appeal Br. 8) or “unconventional manner” the claim uses sensors for
determining a coating thickness (id. at 8) lie in the mathematical concepts
themselves, the Supreme Court has held that “the novelty of the
mathematical algorithm is not a determining factor at all.” Flook, 437 U.S. at
591–92, 594–95 (“Respondent’s application simply provides a new and
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presumably better method for calculating alarm limit values.”); cf. Gitlin,
slip op. at 5 (explaining “merely calling for a mathematical concept to be
performed more efficiently . . . does not amount to an application of the
mathematical concept that is patent-eligible”).
Accordingly, we affirm the Examiner’s rejection of claims 1 and 3–6
under 35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6 101 non-statutory
subject matter,
judicial exception
1, 3–6

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv).
AFFIRMED