King Abdullah University of Science and Technology

Patent Trials and Appeals Board

Dec 1, 2021

2020005240 (P.T.A.B. Dec. 1, 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.
15/760,032 03/14/2018 Taous Meriem LALEG 0338-500-2/2015-065-03 1007
144099 7590 12/01/2021
Patent Portfolio Builders, PLLC
754 Warrenton Road
Suite 113-314
Fredericksburg, VA 22406
EXAMINER
DRODGE, JOSEPH W
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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):
Mailroom@ppblaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAOUS MERIEM LALEG, FADI ELEIWI, and
AYMAN MUSTAFA KARAM
Appeal 2020-005240
Application 15/760,032
Technology Center 1700
Before LINDA H. GAUDETTE, JOHN E. SCHNEIDER, and
DEBRA L. DENNETT, Administrative Patent Judges.
SCHNEIDER, 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, 5−7, 9−13, and 15−20. 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 King Abdullah
University of Science and Technology. Appeal Br. 2.
Appeal 2020-005340
Application 15/760,032
2
CLAIMED SUBJECT MATTER
The claims are directed to a system for soft sensing parameters in
membrane distillation. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A system, comprising:
a membrane distillation (MD) module including a feed
side and a permeate side separated by a membrane boundary
layer, wherein the feed side further comprises a feed inlet and
feed outlet and wherein the permeate side further comprises a
permeate inlet and permeate outlet;
temperature sensors configured to monitor feed solution
temperatures at the feed outlet and permeate solution
temperatures at the permeate outlet; and
processing circuitry configured to estimate, during steady-
and unsteady-state operation, feed solution temperatures along
the membrane boundary layer, on the feed side, and permeate
solution temperatures along the membrane boundary layer, on
the permeate side of the MD module using an Advection-
Diffusion Equation (ADE), wherein the processing circuitry
utilizes, as inputs, the monitored feed solution and permeate
solution temperatures at the feed outlet and permeate outlet,
respectively,
wherein the ADE includes a first part that describes the
unsteady-state operation, a second part that describes a heat
convection transfer between the feed side and the permeate side,
and a third part that describes a heat conduction transfer between
the feed side and the permeate side.
REFERENCES
The prior art relied upon by the Examiner is:
Appeal 2020-005340
Application 15/760,032
3
Name Reference Date
Nagahama US 5,801,969 Sept. 1, 1998
Colas, et al. US 9,568,258 B1 Feb. 14, 2017
Sirkar, et al. US 2006/0076294 A1 Apr. 13, 2006
Qtaishat, et al. US 2011/0031100 A1 Feb. 10, 2011
Otsuka, et al. US 2014/0324380 A1 Oct. 30, 2014
Duke, et al. US 2015/0090647 A1 Apr. 2, 2015

Mojtabi, et al., One-dimensional linear advection-diffusion equation:
Analytical and finite element solutions, 107 Computer & Fluids 189 (2015).
REJECTIONS
The Examiner has rejected the pending claims as follows:
Claims 1−3, 5−7, 9−13, and 15−20 have been rejected under 35
U.S.C. § 101 as directed to non-statutory subject matter.
Claims 1−3, 5−7, 9−13 and 15−20 have been rejected under 35 U.S.C.
§ 112(b) as being indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor or a joint inventor regards as the
invention.
Claims 1−3, 5−7, 10−13, and 15−20 are rejected under 35 U.S.C.
§ 103 as unpatentable over Sirkar in view of Qtaishat, Otsuka, and
Nagahama and further in view Mojtabi and Colas.
Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Sirkar
in view of Qtaishat, Otsuka, and Nagahama and further in view Mojtabi,
Colas and Duke.
OPINION
The Examiner rejected claims 1−3, 5−7, 9−13, and 15−20 under 35
U.S.C. § 101 as directed to patent ineligible subject matter. See Final Act. 3–
7. An invention is patent-eligible if it claims a “new and useful process,
Appeal 2020-005340
Application 15/760,032
4
machine, manufacture, or composition of matter.” 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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). In determining whether a claim falls within an excepted category, we
are guided by the Supreme Court’s two-step framework, described in Alice
(see id. at 217–18), and Mayo Collaborative Services 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.
Concepts that are abstract ideas, and thus patent ineligible, include
certain methods of organizing human activity, such as fundamental
economic practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611
(2010)); 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 that are 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))).
If a 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. “A claim that recites an abstract idea must include
‘additional features’ to ensure ‘that the [claim] is more than a drafting effort
Appeal 2020-005340
Application 15/760,032
5
designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at
77).
Under the USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), we first look to
whether a 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) (“Guidance Step 2A, Prong One”), and (2) additional
elements that integrate the judicial exception into a practical application (see
MPEP § 2106.05(a)–(c), (e)–(h)) (“Guidance Step 2A, Prong Two”). 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
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception (“Guidance Step 2B”).
Appeal 2020-005340
Application 15/760,032
6
Judicial Exception — Guidance Step 2A, Prong One
As indicated above, under Guidance Step 2A, Prong One, we consider
whether the claims recite a judicial exception to the statutory categories of
patent-eligible subject matter, including one of the following groupings of
abstract ideas: (1) mathematical concepts, e.g., mathematical relationships,
mathematical formulas or equations, and mathematical calculations; (2)
mental processes, e.g., concepts performed in the human mind, including
observations, evaluations, judgments, and opinions; and (3) certain methods
of organizing human activity. See Guidance, 84 Fed. Reg. at 52.
The Examiner determined that the “claimed invention is directed to
the Abstract idea of utilizing mathematical algorithms in processing circuitry
for processing data, without significantly more.” Final Act. 3. The Examiner
continues, “[t]he claims taken as a whole, primarily recite processing
circuitry configured to estimate temperatures along a membrane boundary
layer, utilizing a three-part mathematical modeling equation without
significantly more, as now detailed in prong one of Step 2A of the
Guidance.” Id. The Examiner concludes that:
The recited collecting of operational data constitute[s]
data manipulation and analysis and mathematical calculations
or algorithms which can be at least in part performed manually
or with any generic computer or portable calculating device.
The courts have ruled in the guideline cases of Bilski vs.
Kappas (2010), Alice Corp vs CLS Bank (2014), Electric
Power Group v. Alstrom S.A. (Fed. Cir. 2015-1778, 8/1 /2016,
and TOE Petroleum Data Solutions vs. AKM Enterprises (Fed.
Cir. 2016) that collection, analysis and displaying of data
including such data governing process control constitute
Abstract ideas. Also MPEP Section 2106.04, particularly
2106.04 (a)(2), part D., concerning patent eligibility states that
mathematical algorithms and formulas, as well as tracking, i.e.
Appeal 2020-005340
Application 15/760,032
7
“identifying”, manipulating, comparing and organizing data are
Abstract ideas aligning with judicial exceptions. Ans. 5.

The Appellant disagrees, arguing that “claims 1 and 17 are directed to
a membrane distillation system, which is a machine,” and “[c]laim 10 is
directed to method of controlling a production rate of a membrane
distillation (MD) system[, which is] . . . a process.” Appeal Br. 8–9.
The Specification describes processing circuitry 1400 as including “at
least one processor circuit, for example, having a processor 1403 and a
memory 1406, both of which are coupled to a local interface 1409.” Spec.
¶ 167. Processing circuitry 1400 can include a display for rendering of
generated graphics and a keypad or touch screen to allow for user input. Id.
Processing circuitry 1400 can also include communication interfaces for
communicatively coupling with other communication devices. Id. Memory
1406 stores both data and several components that are executable by
processor 1403. Id. ¶ 168. “In particular, stored in the memory 1406 and
executable by the processor 1403 are MD process application(s) 1415, an
operating system 1418, and/or other applications 1421.” Id. The MD process
application(s) 1415, the operating system 1418, and application(s) 1421 may
be embodied in software or code executed by general purpose hardware or in
dedicated hardware as circuits or state machines that employ any one of or
a combination of well known technologies. Id. ¶ 172.
Based on the above and other description in the Specification, we
determine that claims 1 and 10 necessarily involve the use of mathematical
relationships, formulas, or equations. In accordance with the Guidance, we
conclude that claims 1, 10, and 17 recite mathematical concepts and, thus,
recite abstract ideas.
Appeal 2020-005340
Application 15/760,032
8
Integration into a Practical Application — Guidance Step 2A, Prong Two
According to the Guidance, even if a claim recites any one of the three
groupings of abstract ideas, the claim is still not “directed to” a judicial
exception (abstract idea), and thus is patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” Guidance, 84 Fed. Reg. at 53. Limitations that are indicative of
“integration into a practical application” include: (1) improvements to the
functioning of a computer, or to any other technology or technical field (see
MPEP § 2106.05(a)); (2) applying the judicial exception with, or by use of, a
particular machine (see id. § 2106.05(b)); (3) effecting a transformation or
reduction of a particular article to a different state or thing (see id.
§ 2106.05(c)); and (4) applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception (see id.
§ 2106.05(e)). See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). In
contrast, limitations that are not indicative of “integration into a practical
application” include: (1) adding the words “apply it” (or an equivalent) with
the judicial exception, merely including instructions to implement an
abstract idea on a computer, or merely using a computer as a tool to perform
an abstract idea (see MPEP § 2106.05(f)); (2) adding insignificant
extra-solution activity to the judicial exception (see id. § 2106.05(g); and
(3) generally linking the use of the judicial exception to a particular
technological environment or field of use (see id. § 2106.05(h)).
See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
The Examiner determined that the claims do not include limitations
indicative of integration into a practical application. See Final Act. 3. The
Appeal 2020-005340
Application 15/760,032
9
Examiner contends that the system’s membrane module and method steps of
adjusting inlet flow rate or temperature are nominally claimed, and the
claims lack detail as to how the processing circuitry modeling equations are
employed to execute discrete, process control steps for controlling specific
structure. Id.
Appellant contends that reading the Specification, one skilled in the
art would recognize that the “claimed invention is providing an
improvement to the operation and modeling of a MD system using
monitoring of permeate and feed inlet temperatures and modeling of
temperatures and heat transfer for both unsteady-state and steady-state
heating conditions with ADE.” Appeal Br. 12. Appellant contends that the
claims are directed to monitoring the temperature of the MD system using
and ADE to estimate temperatures thereby improving MD technology and
facilitating us of MD technology with transient renewable energy sources.
Id. at 14.
While we agree with Appellant that the Specification discloses a
method and system for controlling an MD system based on an analysis of
temperature data using ADE, the independent claims do not recite this
embodiment. For example, claim 1 calls for developing feed solution
temperature estimates based on data provided by temperature sensors using
ADE. The claim does not recite what is done with those estimates once they
are calculated.2 Thus the claims are directed only to gathering and analyzing
data, mental or mathematical process which are not patent eligible.

2 Claim 10, which depends on claim 1 adds the limitations calling for
controlling the operation of the MD module. This appears to incorporate the
abstract idea into a practical application. Appellant, however, has not argued
claim 10 separately from claim 1.
Appeal 2020-005340
Application 15/760,032
10
The claims here are in contrast with those in Diehr which included a
specific process step that was performed as a result of the calculation made
using the Arrhenius equation. See Diehr, 450 U.S. at 1072. In the present
case the independent claims do not recite any step taken after the
temperature estimates are made. See, e.g. Appeal Br. 27 (Claims App’x).
Inventive Concept – Guidance Step 2b
Under Guidance Step 2B, 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 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.
We agree with the Examiner that the present claims do not present
limitations which amount to something significantly more than the judicial
exception. See Ans. 17–18. The claims only recite generic elements such as
temperature sensors and processing circuitry without any details as to how
these elements differ from sensors or circuitry known in the industry. See
Appeal Br. 27 (Claims App.).3
Based on the foregoing, we agree with the Examiner that the claims
are directed to an abstract idea, specifically mathematical calculations and,
as presently drafted, do not incorporate the exception into a practical
application. Therefore we affirm the Examiner’s finding that the claims are
directed to patent ineligible subject matter.

3 Appellant does not address this Step maintaining that it is not necessary to
reach Step 2B as the claims integrate the judicial exception into a practical
application. Appeal Br. 14.
Appeal 2020-005340
Application 15/760,032
11
Indefiniteness
The Examiner has rejected claims 1−3, 5−7, 9−13 and 15−20 as
indefinite as the phrase ‘“during steady and unsteady-state operation’ is
vague and indefinite.” Final Act. 8. The Examiner contends that “it is
unclear what fluid properties or characteristics, or operation status time
periods would be encompassed, and how such [‘]operation would be related
to the recited temperatures.’” Id.
Appellant contends that one skilled in the art, reading the present
Specification would understand that “steady-state and unsteady-state
operation relates to the temperatures recited in the claimed invention.”
Appeal Br. 7. In support of this contention Appellant points to paragraphs 40
to 44 wherein it teaches that most models are only applicable to steady-state
or constant heat sources rather than intermittent or unsteady-state heat
sources. Id.
We have considered the arguments presented by the Examiner and
Appellant as well as the teachings of the present Specification and conclude
that Appellant has the better position. We agree with Appellant that one
skilled in the art, reading the present Specification would understand that
unsteady-state conditions refer to varying heat or temperature conditions and
that steady-state conditions are constant heat or temperature conditions.
Spec. ¶¶ 40–44. Therefore we agree with Appellant that the phrase “steady-
state and unsteady-state operation” is not indefinite.
First Obviousness Rejection
The Examiner finds that the subject matter of claims 1−3, 5−7, 10−13,
and 15−20 would have been obvious to one skilled in the art at the time of
filing over Sirkar in view of Qtaishat, Otsuka, and Nagahama and further in
view Mojtabi and Colas.
Appeal 2020-005340
Application 15/760,032
12
The Examiner finds Sirkar teaches a desalination system and method
comprising an MD system. Final Act. 9. The Examiner finds that Sirkar’s
MD system comprises feed and permeate sides separated by a membrane
and processing circuitry for maintaining the production rate of the MD
system. Id. The Examiner finds the circuitry of Sirkar is configured to adjust
process conditions based on a plurality of calculated temperatures in the MD
system including the boundary layers of the membrane separating the feed
and permeate sides of the MD. Id.
The Examiner finds that Sirkar differs from the claimed MD system in
that the claims recite the use of an Advection-Diffusion Equation model to
estimate temperatures and the requirement to estimate temperatures during
both steady-state and unsteady-state operations. Id. at 10–11.
The Examiner finds Mojtabi teaches the use of an Advection-
Diffusion equation to obtain heat transfer variations including comparison of
steady-state and unsteady-state conditions. Id. at 11.
The Examiner concludes:
It would have been obvious to one of ordinary skill in the
art of designing and operatively controlling membrane
distillation systems to have adapted the processing control
circuitry of Sirkar, to utilize modeling techniques including
such advection diffusion model based control system, as taught
by Qtaishat in combination with Otsuka and Nagahama, in
order to more accurately or precisely and quickly achieve
optimum temperatures across the membrane surfaces in a
manner more quickly adaptable to varied changing background
parameters or factors, and accurately factoring the individual
contributions of steady and unsteady state operations including
variable flow rates, pressures and liquid viscosities flowing
through different portions and solution volumes of the
membrane module.

Id. at 12.
Appeal 2020-005340
Application 15/760,032
13
Appellant contends that one skilled in the art would not look to Sirkar
for guidance concerning operations of MD systems using intermittent energy
sources. Appeal Br. 15. Appellant contends that Sirkar is silent as to
operating MD systems in unsteady-state conditions by estimating
temperature on both the permeate and the feed sides of the membrane but is
focused on conditions on the brine or feed side of the membrane. Id. at 18–
19. Appellant contends Sirkar does not teach or suggest control of operations
during unsteady-state operations. Id. at 19. Appellant contends that Sirkar is
focused on steady-state operations. Id. at 19–20.
Appellant contends that the Examiner has engaged in the
impermissible use of hindsight in making the rejection. Id. at 21. Appellant
argues that while the secondary references teach a variety of computing
modeling techniques to monitor and determine differences in temperature of
membrane boundary layers, none of them use the techniques to account for
unsteady-state operations. Id. at 21–22.
We have considered the arguments presented by the Examiner and
Appellant and again find Appellant has the better position. We agree with
Appellant that Sirkar does not relate to controlling MD operations during
unsteady-state operations. Appeal Br. 18–19. As the references do not teach
or suggest all of the limitations of the claims, the rejection cannot be
sustained. A proper § 103 analysis requires “a searching comparison of the
claimed invention—including all its limitations—with the teaching of the
prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
The Examiner contends that Sirkar teaches operation in unsteady-state
in that “Sirkar disclose[s] that the modules may be used in a variety of
industrial, commercial and specifically desalination, thus suggesting
employment in hot, dry environments which would inherently be conducive
Appeal 2020-005340
Application 15/760,032
14
to operation with intermittent, renewable energy and heat sources, such as
solar power sources.” Ans. 18–19. We are not persuaded by this argument.
The Examiner has not put forth any evidence that operation in hot, dry
environments would involve intermittent energy sources. Moreover, as
Appellant has argued,
hot and dry environments are more likely to produce a steady,
uninterrupted source of sunlight and solar energy. These types
of environments would not indicate or suggest the intermittent
nature of solar energy found in areas that are not hot and dry,
but that experience cloud cover and rain, i.e., interruptions in
sunlight. These types of areas yield an intermittent or variable
energy from solar energy sources. Therefore, the Examiner’s
suggestion that the disclosure of Sirkar related to hot, dry
environments provides teachings on the use with intermittent
energy sources is misplaced.

Reply Br. 7.
Based on the foregoing we conclude that the Examiner has not shown
by a preponderance of the evidence that the subject matter of claims 1−3,
5−7, 10−13, and 15−20 would have been obvious to one skilled in the art at
the time the invention was made over Sirkar in view of Qtaishat, Otsuka, and
Nagahama and further in view Mojtabi and Colas.
Second Obviousness Rejection
Appellant has not presented any argument with respect to the rejection
of claim 9 based on Qtaishat, Otsuka, and Nagahama and further in view
Mojtabi, Colas and Duke. See Appeal Br. 15–25. We therefore affirm this
rejection.

CONCLUSION
The Examiner is affirmed.
Appeal 2020-005340
Application 15/760,032
15
More specifically,
The rejection of claims 1−3, 5−7, 9−13, and 15−20 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter is affirmed.
The rejection of claims 1−3, 5−7, 9−13 and 15−20 under 35 U.S.C.
§ 112(b) as being indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor or a joint inventor regards as the
invention is reversed.
The rejection of claims 1−3, 5−7, 10−13, and under 35 U.S.C. § 103
as unpatentable over Sirkar in view of Qtaishat, Otsuka, and Nagahama and
further in view Mojtabi and Colas is reversed.
The rejection of claim 9 under 35 U.S.C. § 103 as unpatentable over
Sirkar in view of Qtaishat, Otsuka, and Nagahama and further in view
Mojtabi, Colas, and Duke is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1−3, 5−7,
9−13,
15−20
101 Eligibility 1−3, 5−7,
9−13,
15−20

1−3, 5−7,
9−13,
15−20
112(b) Indefiniteness 1−3, 5−7,
9−13,
15−20
1−3, 5−7,
10−13,
15−20
103 Sirkar, Qtaishat,
Otsuka, Nagahama
Mojtabi, Colas
1−3, 5−7,
10−13,
15−20
9 103 Sirkar, Qtaishat,
Otsuka, Nagahama
Mojtabi, Colas,
Duke
9
Appeal 2020-005340
Application 15/760,032
16
Overall
Outcome
1−3, 5−7,
9−13,
15−20

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