Lespinats, Sylvain et al.

Patent Trials and Appeals Board

Sep 30, 2019

14401176 - (D) (P.T.A.B. Sep. 30, 2019)

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.
14/401,176 11/14/2014 Sylvain Lespinats CEAPP037US 5326
141165 7590 09/30/2019
Moreno Intellectual Property Law LLC
1901 North Roselle Road Suite 800
Schaumburg, IL 60195
EXAMINER
DALBO, MICHAEL J
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
docket@morenoiplaw.com
docketing.MorenoLaw@clarivate.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte SYLVAIN LESPINATS and XAVIER LE PIVERT1

____________

Appeal 2019-000752
Application 14/401,176
Technology Center 2800
____________

Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party in interest as Commissariat A L’Energie
Atomique Et Aux Energies Alternatives. App. Br. 2.
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Appellant requests our review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–5, 7–13, 15, and 16. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth
below:
1. A method for operating a solar radiation sensor wherein said sensor is
a pyranometer or a reference cell associated with photovoltaic panels,
the method comprising:
calculating an estimate of drift of the solar radiation sensor
according to at least one ratio of at least one radiation measurement
(GMES) by the solar radiation sensor in its conditions of use to at least
one correspondingly time-aligned value of a radiation model, or vice
versa;
calculating a correction factor based on the estimate of drift of
the solar radiation sensor; and
operating the solar radiation sensor based on the correction
factor.
App. Br. (Claims Appendix).

The Examiner relies on the following prior art references as evidence of
unpatentability:
Gopal US 2008/0046387 Feb. 21, 2008
Le Pivert US 2010/0185337 Al July 22, 2010
Dunn US 2012/0053867 Al Mar. 1, 2012

Wang et al. (“Wang”), Short-Term Solar Irradiance Forecasting Model Based on
Artificial Neural Network Using Statistical Feature Parameters 5 ENERGIES 1355–
70 (2012).

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THE REJECTIONS
1. Claims 1–5, 7–13, 15 and 16 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception (i.e., a law of
nature, a natural phenomenon, or an abstract idea) without significantly
more.
2. Claims 1, 2, 4, 5, 7–9, and 15 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Le Pivert in view of Dunn.
3. Claim 3 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Le Pivert in view of Dunn and Wang.
4. Claims 10–13 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Le Pivert in view of Dunn and Gopal.
5. Claims 16 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Le Pivert in view of Dunn and Wang.

ANALYSIS
We select claim 1 as representative and address the claims separately to the
extent they are so argued by Appellants. 37 C.F.R. § 41.37(c)(1)(iv).
Upon consideration of the evidence and each of the respective positions set
forth in the record, we find that the preponderance of evidence supports the
Examiner’s findings and conclusion that the subject matter of Appellants’ claims is
unpatentable under § 101 and over the applied art. Accordingly, we sustain each of
the Examiner’s rejections on appeal essentially for the reasons set forth in the Final
Office Action and in the Answer, and add the following for emphasis.

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Rejection 1
For the reasons discussed below, we are unpersuaded by Appellants’
arguments that the claimed subject matter has not been shown to be patent-ineligible
as directed to a judicial exception without reciting significantly more.
An invention is patent-eligible if it claims a “new and useful process,
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. E.g.,
Alice Corp. v. CLS Banklnt’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.”).
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
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Corning v. Burden, 56 U.S. 52, 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 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); 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.”).
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). “[Merely requiring] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of §101 with
regard to the first step of the Alice/Mayo test (i.e., Step 2A of the USPTO’s Subject
Matter Eligibility Guidance as incorporated into M.P.E.P. § 2106). USPTO’s
January 7, 2019, 2019 Revised Patent Subject Matter Eligibility Guidance (“Revised
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Guidance”). 84 Fed. Reg. 50 (Jan. 7, 2019). Thus, under Step 1 of the Guidance, as
revised, we determine whether the claimed subject matter falls within the one of the
four statutory categories: process, machine, manufacture, or composition of matter.
Step 2A of the Guidance is two-pronged, under which 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); and
(2) additional elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See 84 Fed. Reg. at 54—55.
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then, under Step 2B, 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.
See 84 Fed. Reg. at 56.
Guidance Step 1
Following the aforementioned revised guidance, initially, there is no dispute
that claims 1–5, 7–13, 15 and 16 fall within one of the four statutory categories of
invention under Step 1 of the Guidance. Accordingly, we turn next to Step 2A(1) of
the Revised Guidance.

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Guidance Step 2A, Prong 1
Under Step 2A(1), we find that claim 1 recites a judicial exception in
the form of mathematical concepts, and we refer to the underlined portions of
claim 1 as identified by the Examiner on pages 2–3 of the Final Office Action
in this regard. These portions of the claim include, for example, “calculating
an estimate of drift of the solar radiation sensor according to at least one ratio
of at least one radiation measurement (GMES) by the solar radiation sensor in
its conditions of use to at least one correspondingly time-aligned value of a
radiation model, or vice versa”. We adopt the Examiner’s position as set
forth on pages 2–3 of the Final Office Action, and agree that claim 1 recites a
judicial exception in the form of mathematical concepts. SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to
a “series of mathematical calculations based on selected information” are
directed to abstract ideas).
Guidance Step 2A, Prong 2
As a result, we next turn to Step 2A(2) of the Revised Guidance to determine
whether the claims integrate the judicial exception into a practical application.
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.”).
Appellants submit their claims are directed to a real-world application
involving the operation of a piece of equipment such as a solar radiation
sensor. Appeal Br. 8. Appellants submit that instant claim 1 recites
a technical solution beyond a computation of a result, i.e., the operation of a
solar radiation sensor, and is directed to the solution of a technical problem.
Id. Appellants submit that the Specification discloses how current techniques
for recalibration of solar radiation sensors typically require either de-
installation of the sensor for recalibration back at a factory or workshop
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through the use of specialized equipment (¶¶ [0006] and [0007]), resulting in
inefficiency.2 Appeal Br. 8–9. Appellants conclude that therefore the claim
language is not abstract claim language. Appeal Br. 9.
Appellants also argue that the Examiner’s position that the claimed
operating step is part of the data processing algorithm, is not consistent with
the Specification for the reasons set forth on page 10 of the Appeal Brief.
Appellants state that in this case, ¶ [0080] of the Specification states that
sensor operation (“adaptation”) is performed according to the correction
factor; no reference is made to this operation forming a part of an algorithm
used to determine the correction factor itself. Appeal Br. 10.
In response to the above position of Appellants, it is the Examiner’s
position that:
[t]he patent eligible claims of the Diehr decision related to a process of
controlling the execution of a physical process, i.e. a rubber molding process,
in which the results of the abstract idea were utilized to control the rubber
molding process (opening the rubber mold and stopping the curing process).
In this instance the pending claims do not incorporate a limitation relating to
controlling the execution of a physical process.

The claim limitation relating to operating the solar radiation sensor based on
the correction factor is a broad limitation that is not further narrowed in
relation to controlling the exactions of a physical process by the appellant’s
specification. A reasonable interpretation of the claimed limitation, in light of
the appellant’s specification, indicates that the recited “operating of the
radiation sensor based on the correction factor” is directed towards applying
the correction factor in a data processing algorithm.

2 We note that automating previously manual processing was found not to be a
patentable improvement. Credit Acceptance Corp. v. Westlake Services, 859 F.3d
1044, 1064–1065 (Fed. Cir. 2017) (holding that claims directed to automating
previously manual processing of loan applications to be ineligible subject matter,
because the claims did not amount to a technical improvement sufficient to render
the abstract idea patent eligible).
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The examiner does not see how the recited correction factor, i.e. a
mathematical correction factor, would affect the physical operation of the
solar radiation sensor. Furthermore, the appellant’s specification does not
provide support relation [related] to the physical operation of the solar
radiation sensor based on the correction factor.

The appellant does highlight a portion of the specification to show that that
the sensor’s adaptation, i.e. operating of the radiation sensor based on the
correction factor, is different from the calibration algorithm because it
discloses a sensor operation/adaption that occurs in step that is different from
the correction coefficient calculation algorithm (see Brief page 10 and Fig.3
and paragraph 0080 of the appellant’s specification). While highlighting
paragraph 0080 of their specification the appellant argues that the office’s
interpretation is entitled to apply a broadest reasonable interpretation of the
given claim that is consistent with the specification, and that it would not be
reasonable to interpret the claimed operating of the sensor as an abstract
limitation.

However the disclosed sensor adept step, i.e. block 47 of Fig 3, is part of the
disclosed calibration method (see appellant’s specification Figs. 4A and 4B
paragraphs 0037 and 0058-0059). The cited portions of the specification
describes that Figs 4A and 4B illustrate the operation of the embodiment of
Figure 3, and expressly indicate that the argued sensor adaptations is
implemented by a digital processing circuit of a microprocessor (see
appellant’s specification paragraph 0056).

For the reasons set forth above, the examiner’s interpretation of wherein the
claimed limitation of “operating of the radiation sensor based on the
correction factor” as part of the abstract data processing/calibration limitations
is clearly consistent with the specification. The specification describes the
argued adaptation, i.e., operating of the radiation sensor to occur within a
digital processing circuit of a microprocessor (see appellant’s specification
paragraph 0056). The appellant has not provided any support to contradict the
examiner’s interpretation that the recited operating of the radiation sensor is
nothing more than part of the disclosed data processing
algorithm implemented in a microprocessor (see appellant’s specification
paragraph 0056).
Ans. 3–4.

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In reply, Appellants argue that there is no per se requirement that the claims
should recite control of a “physical process” or “physical operation'”. Reply Br. 3.
We agree with the Examiner’s position as presented, supra, and are
unpersuaded of error by Appellant’s arguments for the reasons provided by the
Examiner in the record. Taking the claims as a whole and considering the steps of
the claimed method of operating a solar radiation sensor, including operating the
solar radiation sensor based on the correction factor, such steps are insufficient to
integrate the mathematical limitations that are judicial exceptions into a practical
application. The claims are not directed to more than applying the judicial exception
in a generic way concerning a method of operating a solar radiation sensor. MPEP
§ 2106.05(f). Here, the method of operating a solar radiation sensor merely defines
the field of use linked to the judicial exception. There is no description
of transforming the method of operating a solar radiation sensor or any actual
description of improving the method of operating a solar radiation sensor (there is
no sufficient detail of the operating of the sensor based on the correction factor). See
MPEP § 2106.05(c).
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 an abstract idea, we
proceed to Step 2B of the Guidance.
Guidance Step 2B
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, as in the instant case, do we next, under
Step 2B, conduct the following analysis. We note that 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
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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. at 56.
In the instant case, Appellants argue that their claims amount to substantially
more, and when read as a whole, recite the specific process for the operation of a
machine (solar radiation sensor). Appeal Br. 10–11. Appellants reiterate that the
claims embrace significantly more than the alleged abstract idea. Reply Br. 3–4.
We are unpersuaded by such arguments. While claim 1 includes the claim
element of “operating the solar radiation sensor based on the correction factor”, this
limitation does not have any specificity to it to render it significantly more than the
abstract idea. Use of a correction factor is like a calibration. Hence, in essence,
operating the solar radiation sensor based on a correction factor is a calibration of
the sensor. As stated by the Examiner, this adaptation of the sensor (or calibration
of it) is implemented by a digital processing circuit of a microprocessor. Ans. 4.
More specifically, as mentioned, supra, the Examiner states the Specification
describes that Figures 4A and 4B illustrate the operation of the embodiment of
Figure 3, and expressly indicates that the argued sensor adaptations is implemented
by a digital processing circuit of a microprocessor. Spec. ¶ 0056. Ans. 4.
Furthermore, unlike in Diamond v. Diehr, 450 U.S. 175 (1981), where the post-
solution activity, namely controlling the press is very specific with respect to
designated outcomes of the mathematical calculation, namely “to open when the
comparison indicates equivalence, meaning that the molded product is cured,” the
present claims are too generic to constitute significantly more. See also
Classen Immunotherapies Inc. v. Biogen IDEC, 659 F.3d 1057, 1066–68 (Fed.
Cir. 2011) (the immunization step, which only immunized where the analysis step
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resulted in showing lower risk for chronic immune-mediated diseases, was
meaningful because it integrated the results of the analysis into a specific and
tangible method). Cf. Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350,
1356 (Fed. Cir. 2016) (claiming a particular solution to a problem or a particular
way to achieve a desired outcome may provide significantly more).
Furthermore, the Examiner points out that the additional elements simply
append well-understood, routine, and conventional activities previously known to
the industry, specified at a high level of generality, to the judicial exception. Ans. 7–
8. Therein, the Examiner states (with text in bold for emphasis):
Furthermore, even if the argued operation of a sensor based on a correction
coefficient is not part of the recited abstract idea, a broadly recited limitation
as to operating a senor based on a correction coefficient would not amount to
something significantly more than the recited abstract idea. As noted in
background of the appellant’s specification, performing calibration algorithm
to adjust sensor values is well-understood, routine, and conventional in the
art. Furthermore the prior art of record discloses continuing to operate a solar
radiation sensor once it has been calibrated (see Le Pivert (US 2010/0185337)
paragraph 0056: stores a loss coefficient, i.e. a calibration coefficient, in
memory that serves as a basis for a periodic recalculation of a new
loss coefficient based on the stored values; see also Dunn (US 2012/0053867)
Abstract and paragraphs 0060-0065: discusses using calibrated reference
cells, i.e., once already corrected by a calibration coefficient, as a means to
isolate any degradation effects associated with the solar panel; also discusses
that calibrated cells may also be used to calibrate other solar cells). Thus, the
broadly recited limitation relating to operating a solar radiation sensors
according to a calculated correction factor is well-understood, routine, and
conventional as shown in the prior art of record.
We agree with the Examiner’s position which is supported by the record as
shown above (see MPEP § 2106.05(d)), and note that Appellants do not reply to the
aforementioned position in their Reply Brief. Appellants do argue on page 9 of the
Appeal Brief that the “operating” step utilizing a calibration is not conventional. It
is respectfully noted that Appellants’ arguments must be considered mere attorney
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speculation not supported by evidence. In re Scarborough, 500 F.2d 560,566 182
USPQ 298,302 (CCPA 1974).
In view of the above, we affirm Rejection 1.

Rejections 2–5
As an initial matter, our determinations with respect to Rejection 2 is
dispositive for Rejections 3–5 (Appellants rely upon the same arguments (Appeal
Br. 18–19)).
We adopt the Examiner’s findings made on page 5–10 of the Final Office
Action and the Examiner’s response set forth on pages 9–10 of the Answer. For the
reasons stated therein, we are unpersuaded by Appellants’ arguments in the record.
We note that Appellants’ primary argument is that the combination of Le Pivert and
Dunn teaches, at most, a determination of correction factors for prediction models
used to estimate solar energy production, thereby precisely avoiding the need for
solar radiation sensors as recited in the claims. Appeal Br. 14. Reply Br. 4–5.
However, Le Pivert only discloses that a sensor, which is relatively costly, is not
necessary. Le Pivert, [0043]. We do not agree with Appellants that this is a teaching
to completely avoid sensors as it is well settled that merely because “[a]
combination would not be made by businessmen for economic reasons does not
mean that persons skilled in the art would not make the combination.” In re
Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983). We thus are unpersuaded by such
argument.
In view of the above, we affirm Rejections 2–5.

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DECISION
Each rejection is affirmed.

TIME PERIOD
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).

ORDER
AFFIRMED