Peter Cowan et al.

Patent Trials and Appeals Board

Sep 30, 2019

12886715 - (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.
12/886,715 09/21/2010 Peter Cowan S2180-707519(SPL-0208) 1105
79680 7590 09/30/2019
LANDO & ANASTASI, LLP
A2000
One Main Street, Suite 1100
Cambridge, MA 02142
EXAMINER
ANDERSON, LYNNE D
ART UNIT PAPER NUMBER
2862
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):
CKent@LALaw.com
docketing@LALaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER COWAN, JOHN C. VAN GORP,
and DANIEL J. WALL1

____________

Appeal 2018-007389
Application 12/886,715
Technology Center 2800
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

FRANKIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify Schneider Electric USA, Inc., as the real party in
interest. App. Br. 3.
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Appellants request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–7 and 9–20. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:

1. A method of analyzing usage of at least one utility by a
utility consuming system having one or more utility consuming
segments, the method comprising:
generating, via one or more controllers, a first load
duration curve (LDC) indicating load characteristics over a
first time period;
receiving from a user a selection of a first portion of the
first LDC to be analyzed, wherein the first portion represents a
second time period less than the first time period;
generating, in a response to the received selection, via the
one or more controllers, a second portion of the first LDC to be
analyzed, the second portion being generated by comparing the
first portion to a plurality of additional portions of the first
LDC, wherein the second portion represents a third time period
less than the first time period and different from the second
time period, and each of the plurality of additional portions
represents an additional time period less than the first time
period;
generating, via the one or more controllers, a first
associated duration chart (ADC) indicative of one or more
associated duration parameters relating to the second portion of
the first LDC, the associated duration parameters including at
least one load characteristic for the third time period; and
storing, via one or more memory devices, the generated
first ADC in association with the generated first LDC;
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modifying at least one of the utility consuming segments
responsive to at least one of the second portion of the first LDC
and the first ADC.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Sneeringer US 2004/024717 A1 Feb. 5, 2004

Brickfield US 2008/0177423 A1 July 24, 2008

Nasle US 2008/0262820 A1 Oct. 23, 2008

Chassin US 2010/0107173 A1 Apr. 29, 2010

Tomita WO 2010082536 A1 July 22, 2010

Noel D. Uri Mid-range forecasting Oct. 1979
(“Uri”) of the load duration curve,
Vol. 3, Appl. Math Modelling,
Dept. of Energy, 379–383

Shmuel Oren Capacity Pricing, Vol. 53, May 1985
(“Oren”) No. 3, Econometrica 545–566

Juozas Abaravicius More of Less about Data: 2006
(“Abaravicius”) Analyzing Load Demand
in Residential Houses,
ACEEE Summer Study on
Energy Efficiency in Bldgs.
12-1–12-12, Lund Univ.,
Sweden

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THE REJECTIONS2
1. Claims 1–7 and 9–20 are rejected under 35 U.S.C. § 101 as the
claimed invention is directed to non-statutory subject matter 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. Advisory Act. 2–11.
2. Claims 1, 2, 3, and 5–7, 9, 10, 15, and 17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sneeringer in view of Abaravicius
and Tomita. Advisory Act. 11–20.
3. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sneeringer, Abaravicius, and Tomita, and further in view of
Chassin. Advisory Act. 20–21.
4. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sneeringer, Abaravicius, and Tomita, and further in
view of Uri. Advisory Act. 21–23.
5. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sneeringer, Abaravicius, and Tomita, and further in view of
Nasle. Advisory Act. 23.
6. Claims 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sneeringer, Abaravicius, and Tomita, and further in view of
Oren. Advisory Act. 23–24.

2 In the Advisory Action mailed June 6, 2017, the Examiner sets forth the
rejections, which Appellant argues in the Appeal Brief. Appeal Br. 8–15.
Thus, we refer to the Advisory Action regarding the rejections of record
throughout this decision.
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7. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sneeringer and Abaravicius, and further in view of Brickfield.
Advisory Act. 24–25.
8. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sneeringer, in view of Brickfield, Abaravicius and Tomita.
Advisory Act. 25–30.
9. Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sneeringer, in view of Brickfield and Abaravicius. Advisory Act.
30–34.
10. Claim 20 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Sneeringer in view of Brickfield, Abaravicius, Oren, and Tomita.
Advisory Act. 34–39.

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
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(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. 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
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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 Guidance”). 84 Fed. Reg. 50 (Jan. 7,
2019). Thus, under Step 1 of the Guidance, 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
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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 1–7 and 9–20 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.
Guidance Step 2A, Prong 1
Under Step 2A(1), we find that claim 1 recites a judicial exception in
the form of mathematical concepts such as in reciting “generating, via one or
more controllers, a first load duration curve (LDC)”, for the reasons
expressed by the Examiner in the record, which we do not repeat herein.
Advisory Act. 2–11. Thus, 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.”).
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We refer to Appellants’ position as presented on pages 7–14 of the
Appeal Brief and page 2 of the Reply Brief, which we do not repeat herein.
It is the Examiner’s position that, in contrast to Diehr, the
combination of elements recited in Appellants’ claim 1 (as well as claim 18)
does not impose meaningful limits on the mathematical operation because
the claim is reciting the collection and analysis of received data. Ans. 3.
The Examiner also states that modifying at least one segment of a
utility consuming system responsive to at least one of the second portion of
the first LDC (load duration curve) and the first ADC (associated duration
curve) is a broad generic recitation and can also be considered as extra-
solution activity. Id.
We agree with the Examiner that the modifying step is a broad
generic recitation, and can also be considered as extra-solution activity. In
other words, this additional element is broadly recited such that it merely
generally links the judicial exception to a technological environment and
there is no significant extra-solution (pre-solution or post-solution) activity
to the judicial exception. MPEP § 2106.05(e)–(h). Appellants argue that the
Examiner has not described the claim limitation as being an insignificant
[emphasis added] extra-solution activity, and submit that the act of
modifying at least one segment of a utility consuming segment is not
insignificant and leads to a real world result. Reply Br. 2.
However, while claim 1 includes a postsolution step of “modifying at
least one of the utility segments . . .”, this limitation does not have any
specificity to it to render it more than insignificant post-solution activity.
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
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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 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). The phrase “modifying at least
one of the utility consuming segments responsive to at least one of the
second portion of the first LDC and the first ADC” lacks detail concerning
the modification (as stated by the Examiner, this is “a broad
generic recitation” (Ans. 3)).
Further, taking the claims as a whole and considering the steps of the
claimed method of analyzing usage of at least one utility by a utility
consuming system having one or more utility consuming segments,
including modifying at least one of the utility consuming segments, such
steps are insufficient to integrate the 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 analyzing usage of a utility by a utility consuming system,
including modifying at least one of the utility consuming segments. MPEP
§ 2106.05(f). Here, the method of analyzing usage of a utility merely
defines the field of use linked to the judicial exception. There is no
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description of transforming the method of analyzing usage of a utility or any
actual description of improving the method of analyzing usage of a utility
(there is no sufficient detail of the modification). 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 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.
The Examiner determines that the additional elements simply append
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception
(Advisory Act. 3–4). Therein, the Examiner states:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because receiving from a user a selection of a first portion of the first
LDC to be analyzed, wherein the first portion represents a second time
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period less than the first time period can be considered to be receiving
data and selecting data necessary to perform the abstract idea and
is therefore considered extra-solution activity. Storing, via one or
more memory devices, the generated first ADC in association with the
generated first LDC is merely storing the gathered data and utilizing a
generic computer (a controller to process the data) is considered to be
routine in any computer implementation.

Appellants disagree with this position. See, e.g., Appeal Br. 13.
Therein, Appellants state:
Accordingly, in light of the sheer level of specificity and number of
ordered limitations recited therein, the claims at issue cannot be
considered a conventional arrangement of known parts based on
previous case law and common knowledge within the industry. The
claims recite a specific technological solution to a technological
problem and therefore recite “significantly more” than the alleged
abstract idea under step two of the Alice test. Accordingly, the
rejections of the independent claims under 35 U.S.C. §101 should be
withdrawn.

We agree with and adopt the Examiner’s aforementioned discussion
of the additional claim elements (as quoted above). Elements that have been
recognized as well-understood, routine, or conventional activity include
storing and retrieving information in memory. Versata Dev. Group, Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015). MPEP
§ 2106.05(d)(II).
In view of the above, we affirm Rejection 1.

Rejections 2–10
As an initial matter, our determinations with respect to Rejection 2 is
dispositive for Rejections 3–10 (Appellants rely upon the same arguments
(Appeal Br. 16)).
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Beginning on page 15 of the Appeal Brief, Appellants state:
The Advisory Action asserts that Sneeringer teaches “the customer is
provided the capability of downloading any piece, part or all of the
data collected - paragraph 0115” and that Tomita teaches modifying
utility segments in response to the second portion of the LDC or
the ADC, as recited in claim 1. (Advisory Action at p. 13-14.)

However, Sneeringer does not disclose using one or more controllers
to generate a second portion of the first LDC, wherein the second
portion represents a third time period that is different from the second
time period. Sneeringer discloses having a user select portions of
data to display or download, which is fundamentally different than
having one or more controllers perform analysis on a first portion of
an LDC and in response produce a second portion of the first LDC
that is different than the first portion provided by a user. Abaravicius
does not cure the deficiencies of Sneeringer in disclosing all of the
limitations of the claims.

Further, Tomita does not mention LDCs or ADCs. Tomita therefore
does not teach or suggest “modifying at least one of the utility
consuming segments responsive to at least one of the second portion
of the first LDC and the first ADC,” as recited in claim 1.

Accordingly, the proposed combination of Sneeringer, Abaravicius,
and Tomita does not teach or suggest “. . . generating, in a response to
the received selection, via the one or more controllers, a second
portion of the first LDC to be analyzed, the second portion
being generated by comparing the first portion to a plurality of
additional portions of the first LDC, wherein the second portion
represents a third time period less than the first time period
and different from the second time period, and each of the plurality of
additional portions represents an additional time period less than the
first time period; generating, via the one or more controllers, a first
associated duration chart (ADC) indicative of one or more associated
duration parameters relating to the second portion of the first LDC,
the associated duration parameters including at least one load
characteristic for the third time period; storing, via one or
morememory devices, the generated first ADC in association with the
generated first LDC; and modifying at least one of the utility
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consuming segments responsive to at least one of the second portion
of the first LDC and the first ADC” as recited in claim 1.
Accordingly, the rejection of claim 1 should be withdrawn.

We agree with the Examiner (Ans. 16) that the test for obviousness is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art; one cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991); In re Merck & Co., Inc., 800 F.2d 1091, 1097-98 (Fed. Cir. 1986); In
re Keller, 642 F.2d 413, 425 (CCPA 1981). We refer to the Examiner’s
statement of the rejection made on pages 11–20 of the Advisory Action
regarding the combination of teachings for Rejection 2 in this regard.
We also agree with the Examiner that Sneeringer discloses generating
load profiles, tables and curves, and teaches that a plethora of different times
periods may be utilized for data analysis (for example, once the
load information is accessible, it may be presented in whatever time period
the customer wishes to see or analyze in terms of load profile and load
characteristics (Sneeringer, ¶ 0110)). Ans. 19. The Examiner finds (and we
agree) that Sneeringer, as modified by Tomita, discloses modifying at least
one of the utility consuming segments responsive to at least one of the
second portion of the first LDC and the first ADC. Id.
In reply, Appellants emphasize that the combination fails to generate
the second portion of the first LDC to be analyzed via the one or more
controllers. Reply Br. 3. We refer to the Examiner’s findings made on
page 12 of the Advisory Office Action which explains how Sneeringer
suggests this aspect of the claims. We are unpersuaded that the method
taught by Sneeringer is distinguishable from the method recited in the
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claims. As mentioned, supra, Sneeringer discloses generating load profiles,
tables, curves, etc., and how users implement the system accordingly. Ans.
19.
In view of the above, we affirm Rejections 2–10.

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