Peter Mejegård et al.

Patent Trials and Appeals Board

Sep 3, 2019

14383161 - (D) (P.T.A.B. Sep. 3, 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.
14/383,161 09/05/2014 Peter Mejegård 38004/09827/P2825US00 1576
148434 7590 09/03/2019
Burr Forman McNair
Husqvarna
Bank of America Plaza
101 South Tryon Street, Suite 2610
Charlotte, NC 28280
EXAMINER
NGON, RICKY
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
mcnairip@mcnair.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER MEJEGÅRD, PER WAHLSTRӦM,
STEFAN HOLMBERG, GARY PHILPOTT, and HÅKAN WAHLGREN
____________

Appeal 2017-011401
Application 14/383,161
Technology Center 2800
____________

Before JEREMY J. CURCURI, ADAM J. PYONIN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 2–6 and 8–21. Claims 1, 7, and 22–38
have been canceled. See App. Br. 13–19 (Claims Appendix). We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Husqvarna AB. App.
Br. 1.
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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention generally relates to “provid[ing] a system that
assists with collection of informative data related to the running of
individual powered machines, and [using] this collected data to evaluate the
performance and status of the machine.” Spec. 1:15–18. Claim 3, which is
illustrative of the claimed invention, reads as follows:
3. An apparatus comprising:
a transceiver configured to receive an equipment
identification (ID) code, an operator ID code, and RPM data from
an equipment data sensor located on a piece of outdoor power
equipment located remotely from the apparatus, the RPM data
being sampled throughout a period of operation of the piece of
outdoor power equipment, wherein the operator ID code is
sampled by a short range transceiver associated with the
equipment data sensor and the RPM data comprises RPM values
of a rotating component of the piece of outdoor power
equipment;
a memory having one or more parameters stored therein as
a function of RPM determined through testing of a particular
model of equipment or type of equipment;
a processing device communicably coupled to the
transceiver and the memory, wherein the processing device is
configured to:
generate a RPM histogram for a particular operator
and/or for a particular piece of outdoor power equipment
based on the RPM data,
determine a total parameter value or an average
parameter value over the period of operation using the
RPM histogram and the function,
determine additional information about the
particular operator, the particular piece of outdoor power
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equipment, and/or the period of operation, wherein the
additional information comprises information about skill,
experience, performance, exposure, or safety of an
operator associated with the operator ID code,
generate an output based at least partially on the
additional information determined about the particular
operator, the particular piece of equipment, and/or the
period of operation, and the total parameter value or the
average parameter value; and
a network interface communicably coupled to the
processing device and configured to:
cause the output to be transmitted to a client
computing system or the piece of outdoor power
equipment and displayed on a user interface, wherein the
output comprises a data chart or an alert.

Rejection
Claims 2–6 and 8–21 stand rejected under 35 U.S.C. § 101 because
the claimed subject matter is judicially-excepted from patent eligibility
under 35 U.S.C. § 101. Final Act. 2.

ANALYSIS
Regarding the rejection of claims 2–6 and 8–21 under 35 U.S.C.
§ 101, Appellants do not substantively argue the claims separately, but
instead rely on the same arguments for all claims. See App. Br. 7–12. In
accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select independent claim 3
as the representative claim. Remaining claims 2, 4–6, and 8–21 stand or fall
together with claim 3.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (citations omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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 184 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))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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 (internal 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).
“[M]erely requir[ing] 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. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
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Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a
fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP) § 2106.05(a)–(c), (e)–
(h) (9th Ed., Rev. 08.2017, Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 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 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 Memorandum, 84 Fed. Reg. at 56.

STEP 1
Under “Step 1” of the analysis under the USPTO guidance, we
determine whether the claimed subject matter falls within the four categories
of patentable subject matter identified by 35 U.S.C. § 101. Memorandum,
84 Fed. Reg. at 53–54. Claim 3 is directed to an apparatus and, therefore,
falls within the four categories of patentable subject matter—a machine.

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ALICE/MAYO—STEP 1 (ABSTRACT IDEA)
STEP 2A–PRONGS 1 AND 2 IDENTIFIED IN THE REVISED GUIDANCE

Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
Under “Step 2A, Prong One” of the analysis, we determine whether
the claim recites a judicial exception. Memorandum, 84 Fed. Reg. at 54.
Claim 3 recites the limitation “a transceiver configured to receive an
equipment identification (ID) code, an operator ID code, and RPM data from
an equipment data sensor located on a piece of outdoor power equipment
located remotely from the apparatus.” This limitation, as drafted, includes a
process that, under its broadest reasonable interpretation, can be performed
in the human mind or by a person using pen and paper but for the recitation
of generic computer components. That is, other than reciting “a transceiver
configured to” and requiring the piece of outdoor power equipment to be
“located remotely from the apparatus,” nothing in the claim element
precludes the step from practically being performed in the mind or by a
person using pen and paper. For example, but for the “transceiver
configured to” and “located remotely from the apparatus” language, the
limitation encompasses a user manually observing an equipment ID code, an
operator ID code, and RPM data from an equipment data sensor located on a
piece of outdoor power equipment. The mere nominal recitation of a generic
transceiver and requiring the piece of outdoor power equipment to be located
remotely from the apparatus does not take the claim limitation out of the
mental process grouping. See Alice, 537 U.S. at 223. Thus, the claim recites
a mental process—and, therefore, an abstract idea. See Memorandum, 84
Fed. Reg. at 54–55.

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Claim 3 also recites the limitations:
a processing device communicably coupled to the
transceiver and the memory, wherein the processing
device is configured to:
generate a RPM histogram for a particular operator
and/or for a particular piece of outdoor power equipment
based on the RPM data,
determine a total parameter value or an average
parameter value over the period of operation using the
RPM histogram and the function,
determine additional information about the
particular operator, the particular piece of outdoor power
equipment, and/or the period of operation, wherein the
additional information comprises information about skill,
experience, performance, exposure, or safety of an
operator associated with the operator ID code, [and]
generate an output based at least partially on the
additional information determined about the particular
operator, the particular piece of equipment, and/or the
period of operation, and the total parameter value or the
average parameter value.
These limitations, as drafted, includes processes that, under their broadest
reasonable interpretation are processes for determining mathematical
relationships and performing mathematical calculations. As acknowledged
by Appellants “the present claims apply a mathematical function, e.g., the
stored function associated with one or more parameters, to a first data set,
e.g., the RPM histogram, to generate new data, e.g. a total or average
parameter value” and “the present claims use the equipment ID code,
operator ID code, and RPM data to generate the RPM histogram and
determine additional information associated with the piece of outdoor power
equipment and/or the operator.” App. Br. 11. As such, the claim recites
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mathematical concepts—and, therefore, an abstract idea. See Memorandum,
84 Fed. Reg. at 54–55.
Further, these limitations, as drafted, include processes that, under
their broadest reasonable interpretation are processes that can be performed
in the human mind or by a person using pen and paper but for the recitation
of generic computer components. That is, other than reciting “the
processing device is configured to,” nothing in the claim element precludes
these steps from practically being performed by a person using pen and
paper. For example, but for the “the processing device is configured to”
language the limitation encompasses a user manually generating a RPM
histogram for a particular operator and/or for a particular piece of outdoor
power equipment based on the RPM data, determining a total parameter
value or an average parameter value over the period of operation using the
RPM histogram and the function of RPM determined through testing of a
particular model of equipment or type of equipment, determining additional
information about the particular operator, the particular piece of outdoor
power equipment, and/or the period of operation, wherein the additional
information comprises information about skill, experience, performance,
exposure, or safety of an operator associated with the operator ID code, and
generating an output based at least partially on the additional information
determined about the particular operator, the particular piece of equipment,
and/or the period of operation, and the total parameter value or the average
parameter value. The mere nominal recitation of a generic processing
device communicably coupled to the transceiver and the memory does not
take the claim limitation out of the mental process grouping. See Alice, 537
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U.S. at 223. Thus, the claim recites a mental process—and, therefore, an
abstract idea. See Memorandum, 84 Fed. Reg. at 54–55.
We are not persuaded by Appellants’ argument that the claim is
directed to statutory subject matter because the claim “recite[s] an apparatus
comprising a transceiver, a memory and a processing device” and
“specifically claim[s] a machine configured to perform the claimed
functions.” App. Br. 8 (emphasis omitted). That the claim recites generic
hardware components and requires the steps to be performed by the recited
components fails to take the claim limitations out of the mental processes
grouping because an abstract idea (such as a mental process) is not rendered
patent-eligible merely by coupling it to a machine or manufacture. See
Alice, 573 U.S. at 224 (explaining that a computer’s existence in the physical
rather than conceptual realm is not relevant to the analysis). Additionally, as
our reviewing court noted in In re TLI Commc’ns LLC Patent Litig.,
823 F.3d 607 (Fed. Cir. 2016), “not every claim that recites concrete,
tangible components escapes the reach of the abstract-idea inquiry.” Id.
at 611.

Step 2A—Prong 2 (Integration into Practical Application)2
Under “Step 2A, Prong Two,” we determine whether the claim as a
whole integrates the recited judicial exception into a practical application of

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See Memorandum, 84 Fed. Reg. at 55 n.25, 27–32.

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the exception. Memorandum, 84 Fed. Reg. at 54. To this end, we (1)
identify whether there are any additional recited elements beyond the
abstract idea, and (2) evaluate those elements individually and collectively to
determine whether they integrate the exception into a practical application.
Memorandum, 84 Fed. Reg. at 54–55. Claim 3 recites the following
additional elements:
a transceiver . . . the RPM data being sampled
throughout a period of operation of the piece of outdoor
power equipment, wherein the operator ID code is
sampled by a short range transceiver associated with the
equipment data sensor and the RPM data comprises RPM
values of a rotating component of the piece of outdoor
power equipment;
a memory having one or more parameters stored therein as
a function of RPM determined through testing of a particular
model of equipment or type of equipment;
a processing device . . . [and]
. . .
a network interface communicably coupled to the
processing device and configured to:
cause the output to be transmitted to a client
computing system or the piece of outdoor power
equipment and displayed on a user interface, wherein the
output comprises a data chart or an alert.
We find these additional limitations fail to integrate the judicial exception
into a practical application. For example, the claim does not: (1) improve
the functioning of a computer or other technology, (2) is not applied with
any particular machine (except for a generic apparatus comprising a
transceiver, a memory and a processing device), (3) does not effect a
transformation of a particular article to a different state, and (4) is not
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applied in any 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 Memorandum, 84 Fed. Reg. at 54–55; MPEP §§ 2106.05(a)–
(c), (e)–(h).
Regarding the claimed transceiver, memory, processing device, and
network interface, we note that Appellants’ Specification fails to distinguish
such hardware from generic computer components, performing generic
computer functions that are routine and conventional, i.e., the normal and
basic functions of a computer. It is clear, from the claims themselves and
the Specification, that these limitations require no improved computer
resources Appellants claim to have invented, just already available computer
components, with their already available basic functions, to use as tools in
executing the claimed process. Although Appellants argue that because the
claim recites operations of physical devices, the claim must recite
significantly more than the abstract idea (App. Br. 8; Reply Br. 2–3), neither
the claims nor the Specification calls for any physical components different
from those available in existing systems. Rather, to the extent that the
claimed hardware components are discussed in the Specification, they are
characterized as generic computing components—not even asserted to be an
invention of Appellants—on which the claimed method could run. See e.g.,
Spec. 14:15–16:15. Thus, the claim does no more than require generic
computer elements to perform an abstract idea, rather than improve
computer capabilities. Accordingly, appending a conventional
“transceiver,” “memory,” “processing device,” and “network interface” to an
abstract idea is not enough to transform the abstract idea into a patent-
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eligible invention. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention”).
The limitation “the RPM data being sampled throughout a period of
operation of the piece of outdoor power equipment, wherein the operator ID
code is sampled by a short range transceiver associated with the equipment
data sensor and the RPM data comprises RPM values of a rotating
component of the piece of outdoor power equipment,” merely narrows the
abstract idea by specifying certain characteristics of the received data. The
abstract idea itself cannot supply the inventive concept, “no matter how
groundbreaking the advance.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1171 (Fed. Cir. 2018). The limitation “a transceiver . . . configured to
cause the output to be transmitted to a client computing system or the piece
of outdoor power equipment and displayed on a user interface, wherein the
output comprises a data chart or an alert” is insignificant extra-solution or
post-solution activity, such as data collecting, analyzing, and displaying.
See MPEP § 2106.05(g) “Insignificant Extra-Solution Activity.” Unlike
Thales Visionix Inc. v. United States, 840 F.3d 1343, 1348–49 (Fed. Cir.
2017) (cf App. Br. 10–12) where the improvement was to a physical tracking
system, here “the focus of the claim[] is not to a physical-realm
improvement but an improvement in wholly abstract ideas-the selection and
mathematical analysis of information, followed by reporting or display of
the results.” SAP America, 898 F.3d at 1168.

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ALICE/MAYO—STEP 2 (INVENTIVE CONCEPT)
STEP 2B IDENTIFIED IN THE MEMORANDUM
Turning to the second step of the Alice inquiry, we now look to
whether claim 3 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216; Memorandum, 84 Fed. Reg. at 56.
We find no additional element or combination of additional elements
recited in Appellants’ claim 3 that contains any “inventive concept” or adds
anything “significantly more” to transform the abstract concept into a patent-
eligible application. Appellants have not adequately explained how claim 3
is performed such that it is not a routine and conventional function of a
generic computer.
We are not persuaded by Appellants’ argument that “determination of
a total parameter value or average parameter value and/or the determination
of additional information about the particular operator, piece of outdoor
equipment, and/or the period of operation adds significantly more than the
abstract idea.” App. Br. 8. These limitations are ones that we point to above
as reciting a mathematical concept and mental process—an abstract idea—
and, therefore, fail to cause the claim to recite significantly more than the
abstract idea. See Alice, 573 U.S. at 217–18 (“[W]e consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.”) (emphasis added); see also Memorandum n.
24. Further, using a computer to generate data and apply decision criteria to
data to generate a result, are some of the most basic functions of a computer.
All of these computer functions are well-understood, routine, conventional
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activities previously known to the industry. See Inventor Holdings, LLC v.
Bed Bath & Beyond, Inc., 87 6 F.3d 1372, 1378 (Fed. Cir. 2017) (holding
that the claims therein involving a sequence of data retrieval, analysis,
modification, generation, display, and transmission were ineligible),
TwoWay Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 13 39 (Fed. Cir. 2017) (holding the claims therein involving a
sequence of processing, routing, controlling, and monitoring ineligible). In
short, each step does no more than require a generic computer to perform
generic computer functions.
We are also not persuaded by Appellants’ argument that “the claims
have been found to be both novel and non-obvious and therefore they are not
directed to routine and conventional subject matter.” Reply Br. 2. While the
claimed invention may be both novel and non-obvious, Appellants fail to
persuasively show that the functions performed by the claimed components
in carrying out the claimed process are other than routine and conventional
functions. Further, finding of novelty or non-obviousness does not require
the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but, rather, is a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’ Alice,
573 U.S. at 216. “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
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ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
For the foregoing reasons, we find claims 2–6 and 8–21 are directed
to a patent-ineligible abstract concept, and do not recite something
“significantly more” under the second prong of the Alice analysis.
Accordingly, we sustain the Examiner’s rejection of these claims under
35 U.S.C. § 101.

DECISION
We affirm the Examiner’s rejection of claims 2–6 and 8–21 under
35 U.S.C. § 101.
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