Peter Mejegård et al.Download PDFPatent Trials and Appeals BoardSep 3, 201914383161 - (D) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. Appeal 2017-011401 Application 14/383,161 2 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 Appeal 2017-011401 Application 14/383,161 3 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. Appeal 2017-011401 Application 14/383,161 4 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))). Appeal 2017-011401 Application 14/383,161 5 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. Appeal 2017-011401 Application 14/383,161 6 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. Appeal 2017-011401 Application 14/383,161 7 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. Appeal 2017-011401 Application 14/383,161 8 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 Appeal 2017-011401 Application 14/383,161 9 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 Appeal 2017-011401 Application 14/383,161 10 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. Appeal 2017-011401 Application 14/383,161 11 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 Appeal 2017-011401 Application 14/383,161 12 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- Appeal 2017-011401 Application 14/383,161 13 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. Appeal 2017-011401 Application 14/383,161 14 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 Appeal 2017-011401 Application 14/383,161 15 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- Appeal 2017-011401 Application 14/383,161 16 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 Copy with citationCopy as parenthetical citation