Roger Persson et al.

Patent Trials and Appeals Board

Mar 18, 2021

2019007023 (P.T.A.B. Mar. 18, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/407,623 04/29/2015 Roger Persson 66973-0009 7284
119943 7590 03/18/2021
Bejin Bieneman PLC
GKN Aerospace
2000 Town Center
Suite 800
Southfield, MI 48075
EXAMINER
COOK, BRIAN S
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
03/18/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@b2iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER PERSSON and MATTIAS HENRIKSSON
Appeal 2019-007023
Application 14/407,623
Technology Center 2100
Before ADAM J. PYONIN, AMBER L. HAGY, and MICHAEL J. ENGLE,
Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 28, 30–40, 43–52, which are all of the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies GKN Aerospace Sweden AB as the
real party in interest. Appeal Br. 3.
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Application 14/407,623

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TECHNOLOGY
The application relates to generating a simplified calculation model
for predicting the life consumption of a component. Spec. Title.
REPRESENTATIVE CLAIM
Claim 40 is representative and reproduced below:
40. A method, comprising:
receiving a first set of load input data resulting from a first
load session during operation of a machine that includes a
component;
calculating at least one of stresses, strains and temperature
for a critical area of said component based on said first set of load
input data using a simplified calculation model comprising linear
difference equations, wherein said simplified calculation model
is generated by assigning a plurality of linear difference
equations for said simplified calculation model, and calculating
parameters of said plurality of linear difference equations based
on said[2] relationship between the first set of load input data and
said numerically calculated predicted life consumption;
predicting life consumption of said component for said
first load session based on said at least one of the calculated
stresses, strains, and temperatures;
receiving a second set of load input data resulting from a
second load session during operation;
calculating at least one of stresses, strains, and
temperatures for said critical area of said component using said
simplified calculation model;
predicting life consumption of said component for said
second load session based on said calculated stresses, strains, and
temperatures; and

2 In the event of further prosecution, the Examiner may wish to consider
whether “said relationship” and “said numerically calculated predicted life
consumption” in claim 40 lack antecedent basis.
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adding said predicted life consumption resulting from said
second load session with said predicted life consumption
resulting from said first load session for accumulation of life
consumption of said component.
REJECTION
Claims 28, 30–40, and 43–52 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. Final Act. 14.
The rejections under 35 U.S.C. § 112 were withdrawn after the Final
Office Action. See Advisory Act. (Sept. 13, 2018).
ANALYSIS
The Supreme Court has set forth a two part test for § 101 to determine
whether the subject matter of a claim is patent eligible: (1) “whether the
claims at issue are directed to” “laws of nature, natural phenomena, and
abstract ideas” and (2) “whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 217 (2014) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). “Eligibility under 35
U.S.C. § 101 is a question of law, based on underlying facts.” SAP Am., Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018).
In 2019, the U.S. Patent & Trademark Office (“USPTO”) expanded
on the Supreme Court’s test with revised guidance. USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”); USPTO, October 2019 Update: Subject Matter Eligibility,
available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“Oct. Update”). Under that Guidance, we use the
following steps to determine whether a claim recites the following items:
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USPTO
Step Does the claim recite ___? MPEP §
1 A process, machine, manufacture, or composition of matter 2106.03
2A,
Prong 1
A judicial exception, such as a law of nature or any
of the following groupings of abstract ideas:
1) Mathematical concepts, such as
mathematical formulas;
2) Certain methods of organizing human
activity, such as a fundamental economic
practice; or
3) Mental processes, such as an observation or
evaluation performed in the human mind.
2106.04
2A,
Prong 2
Any additional limitations that integrate the judicial
exception into a practical application
2106.05(a)–
(c), (e)–(h)
2B
Any additional limitations beyond the judicial
exception that, alone or in combination, were not
“well-understood, routine, conventional”
2106.05(d)
See Guidance, 84 Fed. Reg. at 52, 55, 56.
There is no dispute under USPTO Step 1 so we begin our analysis
with USPTO Step 2A, Prong 1. Appellant argues the claims collectively and
has selected independent claim 40 as representative. Appeal Br. 9.
Independent claim 40 recites “receiving” load input data,
“calculating” the burden on a component from that load using linear
difference equations, “predicting” life consumption based on the calculated
burden, “receiving” more load input data, repeating the process (i.e.,
“receiving”; “calculating”; and “predicting”) for a second set of load input
data, and “adding” the two results together. Thus, the entirety of the claim
recites a mental process that can be performed entirely in the human mind,
including various mathematical concepts (e.g., “adding”). E.g., Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (“we
have treated analyzing information by steps people go through in their
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minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category”); see also Ans. 6. Claim 40
therefore recites an abstract idea.
Under Prong 2 of USPTO Step 2A, we ask whether any additional
limitations integrate the judicial exception into a practical application.
However, claim 40 does not recite any additional limitations beyond the
abstract idea; the entirety of claim 40 can be performed in the human mind.
The Examiner treated the “receiving” steps as insignificant pre-solution
activities of data gathering (Ans. 8), which, although accurate, is
unnecessary because the “receiving” steps are written at such a high level—
i.e., without any technical details about any technology used to achieve
them—that they can be performed entirely in the human mind and hence are
part of the abstract idea. See Guidance, 84 Fed. Reg. at 52 (including an
“observation” as a mental processes). Thus, even when considered as a
whole, claim 40 does not integrate the abstract idea into a practical
application.
Under USPTO Step 2B, we ask whether the claim recites any
additional limitations beyond the judicial exception that, alone or in
combination, were not well-understood, routine, and conventional. Similar
to above, although we agree with the Examiner that the data gathering in the
“receiving” steps was well-understood, routine, and conventional (Ans. 9),
that determination is unnecessary because the “receiving” steps are written
at such a high level that they can be performed in the human mind and hence
are not additional limitations beyond the judicial exception. “The abstract
idea itself cannot supply the inventive concept, no matter how
groundbreaking the advance.” Trading Techs. Int’l, Inc. v. IBG LLC, 921
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F.3d 1084, 1093 (Fed. Cir. 2019) (quotation omitted). Thus, claim 40 is
directed to an abstract idea without significantly more.
Appellant argues that “the claims are not directed to an abstract idea”
but rather are “directed to a specific and improved calculation model for
predicting component life consumption based on operation loads” that
“recite a specific set of rules for achieving a technical result as in [McRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)],
and moreover provide an improvement to computing efficiency.” Appeal
Br. 9–10. According to Appellant, “the Specification specifically addresses
the ‘need for an improved calculation method which is less time-consuming
while still providing reliable results’” and the Specification “explains that
the particular problem being addressed is that ‘the required CPU-time
increases significantly for components having, e.g., a complicated geometry,
contact surfaces to other components, or where there is a need of providing a
denser mesh for achieving reliable results.’” Appeal Br. 11–12 (quoting
Spec. ¶¶ 6, 5).
However, we agree with the Examiner that “[t]he claim does not recite
any computerized elements.” Ans. 7 (emphasis omitted). Under similar
circumstances, the Federal Circuit has held that claims that “do not call for
the involvement of a computer . . . cannot be characterized as an
improvement in a computer as a tool.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1139 (Fed. Cir. 2016). Here, as in Synopsys,
“[b]ecause the Asserted Claims make no mention of employing a computer
or any other physical device, they are so broad as to read on an individual
performing the claimed steps mentally or with pencil and paper.” See id. at
1149. Therefore, also as in Synopsys, Appellant “cannot rely on [the Federal
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Circuit’s] decisions in Enfish and McRO to support the patentability of the
Asserted Claims.” See id. (footnotes omitted).
Moreover, because the claims contain no recitations beyond a mental
process, Appellant’s arguments as to the novelty of the claimed invention
are unavailing. As the Supreme Court has explained, “[g]roundbreaking,
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). Here, the purely mental process of claim 40 does not by
itself satisfy the § 101 inquiry and the claim is devoid of any technical
details or practical application beyond what can be performed in the human
mind.
Accordingly, we sustain the Examiner’s rejection of claims 28, 30–40,
and 43–52.
OUTCOME
The following table summarizes the outcome of each rejection:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
28, 30–40, 43–52 101 Eligibility 28, 30–40, 43–52
TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).
AFFIRMED