Siemens Aktiengesellschaft

Patent Trials and Appeals Board

Dec 21, 2021

2021001058 (P.T.A.B. Dec. 21, 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.
16/409,488 05/10/2019 André Leppich 03869.119465 1681
162436 7590 12/21/2021
Slayden Grubert Beard PLLC
401 Congress Avenue
Suite 1650
Austin, TX 78701
EXAMINER
NATALINI, JEFF WILLIAM
ART UNIT PAPER NUMBER
2896
NOTIFICATION DATE DELIVERY MODE
12/21/2021 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):
dallen@sgbfirm.com
patent@sgbfirm.com
trosson@sgbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRÉ LEPPICH, MARKUS LUFT,
JÜRGEN ROSSMANN, and ALEXANDER STUKENKEMPER
Appeal 2021-001058
Application 16/409,488
Technology Center 2800
Before JAMES C. HOUSEL, JEFFREY R. SNAY, and
SHELDON M. MCGEE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10. 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. Appellant identifies Siemens Aktiengesellschaft as the real
party in interest. Appeal Brief (“Appeal Br.”) filed September 1, 2020, 2.
Appeal 2021-001058
Application 16/409,488

2
CLAIMED SUBJECT MATTER
The invention recited in the claims on appeal relates to “a method for
monitoring and fault diagnosis of a rotating electric machine which is fed by
a converter.” Specification (“Spec.”) filed May 10, 2019, p. 1, Technical
Field.2
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A method for monitoring and fault diagnosis of a rotating
electric machine, including:
receiving input from a converter;
recording a current signature of the input from the
converter;
performing a transformation of the current signature to
yield a transformed current signature, including performing at
least one fast Fourier transform using a filter function;
determining a transformed reference current signature,
the transformed reference current signature representing a
damage-free state of the machine;
evaluating the transformed current signature in at least
one frequency band in order to detect damage to the machine,
including:
applying a frequency dependent tolerance band
predetermined in a value range of the transformed current
signature, wherein the frequency dependent tolerance
band is predetermined such that the transformed
reference current signature lies within the frequency
dependent tolerance band; and
determining that damage has occurred based on a
determination that transformed current signature lies

2 This Decision also cites to the Final Office Action (“Final Act.”) dated
May 20, 2020, the Examiner’s Answer (“Ans.”) dated September 30, 2020,
and the Reply Brief (“Reply Br.”) filed November 30, 2020.
Appeal 2021-001058
Application 16/409,488

3
outside the frequency dependent tolerance band in the
case of at least one frequency;
based on a determination that damage has occurred,
taking a corrective action for the damage.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Kliman et al. (“Kliman
‘703”)
US 4,761,703 Aug. 2, 1988
Kalyuzhny et al.
(“Kalyuzhny”)
US 7,616,005 B2 Nov. 10, 2009
Kliman et al. (“Kliman
‘848”)
US 2006/0006848 A1 Jan. 12, 2006
Mirafzal et al.
(“Mirafzal”)
US 2006/0006879 A1 Jan. 12, 2006
Duplain US 2006/0061768 A1 Mar. 23, 2006
Kinpara et al. (“Kinpara”) US 2006/0290338 A1 Dec. 28, 2006
Leppich et al.
(“Leppich”)
US 2013/0278282 A1 Oct. 24, 2013

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1. Claims 1–10 under 35 U.S.C. § 101 as directed to a patent
ineligible subject matter;
2. Claims 1–10 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the
written description requirement;
3. Claims 5 and 6 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as being indefinite;
Appeal 2021-001058
Application 16/409,488

4
4. Claims 1–4 and 10 under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Kliman ‘703;
5. Claims 5 and 6 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Kliman ‘703 and Kalyuzhny;
6. Claims 7 and 8 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Kliman ‘703 in view of Duplain;
7. Claim 9 under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Kliman ‘703 in view of Mirafzal;
8. Claims 1–9 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Leppich in view of Kliman ‘848; and
9. Claim 10 under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Leppich in view of Kliman ‘848, and further in view of
Kinpara.
OPINION
Rejection 1: Patent Ineligible Subject Matter
The Examiner rejects claims 1–10 under 35 U.S.C. § 101 as directed
to a patent ineligible subject matter. Final Act. 4–6. We note that the
Examiner states that, in conflict with the statement of rejection, “[c]laim 9
has not been rejected under 101.” Id. at 5. For reasons explained below, and
not for the reason the Examiner provides, we agree that claim 9 should not
have been subject to a rejection under § 101 as directed to patent ineligible
subject matter.
PRINCIPLES OF LAW
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
Appeal 2021-001058
Application 16/409,488

5
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting 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))).
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
Appeal 2021-001058
Application 16/409,488

6
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.3 The Manual of

3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
Appeal 2021-001058
Application 16/409,488

7
Patent Examining Procedure (“MPEP”) now incorporates this revised
guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June
2020).4
Under MPEP § 2106, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial
exception into a practical application (“Step 2A, Prong Two”).5
MPEP § 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,6 do we then look, under
Step 2B, to whether the claim:

personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at
1.
4 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
5 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” MPEP § 2106.04(d)(II).
6 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is
“not directed to an abstract idea under step one of the Alice analysis, we do
not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
Appeal 2021-001058
Application 16/409,488

8
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional
activity” in the field; 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.7
MPEP § 2106.05(d).
DISCUSSION
The Examiner’s Rejection
The Examiner made no finding regarding the claims’ compliance with
Step 1 of the eligibility analysis, instead proceeding directly to Step 2A.
Final Act. 4. Claim 1 clearly recites a method and, therefore, satisfies Step 1
of the eligibility analysis.
Under Step 2A, Prong One, the Examiner found claim 1 recites an
abstract idea in the form of mental processes by reciting the steps of
recording a current signal of an output signal; performing a transformation
of the current signature to yield a transformed current signature, including
performing at least one fast Fourier transform using a filter function;
determining a transformed reference current signature representing a
damage-free state of the machine; evaluating the transformed current signal
in at least one frequency band in order to detect damage to the machine by
applying a frequency dependent tolerance band predetermined in a value
range of the transformed current signature, wherein the frequency dependent
tolerance band is predetermined such that the transformed reference current

7 This corresponds to Alice part two where it is determined whether the
claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
Appeal 2021-001058
Application 16/409,488

9
signature lies within the frequency dependent tolerance band, and by
determining that damage has occurred based on a determination that
transformed current signature lies outside the frequency dependent tolerance
band in the case of at least one frequency. Final Act. 4.
The Examiner found that under Step 2A, Prong Two, claim 1 does not
sufficiently integrate the identified judicial exceptions into a practical
application because determining that damage has occurred is simply the
output of the abstract idea. Final Act. 4. The Examiner found that the claim 1
limitation, “based on a determination that damage has occurred, taking a
corrective action for the damage,” could be directed to both practical and
non-practical applications. Id. at 5. The Examiner opined that turning the
electrical machine off would be a practical application, but that simply
turning a light on for warning a user “would be considered an insignificant
extra output.” Id. The Examiner concludes that “[b]ecause there is an
interpretation that is still directed to no practical application of the abstract
idea, the rejection remains.” Id.
The Examiner next found that under Step 2B, claim 1 does not include
additional elements that amount to significantly more than the judicial
exception. Final Act. 5. In particular, the Examiner found that the rotating
electrical machine and the converter recited in claim 1 are generic structures
of known devices, “and thus is not considered significantly more.” Id.
Appellant’s Arguments
Appellant argues that the “receiving input from a converter” and
“recording a current signature of the input from the converter” steps (Step
2A, Prong 1) cited by the Examiner as part of the abstract idea cannot be
done mentally in the human mind. Appeal Br. 5. Appellant contends that
Appeal 2021-001058
Application 16/409,488

10
because the vibration and frequency analysis must be done on thousands of
data points collected in real time every second, these steps cannot be
performed mentally. Id. In addition, Appellant contends that the step of
taking “a corrective action for the damage” is a practical application. Id.
Appellant notes that the Examiner states that notifying a user that damage is
present and turning the machine off are examples of corrective actions. Id.
Indeed, Appellant contends that claim 1 recites a practical application for the
same reason that the Examiner finds that claim 9 recites a practical
application. Id. at 5–6.
ANALYSIS
For the reasons discussed below, we are persuaded that the Examiner
erred in determining the claimed subject matter to be patent-ineligible as
directed to a judicial exception without reciting significantly more.
Initially, claim 1 is directed to a method and there does not appear to be a
dispute that claim 1 satisfies Step 1 of the Guidance. Accordingly, we find
that claim 1 falls within one of the four statutory categories of invention.
Therefore, we turn next to Step 2A(1) of the Revised Guidance.
The Judicial Exception
Under Step 2A(1), we note that claim 1 recites a judicial exception in
the form of mathematical concepts and mental processes. Indeed, claim 1
recites “performing a transformation of the current signature to yield a
transformed current signature, including performing at least one fast Fourier
transform using a filter function.” This limitation is directed to a
mathematical concept, i.e., “Fourier transform is a mathematical technique
for converting a time function into one expressed in terms of frequency.” See
https://www.collinsdictionary.com/us/dictionary/english/fourier-transform,
Appeal 2021-001058
Application 16/409,488

11
last accessed on December 13, 2021. In addition, although Appellant
disputes the Examiner’s determination that claim 1 recites mental processes
on the basis that the human mind is incapable of performing the vibration
and frequency analysis on thousands of data points collected in real time
every second, we note that claim 1 does not recite the amount of data being
processed, nor that this data is collected in real time. More fundamentally, a
mental process may still exist even if performed with the use of a generic
computer as a tool. See Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic
computer-implemented steps, there is nothing in the claim themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”) “[I]t is not enough, for patent-eligibility purposes, to improve an
abstract process by invoking a computer merely as a tool for carrying out the
process.” In re Rosenberg, 813 Fed. Appx. 594, 597 (Fed. Cir. 2020) (citing
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016). Thus, claim 1 recites abstract ideas in the form of mathematical
concepts and mental processes. See 2019 Revised Guidance, 84 Fed. Reg.
52; see also October 2019 Update 2.
However, the mere fact that the claim recites abstract ideas does not
automatically render the claim patent-ineligible. See 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, computer
program, or digital computer.”). As a result, we now turn to Step 2A(2) of
the Revised Guidance to determine whether claim 1 integrates the judicial
exception into a practical application.
Appeal 2021-001058
Application 16/409,488

12
Integration into a Practical Application
In Step 2A(2) of the Revised Guidance, we evaluate whether there are
additional elements recited in the claim that integrate the mathematical
concepts or mental processes into a practical application. In this regard, we
note that both Appellant and the Examiner focus on the final claim 1
limitation that “based on a determination that damage has occurred, taking a
corrective action for the damage.” Appellant urges that any action that may
be construed as a step toward correcting the damage is a corrective action,
such that automatically generating an alert, notifying a user that damage is
present, and turning the machine off are each corrective actions. The
Examiner somewhat paradoxically determines that generating an alert per se
is an insignificant extra-solution output, but generating a warning to a user,
such as an alarm, that actually warns the user is a practical application of the
abstract ideas. Ans. 4–5.
For reasons explained below, we disagree with both Appellant and the
Examiner, but nonetheless find that claim 1 includes a practical application
of the abstract ideas. To begin, we note that a “corrective action” is defined
to be “an action to eliminate the cause of a detected nonconformity.”8 An
action, even if taken in response to a detected nonconformity, that does not

8 www.isixsigma.com>dictionary>corrective-action, last accessed on
December 8, 2021; see also Ans. 5 (“The general definition give to a
corrective action is a step taken to eliminate a cause of an undesirable
situation (correcting the root of the problem).”);
www.definitions.net/definition/corrective+actions, last accessed December
8, 2021 (“Corrective action is an action taken to preclude occurrences of an
identified hazard or to prevent recurrence of a problem.”); and ISO
9000:2015 (“Corrective action: Action to eliminate the cause of a
nonconformity and to prevent recurrence.”).
Appeal 2021-001058
Application 16/409,488

13
eliminate the cause of the detected nonconformity, is not a corrective action.
Under the above-noted definition, if a fire is detected, merely generating an
alert or alarm, whether a user is actually aware of and warned by the alarm,
is not a corrective action because the detected nonconformity, the fire, still
exists. Likewise, turning the machine off is also not necessarily a corrective
action because the machine still has the detected nonconformity, i.e.,
damage. Putting an electrical fire out is not necessarily a corrective action
since the cause of the fire (e.g., an electrical short) still exists, in which case,
the cause needs to be corrected as well.
Here, claim 1 recites that a corrective action is taken in response to
determining that damage to the rotating electrical machine has occurred. As
defined above, a corrective action is sufficient to serve to integrate the
abstract ideas, mathematical concepts and mental processes, into a practical
application, such as in claim 1, because the cause of the damage is
eliminated. Because we determine that claim 1 integrates abstract ideas into
a practical application, our analysis under § 101 ends.
Accordingly, we do not sustain the Examiner’s patent-ineligibility
rejection of claims 1–10.
Rejection 2: Written Description
The Examiner rejects claims 1–10 under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Final Act. 6–7. The Examiner finds that the
final limitation of claim 1, “based on a determination that damage has
occurred, taking a corrective action for the damage,” was not described in
the original disclosure and is thus new matter. Id. at 6. The Examiner finds
that the Specification fails describe what may be considered “a corrective
Appeal 2021-001058
Application 16/409,488

14
action” such that those skilled in the art would understand the difference
between a corrective action and an additional action that is not corrective. Id.
at 6–7. The Examiner defines “corrective action” as “a step taken to
eliminate a cause of an undesirable situation (correcting the root of the
problem).” Ans. 5. The Examiner finds, therefore, that “corrective action” is
“an action to make a problem better (correct).” Id. at 6. Applying this
definition, the Examiner distinguishes between merely generating an alarm
as disclosed and taking corrective action, explaining that an alarm is merely
a notification that a problem exists without actually correcting or fixing the
problem. Id.
Appellant argues that the Examiner fails to attempt a factual inquiry
as to whether the Specification provides support through express, implicit, or
inherent disclosure. Appeal Br. 7. Instead, Appellant urges that the Examiner
merely determined that the Specification fails to literally recite “corrective
action.” Id. Appellant contends that the Specification teaches that a fault
report or alarm may be generated if machine damage is detected. Id.
Appellant asserts that one skilled in the art would recognize that generating
an alarm is an example of taking a corrective action. Id. at 7–8. Appellant
also directs attention to Kilzer et al. (“Kilzer”), US 10,649,487, issued May
12, 2020, in support of the view that an alarm or alert is a corrective action.
Reply Br. 4. In particular, Kilzer recites a system that “may be configured to
detect a fault and issue a notification or other corrective action.” Kilzer
3:17–19. In addition, Appellant urges that an alarm or notification will be
the first step taken to eliminate a problem. Reply Br. 4–5.
For reasons similar to those given above, we are not persuaded of
reversible error in the Examiner’s new matter rejection of the claims. As
Appeal 2021-001058
Application 16/409,488

15
discussed above, a “corrective action” is “an action to eliminate the cause of
a detected nonconformity.”9 Further, as discussed above, generating an
alarm or alert is not an example of a corrective action. Although disclosing
“notification or other corrective action,” Kilzer is not persuasive for
redefining “corrective action” differently from that generally accepted in this
art because such redefinition to include “notification” is ambiguous at best
and may serve only to limit Kilzer’s disclosure.
Moreover, even if an alarm were an example of a corrective action,
the scope of “corrective action” encompasses all possible, known and
unknown, corrective actions, of which an alarm would, at best, be one
example or species. The disclosure of a single species does not generally
demonstrate possession of an entire genus of possible species. Here, the
Specification fails to disclose the genus, “corrective action,” and also fails to
associate an alarm or notification with corrective action.
Accordingly, we sustain the Examiner’s new matter rejection of
claims 1–10 for failing to demonstrate possession of the step of taking
corrective action in response to determining that the machine is damaged.
Rejection 3: Indefiniteness
The Examiner rejects claims 5 and 6 under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. Final Act. 7.
Appellant fails to dispute or otherwise address this rejection. Ans. 6.
Accordingly, we summarily affirm this rejection.

9 See footnote 8 above.
Appeal 2021-001058
Application 16/409,488

16
Rejection 4: Anticipation by Kliman ‘703
The Examiner rejects claims 1–4 and 10 under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Kliman ‘703. Final Act. 8–10. The Examiner
finds that Kliman ‘703 discloses a method as recited in claim 1. Id. In
relevant part, the Examiner finds that Kliman ‘703 discloses performing at
least one fast Fourier transform using a filter function. Id. at 8.
Appellant argues that Kliman ‘703 fails to teach perform a fast
Fourier transform using a filter function. Appeal Br. 8. Appellant contends
that the only filters Kliman ‘703 uses are hardware filters 32, 34, which are
located before the current values are sampled by elements 36, 38. Id.
Because the current signature is recorded after the current values are
sampled, Appellant contends that the hardware filters cannot meet the filter
function limitation recited in claim 1. Id. Appellant asserts that the recited
filter function is performed as part of performing the Fourier transform,
whereas Kliman ‘703’s filters do not perform as part of the Fourier
transform performed by computer 50. Reply Br. 5. Instead, Kliman ‘703’s
filtering occurs before the data is ever sampled and, as such, the filtered data
never reaches the Fourier transform. Id. at 6.
Appellant’s arguments are not persuasive of reversible error. Claim 1
recites performing at least one fast Fourier transform using a filter function.
As the Examiner notes, Appellant discloses that the use of the filter function
makes it possible to filter out noise signals and simplifies the analysis of the
Fourier spectrum. Ans. 7; Spec. 4:13–14. Although Appellant asserts that the
filter function is performed as part of performing the Fourier transform,
neither claim 1 nor the Specification clearly require that the filter function is
actually part of the fast Fourier transform. When and how the filter function
Appeal 2021-001058
Application 16/409,488

17
performs its function of filtering out noise signals is not clear. Therefore,
filtering out noise signals need not be part of the Fourier transform itself, but
may be performed separately therefrom. We note in this regard that not only
does Kliman ‘703 disclose hardware filters 32, 34, which filter incoming
signal components to minimize or eliminate signal components generated by
the sampling process (Kliman ‘703, 3:11–16), but also discloses that
background noise may be compensated by excluding the fast Fourier bin
corresponding to the parameter from the computation of the background
noise. Id. at 12:33–40. Kliman ‘703 discloses using a filter function to
reduce or eliminate noise in the data that is then fed to the fast Fourier
transform. Thus, Kliman ‘703 discloses performing a fast Fourier transform
using a filter function.
Accordingly, we sustain the Examiner’s anticipation rejection of
claim 1, and dependent claims 2–4 and 10, by Kliman ‘703.
Rejections 5–7: Obviousness based on Kliman ‘703
The Examiner rejects claims 5 and 6 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Kliman ‘703 and Kalyuzhny; claims 7 and 8
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Kliman ‘703 in view
of Duplain; and claim 9 under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Kliman ‘703 in view of Mirafzal. Final Act. 14–16. Appellant does not
dispute or otherwise respond to these rejections separately from base
Rejection 4. Accordingly, we summarily affirm these rejections.
Rejection 8: Obviousness over Leppich and Kliman ‘848
The Examiner rejects claims 1–9 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Leppich in view of Kliman ‘848. Final Act. 11–13. The
Examiner initially determines that claim 1 does not have proper support or
Appeal 2021-001058
Application 16/409,488

18
enablement in the manner provided by 35 U.S.C. § 112(a) or pre-AIA 35
U.S.C. § 112, first paragraph, in the parent application as explained therein
in a Non-Final Office Action of January 10, 2019. Final Act. 2. Therefore,
the Examiner determined that claim 1, and its dependent claims, are not
entitled to priority to the filing date of the parent application. Id. at 3.
Appellant acknowledged that the Examiner stated in the January 10
Office Action that the parent disclosure was not enabling for multiple
limitations. Appeal Br. 8–9. Appellant notes that Leppich is the parent
disclosure. Id. at 9. Given the Examiner’s position that Leppich is non-
enabling, Appellant argues that its use in the obviousness rejection is
incorrect and the present claims are not obvious over Leppich in view of
Kliman ‘848. Id. at 10 (citing MPEP § 2121(III)).
Appellant’s argument is not persuasive of reversible error because it
misapprehends the prior art enablement distinction between anticipation and
obviousness rejections. In order to properly anticipate a claimed invention, a
prior art teaching must enable an ordinary artisan to make that invention
without undue experimentation. In re Elsner, 381 F.3d 1125, 1128 (Fed. Cir.
2004); Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354,
65 USPQ2d 1385, 1416 (Fed. Cir. 2003) (“A claimed invention cannot be
anticipated by a prior art reference if the allegedly anticipatory disclosures
cited as prior art are not enabled.”); MPEP § 2121.01. On the other hand, “a
non-enabling reference may qualify as prior art for the purpose of
determining obviousness under 35 U.S.C. 103.” Symbol Techs. Inc. v.
Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991); MPEP § 2121(II). This
principle is based on the concept that a reference, even if non-enabling, is
Appeal 2021-001058
Application 16/409,488

19
still prior art for all that it teaches. Beckman Instruments v. LKB Produkter
AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989).
To gain the benefit of the filing date of the parent application
(Leppich), Appellant’s applications must satisfy 35 U.S.C. § 120 (2013):
An application for patent for an invention disclosed in the
manner provided by section 112(a) (other than the requirement
to disclose the best mode) in an application previously filed in
the United States, or as provided by section 363, which is filed
by an inventor or inventors named in the previously filed
application shall have the same effect, as to such invention, as
though filed on the date of the prior application . . .
35 U.S.C. § 120 (2013) (emphases added). In other words, the specification
of the previously filed application must “contain a written description of the
invention and the manner and process of making and using it in such full,
clear, concise, and exact terms,” 35 U.S.C. § 112 ¶ 1, to enable an ordinarily
skilled artisan to practice the invention claimed in the application claiming
priority thereto. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
F.3d 1375, 1378 (Fed. Cir. 2015).
As explained in the Manual of Patent Examining Procedure:
Where the prior application (a nonprovisional application) is
found to be fatally defective because of insufficient disclosure
to support allowable claims, a later-filed application filed as a
“continuation-in-part” of the first application to supply the
deficiency is not entitled to the benefit of the filing date of the
first application. Hunt Co. v. Mallinckrodt Chemical Works,
177 F.2d 583, 587, 83 USPQ 277, 281 (2d Cir. 1949) and cases
cited therein. Any claim in a continuation-in-part application
which is directed solely to subject matter adequately disclosed
under 35 U.S.C. 112 in the parent nonprovisional application is
entitled to the benefit of the filing date of the parent
nonprovisional application. However, if a claim in a
continuation-in-part application recites a feature which was not
Appeal 2021-001058
Application 16/409,488

20
disclosed or adequately supported by a proper disclosure under
35 U.S.C. 112 in the parent nonprovisional application, but
which was first introduced or adequately supported in the
continuation-in-part application, such a claim is entitled only to
the filing date of the continuation-in-part application. See, e.g.,
In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995);
Transco Products, Inc. v. Performance Contracting Inc., 38
F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); In re Van
Lagenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA
1972).
MPEP § 211.05(I)(B) (2013).
We do not presume that the statutory requirements of written
descriptive support and enablement are met by the non-provisional
applications. Because the PTO does not examine priority claims unless
necessary, the Board has no basis to presume that a reference patent is
necessarily entitled to the filing date of its parent application. Dynamic
Drinkware, 800 F.3d at 1380. As there is no presumption, the burden is on
the party seeking to rely on the prior filing date to provide evidence that the
claims of the child application are supported and enabled by the
specification of the parent application.
Thus, Appellant has the burden to show their claims are supported and
enabled by their relied upon provisional disclosure. However, Appellant
does not meaningfully dispute the lack of enablement of claim 1 in Leppich.
Therefore, we determine that Appellant has not shown reversible error in the
Examiner’s reliance on Leppich as prior art under 35 U.S.C. § 103.
We note Appellant also does not dispute or otherwise address the
merits of the Examiner’s findings and reasoning regarding Leppich and
Kliman ‘848. Accordingly, we sustain the Examiner’s obviousness rejection
of claim 1, and dependent claims 2–9, over Leppich and Kliman ‘848.
Appeal 2021-001058
Application 16/409,488

21
Rejection 9: Obviousness over Leppich, Kliman ‘848, and Kinpara
The Examiner rejects claim 10 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Leppich in view of Kliman ‘848, and further in view of
Kinpara. Final Act. 13–14. Appellant does not dispute or otherwise address
this rejection. Accordingly, for the reasons given above, we sustain the
Examiner’s obviousness rejection of claim 10 over the combination of
Leppich, Kliman ‘848, and Kinpara.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claims 1–10 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, and claims 1–10 under pre-AIA 35 U.S.C. §§
102(b) and 103(a) is affirmed. However, for the reasons set forth above and
in the Appeal and Reply Briefs, the Examiner’s decision to reject claims 1–
10 under 35 U.S.C. § 101 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10 101 Patent ineligible
subject matter
1–10
1–10 112(a) or
112, 1st ¶
Written Description 1–10
5, 6 112(b) or
112, 2nd ¶
Indefiniteness 5, 6
1–4, 10 102(b) Kliman ‘703 1–4, 10
5, 6 103(a) Kliman ‘703,
Kalyuzhny
5, 6
Appeal 2021-001058
Application 16/409,488

22
7, 8 103(a) Kliman ‘703, Duplain 7, 8
9 103(a) Kliman ‘703,
Mirafzal
9
1–9 103(a) Leppich, Kliman ‘848 1–9
10 103(a) Leppich, Kliman
‘848, Kinpara
10
Overall
Outcome
1–10

TIME PERIOD FOR RESPONSE
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).
AFFIRMED