AGC Inc.Download PDFPatent Trials and Appeals BoardJan 26, 20212019005651 (P.T.A.B. Jan. 26, 2021) 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. 14/699,858 04/29/2015 Kazutaka YANAGIHARA 452976US53CONT 1074 22850 7590 01/26/2021 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER MIKOWSKI, JUSTIN C ART UNIT PAPER NUMBER 2129 NOTIFICATION DATE DELIVERY MODE 01/26/2021 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KAZUTAKA YANAGIHARA and TSUNEHIRO SAITO ____________________ Appeal 2019-005651 Application 14/699,858 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, MICHAEL T. CYGAN, and JULIET MITCHELL DIRBA, Administrative Patent Judges. DIRBA, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the Examiner’s rejection of claims 1–7, 10, and 11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 This Decision uses the following abbreviations: “Spec.” for the original Specification, filed April 29, 2015, which claims the benefit of an earlier- filed foreign application; “Final Act.” for the Final Office Action, mailed June 15, 2018; “Appeal Br.” for the revised Appeal Brief, filed by Appellant on February 4, 2019; and “Ans.” for Examiner’s Answer, mailed April 1, 2019. Appellant elected not to file a Reply Brief. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, the real party in interest is AGC Inc. Appeal Br. 1. Appeal 2019-005651 Application 14/699,858 2 BACKGROUND Appellant’s disclosed embodiments and claimed invention relate to fluid dynamics calculations. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A fluid dynamics simulation device, comprising: processing circuity configured to [1] acquire a velocity field for a fluid; and [2] calculate a solution of a discretization equation of a Navier-Stokes equation of an incompressible fluid using the acquired velocity field, the discretization equation of the Navier-Stokes equation of the incompressible fluid performing at least two operations, wherein the two operations includes deformation of an advective term into a conservation form, and a term of correcting an error in the conservation form of the advective term. Appeal Br. 16 (Claims App.) (bracketed reference numbers added). REJECTION Claims 1–7, 10, and 11 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 7–14. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-005651 Application 14/699,858 3 We have considered all of Appellant’s arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below. Patent Eligibility Rejection of Claims 1–7, 10, and 11 Section 101 of the Patent Act provides that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the Supreme Court has long recognized implicit exceptions to this section: “‘Laws of nature, natural phenomena, and abstract ideas are not patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is “directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then examine “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.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive concept,” “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 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). Appeal 2019-005651 Application 14/699,858 4 The Patent Office issued guidance regarding this framework. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).3 Under the Revised Guidance, to decide whether a claim is “directed to” an abstract idea, we evaluate whether the claim (1) recites subject matter falling within an abstract idea grouping listed in the Revised Guidance and (2) fails to integrate the recited abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea, as noted above, we then determine whether the claim recites an inventive concept. The Revised Guidance explains that when making this determination, we should consider whether the additional claim elements add “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry.” Revised Guidance, 84 Fed. Reg. at 56. With these principles in mind, we turn to the § 101 rejection. The Judicial Exception—Abstract Idea The Examiner determined that claim 1 is directed to the abstract idea of “mathematical concepts, specifically mathematical calculations.” Ans. 6; see Final Act. 7 (determining that claim is “directed to receiving data, mathematical analysis of the data”). For the reasons explained below, we agree with the Examiner that the claim recites an abstract idea. 3 The USPTO current eligibility guidance is found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), and particularly within Sections 2103 through 2106.07(c). Appeal 2019-005651 Application 14/699,858 5 Claim 1 recites processing circuitry that is configured to: (1) acquire a velocity field, and (2) “calculate a solution of a discretization equation of a Navier-Stokes equation” using the velocity field, where the discretization equation performs at least two operations, including “deformation of an advective term into a conservation form, and a term of correcting an error in the conservation form of the advective term.” Appeal Br. 16 (Claims App.). Under the broadest reasonable interpretation, limitation (2) recites a mathematical concept—specifically, calculating the solution of a particular equation. See also Ans. 6–7 (articulating findings and providing analysis). The Specification states that the accuracy of a fluid flow calculation is decreased by an error (see Spec. 1:10–17:2), and it describes adjustments made to equations to correct for that error (e.g., id. at 17:13–16 (“Therefore, in the present invention, a term of correcting the error which occurs in the advective term in the conservation form is included in an equation, and a solution of the equation is calculated.”)), 17:20–24 (stating that the invention was accomplished by recognizing that “simply improving accuracy of the discretization is not sufficient, but a countermeasure premised on the existence of the error in the numerical value calculation is important”), 39:25–44:10 (cited by Appeal Br. 2)). When claimed in a manner similar to the claims here, a claim reciting a mathematical algorithm or calculation has been determined to be an abstract idea. See Parker v. Flook, 437 U.S. 584, 594 (1978) (“[T]he discovery of [a mathematical formula] . . . cannot support a patent unless there is some other inventive concept in its application.”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (“The focus of the claims . . . is on selecting certain information, analyzing it using Appeal 2019-005651 Application 14/699,858 6 mathematical techniques, and reporting or displaying the results of the analysis. That is all abstract.”); Digitech Image Techs., LLC v. Elec. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”). Appellant contends that claim 1 does not recite a mathematical concept, but rather merely “touch[es] on a mathematical concept,” similar to Example 38 provided with the Revised Guidance. Appeal Br. 12–13. We disagree. Although a mathematical formula is not recited in the claim, the claim explicitly includes a mathematical concept—it recites: “calculate a solution of a discretization equation of a Navier-Stokes equation.” Appeal Br. 16 (Claims App.); see Ans. 5 (stating that “[t]he mere fact that the equations are provided in words rather than formula” is insignificant). Indeed, the Examiner finds that a person of ordinary skill in the art would understand the claim language, in light of the Specification, to recite a mathematical calculation. Ans. 5. We perceive (and Appellant identifies) no error in this finding. Furthermore, claim 1 requires a solution of a particular, claimed equation, unlike Example 38, which requires some type of mathematical operation (e.g., “generating a value . . . using a pseudo random number generator, based on a respective initial value and manufacturing tolerance range”), but does not specify any particular equation to be solved or any particular calculation to be performed. Subject Matter Eligibility Examples: Abstract Ideas 6, available at: https://www.uspto.gov/sites/default/files/ documents/101_examples_37to42_20190107.pdf. Unlike Example 38, Appeal 2019-005651 Application 14/699,858 7 which merely touches on the mathematical concept of random number generation from inputs, claim 1 recites a particular calculation of a particular type of equation. See also Appendix 1 to the October 2019 Update: Subject Matter Eligibility Life Sciences & Data Processing Examples 4, available at: https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_app1.pdf (finding a recitation of “calculating a ratio of C11 to C13 levels” to perform an arithmetic calculation in the form of division to obtain that ratio, and thereby recite a mathematical calculation that is the type of mathematical concept found to be an abstract idea). Consequently, unlike the example identified by Appellant, claim 1 recites a mathematical concept. Accordingly, we conclude the claims recite a mathematical concept, and thus, an abstract idea. Revised Guidance, 84 Fed. Reg. at 52–53 (listing “[m]athematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations” as one of the “enumerated groupings of abstract ideas”). Integration of the Judicial Exception into a Practical Application If a claim recites a judicial exception, we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception. Appeal 2019-005651 Application 14/699,858 8 Here, claim 1 recites “processing circuitry” and “acquir[ing] a velocity field for a fluid.” Appeal Br. 16 (Claims App.). Considering the claim as a whole, these additional elements do not apply or use the abstract idea in a meaningful way. See Alice, 573 U.S. at 223 (“Stating an abstract idea while adding the words ‘apply it with a computer’” is not sufficient to confer patent eligibility.); Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (“[T]he prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or [by] adding ‘insignificant postsolution activity.’” (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981))). The Examiner states, “‘processing circuitry’ is not defined in the Specification and is construed to be a generic processor.” Ans. 9 (emphasis omitted). We agree. See Spec. 64:19–65:13 (explaining that the calculations can be performed by a generic computer system). Moreover, the Examiner states, “the ‘acquire a velocity field for a fluid[’] step when viewed in light of the disclosure . . . [is] mere data gathering,” which is extra-solution activity. Ans. 9 (emphasis and citations omitted). We agree. See, e.g., Spec. 35:9–12 (setting velocity vector and storing in memory unit 104), 38:13–23 (describing velocity field in memory unit 104), 39:9–23 (acquiring velocity field from memory from memory unit 104);4 see also MPEP § 2106.05(g) (“[A] step of gathering data for use in a claimed process” is “[a]n example of pre-solution activity.”). Accordingly, even in combination with all the other recited elements, the addition of these additional elements do not integrate the abstract idea 4 In the Summary of Claimed Subject Matter, Appellant points to this passage and to Figure 5 of the Specification as disclosing this claim limitation. Appeal Br. 2 n.2. Appeal 2019-005651 Application 14/699,858 9 into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Appellant’s arguments have not persuaded us that claim 1 is directed to a patent-eligible concept. In particular, we are not persuaded by Appellant’s reliance on McRO. See Appeal Br. 8 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). The claims in McRO “were directed to the creation of something physical— namely, the display of ‘lip synchronization and facial expressions’ of animated characters on screens for viewing by human eyes.” SAP Am., 898 F.3d at 1167 (quoting McRO, 837 F.3d at 1313). But, here, the focus of the claims is not any improved physical component, “but the improved mathematical analysis.” Id. at 1168. Accordingly, we perceive no reasonable analogy to McRO. Appellant’s reliance on example 41 of the Revised Guidance is also misplaced. See Appeal Br. 14. Unlike that example, the additional elements in claim 1 do not use the mathematical calculation in a specific manner that sufficiently limits the use of the mathematical concept to a practical application. In fact, the additional elements in claim 1 simply recite “processing circuitry configured to acquire” data and calculate a solution of an equation. Also, as the Examiner observes, claim 1 does not include additional elements that “utilize the results from the calculations in the argued field, ‘fluid dynamics simulation.’” Ans. 8–9. Despite Appellant’s conclusory assertion that the claim “includes numerous specific features which . . . result in a fluid dynamics simulation device” (Appeal Br. 7; see Appeal 2019-005651 Application 14/699,858 10 id. at 12), Appellant identifies (and we perceive) no such features recited in the claim.5 Accordingly, these arguments are unpersuasive. Relatedly, we are not persuaded by Appellant’s conclusory assertion that the claims “are directed to a significant technical improvement” in “fluid dynamics simulation.” Appeal Br. 5–6. Appellant identifies (and we perceive) no support in the claim for this assertion. See, e.g., Flook, 437 U.S. at 454-455, 460 (stating, “[a]ll that it provides is a formula for computing an updated alarm limit,” lacking specifics of how to select variables for that formula, and finding the claims unpatentable as “an improved method of calculation . . . tied to a specific end use”). We are also not persuaded that the Examiner overgeneralized the claim (see id. at 4, 6– 7)—indeed, Appellant fails to identify any allegedly overlooked claim requirements. Finally, Appellant correctly observes that the mere presence of a mathematical concept does not make a claim ineligible (Appeal Br. 5), but the rejection is not to the contrary. As explained in this Decision, the claim is ineligible because it recites a mathematical concept and because it fails to integrate that concept into a practical application or to recite an 5 Although the preamble recites a “fluid dynamics simulation device,” we conclude that under the broadest reasonable interpretation, this is not a limitation of the claim. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (“Generally, the preamble does not limit the claims.”); Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim. Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997))). Appeal 2019-005651 Application 14/699,858 11 additional element (or combination of elements) that are not well- understood, routine, and conventional. For these reasons, we determine that claim 1 does not integrate the recited abstract idea into a practical application. Inventive Concept Because we agree with the Examiner that claim 1 is “directed to” an abstract idea, we consider whether an additional element (or combination of elements) adds a limitation that is not well-understood, routine, conventional (“WURC”) activity in the field or whether the additional elements simply append WURC activities previously known to the industry, specified at a high level of generality, to the judicial exception. Revised Guidance, 84 Fed. Reg. at 56. The Examiner’s finding that an additional element (or combination of elements) is WURC activity must be supported with a factual determination. Id. at n.36 (citing MPEP § 2106.05(d), as modified by the Berkheimer Memorandum6). Whether additional elements are WURC activity is a question of fact. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether something is well-understood, routine, and conventional to a skilled artisan . . . is a factual determination.”). On the record before us, Appellant has not shown that the claims on appeal add a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional in the field (see MPEP 6 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”). Appeal 2019-005651 Application 14/699,858 12 § 2106.05(d)). The Examiner found the claimed “processing circuitry” is a generic processor because the Specification does not define the term. Ans. 9; Final Act. 7, 9–11 (citing Alice, 573 U.S. at 225–226); see also, e.g., Spec. 64:19–65:1. The Examiner also found that, in light of the disclosure, and “acquir[ing] a velocity field for a fluid,” is merely conventional data gathering. Ans. 9 (citing Spec. ¶ 127, Figs. 11 (S3), 12 (105a), 13 (105b), 14 (105); Mayo, 566 U.S. at 79); Final Act. 7; see also, e.g., Spec. 35:9–12, 38:13–23, 39:9–23; Alice, 573 U.S. at 225 (stating that “the use of a computer to obtain data” is a “‘well-understood, routine, conventional activit[y]’ previously known to the industry” (quoting Mayo, 566 U.S. at 73)). Appellant does not allege error in these findings, and we perceive none. Appellant contends that the Final Office Action fails to support the rejection with the findings required by the Berkheimer Memorandum. Appeal Br. 9–10. We disagree. The Examiner provided factual findings to support the determination that the additional elements are WURC. See Ans. 9; Final Act. 9–11. Appellant fails to identify (and we do not perceive) any findings that should have been—but were not—included in this analysis, and Appellant fails to respond to the Examiner’s findings and analysis. Furthermore, Appellant does not identify any aspect of the claim that is allegedly an additional element that is not WURC. For these reasons, we conclude that claim 1, considered as a whole, does not include an inventive concept. Therefore, we sustain the Examiner’s § 101 rejection of independent claim 1. Because Appellant argues claims 1– Appeal 2019-005651 Application 14/699,858 13 7, 10, and 11 as a group (Appeal Br. 4–15),7 claims 2–7, 10, and 11 fall with claim 1. Accordingly, we also sustain the Examiner’s § 101 rejection of independent claims 6 and 7 and dependent claims 2–5, 10, and 11. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 10, 11 101 Eligibility 1–7, 10, 11 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 7 Appellant incorrectly states that the Examiner “lumped [the dependent claims] together” in a single paragraph “simply asserting the dependent claims are the same as the independent claim.” Appeal Br. 6. Instead, the Examiner articulated specific findings regarding each of the dependent claims. Final Act. 11–14. Appellant does not address this aspect of the rejection and, consequently, fails to show error in these findings or rationale. Copy with citationCopy as parenthetical citation