AGC Inc.

Patent Trials and Appeals Board

Jan 26, 2021

2019005651 (P.T.A.B. Jan. 26, 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.
14/699,858 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.
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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).
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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).
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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).
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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
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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,
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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.
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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.
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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
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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))).
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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”).
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§ 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–
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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.