Alexeiv.Smirnov

Patent Trials and Appeals Board

Aug 27, 2019

14159152 - (D) (P.T.A.B. Aug. 27, 2019)

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.
14/159,152 01/20/2014 Alexei V. Smirnov FLF1104US 8822
61529 7590 08/27/2019
Neugeboren O'Dowd PC
1227 Spruce Street
SUITE 200
BOULDER, CO 80302
EXAMINER
EVANISKO, LESLIE J
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
08/27/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
craig@neugeborenlaw.com
rene@neugeborenlaw.com
sean@neugeborenlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXEI V. SMIRNOV
____________

Appeal 2018-008496
Application 14/159,152
Technology Center 2800
____________

Before ROMULO H. DELMENDO, MONTÉ T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–19, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In this Decision, we refer to the Specification filed Jan. 20, 2014
(“Spec.”); Final Office Action dated June 5, 2017 (“Final Act.”); Advisory
Action dated Aug. 25, 2017 (“1st Adv. Act.”); Advisory Action dated Oct.
24, 2017 (“2nd Adv. Act.”); Appeal Brief filed Feb. 20, 2018 (“Appeal
Br.”); Examiner’s Answer dated July 6, 2018 (“Ans.”); and Reply Brief filed
Aug. 27, 2018 (“Reply Br.”).
2 Appellant is the Applicant, Hitachi Metals, Ltd. (Bib. Data Sheet 1), which
is also identified as the real party in interest (Appeal Br. 3).
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CLAIMED SUBJECT MATTER
The claims relate to mass flow control systems, and in particular, to
systems and purportedly improved methods for monitoring and controlling a
flow of a fluid, including more accurately providing indicated flow from the
mass flow controller. Spec. ¶¶ 2, 10, 12–13; Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method for providing indicated flow from a mass
flow controller, the method comprising:
providing a flow sensor signal from a sensing
element circuit of the mass flow controller in response to
a fluid passing through the mass flow controller;
generating, with a processing portion of the mass
flow controller, a measured flow signal from the flow
sensor signal, the measured flow signal is indicative of a
mass flow rate of the fluid;
obtaining samples of the measured flow signal
within a time interval and determining a rate of change
of the mass flow rate of the fluid based upon the samples
of the measured flow signal;
adjusting a time constant used in connection with
filtering the measured flow signal based upon the rate of
change of the mass flow rate;
filtering the measured flow signal using the
adjusted time constant to generate an indicated flow that
provides a representation of an actual mass flow rate of the
fluid; and
providing the indicated flow to an operator of the
mass flow controller.
Appeal Br. 26 (key disputed claim language italicized and bolded).
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REJECTION
Claims 1–19 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. Final Act. 2.
ANALYSIS
I. Standard for Patent Ineligibility
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 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 ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. 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
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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, 67 (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
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
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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 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].”’ Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
The USPTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that guidance, we look
to whether the claim recites:
(1) any judicial exceptions, including certain
groupings of abstract ideas (i.e. mathematical concepts,
certain methods of organizing human activity such as a
fundamental economic practice, or mental processes);
and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP §
2106.05(a)–(c), (e)–(h)).3

3 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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See Guidance, 84 Fed. Reg. at 52, 55–56. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a
practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial
exception.
See Guidance, 84 Fed. Reg. at 56.
II. Examiner’s Findings and Conclusion
Applying the Alice/Mayo two-step framework, the Examiner rejects
claims 1–19 under 35 U.S.C. § 101 as being directed to a judicial exception.
Final Act. 2. At the first step of the Alice/Mayo inquiry, the Examiner
determines claim 1 is directed to “a method for providing indicated flow
from a mass flow controller,” which includes the following abstract ideas:
• generating a measured flow signal from the flow sensor
signal;
• obtaining samples of the measured flow signal within a
time interval and determining a rate of change of the
mass flow rate of the fluid based upon samples of the
measured flow signal;
• adjusting a time constant used in connection with the
filtering based upon the rate of change of the mass flow
rate; and
• filtering the measured flow signal using the adjusted
time constant to generate indicated flow that provides
a representation of an actual mass flow rate of the fluid.
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Final Act. 2–3. The Examiner finds the above recitations of the claim are
“analogous to the concepts such as organizing and comparing data and
mathematical relationships and formulas which have been found by the
courts to be abstract ideas.” Id. at 3 (citing Digitech Image Tech., LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), and Flook).
At the second step of the Alice/Mayo inquiry, the Examiner
determines claim 1 does not recite “additional elements” sufficient to
transform the abstract idea into a patent-eligible invention. Id. at 3–4. In
particular, the Examiner finds that the steps of providing a flow sensor signal
from a sensing element circuit and providing the indicated flow to an
operator are not additional elements sufficient to amount to significantly
more than the judicial exception because:
[c]ollecting data (i.e., providing a flow sensor signal) from
a source (i.e., a sensing element circuit) is merely
insignificant data gathering which is essentially required
if the process is to be carried out . . . [and][o]utputting the
result (i.e., providing the indicated flow to an operator) is
merely extra-solution activity which is well-understood,
routine and conventional.
Id. at 4.
The Examiner further finds that the structural elements of the mass
flow controller and processing portion recitations of the claim are not
sufficient to transform the abstract idea into a patent-eligible invention
because “the mass flow controller and processing portion [are] recited with a
high level of generality and are well-understood, routine and conventional.”
Id. at 4. In particular, the Examiner maintains
the mass flow controller (MFC) and its associated
components (such as processing circuits and displays) in
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the instant application are well-known, routine and
conventional in the art . . . as exemplified by the
discussion in applicant’s specification in paragraphs
[0003], [0027], [0061] and [0069].
Ans. 10. Thus, the Examiner concludes “these additional elements do not
make the claim significantly more than the abstract idea itself.” Final Act. 4.
With respect to claims 2–19, the Examiner explains that, although
these claims may, for example, add “details to the mathematical
computation/algorithm or data organization steps” (Final Act. 4) or be
“written as apparatus claims” (id. at 5), they are analogous and directed to
abstract ideas similar to claim 1. Thus, for principally the same reasons
discussed above for claim 1, the Examiner concludes that claims 2–19, when
analyzed as a whole, are patent-ineligible under 35 U.S.C. § 101 because the
additional elements they recite do not amount to significantly more than the
abstract idea itself. Id. at 4–6.
III. Appellant’s Contentions
Appellant argues that the Examiner’s rejection should be reversed
because the Examiner reversibly erred in determining the claims are directed
to patent-ineligible subject matter. Appeal Br. 8; Reply Br. 2. In particular,
Appellant argues that the Examiner did not properly perform the two-step
analysis under Alice in determining whether “the claims as a whole are
directed to excluded subject matter.” Appeal Br. 8 (citing Alice, 134 S. Ct.
at 2355).
At the first step of the Alice/Mayo analysis, in contrast to the
Examiner’s rejection, Appellant argues that, when properly considered as a
whole, the claims are not directed to ineligible subject matter. Id. at 9–10.
Rather, Appellant argues
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the claims are clearly directed to machines (mass flow
controllers) with improved functionality and new methods
tied to specific machines (specific mass flow controllers).
And when the claim language is properly tethered to the
tangible limitations of the claims, it is clear the claims are
not directed to uninstantiated concepts or mathematical
relationships per se, but instead [to] improved mass flow
controllers and method for operating the same.
Id. at 10. Appellant contends the Examiner erred “by characterizing the
invention as a merely a collection of abstract ideas that happen to be
implemented in a mass flow controller.” Id. at 11 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
Appellant further contends that, even if the claims include elements
that are abstract, “by going no further than merely stating the claimed mass
flow controllers (and methods for providing indicated flow from the mass
flow controllers) include abstract ideas, the Examiner fails to make a prima
facie rejection under § 101.” Id. at 9.
Appellant also contends the claims are similar or analogous to claims
found patent-eligible by the Federal Circuit in other cases. Appeal
Br. 16–17 (discussing Thales Visionix Inc. v. United States, 850 F.3d 1343
(Fed. Cir. 2017) and Enfish). Appellant argues that, like the claims found
patent-eligible in Thales and Enfish, for example, the present claims are
“directed to a specific implementation of a solution to a problem rooted
entirely within [the field of] mass flow controllers” and “improve the
processing aspects of mass flow controllers.” Id. at 18; see also id. (stating
“the present claims are necessarily rooted in mass flow controller technology
and clearly improve the technology field of mass flow controllers”).
Appellant contends “the claims of the present application are not ones in
which general-purpose mass flow controller components are added after the
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fact to a fundamental economic practice or mathematical equation.” Id.
at 17–18.
At the second step of the Alice/Mayo analysis, Appellant argues the
Examiner erred “by insufficiently considering claim limitations that amount
to significantly more than a judicial exception.” Id. at 19. Appellant
contends that, although the Examiner refers to some claim limitations
individually, the Examiner does not properly consider whether the “ordered
combination” of the recited elements transforms the nature of the claim into
a patent-eligible application, as required. Id. at 19 (quoting Alice, 134 S. Ct.
at 2355 (holding “the elements of each claim both individually and ‘as an
ordered combination’ must be performed to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application”)).
IV. Our Analysis
Appellant presents argument for the patentability of independent
claims 1, 6, and 11 as a group. Appeal Br. 9. Because these claims recite
similar subject matter, we select claim 1 as representative.
For the reasons stated below, we conclude claim 1 is not directed to a
judicial exception because, although the claim recites an abstract idea, it
recites additional elements that integrate the abstract idea into a practical
application.
A. Alice/Mayo Step One, 2019 Guidance Step 2A Prong 1
Under Step 2A Prong l of the Guidance, we evaluate “whether the
claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a
natural phenomenon.” Guidance, 84 Fed. Reg. at 54. Claim 1 recites a
“method for providing indicated flow from a mass flow controller” that
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includes (1) providing a flow sensor signal from a sensing element circuit of
the mass flow controller in response to a fluid passing through the mass flow
controller; (2) generating, with a processing portion of the mass flow
controller, a measured flow signal from the flow sensor signal, the measured
flow signal is indicative of a mass flow rate of the fluid; (3) obtaining
samples of the measured flow signal within a time interval and determining
a rate of change of the mass flow rate of the fluid based upon the samples of
the measured flow signal; (4) adjusting a time constant used in connection
with filtering the measured flow signal based upon the rate of change of the
mass flow rate; (5) filtering the measured flow signal using the adjusted time
constant to generate an indicated flow that provides a representation of an
actual mass flow rate of the fluid; and (5) providing the indicated flow to an
operator of the mass flow controller. See Appeal Br. 26 (Claims Appendix).
We determine that claim 1 recites a judicial exception in the form of
mathematical concepts because the “determining,” “adjusting,” and
“filtering” steps of the claim involve determining mathematical relationships
between and/or performing mathematical operations on certain process
parameters. For example, the “determining” step determines “a rate of
change of the mass flow rate of the fluid based upon the samples of the
measured flow signal.” See Spec. ¶ 12, Fig. 3. The “adjusting” and
“filtering” steps involve adjusting a time constant and using the adjusted
time constant to generate an indicated flow based upon the rate of change of
the mass flow rate. Spec. ¶¶ 12–13, Figs. 3, 6A, 6B.
The mere fact, however, that claim 1 recites mathematical concepts
does not automatically render the claim patent-ineligible. Diehr, 450 U.S. at
187 (“A claim drawn to subject matter otherwise statutory does not become
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nonstatutory simply because it uses a mathematical formula.”). Thus, we
proceed to the Step 2A Prong Two of the Guidance.
B. Alice/Mayo Step One, 2019 Guidance Step 2A Prong 2
Under Step 2A Prong 2 of the Guidance, we must: “(a) [i]dentify[]
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluat[e] those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.” Guidance, 84 Fed. Reg. at 54–55.
Additional elements that merely add insignificant extra-solution activity to
an abstract idea fail to integrate the abstract idea into a patent-eligible
practical application. See id. at 55.
For the following reasons, we determine that claim 1 recites additional
elements that integrate the recited mathematical concepts into a practical
application directed to a specific system and method for the improved
overall operation of a mass flow controller using a mass flow sensor. See,
e.g., Spec. ¶ 13 (disclosing “the present invention may be characterized as a
mass flow controller that includes a mass flow sensor that provides a
measured flow signal indicative of a mass flow rate of a fluid”). As recited
in the claim, the method also includes the steps of (1) “providing a flow
sensor signal from a sensing element circuit of the mass flow controller in
response to a fluid passing through the mass flow controller; (2) “generating,
with a processing portion of the mass flow controller, a measured flow
signal from the flow sensor signal”; and (3) “obtaining samples of the
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measured flow signal,” which are physical acts that cannot be performed by
purely mathematical or mental processes.
These additional elements apply the method, in a meaningful way,
such that it is more than a drafting effort designed to monopolize the
mathematical concepts exception. See MPEP § 2106.05(e). As explained in
the Specification (Spec. ¶ 35), the claimed subject matter viewed as a whole,
including the mathematical concepts, provides for improved operation of a
mass flow controller because “the indicated flow includes less noise, fewer
spikes (that are not representative of the actual flow), and less extraneous
information that is not indicative of the actual flow” and “provides a more
accurate representation of the actual flow during fast changes to the flow
rate and during steady state operation.” See also Spec. 1, Title (“SYSTEM
AND METHOD FOR IMPROVED INDICATED FLOW IN MASS FLOW
CONTROLLERS”), ¶ 10 (disclosing “a need exists for a method and/or
apparatus to provide new and innovative features that address the shortfalls
of present methodologies in generating an indicated flow of fluid flow
conditions”), ¶ 36 (“In contrast to prior approaches, the depicted indicated
flow component 165 does not utilize flow deviation off the set point (or
other specified threshold) to control a time constant of a filtering
component.”), ¶ 49 (stating “the methodology in FIG. 3 produces a filter
time constant that does not change abruptly and reduces the ‘oscillations’
and spikes in the indicated flow”).
We find this to be similar to the claims at issue in Diehr and Thales, in
which mathematical concepts were used to improve particular technology.
See Thales, 850 F.3d at 1348–1349 (finding patent-eligibility upon
considering “claims directed to a new and useful technique for using sensors
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to more efficiently track an object on a moving platform”); Diehr, 450 U.S.
at 187 (“[O]ne does not need a ‘computer’ to cure natural or synthetic
rubber, but if the computer use incorporated in the process patent
significantly lessens the possibility of ‘overcuring’ or ‘undercuring,’ the
process as a whole does not thereby become unpatentable subject matter.”).
See also MPEP § 2106.05(a)(II) (“The courts have also found that
improvements in technology beyond computer functionality may
demonstrate patent eligibility”). “That a mathematical equation is required
to complete the claimed method and system does not doom the claims to
abstraction.” Thales, 850 F.3d at 1349.
We also find that claim 1, considered as a whole, applies the
mathematical concepts to a particular machine, i.e., a mass flow controller.
See Spec. ¶ 3 (disclosing that a “mass flow controller (MFC) is a device that
sets, measures, and controls the flow of a fluid gas in industrial processes”);
SiRF Tech., Inc. v. Int’l Trade Com’n, 601 F.3d 1319, 1332 (2010). As with
the GPS receiver in SiRF, the mass flow controller recited in the present
claims is a particular machine that “is integral to each of the claims at issue.”
SiRF, 601 F.3d at 1332. Claim 1 is expressly directed in its preamble to a
“method for providing indicated flow from a mass flow controller.” See id.
at 1332 (concluding that the claim required “‘pseudoranges’ that estimate
the distance from ‘the GPS receiver to a plurality of GPS satellites” and that
pseudoranges “can exist only with respect to a particular GPS receiver that
receives the satellite signals”). Thus, as in SiRF, “the methods at issue could
not be performed without the use of a [mass flow controller].” Id.; see also
MPEP § 2106.05(b) (“When determining whether a claim recites
significantly more than a judicial exception, examiners should consider
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whether the judicial exception is applied with, or by use of, a particular
machine.”).
The Examiner’s statement that “[c]ollecting data (i.e., providing a
flow sensor signal) from a source (i.e., a sensing element circuit) is merely
insignificant data gathering which is essentially required if the process is to
be carried out” (Final Act. 4) is incorrect. Rather, the claimed subject matter
integrates the judicial exception into a practical application that results in an
overall improvement in a mass flow controller’s operation, and, therefore,
amounts to more than merely insignificant data gathering. Cf. Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(“[M]erely selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes.”).
Because we determine that claim 1 is not directed to a judicial
exception, we need not proceed to step two of the Alice/Mayo framework.
For principally the same reasons discussed above for claim 1, we determine
claims 2–19, which include the same or similar limitations of claim 1, are
not directed to a judicial exception.
Accordingly, we do not sustain the 35 U.S.C. § 101 rejection of
claims 1–19.
DECISION
The Examiner’s rejection of claims 1–19 is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED