Alexeiv.SmirnovDownload PDFPatent Trials and Appeals BoardAug 27, 201914159152 - (D) (P.T.A.B. Aug. 27, 2019) 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. 14/159,152 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). Appeal 2018-008496 Application 14/159,152 2 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). Appeal 2018-008496 Application 14/159,152 3 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 Appeal 2018-008496 Application 14/159,152 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, 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 Appeal 2018-008496 Application 14/159,152 5 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). Appeal 2018-008496 Application 14/159,152 6 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. Appeal 2018-008496 Application 14/159,152 7 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 Appeal 2018-008496 Application 14/159,152 8 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 Appeal 2018-008496 Application 14/159,152 9 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 Appeal 2018-008496 Application 14/159,152 10 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 Appeal 2018-008496 Application 14/159,152 11 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 Appeal 2018-008496 Application 14/159,152 12 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 Appeal 2018-008496 Application 14/159,152 13 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 Appeal 2018-008496 Application 14/159,152 14 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 Appeal 2018-008496 Application 14/159,152 15 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 Copy with citationCopy as parenthetical citation