Atsushi Baba et al.

Patent Trials and Appeals Board

Dec 30, 2019

14400160 - (D) (P.T.A.B. Dec. 30, 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.
14/400,160 11/10/2014 Atsushi Baba 140709.04001 9839
136404 7590 12/30/2019
Pepper Hamilton LLP/Boston
Attn: Boston IP Docketing Department
125 High Street
19th Floor
Boston, MA 02110-2736
EXAMINER
STIFTER JR, TERENCE E
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
docketingbn@pepperlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ATSUSHI BABA and SHUICHI ADACHI
____________

Appeal 2019-000116
Application 14/400,160
Technology Center 2800
____________

Before MARK NAGUMO, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 2 under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Calsonic Kansei Corporation and Keio
University as the real parties in interest. Appeal Br. 1.
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BACKGROUND
The subject matter on appeal relates to an apparatus for estimating a
battery’s state of charge, such as may be used for an electronic vehicle.
Spec. ¶ 1. Claim 1 reads:
1. A battery's state of charge estimation apparatus
comprising:
a charge and discharge current detection unit for
detecting a charge current and a discharge current of a battery;
a terminal voltage detection unit for detecting a terminal
voltage of the battery;
a first processing unit for providing an open circuit
voltage method state of charge estimate, the first processing
unit configured to estimate an open circuit voltage of the battery
based on the charge current and the discharge current detected
by the charge and discharge current detection unit and the
terminal voltage detected by the terminal voltage detection unit,
and configured to estimate, based on the open circuit voltage,
the open circuit voltage method state of charge from an open
circuit voltage-state of charge characteristic of the battery;
a second processing unit for providing a current
integration method state of charge, the second processing unit
configured to use as a current integration model, a discrete state
space model of a spreading system that uses a state variable of
the spreading system in consideration of a current fluctuation Δi
expressed by the following equation:

provided that an input u represents the charge and discharge
current of the battery, a state variable x represents the battery's
state of charge, and an output y represents the state of charge
and the charge and discharge current, and is expressed by the
following equations:
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(k: discrete time, Δt: sampling period, FCC: full charge
capacity, v: process noise, w: sensor noise), for inputting the
charge current and the discharge current detected by the charge
and discharge current detection unit and thus obtaining the state
of charge as the state variable, and for correcting the state of
charge based on an error correction value being further input
and thus obtaining the current integration method state of
charge; and
a third processing unit configured to compare the current
integration method state of charge obtained by the second
processing unit and the open circuit voltage method state of
charge estimated by the first processing unit to calculate an
error correction value for correcting the current integration
method state of charge, and for inputting the error correction
value to the second processing unit.

Appeal Br. 15–16 (Claims Appendix). Claim 2 depends from claim 1.

DISCUSSION
The Examiner rejects claims 1 and 2 under 35 U.S.C. § 101 as being
directed to a judicial exception—namely, an abstract idea without
significantly more. Final Act. 5. Particularly, the Examiner determines that
the concepts of estimating an open circuit voltage, use of the recited
equations as a current integration model, and comparing open voltage
method and current integration method states of charge, are abstract. Id. 5–
7. Appellant argues that the claims are directed to an improvement of the
related technology—namely, battery charge estimation. Appeal Br. 9–10.
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Having considered the Examiner’s findings and Appellant’s arguments, we
are persuaded the Examiner reversibly erred in rejecting Appellant’s claims
under 35 U.S.C. § 101.
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court 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).
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
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
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(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 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Id. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. See Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“Guidance”). Under Step 1 of the Guidance, we
determine whether the claimed subject matter falls within the four statutory
categories: process, machine, manufacture, or composition of matter.
Step 2A of the Guidance is two-pronged, under which we look to whether
the claim recites:
(1) any judicial exception, 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)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then, under Step
2B, look to whether the claim:
adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or 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.

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Guidance Step 1
There is no dispute that each of Appellant’s claims is within a
statutory category. Claims 1 and 2 recite an apparatus.

Guidance Step 2A, Prong 1
Under Step 2A of the Guidance, we first consider whether the
Examiner erred in determining that the claim recites a judicial exception.
Here too there is no dispute. Each of claims 9 and 11 plainly recites at least
one mathematical formula. Accordingly, we conclude that each claim on
appeal recites a mathematical concept, which is identified in the Guidance as
an abstract idea.

Guidance Step 2A, Prong 2
Having determined that the claims recite a judicial exception, our
analysis under the Guidance turns to determining whether there are
additional elements that integrate the exception into a practical application.
See MPEP § 2106.05(a)–(c), (e)–(h).
When considering whether the claims are directed to a patent-
ineligible concept, “[t]he ‘directed to’ inquiry . . . cannot simply ask whether
the claims involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and actions
involves a law of nature and/or natural phenomenon.” See Enfish, 822 F.3d
at 1335–36 (citing Mayo, 566 U.S. at 70–71). Rather, “the ‘directed to’
inquiry applies a stage-one filter to claims” considered in their entirety, in
light of the Specification, to ascertain whether the claims’ character as a
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whole is directed to excluded subject matter. Id. (citing Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Having reviewed the evidence, we disagree with the Examiner’s
determination that the claims are directed to an abstract idea. That
characterization of Appellant’s claims disregards the claim language that
requires “a charge and discharge current detection unit” and first, second,
and third processing units, collectively configured to perform a process to
determine a battery’s state of charge based on the measured charge and
discharge current values. The character of the claims as a whole is directed
to an improved battery charge estimation apparatus. The Specification
supports our conclusion. See e.g. Spec ¶ 10 (“The present invention in view
of the above problems aims to provide a SOC estimation apparatus that,
regardless of the challenges of the changes and variations caused by the
characteristics of the charge and discharge current detection unit and the
fluctuation of the current within the battery, is capable of estimating the
SOC with high accuracy.”).
Rather than merely collecting and mathematically manipulating data,
the claims on appeal are directed to use of that data to direct subsequent
operations—namely, estimation of a battery’s state of charge. In that way,
Appellant’s claims are like those before the Court in Vanda Pharmaceuticals
Inc. v. West-Ward Pharmaceuticals International Limited, 887 F.3d 1117
(Fed. Cir. 2018). In Vanda, the Court distinguished claims involving using
acquired patient information to modify a drug administration regimen from
the claims at issue in Mayo, which involved acquiring patient information
but did not require any particular use of the acquired information. Vanda
887 F.3d at 1134–5. The Court found the claims in Vanda were not directed
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to an abstract idea, under Alice step one, because they involved using the
acquired data to direct a treatment program. Similarly, in this case, the
claims involve use of measured charge and discharge current data to provide
an improved state of charge estimation. As such, these claims are not
directed to an abstract idea and, accordingly, the claims survive Alice step
one.
Because we find the claims integrate the recited mathematical
concepts into a practical application, and, therefore are not directed to an
abstract idea, we need not proceed to Alice step two. The Examiner’s
rejection under 35 U.S.C. § 101 is not sustained.

CONCLUSION
The Examiner’s decision rejecting claims 1 and 2 is reversed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2 101 1, 2

REVERSED