DENSO CORPORATION

Patent Trials and Appeals Board

Feb 8, 2022

2021000913 (P.T.A.B. Feb. 8, 2022)

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. 15/305,410 10/20/2016 Eriko MAEDA RYM-2635-1613 6349 23117 7590 02/08/2022 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER KESSEL, MARIS R ART UNIT PAPER NUMBER 1699 NOTIFICATION DATE DELIVERY MODE 02/08/2022 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIKO MAEDA, KEIGO MIZUTANI, TAKEHITO KIMATA, and YUUSUKE TOUDOU Appeal 2021-000913 Application 15/305,410 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and DONNA M. PRAISS, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, and 4-12. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Denso Corporation. (Appeal Br. 3.) Appeal 2021-000913 Application 15/305,410 2 CLAIMED SUBJECT MATTER The present invention relates to NOx concentration measurement systems for measuring a concentration of NOx in exhaust gas which contains NOx and NH3. (Spec. ¶ 1.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A NOx concentration measurement system capable of measuring a concentration of NOx contained in exhaust gas which contains NOx and NH3, the NOx concentration measurement system comprising: a NOx sensor; and a computer, including a computer processor, the computer being at least configured to perform: a detection, a NH3 concentration estimation, and a calculation, wherein the NOx sensor comprises: a gas chamber into which exhaust gas is introduced; a sensor cell having a solid electrolyte body of oxygen ion conductivity having a plate shape, on the surfaces of which electrodes are formed; and a gas introduction passage through which the exhaust gas is introduced into the gas chamber, the NOx sensor measures a sum concentration of a concentration of combustion derived NOx as NOx, which has being contained in the exhaust gas, and a concentration of derived NO which has been derived from NH3 as a concentration of NO generated by oxidization of the NH3, and the detection detects an air fuel ratio (A/F) of the exhaust gas, and calculates at least one of a concentration of O2 and the concentration of H20 on the basis of the detected air fuel ratio, the NH3 concentration estimation estimates a concentration of NH3 contained in outside exhaust gas which is present around the NOx sensor, not inside of the NOx sensor before the outside exhaust gas is introduced into the gas introduction passage of the NOx sensor, the calculation calculates the concentration of the derived NO which has been derived from NH3 on the basis of the concentration of the NH3 contained in the outside exhaust gas Appeal 2021-000913 Application 15/305,410 3 and at least one of the air fuel ratio, the concentration of O2 and the concentration of H2O, and the calculation calculates the concentration of the combustion derived NOx on the basis of the sum concentration and the concentration of the derived NO which has been derived from NH3, and provides the calculated concentration of the combustion derived NOx to the NOx concentration measurement system. The following rejections are presented for our review: I. Claims 1, 2, and 4-12 are rejected by the Examiner under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. (Final Act. 2-4.) II. Claims 1, 2, and 4-12 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. (Final Act. 4-9.) OPINION Written Description Requirement Claims 1, 2, and 4-12 stand rejected by the Examiner under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. We affirm. The purpose of the written description requirement in 35 U.S.C. § 112(a), is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (alteration in original) (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562−63 (Fed. Cir. 1991) (citation omitted)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those Appeal 2021-000913 Application 15/305,410 4 skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. The Examiner determines the claim limitations drawn to detection, concentration estimation, and calculation are not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. The Examiner states: The specification does not provide a disclosure of the algorithm or specific steps of achieving the claimed functions in sufficient detail for these limitations. For example, the specification does [not] provide any details on how the [] NH3 concentration estimation estimates a concentration of NH3 contained in outside exhaust gas which is present around the NOx sensor, so does not teach how the calculation calculates the concentration of the derived NO which has been derived from NH3 on the basis of the concentration of the NH3 contained in the outside exhaust, or how the calculation calculates the concentration of the combustion derived NOx on the basis of the sum concentration and the concentration of the derived NO which has been derived from NH3. (Final Act. 3-4 (emphasis omitted).) Appellant argues the Specification and figures provide support for recited limitations [A]-[C]. Appellant points to the [A]’ [B]’ and [C]’ limitations of the originally filed claims, specific descriptions of the original Specification, as well as the original figures of the application as providing Appeal 2021-000913 Application 15/305,410 5 written descriptive support for the claims limitations [A]-[C]. (Appeal Br. 7-11.) Appellant argues in the Reply Brief: [W]hen a person of ordinary skill in the art is provided with the fact that there is a constant relationship between the upstream side NOx concentration, the temperature T of the SCR catalyst 81, an injection amount of the urea water 80 which has been injected, and the concentration of NH3 contained in the exhaust gas g at the downstream side of the SCR catalyst 81, a person of ordinary skill in the art would be able to easily find a specific relationship between them in his/her specific system by routine experimentation without any excessive efforts to obtain a specific mathematical relationship for the specific system. In this regard, although there is a constant relationship between them, a specific relationship varies depending on configurations of a specific system including a type and configuration of SCR catalyst and the like. For example, different SCR catalysts have different preferable temperature and different catalytic reaction mechanisms. (Reply Br. 5.) We have fully considered Appellant’s evidence and argument and the Examiner’s findings regarding this matter. Appellant’s statement and argument are not supported by evidence and therefore lack persuasive merit. The fact that a person of ordinary skill in the art may be able to find a specific mathematical relationship for their specific system does not establish that the inventor had possession of the claimed subject matter as of the filing date. A description that renders obvious a claimed invention is not sufficient to satisfy the written description requirement for that invention. Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997); Lockwood v. American Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997). Furthermore, Appellant does not address the Examiner’s Appeal 2021-000913 Application 15/305,410 6 determination that the Specification does not define the relationship between the limitations under review. (Ans. 10-13; see also Reply Br. 5.) For the foregoing reasons and those the Examiner presents, we sustain the rejection of claims 1, 2, and 4-12 under 35 U.S.C. § 112(a). Patent Eligibility Rejection Claims 1, 2, and 4-12 stand rejected by the Examiner under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. PRINCIPLES OF LAW In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101.2 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). “Because the MPEP now incorporates the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), October 2019 Patent Eligibility Guidance Update (October 2019 Update), and the Berkheimer Memo,3 all references to those materials should now be directed to the MPEP.” See 2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1. 3 Referring to Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). Appeal 2021-000913 Application 15/305,410 7 https://www.uspto.gov/patent/laws-and-regulations/examination- policy/subject-matter-eligibility (emphasis added). All references to the MPEP throughout this Decision are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. Under MPEP § 2106, we first 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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two”).4 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 are 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 MPEP § 2106.05(d)). 4 “Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether [the claim as a whole] integrate[s] the exception into a practical application . . . .” MPEP § 2106.04(d)II. Appeal 2021-000913 Application 15/305,410 8 ANALYSIS Guidance Step 1 - Is the claim directed to patentable subject matter? With respect to the first step under Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014), the claims fall under a statutory category, a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. In this case, claim 1 is directed to a NOx concentration measurement system (i.e., machine) configured to determine the concentration of NH3 contained in the outside exhaust gas which is present around the NOx sensor. Guidance Step 2A, Prong One - Judicial Exception As indicated above, under Guidance Step 2A, Prong One, we consider whether the claim recites a judicial exception to the statutory categories of patent-eligible subject matter, including one of the following groupings of abstract ideas: (1) mathematical concepts, e.g., mathematical relationships, mathematical formulas or equations, and mathematical calculations; (2) mental processes, e.g., concepts performed in the human mind, including observations, evaluations, judgments, and opinions; and (3) certain methods of organizing human activity. See MPEP § 2106.05(d) The Examiner finds claim 1 recites limitations that are mathematical concepts. The Examiner specifically states: Examiner identifies the abstract idea of claim 1 to be “calculates at least one of a concentration of O2 and the concentration of H2O on the basis of the detected air fuel ratio,” “calculates the concentration of the derived NO which has been derived from NH3 on the basis of the concentration of the NH3 contained in the outside exhaust gas and at least one of the air fuel ratio, the concentration of O2 and the concentration of H2O” and “calculates the concentration of the combustion derived NOx on the basis of the sum concentration and the Appeal 2021-000913 Application 15/305,410 9 concentration of the derived NO which has been derived from NH3, and provides the calculated concentration of the combustion derived NOx to the NOx concentration measurement system.” These calculations can be performed in the human mind and/or with a pen and paper as evidenced by Appellant’s use of look up graphs in Figs. 8-12, 20 and 21 to make such calculations. (Final Act. 5-6.) The Supreme Court has established that a mathematical concept without more does not constitute patent-eligible subject matter. See Parker v. Flook, 437 U.S. 584, 587-96 (1978) (“Here it is absolutely clear that respondent’s application contains no claim of patentable invention. . . . Respondent’s application simply provides a new and presumably better method for calculating alarm limit values.”); Mackay Radio & Tel. Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939) (“[A] scientific truth, or the mathematical expression of it, is not patentable invention . . . .”). Claim 1 thus recites mathematical concepts, an abstract idea, which is a judicial exception. Guidance Step 2A, Prong Two - Integration into a Practical Application Having determined that claim 1 recites the abstract idea of mathematical concepts, we next look to determine whether the claim recites additional elements that integrate the judicial exception into a practical application. MPEP § 2106.05. According to the Guidance, even if a claim recites any one of three groupings of abstract ideas, the claim is still not “directed to” a judicial exception (abstract idea), and thus is patent eligible, if “the claim as a whole integrates the recited judicial exception into a practical application of that exception.” Id. § 2106.04. Limitations that are indicative of “integration into a practical application” include: (1) Appeal 2021-000913 Application 15/305,410 10 improvements to the functioning of a computer, or to any other technology or technical field (see MPEP § 2106.05(a)); (2) applying the judicial exception with, or by use of, a particular machine (see id. § 2106.05(b)); (3) effecting a transformation or reduction of a particular article to a different state or thing (see id. § 2106.05(c)); and (4) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see id. § 2106.05(e)). In contrast, limitations that are not indicative of “integration into a practical application” include: (1) adding the words “apply it” (or an equivalent) with the judicial exception, merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (see MPEP § 2106.05(f)); (2) adding insignificant extra-solution activity to the judicial exception (see id. § 2106.05(g)); and (3) generally linking the use of the judicial exception to a particular technological environment or field of use (see id. § 2106.05(h)). See MPEP § 2106.04(a) (“Prong Two”). The Step 2A Prong Two analysis excludes consideration of whether a limitation is well-understood, routine, conventional activity. In addition to an abstract idea, claim 1 recites, inter alia, the additional elements of a NOx concentration measurement system that comprises a NOx sensor (including a gas chamber into which exhaust gas is introduced); a sensor cell (having a plate shaped solid electrolyte body on the surfaces of which electrodes); and a gas introduction passage through which the exhaust gas is introduced into the gas chamber. The NOx concentration measurement system further comprises a computer configured Appeal 2021-000913 Application 15/305,410 11 to perform detection, NH3 concentration estimation, and calculation. These limitations integrate the results of collecting and comparing data into a specific and tangible method that results in the method “moving from abstract scientific principle to specific application,” and imposing a meaningful limit on the judicial exception. Classen Immunotherapies Inc. v. Biogen IDEC, 659 F.3d 1057, 1068 (Fed. Cir. 2011). The further analysis of Step 2B is not needed, thus we do not determine whether claim 1 recites well-understood, routine, or conventional activity. 2019 Revised Guidance, 84 Fed. Reg. at 51. In view of our analysis under the steps of the PTO’s Revised Guidance as updated in October 2019, we conclude that claim 1 is directed to patent eligible subject matter, and do not sustain the Examiner’s rejection as maintained against representative claim 1, and, consequently by rule, all claims on appeal. CONCLUSION The Examiner’s rejection of claims 1, 2, and 4-12 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement is sustained. The Examiner’s rejection of claims 1, 2, and 4-12 under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea is not sustained. Appeal 2021-000913 Application 15/305,410 12 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-12 112(a) Written Description 1, 2, 4-12 1, 2, 4-12 101 Eligibility 1, 2, 4-12 Overall Outcome 1, 2, 4-12 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