Ex Parte HARTMANN

Patent Trials and Appeals Board

Jul 9, 2019

13904442 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/904,442 05/29/2013 Peter HARTMANN
27623 7590 07/09/2019
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2133.227USU 3701
EXAMINER
HERRING, LISA L
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
07/09/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER HARTMANN
Appeal2018-005295
Application 13/904,442
Technology Center 1700
Before JAMES C. HOUSEL, JEFFREY R. SNAY, and JANEE. INGLESE,
Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 3-5 and 8-11. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 We cite to the Specification ("Spec.") filed May 29, 2013; the Final Office
Action ("Final Act.") dated August 11, 2017; Appellant's Appeal Brief
("Appeal Br.") filed January 10, 2018; the Examiner's Answer ("Ans.")
dated February 26, 2018, and Appellant's Reply Brief ("Reply Br.") filed
April 26, 2018.
2 Appellant is the Applicant, Schott AG, which is identified as the real party
in interest. Appeal Br. 1.
Appeal2018-005295
Application 13/904,442
BACKGROUND
The subject matter on appeal relates to the manufacture of a glass or
glass ceramic component. Spec. ,r 8. In particular, the Specification
describes a process for manufacturing a glass or ceramic component having
dimensions which are determined based upon specified stress parameters
and minimum service life, such that when the manufactured component is
placed under a predefined load, it is ensured that the component does not fail
at least during the period of minimum service life. Id. ,r 9. Claim 9 is
illustrative:
9. A method for producing a glass or glass ceramic component,
compnsmg:
predefining a minimum service life ( t) of the glass or glass ceramic
component from a mechanical tensile stress ( O' B,c) to which the glass or
glass ceramic component is exposed and which occurs during a service life
of the glass or glass ceramic component, the step of predefining the
minimum service life ( t) comprising calculating the minimum service life
[[and]] from the mechanical tensile stress being interrelated by the
relationship:
n·d
rr 15 ,.
{=-···=~~~~
(n+l}·u. ii "
: . ·,.,1.th
' \<,: . .!.J
n being a stress corrosion coefficient of a material of the glass or glass
ceramic component;
u r being a rate of stress increase; and
u B,r being a minimum strength of the glass or glass ceramic component
expressed as a mechanical tensile stress until fracture occurs under the effect
of the mechanical tensile stress in the
glass or glass ceramic component increasing according to the rate of stress
increase (j r ;
determining dimensions of a section modulus (WY) of the glass or
glass ceramic component such that a load to which the glass or glass ceramic
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Application 13/904,442
component is exposed on average during the minimum service life does not
cause tensile stresses in the glass or glass ceramic component greater
than O' B,c on average so that at least the minimum service life (t) is achieved
without fracture of the glass or glass ceramic component; and
forming the glass or glass ceramic component with the determined
dimensions of the section
modulus (WY),
the me,~hanical tensile stress ( O' B,c) being determined using:
1"' "f • , L,,
(j' :~~~' .................. .
lMi)I 4, ff/
·y
wherein F is an applied force, L is the length of the glass or glass-
ceramics component forming a carrier and CTmax is a maximum tensile stress
occurring at a central extreme fiber of the carrier,
wherein the minimum strength O' B.r is determined by exposing a
plurality of samples of the material of the glass or glass ceramic component
to a mechanical tensile stress that is increasing
according to the rate of stress increase O' r until a respective sample of the
plurality of samples
fractures, and wherein then the minimum strength O' B,r is determined as a
threshold value from a measured value of the mechanical tensile stress upon
fracture, and
wherein the threshold value is determined by fitting a three-parameter
Weibull distribution to the measured values of the mechanical tensile stress
upon fracture and determining the minimum strength as that tensile stress at
which the Weibull distribution becomes zero, or which is lower by not more
than 20% than tensile stress at which the Weibull distribution disappears.
Appeal Br. 8-10 (Claims Appendix). Claim 13 recites an apparatus for
performing a method essentially the same as is recited in claim 1. Claim 11
also is in independent form and recites a process that is similar to claim 9.
Each remaining claim on appeal depends from claim 9.
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Application 13/904,442
REJECTIONS
I. Claims 3-5 and 8-11 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
II. Claims 3-5 and 8-11 stand rejected under 35 U.S.C. § 112, first
paragraph, for lack of enablement.
III. Claims 3-5 and 8-11 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
IV. Claims 8 and 10 stand rejected under 35 U.S.C. § 112, fourth
paragraph, for failing to limit the subject matter recited in a parent claim.
DISCUSSION
Rejection I: subject matter eligibility
The Examiner rejects claims 3-5 and 8-11 under 35 U.S.C. § 101 as
being directed to a judicial exception-namely, an abstract idea without
significantly more. Final Act. 2--4. Appellant argues that the recited step of
forming a glass or glass ceramic component based on the determined
dimensions ensures that the claim as a whole is directed to a patent-eligible
process and not an abstract idea. Appeal Br. 4--5. 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
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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. Kappas, 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 (Gottschalkv. 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
(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
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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 tum 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).
"[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
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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 § 2106.0S(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
§ 2106.0S(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.
We have considered the Examiner's findings and the Appellant's
arguments in light of the controlling case-law and Guidance, and are not
persuaded the Examiner erred in rejecting the claims under 3 5 U.S. C. § 1 01.
Guidance Step 1
There is no dispute that each of Appellant's claim is within a statutory
category. Independent claims 9 and 11 recite methods.
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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 to 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). Appellant argues that the recitation,
"forming the glass or glass ceramic component with the determined
dimensions," integrates the mathematical expressions into a practical
application. See Appeal Br. 4--5. We agree.
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
whole is directed to excluded subject matter. Id. ( citing Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
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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 forming a glass or glass ceramic component having dimensions
which are determined based on the recited mathematical expressions.
Rather, we conclude that the character of the claims as a whole is directed to
an improved glass component manufacturing process. The Specification
supports our conclusion. See e.g. Spec.; Abstract ("The method enables a
leaner dimensioning of mechanically stressed glass and glass ceramic
components.").
Rather than merely collecting and mathematically manipulating data,
the claims on appeal are directed to use of that data to direct subsequent
physical operations-namely, formation of a glass component. 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
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 acquired data to direct formation of a desired glass or
glass ceramic component. As such, these claims are not directed to an
abstract idea and, accordingly, the claims survive Alice step one.
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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.
Rejection II: enablement
Enablement is assessed under 35 U.S.C. § 112, which states:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor or joint
inventor of carrying out the invention.
35 U.S.C. § 112 (emphasis added).
The burden to prove non-enablement rests with the Examiner:
[t]he [Examiner] bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the
scope of enablement. If the [Examiner] meets this burden, the
burden then shifts to the applicant to provide suitable proofs
indicating that the specification is indeed enabling.
In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (emphasis
added).
The Examiner's determination of non-enablement is premised on
findings that: the Specification lacks specific examples; the claims refer to
determined dimensions that are not parameters of the recited formulae; and
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experimentation would be required to determine certain parameters used in
the recited formulae. Final Act. 4--7. However, the Examiner does not
provide reasoning why the lack of working examples in this case would
inhibit one of ordinary skill in the art from following the steps recited in
claim 9 or 11. See, e.g., In re Borkowski, 422 F.2d 904, 908 (CCP A 1970)
(the Specification need not contain an example if the invention is otherwise
disclosed in such a manner that one of ordinary skill in the art will be able to
practice it without an undue amount of experimentation). Nor does the
Examiner explain why one skilled in the art would not have been able to
assign component dimensions based on the recited mathematical expressions
relating service life and various stress-related parameters. As is explained in
the Specification, "[ w ]ith knowledge of these parameters, now a glass or
glass ceramic component can be designed and manufactured accordingly so
that it resists a predefined load without breaking for a specified period of
time." Spec. ,r 8. See also Spec. ,r 9 ("determining the dimensions of the
component such that under the predefined mechanical stress at least the
predefined minimum service life is achieved without fracture of the
component"); id. ,r 16 ("the component may be sized in a manner so that the
predefined minimum service life is extended by up to 50%, or so that a
mechanical resistance of the component without fracture of up to 50%
greater than CTB,c is achieved"). Lastly, although the Examiner points to
recited parameters for which determining a value would involve some
experimentation, the Examiner provides no reasoning or evidence to
demonstrate that such experimentation would have been undue under the
circumstances involved. A disclosure can be enabling even though some
experimentation is necessary. See Hybritech Inc. v. Monoclonal Antibodies,
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Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). The critical issue is whether the
experimentation required to perform the recited process amounts to undue
experimentation. In re Vaeck, 947 F.2d 488,495 (Fed. Cir. 1991).
For the foregoing reasons, we are persuaded that the Examiner does
not present factual findings supported by reasonable explanations sufficient
to support a prima facie determination that Appellant's claims are not
enabled to one of ordinary skill in the art. Accordingly, Rejection II also is
not sustained.
Rejections III and IV
Appellant presents no argument against the Examiner's determination
that claims 3-5 and 8-11 include language that is unclear and, therefore,
indefinite. Nor does Appellant challenge the Examiner's determination that
claims 8 and 10 do not sufficiently limit their parent claim. Accordingly,
each of Rejections III and IV is summarily sustained.
CONCLUSION
The rejections under 35 U.S.C. §§ 101 and 112, first paragraph, are
not sustained.
The rejections under 35 U.S.C. § 112, second and fourth paragraphs,
are sustained.
DECISION
The Examiner's decision rejecting claims 3-5 and 8-11 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED
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