Ex Parte Kudoh et al

Patent Trial and Appeal Board

Jan 28, 2013

12076188 (P.T.A.B. Jan. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TETSUJI KUDOH, TAKANOBU AOCHI, and
HISATOSHI TSUKAHARA
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Appeal 2011-011360
Application 12/076,188
Technology Center 3600
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Before ANTON W. FETTING, MICHAEL W. KIM, and
NINA L. MEDLOCK Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-011360
Application 12/076,188

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 3-6. We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was held on January 24, 2013.

STATEMENT OF THE DECISION
We REVERSE.1

BACKGROUND
Appellants’ invention relates to a method of boxing fuel injectors for
an engine and, more particularly, to a method of preparing a box holding a
large number of fuel injectors in which a predetermined quality is secured in
a predetermined number of fuel injectors forming a set for one engine
(Spec., para. [0001]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of boxing fuel injectors, a first number of which
are scheduled to be mounted in an engine, in a box in a second
number larger than the first number, each fuel injector has a
characteristic value, wherein when the first number of the
characteristic values forms a set, the number of combinations of
the characteristic values where a total value of the one set’s
worth of the characteristic values becomes a first management
value or less when selecting the one set’s worth of the
characteristic values from the second number of the
characteristic values, is defined as the “number of good part
combinations,” and the number of possible combinations of the

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed March 14, 2011) and Reply Brief (“Reply Br.,” filed May 24,
2011) and the Examiner’s Answer (“Ans.,” mailed March 30, 2011).
Appeal 2011-011360
Application 12/076,188

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one set’s worth of the characteristic values is defined as the
“number of possible combinations,” the method boxes the fuel
injectors in a box so that the number of the good part
combinations becomes a ratio of a fourth management value or
more to the number of possible combinations, the method
comprising:
a step of measuring the characteristic value for the
second number of fuel injectors;
a second management value judgment step of judging the
characteristic value of each fuel injector based on second
management value, the step scrapping the fuel injector as a
defective part if the characteristic value of the fuel injector is
larger than the second management value and concluding that
the fuel injector is a passing part if the characteristic value is the
second management value or less;
a step of loading the passing part fuel injector on a
transport pallet;
a step of transporting the passing part fuel injector to a
characteristic value sorting station, the characteristic value
sorting station being provided with a first quality box able to
store the second number of the fuel injectors and a second
quality box able to store the second number of the fuel
injectors;
a step of judging the characteristic value of the fuel
injector transported to the characteristic value sorting station
based on a third management value;
a step of storing the fuel injector in the first quality box if
the characteristic value is equal to the third management value
or less;
a third management value sorting step of storing the fuel
injector in the second quality box if the characteristic value is
larger than the third management value;
a step of judging if the fuel injectors stored in the second
quality box have reached the second number;
a computation step of computing the characteristic values
of the fuel injectors stored in the second quality box, the step
computing a good part combination rate comprised of a ratio of
the number of good part combinations with respect to the
number of possible combinations;
Appeal 2011-011360
Application 12/076,188

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a good part combination rate judgment step of comparing
and judging the good part combination rate in the second
quality box with the fourth management value;
a passing part transport step of transporting the second
quality box as a passing part to a predetermined location at a
shipment station side when the good part combination rate in
the second quality box is larger than the fourth management
value;
a quality improvement step of taking out a third number
of the fuel injectors of the second quality box from the second
quality box, moving them to a predetermined location, taking
out the same number of fuel injectors as the third number from
the first quality box, and using these to replenish the second
quality box when the good part combination rate in the second
quality box is the fourth management value or less; and
a recomputation step of recomputing the good part
combination rate of the second quality box after the quality
improvement step;
wherein the characteristic value is a fuel-tightness value.

THE REJECTION
The following rejection is before us for review:
Claims 1 and 3-6 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

ANALYSIS
We are persuaded that the Examiner erred in rejecting claims 1 and
3-6 under 35 U.S.C. § 101. Applying the machine-or-transformation test,
the Examiner concluded that claims 1 and 3-6 are directed to non-statutory
subject matter because Appellants’ claimed method is not tied to a particular
machine and the recited claim steps do not involve the transformation of a
particular article to a different state or thing (Ans. 4 and 14).
Appeal 2011-011360
Application 12/076,188

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The Supreme Court clarified in Bilski that the machine-or-
transformation test “is not the sole test for deciding whether an invention is a
patent-eligible ‘process’ under § 101.” Bilski v. Kappos, 130 S. Ct. 3218,
3221 (2010). However, the Court explained that this test remains a “useful
and important clue or investigative tool.” Id. The Examiner thus properly
assessed patent eligibility under the machine-or-transformation test. We
disagree with the Examiner’s conclusion, however, that the method claims at
issue are not transformative.
The claims are directed to a method of boxing fuel injectors, a first
number of which are scheduled to be mounted in an engine, in a box in a
second number larger than the first number, such that a predetermined
quality is secured in the first number of fuel injectors forming a set for one
engine. More particularly, the claimed method takes a first group of
unspecified fuel injectors and selects, from that group, a second group of
fuel injectors that has a particular set of characteristic values that are
optimized to work together in an engine to obtain a satisfactory result. We
thus agree with Appellants that the result of the claimed method is to
“transform[ ] a large group of unorganized fuel injectors into an organized
(i.e., “boxed”) set of fuel injectors, the entire set of which meets necessary
quality criteria” (App. Br. 13).
We, of course, are mindful that the machine-or-transformation test is
not determinative of whether an invention is a patent-eligible process.
However, we find no factors in the record that would weigh against patent
eligibility.
For example, claim 1 does not recite purely mental steps, i.e., steps
that can be performed in the human mind. The “loading,” “transporting,”
Appeal 2011-011360
Application 12/076,188

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“storing,” and “quality improvement” steps, recited in claim 1, all require
some physical action, i.e., the manipulation of particular objects (i.e., fuel
injectors), and cannot be performed entirely in a human’s mind.
The claim also does not merely describe an abstract idea or concept.
Instead, it presents a specific application and improvement to a technology
(i.e., the packaging of fuel injectors to ensure a predetermined quality in a
predetermined number of fuel injectors that forms a set for an engine) in the
marketplace, i.e., the automotive industry. See, e.g., Research Corp.
Technologies, Inc. v. Microsoft, 627 F.3d 859, 869 (Fed. Cir. 2010)
(“[I]nventions with specific applications or improvements to technologies in
the marketplace are not likely to be so abstract that they override the
statutory language and framework of the Patent Act.”).
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 101. For the same reasons, we also will not
sustain the Examiner’s rejection of claims 3-6, which depend from claim 1.

DECISION
The Examiner’s rejection of claims 1 and 3-6 under 35 U.S.C. § 101 is
reversed.

REVERSED

mls