Ex Parte McMurrough et al

Patent Trial and Appeal Board

Jan 19, 2018

13175007 (P.T.A.B. Jan. 19, 2018)

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.
13/175,007 07/01/2011 Brian McMurrough P016313-FCA-CHE 1804
65798 7590 01/19/2018
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
NGO, DACTHANG P
ART UNIT PAPER NUMBER
2863
MAIL DATE DELIVERY MODE
01/19/2018 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 BRIAN McMURROUGH
and BERND KRAUSE
Appeal 2017-004203
Application 13/175,007
Technology Center 2800
Before TERRY J. OWENS, JEFFREY R. SNAY,
and SHELDON M. McGEE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—19. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a method and system for detecting a possible
membrane failure in a fuel cell stack’s cells. Claim 1 is illustrative:
1. A method for detecting a possible membrane failure in
fuel cells for a fuel cell stack, said method comprising:
monitoring voltages of the fuel cells in the fuel cell stack
using voltage sensors in a voltage and current monitoring
circuit which is electrically coupled to the fuel cell stack;
Appeal 2017-004203
Application 13/175,007
identifying, using a processor in the voltage and current
monitoring circuit, a minimum cell voltage from the cell
voltages of the fuel cells in the fuel cell stack;
determining a current density of the fuel cell stack using
a current sensor in the voltage and current monitoring circuit;
calculating, using the processor, a multiplication factor
from a multiplication of representative values of the minimum
cell voltage and the stack current density;
comparing, using the processor, the multiplication factor
to a threshold multiplication factor to determine whether the
possible membrane failure is occurring; and
providing a warning of the possible membrane failure if
the multiplication factor is larger than the threshold
multiplication factor.
The Rejections
Claims 1—19 stand rejected under 35U.S.C. § 112, first paragraph as
failing to comply with the written description requirement, and under
35U.S.C. § 101 as failing to claim patent eligible subject matter.
OPINION
We reverse the rejection under 35 U.S.C. § 112, first paragraph and
affirm the rejection under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 112, first paragraph
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir.
1991)).
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Application 13/175,007
The Examiner finds that “Applicant recites ‘a processor in the voltage
and current circuit’ which was not presented in the specification or previous
claims” (Final Act. 7), “[tjhere is no description or detail information that
indicates location of the processor” {id.), and the recited algorithm “can be
performed by pencil and paper” (Ans. 3), so “there is a reasonable doubt that
the Appellant had possession of the processor as described in the claim”
{id.).
The Appellants’ Specification discloses that the multiplication factor
“is stored in a memory” (Spec. 124), “the algorithm monitors the
multiplication factor being calculated” {id.), “the algorithm replaces the
stored multiplication factor with the new larger multiplication factor” {id.),
“the algorithm discards the lesser multiplication factors” {id.), “the algorithm
scans for a maximum deviation” (Spec. 125), “the algorithm determines
whether the minimum cell voltage and the stack current density are both
below the predetermined values at the same time” {id.), “[t]he algorithm then
compares the calculated deviation with a threshold multiplication factor”
{id.), “the algorithm returns to the box 52 to continue to scan for the
deviation” {id.), “the algorithm increments a counter at box 60” {id.), “[t]he
algorithm then determines whether the counter is above a predetermined
count” {id.), and “the algorithm sets a diagnostic trouble code for membrane
failure” {id.). Those disclosures indicate that a processor in the voltage and
current monitoring circuit executes the algorithm to perform those functions.
Thus, the Appellants’ Specification would have conveyed with
reasonable clarity to those skilled in the art that the Appellants, as of their
filing date, were in possession of such a processor. Accordingly, we reverse
the rejection under 35U.S.C. § 112, first paragraph.
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Application 13/175,007
Rejection under 35 U.S.C. §101
“Whoever 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 stated in
Bilski v. Kappos, 561 U.S. 593, 601 (2010) that “[t]he Court’s precedents
provide three specific exceptions to § 101 ’s broad patent-eligibility
principles: Taws of nature, physical phenomena, and abstract ideas.’
[Diamond v.] Chakrabarty, [447 U.S. 303,] 309, 100 S. Ct. 2204 [(1980)].”
The Court further stated that limiting an abstract idea to a particular
technological environment does not make the concept patentable. See Bilski,
561 U.S. at 610-611. Determining whether a claimed invention is patent-
eligible subject matter requires determining whether the claim is directed
toward a patent-ineligible concept and, if so, determining whether the
claim’s elements, considered both individually and as an ordered
combination, transform the nature of the claim into a patent-eligible
application. See Alice Corp. v. CLS Banklnt’l, 134 S. Ct. 2347, 2350
(2014).
The Appellants’ claims are directed toward the abstract idea of using
sensors to monitor a fuel cell stack’s cell voltages and stack current density,
calculating a multiplication factor by multiplying representative values of
minimum cell voltage times stack current density, comparing the
multiplication factor to a threshold multiplication factor to determine
whether a possible membrane failure is occurring, and providing a warning
of possible membrane failure if the multiplication factor is larger than the
threshold multiplication factor. The voltage monitoring, minimum cell
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Application 13/175,007
voltage identification and fuel cell stack current density determination,
considered individually and as an ordered combination, do not transform the
nature of the claim into a patent-eligible application because they merely
gather the data input to the algorithm. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (“[M]ere
‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim
statutory.’”) (quoting In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989)); see
also OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364
(Fed. Cir. 2015) (“These processes are well-understood, routine,
conventional data-gathering activities that do not make the claims patent
eligible.”).
The Appellants argue (Br. 18—19):
One definition of the word “abstract” is “existing in thought or
as an idea but not having a physical or concrete existence”.
Appellant’s claims include sensors and a processor in the
voltage and current monitoring circuit, and interactions between
those items and the fuel cells. Appellant’s claims do not merely
“exist in thought or as an idea”; they cannot be accomplished
without the fuel cell stack, the processor and the sensors. By
including in the claims a particularly programmed processor
and voltage and current sensors, and interactions between those
items and the fuel cells in the fuel cell stack. Appellant submits
that the claims are in fact concrete, not abstract.
“‘[I]f a claim is directed essentially to a method of calculating, using a
mathematical formula [the Appellants’ algorithm], even if the solution is for
a specific purpose [detecting a possible membrane failure in a fuel cell
stack’s cells], the claimed method is nonstatutory.” Parker v. Flook, 437
U.S. 584, 596 (1978) (quoting In re Richman, 563 F.2d 1026, 1030
(C.C.P.A. 1977)). Also, “simply implementing a mathematical principle on
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Application 13/175,007
a physical machine, namely a computer, [i]s not a patentable application of
that principle.” Alice 134 S. Ct. at 2357—58 (quoting Mayo Collaborative
Services v. Prometheus Labs., 566 U.S. 66, 84 (2012)) (citing Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)). See also CyberSource, 654 F.3d at 1375
(“Abele made clear that the basic character of a process claim drawn to an
abstract idea is not changed by claiming only its performance by computers,
or by claiming the process embodied in program instructions on a computer
readable medium.”). Furthermore, “simply appending conventional steps
[using sensors to monitor voltages and current density], specified at a high
level of generality, to laws of nature, natural phenomena, and abstract ideas
cannot make those laws, phenomena, and ideas patentable.” Mayo, 566 U.S.
at 82.
The Appellants argue that “Appellant’s claims are not analogous to
Alice, as Appellant’s claims are not directed to a computerized
implementation of a ‘known, well-understood or routine’ process; in
contrast, Appellant’s claims have been found by the USPTO to be novel and
unobvious over the prior art” (Reply Br. 3) and “embody a novel and
unobvious process and system for detecting possible membrane failure,
which is implemented on a particularly programmed computing
machine” (Br. 18).
The second step of the Alice test set forth above determines whether a
claim’s elements, considered individually and as an ordered combination,
transform the nature of the claim into a patent-eligible application, not
whether the claim’s elements render the claimed invention patentable over
the prior art. As pointed out above, the Appellants’ claims’ voltage and
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Application 13/175,007
current monitoring sensors and processor do not transform the nature of the
claims into a patent eligible application.
Hence, we are not persuaded of reversible error in the rejection under
35 U.S.C. § 101.
DECISION/ORDER
The rejection of claims 1—19 under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement is reversed. The
rejection of claims 1—19 under 35 U.S.C. § 101 as failing to claim patent
eligible subject matter is affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED
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