Kihachiro Okura

Patent Trials and Appeals Board

Jan 29, 2021

2020002341 (P.T.A.B. Jan. 29, 2021)

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.
14/953,856 11/30/2015 Kihachiro Okura 086405-547136 1418
30678 7590 01/29/2021
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Suite 6400
HOUSTON, TX 77002
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
01/29/2021 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIHACHIRO OKURA
Appeal 2020-002341
Application 14/953,856
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
HASTINGS, 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 3–5. See Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “YAMAZEN
CORPORATION”. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a method for liquid chromatography.
Claims 3 and 4, reproduced below, are illustrative of the claimed subject
matter:
3. A method for liquid chromatography,
in the liquid chromatography, an eluent being generated by mixing
two solvents at a mixture ratio that is linearly increased, and the
generated eluent and a sample composed of a plurality of components
passing through a column,
the method comprising the steps of:
determining “a” which indicates a rate of change in the mixture ratio;
calculating elution time “trc” based on Equation (1), the elution time
“trc” being from a start of flow-in of the sample into the column to elution of
a component “c” which is one of the components from the column;

(1)
selecting the column based on the calculated elution time “trc”; and
conducting the liquid chromatography using the selected column;
wherein:
“t” indicates elapsed time from the start of flow-in of the sample into
the column;
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“t0” indicates time from a start of flow-in of the eluent into the column
to a start of flow-out of the eluent from the column; and
“Rfc(t/t0)” indicates a mobility of the component “c” in the elution
time “trc” and is represented by Equation (2),

(2)
wherein “b” indicates a constant regarding an initial mobility Rf0, b=ln(1-Rf0).

4. A method for liquid chromatography,
in the liquid chromatography, an eluent being generated by mixing two
solvents at a mixture ratio that is linearly increased, the mixture ratio being
adjusted by a valve, and the generated eluent and a sample composed of a
plurality of components passing through a column,
the method comprising the steps of:
determining elution time “trc”, the elution time “trc” being from a start
of flow-in of the sample into the column to elution of a component “c”
which is one of the components from the column;
calculating a mobility Rfc(t/t0) of the component “c” in the elution
time “trc”, by calculating “a” and “b” for the elution time “trc” based on
Equations (1) and (2):

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(1)

(2)
; and
conducting the liquid chromatography by controlling the valve based
on the calculated mobility Rf c(t/t0),
wherein:
“a” indicates a rate of change in the mixture ratio;
“b” indicates a constant regarding an initial mobility Rf0, b=ln(1-R f0);
“t” indicates elapsed time from the start of flow-in of the sample into
the column;
“t0” indicates time from a start of flow-in of the eluent into the
column to a start of flowout of the eluent from the column; and
“Rf c(t/t0)” is represented by Equation (2).

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REJECTIONS
Claim 4 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the written description
requirement. Non-Final Act. 2.
Claims 3–5 are rejected under 35 U.S.C. § 101 as being directed to
judicially excepted subject matter because the claimed invention is directed
to an abstract idea without significantly more. Non-Final Act. 3.

OPINION
The § 112 rejection for lack of written description
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)).
After review of the respective positions provided by Appellant and the
Examiner, we find that a preponderance of the evidence supports
Appellant’s position that the original disclosure provides support for
“controlling the valve” as recited in independent claim 4 (Appeal Br. 15–16;
see Spec. Fig. 1, Spec. ¶¶ 30, 36, 56, 66). As Appellant explains, there is no
dispute that the Specification explicitly describes a solenoid valve, which the
Examiner agrees is a valve (Reply Br. 10; Ans. 14).
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The Examiner’s position is that the Specification never explicitly
states anything other than controlling a solenoid valve, such that claiming
controlling a valve is new matter (Ans. 14, 15).
As Appellant states, the Examiner has not even made any allegation of
unpredictability (Reply Br. 10), and there is no dispute that a valve is a
relatively straightforward mechanical component and encompasses a
solenoid valve. The Examiner has not adequately explained, especially in
light of the case law2 discussed by Appellant (Appeal Br. 15, 16; Reply Br.
10), why one of ordinary skill in the art would not have appreciated that
other valves may be used in the described method. In light of all these
circumstances, one of ordinary skill would have appreciated that Appellant
was in possession of controlling a valve based on the calculated mobility as
recited in claim 4.
Accordingly, we reverse the Examiner’s § 112 rejection on appeal.

The § 101 Rejection
Introduction
35 U.S.C. § 101 provides that “[w]hoever 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.”
In that regard, illustrative claims 3 and 4 (above) covers a “method”
and is thus statutory subject matter for which a patent may be obtained.3

2 Hologic Inc. v. Smith & Nephew Inc., 884 F.3d 1357 (Fed. Cir. 2018)
3 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether a “claim is to a statutory category.” Id. at 53.
See also sentence bridging pages 53 and 54 (“consider[ ] whether the
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However, the § 101 provision “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014);
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding that independent claims 3 and 4 are
statutory subject matter (as are the claims depending therefrom), the
Examiner has raised a question of patent-eligibility on the ground that they
are directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept” (Id. at 218
(emphasis added)).
The Examiner determined, inter alia, that the claims are “directed to
an abstract idea,” that is, “equations for calculating mobility” which are “not
integrated into a practical application because the additional steps do not add
a meaningful limitation to the method as they are insignificant extra-solution
activity” and “do not add a meaningful limitation” to the method. Non-Final
Act. 3. See also id. at 3–4:
There are no other limitations in the claim that show a patent-
eligible application of the abstract idea itself. The steps of "an
eluent being generated by mixing", "the generated eluent

claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. [§] 101 . . . .”).
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and a sample composed of a plurality of components can pass
through a column", "the mixture ratio be adjusted by a valve",
"determining "a" which represents a rate of change in the
mixture ratio", "selecting the column", "conducting the liquid
chromatography", and "conducting the liquid chromatography
by controlling the valve based on the calculated mobility" do
not significantly amount to anything more than the abstract idea
since these pieces are routine and conventional in liquid
chromatography systems. See MPEP §2106.

Appellant contends, inter alia, that the invention of each of claims 3
and 4 is directed to a statutory method that includes “new equations to
control the physical components of the liquid chromatography process”.
Appeal Br. 6. Specifically, Appellant contends that claim 3 recites the use
of newly developed equations to select the particular column to use and then
perform the liquid chromatography process using the selected column,
whereas claim 4 likewise recites use of newly developed equations to
operate the valve that controls the mixture ratio of the solvents to form the
eluent and performing liquid chromatography process using that eluent. Id.
Appellant contends that it is clear that the present claims as a whole are not
directed to mathematical processes but each claim relates to an improved
liquid chromatography process that takes into account “more accurate
estimates to control the physical parameters” of the process “to yield more
accurate results” (Appeal Br. 6; Spec. ¶ 6).
Accordingly, there is a dispute over what the claims are directed to.
Are they directed to an abstract idea because of the mathematical equations
for calculating mobility (e.g., Ans. 8) or are they directed to a liquid
chromatography process that uses more accurate estimates to control liquid
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chromatography processes to yield more accurate results over prior art
methods (Appeal Br. 4–7, Spec. ¶¶ 4, )?

Claim Construction4
We consider each of claims 3 and 4 as a whole5 giving each the
broadest reasonable construction6 as one of ordinary skill in the art would
have interpreted it in light of the Specification7 at the time of filing.

4 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).

5 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).

6 2019 Revised 101 Guidance, page 52, footnote 14 (“If a claim, under its
broadest reasonable interpretation . . . .”) (Emphasis added.)

7 “First, it is always important to look at the actual language of the
claims. . . . Second, in considering the roles played by individual limitations,
it is important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (R. Linn, dissenting in part and concurring in part), citing Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among
others.

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Claims 3 and 4 each describe a “method for liquid chromatography”
using specified equations to calculate an elution time and then selecting the
chromatography column based on that elution time (claim 3) and conducting
the liquid chromatography by controlling the valve to mix two solvents to
generate the eluent based on more accurately estimating the mobility and
elution time (see claim 4).
According to the Specification, a current method for calculating the
estimated elution time is different than the measured elution time and it is
therefore necessary to more precisely estimate the elution time (e.g., Spec.
¶¶ 5, 6).
Consistent with the intrinsic evidence, we reasonably, broadly
construe claim 3 as a method for performing a liquid chromatography
process using equations for more accurately estimating the elution time such
that an appropriate column is selected and claim 4 as a method for
performing a liquid chromatography process using equations for more
accurately controlling the valve to mix two solvents to generate the eluent
based on more accurately estimating the elution time. Thus, the claims are
directed to more than what the Examiner describes. Cf. McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (The
claim uses limited rules in a process specifically designed to achieve an
improved technological result in conventional industry practice.)

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The Abstract Idea8
The claims do recite steps that involve mathematical operations, as
found by the Examiner. Thus, in accordance with the Guidance, step (1), we
determine that claims 3 and 4 each recite a mathematical concept, and
therefore recites an abstract idea. See Guidance 52, 55–56.

Improvement in the method for liquid chromatography9
Although the claims recite an abstract idea as set forth above, we
determine that the claims are not “directed to” an abstract idea because we
find that the abstract idea is integrated into a practical application under Step
2A, Prong 2 of the Guidance.
The Examiner’s characterization of what the claim is directed to is
inaccurate. The Examiner indicated that the claim is directed to “a

8 See Step 2A of the 2019 Revised 101 Guidance. Step 2A determines
“whether a claim is ‘directed to’ a judicial exception,” such as an abstract
idea. 84 Fed. Reg. at 53. Step 2A is a two prong inquiry.

9 See Prong Two (“If the Claim Recites a Judicial Exception, Evaluate
Whether the Judicial Exception Is Integrated Into a Practical
Application”) of Step 2A of the 2019 Revised 101 Guidance. “A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” 2019 Revised 101
Guidance, 84 Fed. Reg. at 54. One consideration, implicated here, that is
“indicative that an additional element (or combination of elements) may
have integrated the exception into a practical application” (id. at 55) is if
“[a]n additional element reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field” (id.).

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mathematical concept” (Ans. 7, 8) and that all the other claimed steps do
“not significantly amount to anything more than the abstract idea”. Ans. 8.
The claimed process, however, requires generating an eluent by mixing two
solvents, selecting the chromatography column based on the calculated
elution time, and conducting the liquid chromatography (claim 3); or
conducting the liquid chromatography by controlling the valve based on the
calculated mobility time (claim 4). The preponderance of the evidence
supports Appellant’s position that the combination of the steps recited as
claimed adds significantly more than the abstract idea the claims are alleged
to be directed to so as to transform the abstract idea into an inventive
concept. Generally Appeal Br., Reply Br., Spec. e.g., ¶¶ 4–11.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex., LLC v. DIRECTTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)); see also Enfish, 822 F.3d at 1335. As the Federal Circuit stated
in Ancora Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343, 1347
(Fed. Cir. 2018), we examine the patent’s “‘claimed advance’ to determine
whether the claims are directed to an abstract idea.” Finjan, Inc. v. Blue Coat
System, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018). “In cases involving
software innovations, this inquiry often turns on whether the claims focus on
‘the specific asserted improvement in computer capabilities . . . or, instead,
on a process that qualifies as an “abstract idea” for which computers are
invoked merely as a tool.’” Id. (quoting Enfish, 822 F.3d at 1335–36); see
BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1285–86 (Fed. Cir.
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2018). Computers are improved not only through changes in hardware;
“[s]oftware can make non-abstract improvements to computer technology . .
. .” Enfish, 822 F.3d at 1335; see Finjan, 879 F.3d at 1304. Claims can
pass muster under Alice step one when sufficiently focused on such
improvements.
The Specification’s description of the problem and solution shows the
advance over the prior art by the claimed invention is in more accurately
determining the required elution time so as to improve methods for liquid
chromatography. See Spec., e.g., ¶¶ 4–11. Accordingly, within the meaning
of the 2019 Revised 101 Guidance, we find there is an integration into a
practical application. Claim 3 recites “selecting the column based on the
calculated elution time”. Appeal Br. 17 (Claims Appendix). This limitation
causes claim 3 to integrate the abstract ideas it recites into a practical
application. As a result, claim 3 is not “directed to” a judicial exception, but
rather to a practical application of a judicial exception, and is patent eligible
subject matter (Appeal Br. 9, 10; Reply Br. 4–7). Similarly, claim 4 recites
“conducting the liquid chromatography by controlling the valve based on the
calculated mobility” (Appeal Br. 18, Claims Appendix). As a result, claim 4
is also not “directed to” a judicial exception, but rather to a practical
application of a judicial exception, and is patent eligible subject matter. A
preponderance of the evidence supports Appellant’s position that this
integrates the mathematical concept into a practical application (e.g., Appeal
Br. 11–14; Reply Br. 8, 9). Therefore, we need not reach Step 2B of the
Guidance.
In our view, each of claims 3 and 4 as a whole reflects a specific
asserted improvement in technology, rooted in computer technology, over
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that which was available in the prior art. Accordingly, we find the
Appellant’s arguments persuasive that the claimed subject matter is not
directed to merely performing mathematical processes but to a technical
improvement persuasive, given the present record.
Specific asserted improvements, when claimed, can render claimed
subject matter nonabstract. Cf. McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (“When looked at as a whole,
claim 1 is directed to a patentable, technological improvement over the
existing, manual 3–D animation techniques.”)
It should be noted that we have addressed purported specifically
asserted improvements in technology under step one of the Alice framework.
This is consistent with the case law. See Ancora, 908 F.3d at 1347 (“We
have several times held claims to pass muster under Alice step one when
sufficiently focused on such improvements.”). It can be discussed under
step two of the Alice framework as well. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1354–55 (Fed. Cir. 2014). “[R]ecent Federal Circuit
jurisprudence has indicated that eligible subject matter can often be
identified either at the first or the second step of the Alice/Mayo
[framework].” 2019 Revised 101 Guidance, 84 Fed. Reg. at 53; see also id.
n.17.
In any case, there is sufficient evidence in the record before us that the
claimed subject matter reflects a specific asserted improvement in
technology over that which was practiced in the art and for that reason we
determine that independent claims 3 and 4 (and claim 5 depending
therefrom) are not directed to an abstract idea.
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For the foregoing reasons, the Examiner’s determination under Alice
step one is not sustainable. Consequently, we do not need to reach Alice
step two.
The rejection under 35 U.S.C. § 101 is not sustained.

CONCLUSION
The Examiner’s decision to reject claims 3–5 is reversed.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4 112, first
paragraph
Written
Description
4
3–5 101 Eligibility 3–5
Overall
Outcome
3–5

REVERSED