Lemaire, Alexander B.

Patent Trials and Appeals Board

Feb 25, 2022

2021005063 (P.T.A.B. Feb. 25, 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. 13/910,034 06/04/2013 Thomas R. Schrunk 6139.5038.001US2 1071 40064 7590 02/25/2022 LEMAIRE PATENT LAW FIRM, P.L.L.C. P.O. BOX 1818 BURNSVILLE, MN 55337 EXAMINER ROBITAILLE, JOHN P ART UNIT PAPER NUMBER 1743 MAIL DATE DELIVERY MODE 02/25/2022 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 THOMAS R. SCHRUNK Appeal 2021-005063 Application 13/910,034 Technology Center 1700 Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and DONNA M. PRAISS, Administrative Patent Judges. FRANKLIN, 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 1-12 and 14-24. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Charles A. Lemaire. Appeal Br. 3. Appeal 2021-005063 Application 13/910,034 2 CLAIMED SUBJECT MATTER Claim 1 illustrates Appellant’s subject matter on appeal and is set forth below: 1. A computerized method for generating a formatted file containing data readable by a CNC machine to control tool paths used to form grooves into a plurality of surface portions to make a grooved article, the method comprising: obtaining, into a computer, image information of an image that specifies different brightness values for each one of a plurality of areas of the image, including a first image area having a first specified brightness value, a second image area having a second specified brightness value, a third image area having a third specified brightness value and a fourth image area having a fourth specified brightness value; receiving, into the computer, a specification of a first illumination direction and a first viewing direction; generating, using the computer, groove-direction information for specifying the grooves to be formed into the plurality of surface portions on the grooved article, the plurality of surface portions on the grooved article including a first, a second, a third, and a fourth surface portion corresponding to the first, the second, the third, and the fourth area of the image, respectively, wherein the generating of the groove-direction information is based, at least in part, on the brightness values of the image information, the first illumination direction and the first viewing direction, wherein the groove-direction information includes a plurality of groove directions including a first groove direction for the first surface portion corresponding to the first brightness value of the first image area, a second groove direction for the second surface portion corresponding to the second brightness value of the second image area, a third groove direction for the third surface portion corresponding to the third brightness value of the third image area, and a fourth groove direction for the fourth surface portion corresponding to the fourth brightness value of the fourth image area, wherein Appeal 2021-005063 Application 13/910,034 3 the first, second, third and fourth groove directions are all different from one another; generating, using the computer, a first simulated image of the grooved article as seen from the first viewing direction with illumination from the first illumination direction; generating, using the computer, a second simulated image of the grooved article as seen from a second viewing direction with illumination from a second illumination direction, wherein at least one of the first and second viewing directions and the first and second illumination directions are different from the others; and using the computer, outputting into the formatted file, the groove-direction information for the first, the second, the third, and the fourth surface portion, wherein the outputted groove direction information includes the data in the formatted file that is readable by the CNC machine to control the tool paths used to form the grooves into the plurality of surface portions to make the grooved article. REJECTION Claims 1-12 and 14-24 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a mathematical relationship without significantly more. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering the Appeal 2021-005063 Application 13/910,034 4 argued claims and each of Appellant’s arguments, we are persuaded of reversible error in the appealed rejections. Accordingly, we reverse the Examiner’s rejection on appeal essentially for the reasons set forth in the record by Appellant, with the following emphasis. Rejection 1 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted 35 U.S.C. §101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank lnt’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. Kappos, 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 Appeal 2021-005063 Application 13/910,034 5 mental processes (Gottschalk v. 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. 52, 267-68 (1854))); 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 mathematical formula.” Diehr, 450 U.S. at 187; 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 turn 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- Appeal 2021-005063 Application 13/910,034 6 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). “[Merely requiring] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO published revised guidance on the application of § 101 with regard to the first step of the Alice/Mayo test (i.e., Step 2A of the USPTO’s Subject Matter Eligibility Guidance as incorporated into M.P.E.P. § 2106). USPTO’s January 7, 2019, 2019 Revised Patent Subject Matter Eligibility Guidance (“Revised Guidance”). 84 Fed. Reg. 50 (Jan. 7, 2019). Thus, under Step 1 of the Guidance, we determine whether the claimed subject matter falls within the one of the four statutory categories: process, machine, manufacture, or composition of matter. Step 2A of the Guidance is two- pronged, under which we 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); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). See 84 Fed. Reg. at 54-55. 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: Appeal 2021-005063 Application 13/910,034 7 (3) adds a specific limitation beyond the judicial exception that is 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 84 Fed. Reg. at 56. We turn now to our analysis below. Guidance Step 1 Following the aforementioned Revised Guidance, initially, there is no dispute that claims 1-12 and 14-24 fall within one of the four statutory categories of invention under Step 1 of the Guidance. Accordingly, we turn next to Step 2A(1) of the Revised Guidance. Guidance Step 2A, Prong 1 Under Step 2A(1), we agree with the Examiner’s position that claim 1 recites a judicial exception in the form of a mathematical relationship between the relative brightness of different areas of an image to be reproduced and the CNC code used to make an arrangement of grooves which reproduce this image (independent claims 14 and 21 are similar in this regard). Final Act. 2-4. Appellant’s Specification, in paragraphs 147-150 describes the mathematical relationships involved. Thus, claim 1 recites a judicial exception in the form of mathematical concepts. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a “series of mathematical calculations based on selected information” are directed to abstract ideas). Appeal 2021-005063 Application 13/910,034 8 Guidance Step 2A, Prong 2 As a result, we next turn to Step 2A(2) of the Revised Guidance to determine whether the claims integrate the judicial exception into a practical application. Diehr, 450 U.S. at 187 (“A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.”). We refer to Appellants’ position as presented on pages 20-25 of the Appeal Brief, which we do not repeat herein, pertaining to Appellant’s stated position in this regard. The Examiner’s position is set forth on pages 3-4 of the Answer. Therein, the Examiner confuses Step 2A, Prong 2 as being Step 2B of the Revised Guidance. Appellant correctly points this out on pages 6-8 of the Reply Brief. Hence, the Examiner improperly condenses Step 2A, Prong 2 into a Step 2B analysis (Ans. 4-8), and, as a result, does not properly address these steps individually. Furthermore, we agree with Appellant (Appeal Br. 24-25) that claims 1-12 and 14-24 present a combined order of specific rules for generating groove angles for a grooved article, and creates information into a specific format that is then used to create the making of a grooved article (integration into a practical application), for the reasons provided by Appellant in the record. Appeal Br. 20-25. We agree with Appellant that the data usable to make the grooved article is a practical application. Appellant also correctly points out that the rejection fails to adequately address the practical application of two simulated images recited in the claims. Appeal Br. 25. Appeal 2021-005063 Application 13/910,034 9 In view of the above, we are persuaded by Appellant’s arguments and determine that the claim recitations integrate the judicial exception into a practical application, and, thus, determine that the claimed subject matter has been shown to be patent-eligible. We thus need not proceed to Step 2B of the Revised Guidance in making our determinations herein. In view of the above, we reverse Rejection 1. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-12, 14-24 101 Eligibility 1-12, 14-24 REVERSED