Debasish Banerjee et al.

Patent Trials and Appeals Board

Mar 25, 2020

13117286 - (D) (P.T.A.B. Mar. 25, 2020)

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.
13/117,286 05/27/2011 Debasish Banerjee TTC-97102/08MAH 7315
63796 7590 03/25/2020
DINSMORE & SHOHL LLP
900 Wilshire Drive
Suite 300
TROY, MI 48084
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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):
MichiganPatTM@dinsmore.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEBASISH BANERJEE, MINJUAN ZHANG, and
TAKUJI KITA
____________

Appeal 2018-007294
Application 13/117,286
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, JEFFREY R. SNAY, and
BRIAN D. RANGE, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3 and 6–9. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Toyota Motor Engineering & Manufacturing
North America, Inc. and Toyota Motor Corporation as the real parties in
interest. Appeal Br. 2.
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BACKGROUND
The subject matter on appeal relates to the manufacture of
thermoelectric materials. Spec. ¶¶ 1, 10. Claim 1 is the sole independent
claim:
1. A process for manufacturing a thermoelectric material
having a plurality of grains and grain boundaries, the process
comprising:
determining a material composition to be investigated for
the thermoelectric material;
providing a range of values of matrix grain size between
5 and 100 nanometers (nm) and a range of values of matrix
grain boundary barrier height between 10 and 300 milli-electron
volts (meV);
calculating a plurality of Seebeck coefficients, electrical
resistivity values and thermal conductivity values for the
material composition as a function of the range of values of
matrix grain size between 5 and 100 nm and the range of values
of grain boundary barrier height between 10 and 300 meV;
calculating a range of figure of merit values for the
material composition as a function of the calculated Seebeck
coefficients, calculated electrical resistivity values and
calculated thermal conductivity values, the calculated range of
figure of merit values being a function of the range of values of
matrix grain size between 5 and 100 nm and the range of values
of matrix grain boundary barrier height between 10 and 300
meV;
selecting a figure of merit value from the calculated
range of figure of merit values, the selected figure of merit
value corresponding to a value of matrix grain size between 5
and 100 nm and a value of matrix grain boundary barrier height
between 10 and 300 meV;
providing powders having the investigated material
composition, the powders having a mean diameter less than or
generally equal to the value of matrix grain size that
corresponds to the selected figure of merit value; and
consolidating the powders and manufacturing a
thermoelectric material having the investigated material
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composition, a matrix grain size generally equal to the value of
matrix grain size that corresponds to the selected figure of merit
and a matrix grain boundary barrier height generally equal to
the value of matrix grain boundary barrier height that
corresponds to the selected figure of merit.

REJECTIONS2
I. Claims 1–3 and 6–9 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
II. Claims 1–3 and 6–9 stand rejected under 35 U.S.C. § 112, first
paragraph, for lack of adequate written description.
III. Claims 1–3 and 6–9 stand rejected under 35 U.S.C. § 112, first
paragraph, for lack of enablement.
IV. Claims 1–3 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Murai.3
V. Claims 7–9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Murai and Kucherov.4

DISCUSSION
Rejection I: subject matter eligibility
The Examiner rejects claims 1–3 and 6–9 under 35 U.S.C. § 101 as
being directed to a judicial exception—namely, an abstract idea without
significantly more. Ans. 3–5. Appellant argues that the recited steps
regarding providing and consolidating specified powders to form a

2 The Examiner’s rejection under 35 U.S.C. § 101 is set forth in the Answer
as a new ground. Ans. 3–4. Prior rejections under 35 U.S.C. §§ 102 and
112, second paragraph, are withdrawn. Id. at 5.
3 Murai et al., WO 2010/041146 A2, published Apr. 15, 2010.
4 Kucherov et al., US 2003/0033818 A1, published Feb. 20, 2003.
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thermoelectric material ensures that the claim as a whole is directed to a
patent-eligible physical process and not an abstract idea. Appeal Br. 12.
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.
A. Section 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 U.S. Supreme Court 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 Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. 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
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (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 waterproof 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
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 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. (citation omitted)
(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 part
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
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more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).5 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Consistent with the 2019 Revised Guidance and the October 2019
Update, we first 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) (“Step 2A, Prong One”); and

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
We have considered the Examiner’s findings and the Appellant’s
arguments in light of the controlling case-law and Guidance, and we are not
persuaded the Examiner erred in rejecting the claims under 35 U.S.C. § 101.

Guidance Step 2A, Prong 2
Under Step 2A, Prong 2, of the Guidance, a claim is not directed to
ineligible subject matter if elements of the claim integrate a purported

6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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exception into a practical application. See MPEP § 2106.05(a)–(c), (e)–(h).
Appellant argues that the recitations, “providing powders,” and
“consolidating the powders and manufacturing a thermoelectric material”
integrate any purported abstract idea into a practical application. See Appeal
Br. 11–13. 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, LLC v.
Microsoft Corp., 822 F.3d 1327, 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)).
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 providing specified powders that meet determined criteria and
requires consolidating those powders to manufacture a thermoelectric
material. Rather, we conclude that the character of the claims as a whole is
directed to an improved process for the manufacture of thermoelectric
material. The Specification supports our conclusion. See, e.g., Spec. ¶¶ 9–
10 (explaining that the described process newly enables manufacture of
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thermoelectric materials exhibiting high ZT values based on consideration of
grain-related properties).
Because we find the claims integrate any recited mental steps into a
practical application involving a physical manufacturing process, and,
therefore are not directed to an abstract idea, the Examiner’s rejection under
35 U.S.C. § 101 is not sustained.

Rejection II: written description
The Examiner finds that the recited ranges of matrix grain size and
grain boundary height, the step of calculating Seebeck coefficients, electrical
resistivity, and thermal conductivity, and the steps of selecting a figure of
merit value, providing powders, and manufacturing a thermoelectric material
are not found in the Specification. Final Act. 5–7. The Examiner also finds
the Specification does not provide formulas or expressions for the
calculation of figure of merit values. Id. at 6.
Appellant points to particular passages in the Specification where
each of the above-listed elements are described. Appeal Br. 14–19. For
example, Appellant points to paragraph 36 which identifies the recited
ranges for grains size and barrier height. Id. at 14. Appellant also points to
paragraphs 40, 42, and 46 which identify mathematical expressions for
determination of Seebeck coefficient, electrical resistivity, thermal
conductivity, and figure of merit. Id. at 17–18.
In response to Appellant’s identification of express written support in
the Specification, the Examiner appears to focus on figures in the
Specification and contends that the recited calculations over the ranges
recited in claim 1 are not shown in the figures. Ans. 6–8.
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In rejecting a claim under the first paragraph of 35 U.S.C. § 112 for
lack of adequate descriptive support, it is incumbent on the Examiner to
establish that the originally filed disclosure would not have reasonably
conveyed to one having ordinary skill in the art that Appellant had
possession of the now claimed subject matter. Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Adequate
description under the first paragraphs of 35 U.S.C. § 112 does not require
literal support for the claimed invention. In re Herschler, 591 F.2d 693, 701
(CCPA 1979); In re Edwards, 568 F.2d 1349, 1351–52 (CCPA 1978); In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976). In addition, the written
description requirement does not demand either examples or an actual
reduction to practice. Ariad Pharms., 598 F.3d at 1352.
Here, the Examiner does not dispute Appellant’s identification
passages in the Specification that provide the same language as is recited in
claim 1. Rather, the Examiner appears to take issue with whether
Appellant’s Specification provides examples depicted in the figures that
cover the full range of grain-related property values recited in the claim. As
noted, neither examples nor an actual reduction to practice is required.
On this record, we are persuaded the Examiner has not met the initial
burden of articulating why the claims on appeal are not described in a
manner sufficient to convey to one having ordinary skill in the art that
Appellant had possession of the now claimed subject matter.
Accordingly, the Examiner’s rejection for lack of written description
is not sustained.

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Rejection III: 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 the
finding that the Specification “does not reasonably provide enablement for
calculating a plurality of Seebeck coefficients, electrical resistivity values
and thermal conductivity values.” Final Act. 7. Appellant contends that all
of the foregoing calculations are described in paragraphs 40–46 of the
Specification. Appeal Br. 20–21. The Examiner responds that “the
equations provided in the specification are not enough.” Ans. 9.
Absent sufficient articulated basis for challenging Appellant’s
mathematical expressions regarding the recited material properties, the
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Examiner’s finding that the recited calculations are not enabled is
conclusory and insufficient to meet the burden of explaining why the scope
of any claim on appeal is not adequately enabled to one of ordinary skill in
the art. Accordingly, the Examiner’s rejection for lack of enablement is not
sustained.

Rejections IV and V: obviousness
Each of the Examiner’s obviousness determinations is premised on a
finding that Murai discloses the same materials as are described in the
Specification and, on that basis, any thermoelectric material manufactured
from Murai’s materials would have exhibited a grain boundary barrier height
within the recited range. Final Act. 12, 15. Appellant argues, inter alia, that
grain boundary barrier height of a thermoelectric material is affected by
doping and/or altering a surface of nanoparticles used in manufacturing the
material. Appeal Br. 31, citing Spec. ¶ 12. The Examiner similarly
acknowledges that grain boundary barrier height can be impacted by more
than the compositional makeup, including doping or the formation of
barriers in the form of Shottky barriers or semiconductor heterojunction
barriers. See Final Act. 15. Because the Examiner does not identify any
disclosure in Murai regarding conditions, which the Examiner admits would
have impacted at least grain boundary barrier height, including doping and
surface alteration, we are persuaded that the Examiner’s finding of an
implicit grain boundary barrier height within the recited range in any
thermoelectric material disclosed in Murai is not supported by a
preponderance of the evidence.
Accordingly, the Examiner’s obviousness rejections are not sustained.
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CONCLUSION
The Examiner’s decision rejecting claims 1–3 and 6–9 is reversed.

In summary:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6–9 101 1–3, 6–9
1–3, 6–9 112 1–3, 6–9
1–3, 6 103 Murai 1–3, 6
7–9 103 Murai, Kucherov 7–9
Overall
Outcome
1–3, 6–9

REVERSED