Elematic OyjDownload PDFPatent Trials and Appeals BoardMay 24, 20212020002740 (P.T.A.B. May. 24, 2021) Copy Citation 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. 14/704,026 05/05/2015 Jani EILOLA PI100403 2992 136012 7590 05/24/2021 Berggren LLP Leea S Somersalo 802 Lincoln ave Palmyra, NJ 08065 EXAMINER GRACE, KELSEY C ART UNIT PAPER NUMBER 1742 NOTIFICATION DATE DELIVERY MODE 05/24/2021 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): email@berggren-usa.com susanne.somersalo@berggren-usa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JANI EILOLA Appeal 2020-002740 Application 14/704,026 Technology Center 1700 Before CATHERINE Q. TIMM, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2020-002740 Application 14/704,026 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 5–8. See Non-Final Act. 2, 3, 5.2 Claims have been twice rejected.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER “The present disclosure relates to casting concrete products in molds with a circulating line casting process. More precisely the present disclosure relates to a method for casting concrete products utilizing a circulating line casting process comprising a plurality of mold tables movable between different workstations.” Spec. 1:7–10. The invention specifically “provides one solution for evening out the complexity of different molds and mold tables, and thus the required work at workstations of the circulating line casting process” which “enhances the efficiency of the casting process.” Id. at 2:19–22. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Elematic Oyj. Appeal Br. 3. 2 We refer to the Examiner’s Non-Final Office Action dated May 29, 2019 for the statements of rejections presented for review on appeal. See Appeal Br. 1. 3 The record before us shows that the Examiner issued respective Non-Final Rejections on March 27, 2017, February 1, 2018, November 2, 2018, and May 29, 2019 and respective Final Actions on September 21, 2017 and July 25, 2018. Appeal 2020-002740 Application 14/704,026 3 1. A method for casting and curing concrete products, in which concrete products are cast with a circulating line casting process where each of mold tables is transferred from one workstation to a next workstation of a plurality of workstations in a circulating line, wherein the method, performed by an automatic controlled system, comprises: determining complexity of each mold of a plurality of molds for the concrete products to be cast, wherein the complexity of the each mold is determined based at least on a number of sidewall elements used to form the each mold, whether one or more of openings to be formed in the each mold, whether at least one reinforcement is required for the each mold, whether one or more of steps are required for forming determined product surface types for the each mold, and further based on one or more factors that affect or are related to the complexity of the each mold; configuring, based on the determined complexity of the each mold of the plurality of molds, the mold tables each being configured with a variable number of molds selected from the plurality of molds, and each of all or of at least a portion of the configured mold tables having at least two molds with different complexities, so that all the configured mold tables have substantially equal total complexities for minimizing differences in assembling times on different workstations of the circulating line casting process between all the configured mold tables; and casting and curing corresponding molds of the plurality of molds using the configured mold tables in the circulating line casting process. Claims Appendix (Appeal Br. 22). REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Nussbaumer US 2014/0005821 A1 Jan. 2, 2014 Appeal 2020-002740 Application 14/704,026 4 REJECTIONS The Examiner maintains the following rejections Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 5–8 101 Eligibility 1, 5–8 112 Indefiniteness 1, 5–8 103 Nussbaumer OPINION Indefiniteness4 The Examiner determines that the claim term “complexity” used in claim 1 “is a relative term which renders the claim indefinite.” Non-Final Act. 3. The Examiner explains that, although the Specification provides a definition of the term “complexity,” neither the claim language nor the Specification discloses “how the idea of ‘complexity’ is quantified in a way to be able to minimize the difference between ‘complexities’” as required in the claim. Id. at 4. Appellant acknowledges that the recited “complexity” is not quantified but argues that a skilled artisan would nonetheless understand the scope of the claim when read in light of the Specification. Appeal Br. 12–13. Appellant argues that claim 1 recites that the complexity of the each mold is determined based at least on a number of sidewall elements used to form the each mold, whether one or more of openings to be formed in the each mold, whether at least one reinforcement is required for the each mold, whether one or more of steps are required for forming determined product surface types for the each mold, 4 Appellant argues against the indefiniteness rejection of claims 1 and 5–8 as a group, with claim 1 as the representative claim. See Appeal Br. Br. 12–13. These claims stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-002740 Application 14/704,026 5 and further based on one or more factors that affect or are related to the complexity of the each mold which, according to Appellant, is “a detailed disclosure [which] would provide to another person skilled in the art plenty of information and an ample opportunity to practice the invention.” Appeal Br. 12. This first inquiry therefore is merely to determine whether the claims do, in fact, set out and circumscribe a particular area with a reasonable degree of precision and particularity. It is here where the definiteness of the language employed must be analyzed— not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). “The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). When “faced with a ‘purely subjective’ claim phrase, we must look to the written description for guidance.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). The Specification in this case discloses: The complexity of a mold in this context is defined by the amount of sidewall elements used in forming the mold on the mold table, amount of openings, such as windows and doorways for example, to be formed in the mold, required reinforcements, installation of required electric cable pipes, required steps for forming determined product surface type, use of retarder, etc. In other words, all of the required steps of forming the mold on a mold table prior to casting, and may even include the casting phase. Appeal 2020-002740 Application 14/704,026 6 Spec. 3:3–9 (cited in Appeal Br. 5 as providing written descriptive support). The Specification, however, discloses that the term “complexity” may be defined by no more than “the amount of sidewall elements used for forming the mold on a mold table and by the amount of openings in the mold, as well as the required reinforcements and other works steps for forming and equipping the mold prior to casting.” Id. at 3:17–21. The Specification additionally discloses that “previously collected data relating to working times on different workstations of the circulating line casting process for different molds and mold tables may be used for defining the complexity of a mold and mold table.” Id. at 3:22–25. According to the Specification, Figures 2A through 2C “illustrate[] the principle of an embodiment of the present invention” but the accompanying text of the Specification describes no more than “more complex molds” and “simpler ones” without further detail. Spec. 8:8–11 (cited in Appeal Br. 12). In describing this particular embodiment, the Specification merely states that “the complexity definition is restricted to the formation of the molds on the mold table” although “[o]ther factors affecting the complexity of the molds, such as reinforcements, etc. may also be used for the definition of the complexity of the molds.” Id. at 8:17–21. These portions of the Specification disclose various factors that may affect “complexity.” Appellant, however, does not cite to any disclosure – nor do we discern any – that specifies how these factors are used to determine “complexity” or what constitutes a complex mold as opposed to a simple one. Although Appellant’s argument alludes to “a complexity coefficient” (Appeal Br. 13), the Specification does not describe such a coefficient and only discloses that molds can be “complex” and “simpler” Appeal 2020-002740 Application 14/704,026 7 without further detail as to what “complex” and “simpler” means in the context of concrete molds or how the various factors are used (e.g., whether the factors are weighed) to determine the complexity of a mold. Spec. 4:4–5. Because the scope of claim 1 (in particular the claim term “complexity of each mold”) is ambiguous, we sustain the indefiniteness rejection. See McClain v. Ortmayer, 141 U.S. 419, 421 (1891) (“The object of the patent law in requiring the patentee to ‘particularly point out and distinctly claim the part, improvement or combination which he claims as his invention or discovery’ is not only to secure to him all to which he is entitled, but to apprise the public of what is still open to them.”). Subject Matter Eligibility Legal Framework 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 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, our inquiry focuses on 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) Appeal 2020-002740 Application 14/704,026 8 (“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 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. 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 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 176; 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 Appeal 2020-002740 Application 14/704,026 9 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- eligible application.” Alice, 573 U.S. at 221 (citations 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. (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. The Office published revised guidance on the application of § 101 in early 2019. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance (“Revised Guidance”), 84 Fed. Reg. 50 (Jan. 7, 2019). Under that guidance, 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); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim recites a judicial exception and does not integrate that exception into a practical application, do we then look 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 Appeal 2020-002740 Application 14/704,026 10 (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 generally Revised Guidance, 84 Fed. Reg. at 52–56. Revised Step 2A, Prong One–Recites a Judicial Exception Applying the guidance set forth in the Revised Guidance, we conclude that claims 1 and 5–8 do not recite patent-eligible subject matter. The Revised Guidance instructs us first to determine whether each claim recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The Revised Guidance identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. Id. at 52. The Examiner finds that claim 1 recites “the abstract idea of determining complexity and configuring based on this determination [which] can be done in one’s mind or with paper and pencil.” Non-Final Act. 3; Ans. 4. The Examiner finds that both the determining and configuring steps recite mental processes. Ans. 11. Appellant, on the other hand, argues that “[i]n the final analysis it may not be that important how the calculations were made, e.g., by computer, or with paper and pencil” but rather what is “[m]ore important is a novelty and originality (non-obviousness) of the ideas and/or used algorithms behind those calculations.” Appeal Br. 10–11 (underlining and bolding removed). Given that Appellant in fact acknowledges that claim 1 recites certain “calculations” based on “algorithms,” (id.), we agree that claim 1 recites an abstract idea (i.e., a mental process) as the Examiner finds. Claim 1 recites a method having a step of “determining complexity of each mold of a plurality of molds for the concrete products to be cast, Appeal 2020-002740 Application 14/704,026 11 wherein the complexity of the each mold is determined based on” a number of factors listed in the claim and disclosed in the Specification. Spec. 3:3–9, 4:11–19. The Specification describes the complexity as no more than “simple, “more complex,” and “little more complex.” Id. at 8:22–29. This “determining” step encompasses a mental process of subjectively assessing (e.g., in a person’s opinion) if a mold is complex or simple. Claim 1 also recites a step of “configuring, based on the determined complexity . . . , the mold tables . . . so that all the configured mold tables have substantially equal total complexities for minimizing differences in assembling times on different workstations of the circulating line casting process between all the configured mold tables.” The Specification describes a mold table configured to contain “one simple mold” and “one more complex mold,” a mold table configured to contain “one more complex mold” and “one simple mold,” and a mold table configured to contain “two simple molds and one little more complex L-shaped mold.” Spec. 8:22–27. As with the “determining” step, this “configuring” step also encompasses a mental process of subjectively assessing (e.g., in a person’s opinion) if a simple mold is paired with a complex mold on a mold table. Revised Step 2A, Prong Two – Practical Application Having determined that claims 1 and 5–8 recite an abstract idea that is a mental process, we next look to determine whether the claims recite “additional elements that integrate the judicial exception into a practical application.” MPEP § 2106.05(a)–(c), (e)–(h); Revised Guidance, 84 F.3d at 53–54. Integration into a practical application requires an additional element or a combination of additional elements in the claim that “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the Appeal 2020-002740 Application 14/704,026 12 judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.” Revised Guidance, 84 Fed. Reg. at 53–54; see also id. at 55 (setting forth exemplary considerations indicative that an additional element or combination of elements may have integrated the judicial exception into a practical application). Here, the Examiner finds that the additional elements claims 1 and 5– 8 recite do not integrate the judicial exception into a practical application. Ans. 11. The only step additional to the “determining” and “configuring” steps is the “casting step” which is a post-solution activity after the subjective assessment of complexity. “The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula.” Flook, 437 U.S. at 590; see also Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328–29 (Fed. Cir. 2017) (the use of a well-known XML tag to form an index was deemed token extra-solution activity). The cost-saving production of an image does not integrate the abstract idea recited in the claims into a practical application. See Revised Guidance, 84 Fed. Reg. at 55 (setting forth examples in which a judicial exception has not been integrated into a practical application) Moreover, the claims do not recite, and the Specification does not describe, an improvement to the functioning of a computer, or to any other technology or technical field such as the concrete manufacturing industry. Appeal 2020-002740 Application 14/704,026 13 Step 2 B–Inventive Concept Because we determine that claims 1 and 5–8 recite an abstract idea and they do not include additional elements that integrate the abstract idea into a practical application, we look to whether each claim provides an inventive concept, i.e., adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. Revised Guidance, 84 Fed. Reg. at 56. There is, however, none other than the abstract idea itself (i.e., subjectively assessing complexity) followed by a post-solution activity in the claims. See Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (holding that “the ‘inventive concept’ cannot be the abstract idea itself”). Accordingly, we conclude that method claims 1 and 5–8 are directed to patent ineligible subject matter under 35 U.S.C. § 101. Claims 1 and 5–8 are directed to the abstract idea of a mental process and do not provide an inventive concept. The post-solution “casting” step does not transform the otherwise pre-empted mental process into patent eligible subject matter. Alice, 573 U.S. at 216 (“We have described the concern that drives this exclusionary principle as one of pre-emption.”) (citing Bilski v. Kappos, 561 U.S. 593, 612 (2010) (“[U]pholding the patent ‘would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.’”)). We therefore sustain the rejection under section 101. Obviousness Because the scope of claims 1 and 5–8 is indefinite for reasons we provide supra, we are unable to determine the propriety of the prior art rejection under 35 U.S.C. § 103 of these claims. The review of the prior art Appeal 2020-002740 Application 14/704,026 14 rejection would require considerable speculation as to the scope of the claims. Such speculation would not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962) ("[W]e do not think a rejection under 35 U.S.C. § 103 should be based on such speculations and assumptions."). We, therefore, procedurally reverse the 35 U.S.C. § 103(a) rejection. We emphasize that this is a technical reversal of the rejection under 35 U.S.C. § 103(a), and not a reversal based upon the merits of the rejection. CONCLUSION The Examiner’s indefiniteness rejection of all claims is affirmed. The Examiner’s patent eligibility rejection of all claims is affirmed. The Examiner’s obviousness rejection of all claims is procedurally reversed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5–8 101 Eligibility 1, 5–8 1, 5–8 112 Indefiniteness 1, 5–8 1, 5–8 103 Nussbaumer 1, 5–8 Overall Outcome 1, 5–8 Appeal 2020-002740 Application 14/704,026 15 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation