Elematic Oyj

Patent Trials and Appeals Board

May 24, 2021

2020002740 (P.T.A.B. May. 24, 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.
14/704,026 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

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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.
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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

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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).
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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.

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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”
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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)
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(“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
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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
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(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,
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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
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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.
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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
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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

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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