Ex Parte DesLauriers et al

Patent Trials and Appeals Board

Apr 30, 2019

13660750 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/660,750 10/25/2012
37814 7590 05/01/2019
CHEVRON PHILLIPS CHEMICAL COMPANY
5601 Granite Parkway, Suite 500
PLANO, TX 75024
Paul J. DesLauriers
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
211457US02 (4081-18002) 9553
EXAMINER
AIELLO, JEFFREY P
ART UNIT PAPER NUMBER
2864
MAIL DATE DELIVERY MODE
05/01/2019 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 PAUL J. DESLAURIERS, YONGWOO INN, QING YANG,
ASHISH M. SUKHADIA, and DAVID C. ROHLFING
Appeal2017-008898
Application 13/660,750
Technology Center 2800
Before DONNA M. PRAISS, WESLEY B. DERRICK, and
JANEE. INGLESE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellant2 seeks review under 35 U.S.C. § 134(a) from the
Examiner's maintained rejection of claims 1-20 under 35 U.S.C. § 101. 3
We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
1 We refer to the Specification filed October 25, 2012 ("Spec."), the Final
Office Action mailed July 15, 2016 ("Final Act."), the Appeal Brief filed
December 14, 2016 ("App. Br."), the Examiner's Answer dated April 5,
2017 ("Ans."), and the Reply Brief filed May 31, 2017 ("Reply Br.").
2 The Appellant, Chevron Phillips Chemical Company LP, is also identified
as the real party in interest. App. Br. 3.
3 Previously pending rejections of claims 1-20 under 35 U.S.C. § 103 have
been withdrawn. Ans. 3.
Appeal2017-008898
Application 13/660,750
CLAIMED SUBJECT MATTER
Appellant's invention relates to a computer implemented method for
improving processing of polyethylene resins and systems for implementing
the method. Spec. ,r,r 5-8. Claims 1, 5, 15, and 16 are independent. Claims
1 and 5 are directed to the system. Claims 15 and 16 are directed to the
computer implemented method.
Claims 1 and 15, reproduced below with added emphasis and notation
identifying steps of the computer implemented method, are illustrative of
claims directed the system and the method, respectively.
1. A system for improving processing of polyethylene
resms, compnsmg:
a processor;
a memory:
an output device; and
an analysis component stored in the memory, that when
executed on the processor, configures the
processor to:
[ step 1] receive a shear stress as a function of
shear rate for a plurality of multimodal
metallocene-catalyzed polyethylene samples,
wherein the shear stress as a function of the
shear rate is measured using capillary
rheometry;
[ step 2] determine values for a magnitude of slip-
stick, a stress for smooth to matte transition,
and a shear rate for smooth to matte
transition for each of the plurality of
multimodal metallocene-catalyzed
polyethylene samples based on the shear
stress and the shear rate measured from
capillary rheometry;
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[step 3] identify individual multimodal
metallocene-catalyzed polyethylene resins
from the plurality of multimodal
metallocene-catalyzed polyethylene samples
having a reduced tendency to melt fracture
characterized by a magnitude of slip-stick
greater than about 3 00 psi, a stress for
smooth to matte transition greater than
about 90 kPa, and a shear rate for smooth to
matte transition greater than about 10 s-1;
and
[ step 4] output an identification of the individual
multimodal metallocene-catalyzed
polyethylene resins to the output device.
15. A computer implemented method for improving
processing of polyethylene resins, comprising:
[ step 1] receiving by a processor, a shear stress as a
function of shear rate for a plurality of multimodal
metallocene-catalyzed polyethylene samples,
wherein the shear stress as a function of the shear
rate is measured using capillary rheometry;
[step 2] determining, by the processor, values for a slip-
stick, a stress for smooth to matte transition, and a
shear rate for smooth to matte transition for each
of the plurality of multimodal metallocene-
catalyzed polyethylene samples based on the shear
stress and the shear rate;
[step 3] identifying, by the processor, individual
multimodal metallocene-catalyzed polyethylene
resins from the plurality of multimodal
metallocene-catalyzed polyethylene samples
having a reduced tendency to melt fracture
characterized by a magnitude of slip-stick greater
than about 3 00 psi, a stress for smooth to matte
transition greater than about 90 kPa of stress, and
a shear rate for smooth to matte transition greater
than about 10 s-1; and
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[ step 4] outputting, by the processor, an identification of
the individual multimodal metallocene-catalyzed
polyethylene resins to an output device.
App. Br. (Claims App'x), 20, 23-24.
DISCUSSION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072 (BP AI) (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."). Upon consideration of the evidence and
opposing contentions of Appellant and the Examiner, we are not persuaded
that the Examiner erred in rejecting the claims as being directed to non-
eligible subject matter. We add the following.
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 § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. See, e.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216
(2014) (citation omitted).
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
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 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
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 (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
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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 tum 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 ( 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).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
binding precedent regarding§ 101 to claims before the Office. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Guidance"). The Guidance directs looking first to determine 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 (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Guidance direct looking to
determine whether the claim:
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(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 Guidance, 84 Fed. Reg. at 56 (Step 2B).
Here, referring to the independent claims, the Examiner determines
that the claims are directed to an abstract idea, that is, "a series [ ofJ
mathematical/algorithmic and/or mathematical formula and/or data
processing/analysis steps which correspond[] to concepts identified as an
abstract idea, or ideas, in the form of a mathematical formula similar to those
found to be non-patent eligible." Ans. 6-7. The Examiner also determines
that "the recited method steps as an ordered combination, do not amount to
significantly more than the abstract idea." Id. at 7. The Examiner also
determines that the additional recited elements, including "a processor," "a
memory," and "an output device," "comprise generic/conventional data
gathering and data processing and generic/ conventional computer/ computing
components." Id. at7 (citing Spec. i-fi-f97, 99,102,108,110,117,119). The
Examiner further maintains that the "[g]eneric computer components [are]
recited as performing generic computer functions that are well-understood,
routine and conventional activities" and that, as such, "amount to no more
than implementing the abstract idea with a computerized system." Id. at 8.
Appellant contends that the claims are directed to patent eligible
subject matter. App. Br. 9--15. Appellant argues that the claims: 1) include
meaningful specific limitations other than what is well-known, understood,
and routine in the field; 2) are confined to a particular useful application; and
3) improve another technology or technical field. Id. Appellant restates and
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amplifies these same general arguments in the Reply Brief while responding
to the Examiner's Answer. Reply Br. 4--20.
In applying step (1) of the Guidance to the claims on appeal, we
determine that the independent claims recite an abstract idea in the recited
steps 1--4. These steps, individually and collectively, recite mental processes
that can be performed by a human with pen and paper. Step I-receiving
data for various samples-is a step of observing relevant data, an
observation, which is a mental process. Step 2----determining values for
certain parameters using the relevant data-is a step of evaluation or
judgment, which is a mental process. Step 3-identifying resins having
suitable properties on the basis that calculated parameter values of sufficient
magnitude are correlated with suitable properties-is, likewise, a step of
evaluation or judgment, which is a mental process. Step 4-----outputting an
identification of resins identified as having the suitable properties on the
basis of the correlation-is part of formulating an opinion, specifically,
expressing the identities of resins in a manner that can be comprehended. In
sum, thus, steps 1--4 recite a mental process that can be conducted by a
human using a pen and paper. 4 As such, the claims recite a patent-ineligible
abstract idea. Guidance at 52, n.14.; see also Mayo, 566 U.S. at 71
("[M]ental processes[] ... are not patentable, as they are the basic tools of
scientific and technological work"); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1139 (Fed. Cir. 2016) (holding that claims to the
mental process of "translating a functional description ... into a hardware
4 A claim covering performance in the mind, but for the recitation of generic
computer components, is still a mental process unless it cannot practically be
performed in the mind. Guidance at 52, n.14 (and cases cited therein).
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component description" are directed to an abstract idea, because the claims
"read on an individual performing the claimed steps mentally or with pencil
and paper").
Appellant's criticism of the rejection grounded on the Examiner's
similar determination that the "recited method steps comprise a series [ of]
mathematical/algorithmic and/or mathematical formula and/or data
processing/ analysis steps which correspond to concepts identified as an
abstract idea" (Ans. 6) similarly falls short as to the Guidance because,
under its broadest reasonable interpretation, nothing forecloses the
performance of these steps by a human, mentally or with pen and paper
( Guidance at 52, n.14; see also Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016); Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016); Versata Dev.
Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1373 (Fed. Cir. 2011)).
In applying step (2) of the Guidance, we determine that the
independent claims do not integrate the recited judicial exception into a
practical application because the claims do not apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
exception. Guidance at 54--55; see also MPEP § 2106.05(a}-(c), (e}-(h).
Claim 1, directed to a system for improving processing of polyethylene
resins, recites additional elements beyond the steps that constitute the
identified abstract idea, namely, the additional elements of a processor, a
memory, an output device, and an analysis component stored in the memory.
As set forth in the Specification, the analysis component is executed on the
processor so as to configure the processor to carry out the recited method,
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that is, the analysis component is the computer program or executable
instructions for carrying out the method. See, e.g., Spec. ,r,r 5, 6, 8, 146.
Claim 15, directed to a computer implemented method for improving
processing of polyethylene resins, similarly relies on a computer. The
Specification identifies a computer system 780, which includes a processor
782 in communication with memory devices including secondary storage
784, read only memory (ROM) 786, random access memory (RAM) 788,
input/output (I/0) devices 790, and network connectivity devices 792 as
suitable for implementing the disclosed method (Spec. ,r 107, Fig. 10), and
that "programming and/or loading executable instructions onto the computer
system 780 ... transform[ s] the computer system 780 in part into a
particular machine or apparatus" (id. ,II 08). These additional components
are not, however, distinguishable from a general purpose computer system
and do not integrate the exception into a practical application. We note in
particular that there is no recited action or step utilizing the identified resins,
or their identity, in an effort to improve processing of polyethylene resins,
but, rather, there is merely a general linking of the judicial exception to the
technological environment of polyethylene resin processing. In this respect,
the instant claims are like those in Flook, in which the method consisted of
three steps, measuring a present value of a process variable, using an
algorithm to calculate an updated alarm-limit value, and adjusting the alarm
limit to the updated value for "process variable[ s] involved in a process
comprising the catalytic chemical conversion of hydrocarbons." Flook, 437
U.S. at 584, 586, 588-90; see also Guidance at 55, n.32.
Having determined that the claims are directed to an abstract idea that
is not integrated into a practical application, we determine whether the
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additional elements recited in the claim provide "significantly more" than
the recited judicial exception or combination of elements such that the claim
is rendered patent eligible. See, e.g., Diehr, 450 U.S. at 187; see also
Guidance at 56. In accordance with controlling precedent, as reflected in
Step 2B of the Guidance, we determine whether the recited additional
element[ s] "add[] a specific limitation beyond the judicial exception that is
not 'well-understood, routine, conventional' in the field" or "simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception."
Guidance at 56 (Step 2B).
Turning first to the recitation "improving processing of polyethylene
resins" in the independent claims, it lacks any specificity as to what is done
and is at such a high level of generality that it falls short of providing
significantly more than the judicial exception. While the identity of the
identified individual multimodal metallocene-catalyzed polyethylene resins
might be useful information, the claims fail to recite any action or step
beyond the abstract idea itself with any specificity as to "improving
processing of polyethylene resins." The second step of the Alice/Mayo
framework is a search for "an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355.
As to the recited processor, memory, output device, and analysis
component stored in the memory (see, e.g., claim 1 ), these amount to no
more than a general purpose computer on which implementing an abstract
idea remains a patent ineligible abstract idea. See, e.g., Benson, 409 U.S. at
69. In particular, the function of these elements amounts to no more than
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performing generic computer functions, i.e., receiving data, performing
calculations, storing and retrieving information in memory, and outputting
data, merely used to implement the abstract idea (mental processes), such
that the function is merely well-understood, routine, conventional activity.
See, e.g., MPEP § 2106.05( d); Berkheimer Memo. 5 Moreover, as discussed
above, the Specification supports that these elements in combination amount
to no more than a general purpose computer. See, e.g., Spec. ,r,r 107-108,
Fig. 10 ( discussing "computer system 780").
As to the recited source of the received data, "measured using
capillary rheometry" ( claims 1, 15) or "measured from capillary rheometry"
( claim 1 ), even if it were not subsumed within the abstract idea itself, it does
not suffice as significantly more. The Specification identifies the use of a
"dual-bore capillary rheometer (Rosand RH-7, Malvern)" (Spec. ,r 4 7),
which establishes the device to be well-understood, routine, and
conventional (see, e.g., Berkheimer Memo, III.A. I ("A specification
demonstrates the well-understood, routine, conventional nature of additional
elements when it describes the additional elements ... as a commercially
available product.")).
Having thus accounted for all additional elements recited, over the
recited judicial exception, we determine that the claims do not provide
"significantly more" than the recited judicial exception. Accordingly, we
determine that the claims are not directed to patent eligible subject matter.
5 Memorandum - Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.), April 19, 2018.
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On this record, Appellant's arguments to the contrary, that the claims
are directed to patent eligible subject matter, are not well-founded. App. Br.
9-15; Reply Br. 4--20.
Appellant argues that the claims include meaningful specific
limitations other than what is well-known, understood, and routine in the
field (App. Br. 10-12) and that the Examiner has failed to establish that the
claim features are well-understood, routine, and conventional (id. at 12;
Reply Br. 5-13). Appellant further argues that the claims are not directed to
an abstract idea, but instead to a specific asserted improvement in processing
of polyethylene resins. Reply Br. 11-12 (maintaining that the claims are
akin to the claims in McRO, Inc. v. Bandai NAMCO Games America, Inc.,
837 F.3d 1299 (Fed. Cir. 2016)),
Appellant's arguments as to what is well-understood, routine, and
conventional focus on the "identification of polyethylenes" via the specific
thresholds for the magnitude of slip-stick and for both the stress and shear
rate for smooth to matte transition, and that the relevant claim limitations are
not established to be well-understood, routine, and conventional. App. Br.
10-12; Reply Br. 9.
Appellant's arguments are not persuasive that the claims are directed
to eligible subject matter because they address the recited judicial exception
itself, rather than any additional element. The analysis in the second step of
the Alice/ Mayo framework is a search for "an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice,
134 S. Ct. at 2355. Even if novel, judicial exceptions are patent ineligible
absent further elements amounting to significantly more that transforms
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them into eligible subject matter. Flook, 437 U.S. at 591-92 ("[T]he novelty
of the mathematical algorithm is not a determining factor at all."); Ass 'n
Mol. Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)
("Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry."); Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
1369, 1376 (Fed. Cir. 2016) ("[A] claim directed to a newly discovered law
of nature (or natural phenomenon or abstract idea) cannot rely on the novelty
of that discovery for the inventive concept necessary for patent eligibility.").
The relied upon steps Appellant contends are not conventional do not,
accordingly, transform the ineligible subject matter, because they are not
something more than, but are, rather, part of the ineligible concept.
As to recited elements that are in addition to the abstract idea, rather
than part of the abstract idea itself, as discussed above, Appellant fails to
offer any cogent argument that these were not well-understood, routine, and
conventional.
As to the argument that the claims are not directed to an abstract idea,
first raised in the Reply Brief (Reply Br. 11-13 ( citing McRO), we find the
argument untimely and deem it waived as there is no good reason offered
why it could not have been raised earlier in the Appeal Brief. 6 3 7 C.F .R.
§ 4I.41(b)(2); cf McBride v. Merrell Dow and Pharms., Inc., 800 F.2d
1208, 1211 (D.C. Cir. 1986) (internal citations omitted) ("Considering an
argument advanced for the first time in a reply brief ... is not only unfair to
6 While Appellant cites McRO in the Appeal Brief, it is relied on as support
for Appellant's position that the Examiner failed to establish that any of the
elements are well-understood, routine, and conventional, not for the position
that the claims do not recite an abstract idea. App. Br. 12.
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an appellee but also entails the risk of an improvident or ill-advised opinion
on the legal issues tendered.").
Appellant contends that the claims are confined to a particular useful
application. App. Br. 13; Reply Br. 13-18. Appellant argues that the
Examiner addresses the claims at a high level of abstraction, failing to
appreciate that the claims are confined to a particular useful application.
App. Br. 13. Appellant relies on Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1337 (Fed. Cir. 2016), citing slip opinion at 14, as support for its
position. App. Br. 13. Appellant also argue that the claims recite significant
post-solution activity that meaningfully limits the claims. Reply Br. 15-18.
Appellant's reliance on Enfzsh is not well-founded. For claims
directed to computer software, the issue is whether "the focus of the claims
is on [a] 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." Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1335-36 (Fed. Cir. 2016). The claims in Enfzsh were determined to be
directed to a "self-referential table for a computer database" that operated
differently from conventional databases and improved the computer's
function. Enfzsh, 822 F.3d at 1337. Thus, in addressing the claims at a high
level of abstraction, the district court ignored the improvement in the
computer's function. Id. Here, in contrast, the abstract idea is merely
implemented on a general purpose computer, as discussed above, and does
not provide an improvement in the function of the computer.
The argument grounded on the claims being limited to a particular
useful application is also not persuasive. As explained in Alice, "the
prohibition against patenting abstract ideas cannot be circumvented by
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attempting to limit the use of [the idea] to a particular technological
environment." Alice, 134 S. Ct. at 2538 (internal citations and quotations
omitted). The value or usefulness is likewise not dispositive of patent
eligibility. Flook, 437 U.S. at 594-95 (Determining claims to "a new and
presumably better method for calculating alarm limit values," which were of
undisputed usefulness, to be directed to nonstatutory subject matter.).
The argument grounded on the claims reciting significant post-
solution activity is also not persuasive. Reply Br. 15-18. Appellant relies
on Diamond v. Diehr in arguing that its claims are not directed to ineligible
subject matter simply because the claims use a mathematical formula or a
computer. Id. at 16-18 (citing Diehr, 450 U.S. at 188). Appellant argues
that the reasoning in Diehr-that an eligible process of curing rubber
remains eligible subject matter despite the incorporation of a mathematical
formula or use of a computer-supports the eligibility of Appellant's claims
that similarly incorporate use of a computer to identify individual
polyethylene resins. Id. at 17-18 (citing Diehr, 450 U.S. at 187). Appellant
contends its claims are "directed to an improved technological process, ...
improving processing of polyethylene resins by efficiently identifying those
that have a reduced tendency to melt fracture." Id. at 18.
Appellant's argument fails because, contrary to Diehr in which the
claims "describe in detail a step-by-step method for [ curing rubber articles],
beginning with the loading of a mold with raw, uncured rubber and ending
with the eventual opening of the press at the conclusion of the cure" (Diehr,
450 U.S. at 184), Appellant's claims are silent as to any actual step of
processing polyethylene resins. Thus, the issue is not that including a
mathematical formula or use of a computer does not undercut subject matter
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eligibility, but, rather, that there is not something significantly more than the
abstract idea itself set forth in the claims. As discussed above, the value or
usefulness of the claimed method is not dispositive of subject matter
eligibility. Flook, 437 U.S. at 594-95.
Appellant's further reliance on Thales is similarly deficient. Reply
Br. 18 (citing Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir.
2017). In Thales, the court found that "the claims [were] directed to a new
and useful technique for using sensors" and determined that the claims were
not rendered abstract because "a mathematical equation is required to
complete the claimed method." Id. at 1349. The court explained that "[t]he
claims specify a particular configuration of inertial sensors and a particular
method of using the raw data from the sensors ... [ and] seek to protect only
the application of physics to the unconventional configuration of sensors."
Id. Appellant's claims differ from those in Thales because, as explained
above, they are silent as to any actual step of processing polyethylene resins
while Thales' claims "specify a particular configuration of inertial sensors
and a particular method of using the raw data from the sensors" in carrying
out the method. Id.
Appellant contends that the claims "improve another technology or
technical field, namely processing of polyethylene resins." App. Br. 14--15
(citing Diehr, 450 U.S. 175; Spec. ,r,r 5-8).
Appellant's arguments are not well-founded because, as explained
above, the claims are silent as to any actual step of processing polyethylene
resins, and the claims' reference to "improving processing of polyethylene
resins" does not suffice. "[S]eeking patent protection for [a mathematical]
formula in the abstract ... is not accorded the protection of our patent
17
Appeal2017-008898
Application 13/660,750
laws, ... and this principle cannot be circumvented by attempting to limit
the use of the formula to a particular technological environment." Diehr,
450 U.S. at 191 (citing Benson and Flook).
Accordingly, we sustain the Examiner's rejection of claims 1-20
under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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