Ex Parte KITAHARA

Patent Trials and Appeals BoardJun 25, 2019

13473967 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/473,967 05/17/2012 23117 7590 06/27/2019 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Noboru KITAHARA 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. MNL-2018-2914 8091 EXAMINER KOLB, NATHANIEL J ART UNIT PAPER NUMBER 2856 NOTIFICATION DATE DELIVERY MODE 06/27/2019 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NOBORU KITAHARA Appeal2018-008217 Application 13/473,967 Technology Center 2800 Before KAREN M. HASTINGS, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. Â§ 134(a) of the Examiner's decision rejecting claims 1-13 under 35 U.S.C. Â§ 103(a) over at least the combined prior art of Nakada et al. (US 6,851,311 B2;2 issued Feb. 8, 2005), Hecht et al. (US 5,668,313 Al, issued Sep. 16, 1997), and further in view of TURLEY ("Monitoring with Microprocessors" from https://www.embedded.com/electronics-blogs/significant-bits/40246 l l 1 The real party in interest is stated to be "DENSO COPORA TION" (Appeal Br. 3). A previous decision of this Board on appeal 2016-000642, mailed Feb. 21, 2017, affirmed the Examiner's previousÂ§ 103 rejection of similar subject matter based on Nakada and Hecht. 2 The Final Action incorrectly lists US 6,581,311 which should be 6,851,311. The transposition error has been corrected herein. Appeal2018-008217 Application 13/473,967 /Motoring-withmicroprocessors#, published Aug. 11, 2003). The Examiner also rejected all of these claims under 35 U.S.C. Â§ 112, ,-J 1 as failing to comply with the written description requirement. Final Act 3; see also Appeal Br. 22-24. The Examiner also rejected claims 1-13 under 35 U.S.C. Â§ 101 for failing to claim patent eligible subject matter (Appeal Br. 13). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM. Independent claim 1 is illustrative of the subject matter on appeal ( emphasis added): 1. A method for adjusting a flow measuring device that includes: a housing including a bypass flow passage which is formed to take in a part of a mainstream of air; a flow sensor disposed in the bypass flow passage and configured to output an electrical signal in accordance with a flow rate of air; and a writable memory, wherein: the bypass flow passage is formed in an asymmetrical shape with respect to the flow sensor in upstream and downstream directions of the mainstream; a flow from an upstream side toward a downstream side of the mainstream is a forward flow; and a flow from the downstream side toward the upstream side of the mainstream is a backward flow, the method comprising: obtaining an output from the flow sensor in a backward- flow region; storing the output of the flow sensor in the writable memory of the flow measuring device; 2 Appeal2018-008217 Application 13/473,967 adjusting the output of the flow sensor in the backward- flow region to an adjusted output conforming to a target output on the backward-flow side, the adjusted output conforming to the target output then being applicable to a single conversion map that converts the adjusted output into a flow rate, wherein the conversion map is stored in an electronic control unit (ECU) provided separately from the flow measuring device; and storing the adjusted output in the writable memory of the flow measuring device. (Claim Appendix; Appeal Br. 25 (some indentation added)). ANALYSIS We review the appealed rejections 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 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections."). After considering the evidence presented in this Appeal and each of Appellant's arguments, we are not persuaded that Appellant identifies reversible error in theÂ§ 103 rejection. Thus, we affirm the Examiner's rejections for the reasons expressed in the Final Office Action (Final Act.) mailed November 16, 2017 and the Answer (Ans.) mailed June 13, 2018. We add the following primarily for emphasis. TheÂ§ 103 Rejection It has been established that "the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a 3 Appeal2018-008217 Application 13/473,967 person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). Likewise, it is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992). Appellant's principal argument is that Hecht does not teach "the claimed adjustment of the output from the flow sensor in the backflow region [which] is separate and distinctive from the conversion of the adjusted output to the flow rate using the conversion map" as recited in claim 1 (Appeal Br. 8; Reply Br. 3). Appellant contends that "a single conversion map was not a known option or a predictable solution to adjusting variations of the backflow characteristics among various products at the time of invention" (Appeal Br. 11; Reply Br. 4). Appellant concludes by stating that the Examiner engaged in impermissible hindsight reasoning (Appeal Br. 12). Appellant's arguments are not persuasive of reversible error. The Examiner aptly points out that-contrary to the Appellant's position-the virtues and limitations Appellant relies upon (i.e., at Appeal Br. 8 and 11; Reply Br. 5-6) to distinguish the prior art from the alleged invention are not positively recited in claim 1 (Ans. 2). The Examiner further compared Hecht with Appellant's disclosure and determined that the difference between them was the manner in which the algorithm is performed (Ans. 3). The Examiner explained that Hecht taught two inputs to the algorithm-the raw output and conversion map-and that one of ordinary skill would predictably vary either one (Id.). Indeed, the skilled artisan would readily 4 Appeal2018-008217 Application 13/473,967 infer the appropriate variables to adjust for either the raw output or the conversion map with the use of no more than ordinary creativity. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992). Appellant has not offered adequate evidence or persuasive technical reasoning to identify reversible error in the Examiner's reliance on Hecht. Furthermore, Appellant's Background section in the Specification specifically states that technologies that "detect a flow rate of backflow region and corrects a conversion map when converting an output in the backflow region" are already known in the art (Spec. I :29-30). An applicant cannot defeat an obviousness rejection by asserting that the cited references fail to teach or suggest elements which the applicant has acknowledged are taught by the prior art. Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988); In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (a statement by an applicant that certain matter is prior art is an admission that the matter is prior art for all purposes). 3 With respect to dependent claim 13, which recites "wherein the single conversion map is fixed," Appellant argues that the Examiner did not attribute the proper meaning to the word "fixed" (Appeal Br. 13; Reply Br. 6-7). In construing claims, "the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims 3 Appellant also admits that it was known that "the output characteristic needs to be adjusted to a desired output characteristic that is necessary to convert through a predetermined conversion map" albeit this was "conventionally" done with "respect to a forward flow" (Spec. 1: 19-23). 5 Appeal2018-008217 Application 13/473,967 to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." Id. As the Examiner pointed out, it is reasonable to construe the claim language in accordance with its ordinary meaning of "determined; established; set" (Ans. 4-5 (relying on an American Heritage Dictionary definition)). The Examiner aptly determined that while adjustments can be "added to the conversion map at a later time, the map itself is still fixed"; thus, each adjustment results in a new fixed map (Ans. 5). Indeed, Appellant's Specification appears to be devoid of the word "fixed" and thus there is no adequate evidence or persuasive technical reasoning to identify reversible error in the Examiner's claim interpretation. Moreover, Appellant argues for the first time in the Reply Brief that "fixed" read in light of the specification, should be interpreted as "the single conversion map is not subject to adjustment for each product" (Reply Br. 6- 7). Appellant has not shown good cause why these arguments could not have been presented in the Appeal Brief. Therefore, we need not consider the arguments newly raised in the Reply Brief. 37 C.F.R. Â§ 41.4l(b)(2). Nonetheless, the Specification is silent with regards to an explicit definition of "fixed." Contrary to Appellant's assertion, the portion of the Specification relied upon does not specifically define "fixed" as the word fixed is never used. A skilled artisan would not necessarily derive the same meaning as Appellant urges. Appellant, therefore, has not directed us to any special definition or meaning from the Specification. Appellant does not present any additional arguments for any of the dependent claims, including those separately rejected; rather, they rely upon the arguments made regarding claim 1 and 13 (Appeal Br. generally). 6 Appeal2018-008217 Application 13/473,967 Accordingly, we affirm the Examiner's prior art rejection of the claims under 35 U.S.C. Â§ 103(a) for the reasons given above and presented by the Examiner. The Â§ 112 Re} ection The written description "must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) ( citation and quotations omitted, alteration in the original). The test is whether the disclosure "conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. A prima facie case of non-compliance withÂ§ l 12's written description requirement is established by showing that, as a matter of fact, the written description in Appellant's Specification, including the drawings, would not reasonably convey to persons skilled in this art that Appellant is in possession of the invention defined by claim 1, including all of the limitations thereof, at the time the application was filed. See generally, In re Alton, 76 F.3d 1168, 1172, 1175-76 (Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262-64, (CCPA 1976)). To establish a prima facie case, it is only necessary to establish that as a matter of fact, Appellant claims "embodiments of the invention that are completely outside the scope of the specification." See Alton, 76 F.3d at 1175-76. There is no dispute that Appellant had possession of "storing the output of the flow sensor in the writable memory of the flow measuring device"; yet the Examiner found that the Specification lacks written description for the limitation of "storing the adjusted output in the writable memory of the flow measuring device" in claim 1 ( emphasis added). 7 Appeal2018-008217 Application 13/473,967 Appellant properly points out portions of the Specification to demonstrate that Appellant had written description support for the adjusted output stored in the writeable memory (Appeal Br. 21; Reply Br. 10-11 ). A preponderance of the evidence supports Appellant's position that he had possession of the disputed limitation for reasons set out by the Appellant (Appeal Br. 19-23; Reply Br. 10-11). Accordingly, we reverse the Examiner'sÂ§ 112 rejection of all the claims as lacking written description support. The Â§ 101 Re} ection The PTO recently published revised guidance on the application of Â§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance").4 Under the 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 Â§ 2106.05(a)- (c), (e)-(h)). 5 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: 4 Neither the Examiner nor Appellant had benefit of this Guidance when advocating their respective positions concerning subject matter eligibility. 5 The Examiner determines that certain claim elements are routine and common in the industry (Ans. 5-7). This determination is not relevant to steps (1) and (2) of the Guidance analysis. See Guidance. 8 Appeal2018-008217 Application 13/473,967 (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.0S(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. In applying Step 2A, prong (1) of the Guidance, to the claims on appeal, we determine that the independent claim 1 recites an abstract idea by "the adjusted output conforming to the target output then being applicable to a single conversion map that converts the adjusted output into a flow rate." A person could perform the step entirely in the mind by looking at flow measurement data and observing whether a given section of data corresponds to the proper mapping. Thus, in the context of claim 1, the step of "conforming to the target output" and "a single conversion map that converts the adjusted output" can reside solely within a human thought process. Accordingly, claim 1 recites a mental process which is an abstract idea under the Guidance. However, our assessment of Guidance Step 2A, prong (2), reveals that the independent claim integrates the above abstract idea in a practical application. The aforementioned limitation of claim 1 is accomplished with generic computer components. There is no recitation of special or particular components needed to accomplish these data manipulations apart from the recited "electronic control unit (ECU)." Appellant points to pages 6 and 7 of the Specification which describe a technical problem in flow sensor adjustments and describe an improvement by increasing the accuracy of the measurement and thus 9 Appeal2018-008217 Application 13/473,967 improving the functionality of the flow measuring device (Appeal Br. 14- 19; Reply Br. 8). Appellant aptly states that "the claimed method uses a particular flow measuring device ... and a particular method of adjusting the device that eliminates variation between the device and other devices" (Appeal Br. 15). As a result, Appellant's claims do not attempt to monopolize the mental process of "conforming to the target output" and "a single conversion map that converts the adjusted output," but rather define a specific application of adjusting a flow measurement device that employs the abstract idea to achieve an improvement in the technical field of flow sensor quality control. To summarize, there is a meaningful limit on the abstract idea, that is, the abstract idea is integrated into a practical application for determining appropriate amount of air flow through the improved flow measuring device. For this reason, we do not sustain the Examiner's rejection of claims 1-13 under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. DECISION The Examiner's Â§103(a) rejection is affirmed. The Examiner's Â§ l 12(a) rejection is reversed. The Examiner's Â§101 rejection is reversed. 10 Appeal2018-008217 Application 13/473,967 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6( a)( 1 ). AFFIRMED 11