Ex Parte Mattiola et al

Patent Trial and Appeal Board

Mar 7, 2017

11437110 (P.T.A.B. Mar. 7, 2017)

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.
06747ZP USA 9731
EXAMINER
BORISSOV, IGORN
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
11/437,110 05/18/2006
23543 7590 03/08/2017
AIR PRODUCTS AND CHEMICALS, INC.
7201 HAMILTON BOULEVARD
ALLENTOWN, PA 18195-1501
Paul Anthony Mattiola
03/08/2017 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 ANTHONY MATTIOLA,
VLADIMIR YLIY GERSHTEIN, and
KAREN MARIE CAMPBELL
Appeal 2014-006739
Application 11/437,1101
Technology Center 3600
Before HUBERT C. LORIN, AMEE A. SHAH and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul Anthony Mattiola, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1, 2, 9—11, 13—17, 19, and
22—32. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
1 The Appellants identify Air Products and Chemicals, Inc. as the real party
in interest. App. Br. 2.
Appeal 2014-006739
Application 11/437,110
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for dispensing a product to a user, the method comprising
the steps of:
providing fresh, fresh being a carrier releasably incorporating a
product;
separating product from the fresh thereby converting the fresh
into spent;
providing a first user, the first user comprising:
at least one storage vessel adapted for receiving and
storing fresh; and
at least one storage vessel adapted for receiving and
storing spent collected from the first user;
separating product from the fresh;
collecting spent from the at least one storage vessel;
providing and using a system for measuring the quantity of
product in the spent,
providing and using a system for measuring the presence of at
least one chemical or physical property of the collected spent;
comparing the at least one detected chemical or physical
property of the collected spent with at least one predetermined criteria
in order to determine whether the spent is contaminated;
collecting uncontaminated spent and,
regenerating uncontaminated collected spent by incorporating
product into the uncontaminated collected spent.
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Application 11/437,110
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Edlund
Kimbara
Redmond
Speranza
Tsai
US 2004/0081867 A1
US 6,802,875 B1
US 7,169,489 B2
US 7,550,113 B2
WO 01/99222 A2
Apr. 29, 2004
Oct. 12, 2004
Jan. 30, 2007
Jun. 23, 2009
Dec. 27, 2001
The following rejections are before us for review:
1. Claims 1, 2, 9—11, 13—17, 19, and 22—32 are rejected under 35 U.S.C.
§101 as being directed to non-statutory subject matter.2
2. Claims 1,2, 9—11, 13—17, 19, 22—30, and 32 are rejected under
35 U.S.C. §103(a) as being unpatentable over Kimbara, Redmond,
Edlund, and Speranza.3
3. Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kimbara, Redmond, Edlund, Speranza, and Tsai.
Did the Examiner err in rejecting claims 1, 2, 9-11, 13—17, 19, and
22—32 under 35 U.S.C. §101 as being directed to non-statutory subject
matter?
2 The statement of the rejection (Final Act. 2) includes claim 21 but claim 21
was cancelled. See App. Br. 2.
3 The statement of the rejection (Final Act. 3) includes claim 21 but claim 21
was cancelled. See App. Br. 2.
ISSUES
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Appeal 2014-006739
Application 11/437,110
Did the Examiner err in rejecting claims 1, 2, 9-11, 13—17, 19, 22—30,
and 32 under 35 U.S.C. §103(a) as being unpatentable over Kimbara,
Redmond, Edlund, and Speranza?
Did the Examiner err in rejecting claim 31 under 35 U.S.C. § 103(a) as
being unpatentable over Kimbara, Redmond, Edlund, Speranza, and Tsai?
ANALYSIS
The rejection of claims 1, 2, 9—11, 12—17, 19, and 22—22 under 25 U.S.C.
§101 as being directed to non-statutory subject matter.
Prosecution of this application occurred before the Alice [Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014)] decision issued.
The Examiner correctly analyzed the subject matter of claim 1 in light of the
guidelines then in effect; that is, the Examiner considered, as a factor
weighing for and against patent eligibility, whether the claimed subject
matter is tied to a particular machine or transforms a particular article into a
different state or thing. See Non-Final Rej. 3. In that regard, the Examiner
found “no recitation of a ... transformation.” We disagree.
The subject matter of independent claim 1 includes the steps of
“separating product from the fresh thereby converting the fresh into spent”
and “regenerating uncontaminated collected spent by incorporating product
into the uncontaminated collected spent.” One of ordinary skill in the art
reading these steps in light of the Specification (see, e.g., para. 16: “‘Spent’
- the carrier when depleted or partially depleted of product or product
elements”) would reasonably broadly construe them as steps in a chemical
process whereby the product-fresh combination and uncontaminated
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Application 11/437,110
collected spent are transformed into product and spent and regenerated
uncontaminated collected spent, respectively.
A claimed process is patent-eligible if it transforms an article into a
different state or thing. This transformation must be central to the
purpose of the claimed process. But the main aspect of the
transformation test that requires clarification here is what sorts of
things constitute “articles” such that their transformation is sufficient
to impart patent-eligibility under § 101. It is virtually self-evident that
a process for a chemical or physical transformation of physical objects
or substances is patent-eligible subject matter. As the Supreme Court
stated in Benson:
[T]he arts of tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores ... are instances,
however, where the use of chemical substances or physical acts,
such as temperature control, changes articles or materials. The
chemical process or the physical acts which transform the raw
material are, however, sufficiently definite to confine the patent
monopoly within rather definite bounds.
409 U.S. at 70, 93 S. Ct. 253 (quoting Corning v. Burden, 56 U.S. (15
How.) 252, 267-68, 14 L. Ed. 683 (1854)); see also Diehr, 450 U.S.
at 184, 101 S. Ct. 1048 (process of curing rubber); Tilghman, 102 U.S.
at 729 (process of reducing fats into constituent acids and glycerine).
In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008).
The Examiner states that “the recited steps of ‘providing',’
‘separating,’ ‘collecting,’ ‘comparing’ and ‘regenerating’ could be
understood as steps conducted mentally or insignificant post-solution
activity, like data gathering, change in position or location . . .” Ans. 3.
However, we are unable to see how one can mentally, for example,
“regenerat[e] uncontaminated collected spent by incorporating product into
the uncontaminated collected spent” (claim 1). Nor do we see said step as
insignificant given its necessity for the process to accomplish one of its
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Application 11/437,110
goals; that is, to solve a problem with contaminated spent (see Spec., e.g.,
para 9).
The Examiner also states that
the “regenerating” step could be understood as merely mixing a new
product with the carrier. Therefore, there is not [sic] chemical
transformation is required (e.g. by braking hydrogen bonds of the
organic chemical), and “regenerating” of dehydrogenated derivative
of the organic chemical could be understood in view of Specification
as merely physically saturating, or mixing two materials without any
chemical reaction resulted from said mixing.
Ans. 3. However, as explained in Bilski (see the passage reproduced above),
physical transformation of physical objects or substances is patent-eligible
subject matter. Accordingly, physically saturating or mixing per se are not
necessarily patent-ineligible.
For the foregoing reasons, the Examiner did not make out a prima
facie case of patent-ineligibility for claim 1 in the first instance under the
law and guidance in effect at the time this application was prosecuted. The
Examiner did not analyze the substance of any other claim. Accordingly, the
Examiner also did not make out a prima facie case of patent-ineligibility for
claim 2, 9-11, 13-17, 19, and 22-32.
The rejection is not sustained.
The rejection of claims 1, 2, 9—11, 13—17, 19, 22—30, and 32 under
35 U.S.C. §103(a) as being unpatentable over Kimbara, Redmond, Edlund
and Speranza.
Claim 1, and thus also claims 2, 9-11, 13—15, 24, 25, 28, 28, and 32
that depend from claim 1, include the limitation “comparing the at least one
detected chemical or physical property of the collected spent with at least
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Application 11/437,110
one predetermined criteria in order to determine whether the spent is
contaminated.” The Examiner appears to find this limitation disclosed in
Edlund and Speranza.
Regarding Edlund, the Examiner found said limitation disclosed at
paras. 31 and 32, reproduced below. Non-Final Rej. 6.
[0031] As an example, the FCS communication subsystem may
transmit to RSS 30 communication signals 64 containing data
corresponding to one or more operating parameters that may be used
to model or otherwise define the operating state, or a portion thereof,
of the fuel cell system. As used herein, “operating state” is used to
describe the overall operation (or lack thereof) of the fuel cell system,
or a portion thereof, and the many aspects of such operation that may
be characterized by discrete operating parameters. Each of these
operating parameters may be derived from one or more measured
value, set condition, analyzed data, etc. For example, an operating
parameter may describe the energy-producing (operating) state of the
fuel cell system (on, off, standby, warm-up, cool-down, etc.). Other
operating parameters may be used to describe the temperature,
pressure, purity, efficiency, battery reserve, etc. of various portions of
the fuel cell system. Some operating parameters may directly reflect a
measured value; for instance, a temperature parameter may model the
measured temperature of a portion of the fuel cell stack. Other
operating parameters may be derived from one or more measured
values. For example, a measured pressure and a measured flow rate
may be used to calculate a contamination parameter, or a battery
reserve measurement and an average load measurement may be used
to calculate a remaining duration of operation parameter. In general,
different types of operating parameters may be measured, calculated,
set, etc. Plural operating parameters may collectively be used to either
completely or partially model an operating state of the fuel cell
system, and such parameters may be transmitted via the FCS
communication subsystem. As used herein, the operating parameters
of a fuel cell system may include one or more operating parameters
relating to the operating environment in which the fuel cell system is
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Application 11/437,110
used, such as the temperature of the environment and/or the load
being applied to the fuel cell system.
[0032] When the RSS is adapted to receive communication signals
containing measured data from a fuel cell system 12 within its
network, the fuel cell system will typically include a measurement
subsystem 44 that is configured to measure or otherwise determine
operating parameters that may be transmitted via the FCS
communication subsystem. The measurement subsystem is typically
configured to take various measurements such as temperatures,
pressures, electric currents, concentrations, flow rates, fuel and
oxidant levels, etc. Accordingly, the measurement subsystem may
include one or more suitable measurement devices, or sensor
assemblies, adapted to measure, or otherwise acquire, operating
parameters of the fuel cell system. For example, to measure
temperatures, the measurement subsystem may include one or more
thermistor, thermometer, thermocouple, or other temperature­
measuring devices. Similarly, a Bourdon gauge, manometer, pressure
transducer or other pressure gauge may be used to measure pressures,
and voltmeters, ammeters, and ohmmeters may be used to
respectively measure potential differences, electric current
magnitudes, and electrical resistances. Other measurement devices
may be used for appropriate measurements. The measurement
subsystem may continually measure predetermined operating
parameters and/or may sample measurements according to a
configurable schedule. Measurements may also be taken in response
to predefined events and/or in response to user commands, which may
be remotely transmitted to the fuel cell system. As described herein,
such measurements may be compiled and/or transmitted for
compilation.
We do not see, in these cited Edlund passages directed to a general
discussion of various possible communication and measuring systems, any
disclosure of said limitation. There is no disclosure of comparing a detected
chemical or physical property of a collected spent as claimed.
We find likewise for Speranza. The Examiner found said limitation
disclosed at col. 6, lines 19-23, reproduced below. Non-Final Rej. 6.
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Method 100 then proceeds to query block 106 where the parameter
Hpure is compared with the desired purity level Hpref. If the query
returns a negative response, the method 100 proceeds on to block 108
which opens the valve 36 allowing hydrogen gas to flow from the
hydrogen generator 24 towards the tank 40.
This passage describes, inter alia, comparing hydrogen purity with a desired
level of purity. But the limitation calls for “comparing a detected chemical
or physical property of the collected spent with at least one predetermined
criteria in order to determine whether the spent is contaminated” (claim 1).
According to claim 1, collected spent is converted fresh collected from a
storage vessel; that is, the collected spent is the result of separating product
from a carrier releasably incorporating a product (fresh). The Examiner does
not explain and we do not see how one of ordinary skill would have been led
to compare a detected chemical or physical property of collected spent as
claimed given said Speranza disclosure of comparing hydrogen purity with a
desired level of purity.
For the foregoing reasons, a prima facie case of obviousness has not
been made out in the first instance by a preponderance of the evidence.
Claim 16, and thus, also claims 17, 19, 22, 23, 26, 27, and 30 that
depend from claim 16, include, similar to claim 1, the limitation “comparing
the at least one detected chemical or physical property of the collected spent
with at least one predetermined criteria [thereby] determining whether the
[collected] spent is contaminated.” The Examiner found this limitation
disclosed in the same passages of Edlund and Speranza discussed above. For
the same reasons, a prima facie case of obviousness has not been made out
for the subject matter of claim 16 in the first instance by a preponderance of
the evidence.
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Application 11/437,110
The rejection of claim 31 under 35 U.S.C. § 103(a) as being unpatentable
over Kimbara, Redmond, Edlund, Speranza, and Tsai.
Claim 31 depends from claim 1 and its rejection is not sustained for
the reasons given in not sustaining the rejection of claim 1.
CONCLUSIONS
The rejection of claims 1, 2, 9—11, 13—17, 19, and 22—32 under
35 U.S.C. §101 as being directed to non-statutory subject matter is not
sustained.
The rejection of claims 1, 2, 9—11, 13—17, 19, 22—30, and 32 under
35 U.S.C. § 103(a) as being unpatentable over Kimbara, Redmond, Edlund
and Speranza is not sustained.
The rejection of claim 31 under 35 U.S.C. § 103(a) as being
unpatentable over Kimbara, Redmond, Edlund, Speranza, and Tsai is not
sustained.
DECISION
The decision of the Examiner to reject claims 1, 2, 9-11, 13—17, 19,
and 22—32 is reversed.
REVERSED
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