Ex Parte Nishida et al

Patent Trial and Appeal Board

Mar 23, 2017

13011287 (P.T.A.B. Mar. 23, 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.
13/011,287 01/21/2011 Kenji NISHIDA HGN-428-A 4371
21828 7590 03/27/2017
PARRTFR RT .APKMAN AND ASSOPTATFS PC
EXAMINER
22960 VENTURE DRIVE LAGUARDA, GONZALO
SUITE 100
NOVI, MI 48375 ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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):
cbalaw @ gmail.com
wblackman@ ameritech.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENJINISHIDA, KAZUTO FUKUZAWA,
TETSUYA KANEKO, and KENJIRO SAITO
Appeal 2015-007144
Application 13/011,287
Technology Center 3700
Before NATHAN A. ENGELS, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kenji Nishida et al. (“Appellants”) seek review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated August 6, 2014 (“Final Act.”), rejecting claims 1-20 under 35 U.S.C.
§ 103(a) as unpatentable over Obayashi (US 4,691,286, issued Sept. 1, 1987)
and Bullis (US 4,463,729, issued Aug. 7, 1984).1 We have jurisdiction
under 35 U.S.C. § 6(b).
1 Appellants identify Honda Motor Co. Ltd. as the real party in
interest. Br. 3.
Appeal 2015-007144
Application 13/011,287
We REVERSE and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).
BACKGROUND
The disclosed subject matter “relates to an alcohol concentration
estimation and detection apparatus for an engine.” Spec. ^ 2. Claims 1,11,
and 14 are independent. Claim 1 is reproduced below, with emphasis added:
1. An alcohol concentration estimation
apparatus which receives a crank pulse supplied
from a pickup coil which detects passing of a
plurality of reluctors provided on a crank pulse rotor
which rotates in synchronism with a crankshaft of
an engine,
said alcohol concentration estimation
apparatus comprising:
an NeA calculation section adapted to
calculate an average engine speed (NeA) of
the engine based on crank pulse output;
and a Acol, Aco2 calculation section
operable:
to calculate a first crank
angular speed (col) within a first
predetermined interval (zl)
overlapping with a compression top
dead center (TDC) of the engine,
and to subtract the first crank
angular speed (col) from the average
engine speed (NeA) to calculate a first
variation amount (Acol) and to
calculate a second crank angular
speed (co2) within a second
predetermined interval (t2)
overlapping with a combustion bottom
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Application 13/011,287
dead center (BDC) of the engine and to
subtract the first crank angular speed
(col) from the second crank angular
speed to calculate a second variation
amount (Aco2)\
wherein said alcohol concentration
estimation apparatus is operable to estimate an
alcohol concentration of a fuel based on the values
of the first variation amount (Acol) and the second
variation amount (Aco2).
DISCUSSION
Each of independent claims 1,11, and 14 recites a “Acol, Aco2
calculation section operable” to perform certain recited mathematical
calculations. Br. 23, 27, 28-29 (Claims App.).2 Regarding these limitations
(including the recited calculations), the Examiner relied on Obayashi,
column 6, line 54 to column 7, line 8 and column 7, line 15. Final Act. 2-3,
9-10, 12-13.3 For each independent claim, the Examiner stated:
Where Obayashi does not meet the precise mathematical
calculations of the claim, it would have been obvious to one
having ordinary skill in the art to have used known mathematical
formulas to calculate combustion irregularity using engine speed
measurements. Also, the apparatus of Obayashi and the
application both have the same structure and feed the controller
with same information to produce the same output of a
combustion variation, so without evidence of special results
2 The calculations recited in claim 1 are shown with emphasis above.
For claim 11, the two clauses following “a Acol, Aco2 calculation section
operable to calculate” set forth the calculations. Br. 27 (Claims App.). For
claim 14, the two clauses following “a Acol, Aco2 calculation section
operable” set forth the calculations. Id. at 28-29.
3 For claim 11, the Examiner also specifically cited Obayashi, column
6, lines 60 and 61. Final Act. 10.
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coming from the specified formula used it is understood that
Obayashi is equivalent.
Id. at 3 (addressing claim 1), 10 (addressing claim 11 and stating “equivalent
structure” rather than “the same structure”), 14 (addressing claim 14).
Appellants argue that the Examiner “acknowledge [s] that the claims
recite a different mathematical technique as compared to the disclosure” in
Obayashi but “ignores the differences and makes an unsupported allegation
that the difference would have been obvious.” Br. 18.
Here, the Examiner has not provided sufficient explanation of the
findings and conclusions regarding the “Acol, Aco2 calculation section”
limitations (including the recited calculations) in each of the independent
claims to present a prima facie case of obviousness. We agree with
Appellants that the Examiner’s statements that “it would have been obvious
to one having ordinary skill in the art to have used known mathematical
formulas to calculate combustion irregularity using engine speed
measurements” lack record support. Final Act. 3, 10, 14. For example, the
Examiner has not shown that the recited calculations in the limitations at
issue were “known mathematical formulas.” See id.
As to the statement that “without evidence of special results coming
from the specified formula used it is understood that Obayashi is equivalent”
(id.), the Examiner has not shown that the equivalence of the recited
calculations to the calculations in Obayashi—even if assumed—would
support a prima facie case of obviousness.
For these reasons, we do not sustain the rejection of independent
claims 1,11, and 14, or the rejection of dependent claims 2-10, 12, 13, and
15-20 under 35 U.S.C. § 103(a) as unpatentable over Obayashi and Bullis.
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NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 1-20 under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter.
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citingMayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). Under that framework, we first “determine whether the claims at
issue are directed to one of those patent-ineligible concepts”—i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. (citing Mayo, 132
S. Ct. at 1296-97). If so, we secondly “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). The Supreme
Court has described the second step of the analysis as “a search for an
‘inventive concept’—i.e., 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.’” Id. (alteration in original)
(quoting Mayo, 132 S. Ct. at 1294).
Claim 1 is directed to an “alcohol estimation apparatus” that “receives
a crank pulse” and includes two “calculation section[s]” that perform certain
mathematical calculations. Br. 23 (Claims App.). Claim 11 is directed to an
“alcohol concentration estimation apparatus” that “receives a crank pulse”
and includes one “calculation section” that performs certain mathematical
calculations. Id. at 27. Claim 14 is directed to an “alcohol concentration
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estimation apparatus” that includes: (1) “a crank pulse detector operable to
receive a crank pulse;” (2) three “calculation section[s]” that perform certain
mathematical calculations; (3) “a fuel injection map set so as to operate the
engine” in a certain manner; and (4) an “alcohol concentration derivation
section” that performs certain mathematical calculations. Id. at 28-29.
We determine, under the first step of the analysis, that each of
independent claims 1,11, and 14 is directed to the abstract idea of receiving
data and—using recited algorithms—generating additional data.4 Our
reviewing courts have held claims ineligible under § 101 when directed to
manipulating existing information—using algorithms—to generate
additional information. See Parker v. Flook, 437 U.S. 584, 585, 594-96
(1978) (rejecting as ineligible claims directed to (1) measuring the current
value for a variable in a catalytic conversion process, (2) using an algorithm
to calculate an updated “alarm-limit value” for that variable, and (3)
updating the limit with the new value); Gottschalk v. Benson, 409 U.S. 63,
71-72 (1972) (rejecting as ineligible claims directed to an algorithm for
converting binary-coded decimal numerals into pure binary form); Elec.
Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)
(discussing how “collecting information” and “analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more” are abstract ideas); Digitech Image Techs., LLC v. Elecs.for
4 Although the claims here recite the algorithms in words rather than
as mathematical formulas, the claims nevertheless recite algorithms. See In
re Grams, 888 F.2d 835, 837 n.l (Fed. Cir. 1989) (“It is of no moment that
the algorithm is not expressed in terms of a mathematical formula. Words
used in a claim operating on data to solve a problem can serve the same
purpose as a formula.”).
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Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional
limitations, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
eligible.”); see also Intellectual Ventures ILLC v. Capital One Fin. Corp.,
No. 2016-1077, 2017 WL 900031, at *5-6 (Fed. Cir. Mar. 7, 2017)
(determining that a claim reciting “an apparatus for manipulating XML
documents” was directed to an abstract idea).
Turning to the second step of the analysis, we determine that the
additional elements of claims 1,11, and 14, individually and as ordered
combinations, do not transform the nature of the independent claims into
patent-eligible subject matter.
We first address certain claim language ostensibly limiting the use of
the “apparatus” to estimating the alcohol concentration of a fuel used by an
engine. See, e.g., Br. 23, 27 (claims 1 and 11 reciting “wherein said alcohol
concentration estimation apparatus is operable to estimate an alcohol
concentration of a fuel based on the values of the first variation amount
(Acol) and the second variation amount (Aco2)”). Attempting to limit the use
of an abstract idea to a particular technological environment does not render
claims 1 and 11 patent eligible because the limitations at issue do not
mitigate preemption concerns {see Alice, 134 S. Ct. at 2358) and does not
transform the claims into patent-eligible applications of the abstract idea (see
Elec. Power, 830 F.3d at 1354).
We next address the term “apparatus,” which is recited in each of the
independent claims. We determine that this term does not add anything that
transforms the nature of the claims from an abstract idea into a patent-
eligible invention because, for the reasons discussed below, the “apparatus”
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Application 13/011,287
recited is nothing more than a general-purpose computer. And as the
Supreme Court has explained, “the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.” Alice, 134 S. Ct. at 2358 (“Stating an abstract idea ‘while adding
the words “apply if” is not enough for patent eligibility.” (quoting Mayo,
132 S. Ct. at 1294)). The Specification here shows that the “apparatus” is an
electronic control unit (ECU). See Spec. 15, 19, 20, 24 (identifying the
alcohol concentration estimation and detection apparatus of various aspects
of the “present invention” as element 30); 37, 52, 53, 56 (discussing ECU
30). This view is supported by Appellants’ statements on appeal. See Br. 5,
9,11 (identifying the “alcohol concentration estimation apparatus” in each
claim as element 30). Moreover, the Specification does not indicate that the
ECU is anything other than a general-purpose computer with “sections” that
perform certain calculations. See, e.g., Spec. ^ 37 (introducing “ECU 30”),
55, 57, 64-66 (discussing the “sections” of ECU 30); ^ 101 (“It may be
noted that the . . . the internal configuration of the ECU or the like are not
limited to that of the embodiment described hereinabove, but allows various
alterations.”).
We next address the recitation, in claim 14, of “a fuel injection map
set so as to operate the engine” in a certain manner. See Br. 29 (Claims
App.). This language does not affect our conclusion regarding step two.
The recited “map” is disclosed as a data structure relating certain variables.
See Spec. ^ 86 (“FIG. 11 illustrates a fuel injection map set such that the
engine is operated at a stoichiometric air fuel ratio where it is operated with
a fuel of a predetermined alcohol concentration, and fuel injection time Ti
corresponding to an engine speed Ne is determined from a plurality of
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curved lines set for individual throttle openings Th.”); Fig. 11. The presence
of an intangible data structure in the “apparatus” of claim 14 does not
transform the nature of the claim into patent-eligible subject matter. See,
e.g., Digitech Image, 758 F.3d at 1349 (discussing how claims “directed to
information in its non-tangible form” “do[] not fall within any of the
categories of eligible subject matter under section 101”); see also
Intellectual Ventures, 2017 WL 900031, at *6 (“Although these data
structures add a degree of particularity to the claims, the underlying concept
embodied by the limitations merely encompasses the abstract idea itself of
organizing, displaying, and manipulating data of particular documents.”).
Thus, having determined that independent claims 1,11, and 14 are
directed to abstract ideas and that the claim elements, individually and as an
ordered combination, do not transform the claims into patent-eligible subject
matter, we reject claims 1,11, and 14 under 35 U.S.C. § 101. We also reject
dependent claims 2-10, 12, 13, and 15-20, which merely provide further
limitations to various aspects previously addressed. Specifically, the
dependent claims recite: (1) additional sections that perform calculations
(claim 2); (2) additional maps or map groups (or further limitations on the
data in maps or map groups previously recited) (claims 2, 3, and 15); (3)
further limitations on the mathematical calculations (claims 2-6, 12, and 15-
17); and (4) further limitations on the nature of the data received (claims 7-
10, 13 and 18-20). For the same reasons discussed above, these further
limitations are insufficient to transform the nature of claims 2-10, 12, 13,
and 15-20 into patent-eligible subject matter.
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DECISION
We REVERSE the decision to reject claims 1-20 under 35 U.S.C.
§ 103(a).
We enter a NEW GROUND OF REJECTION of claims 1-20 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, § 41.50(b)
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