Ex Parte Schmidt

Patent Trial and Appeal Board

Aug 9, 2017

13132861 (P.T.A.B. Aug. 9, 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.
13/132,861 08/11/2011 Alexander Schmidt BOSC.P6891US/11602980 8383
24972 7590 08/11/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
ISHIZUKA, YOSHIHISA
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER SCHMIDT1
Appeal 2016-005601
Application 13/132,861
Technology Center 2800
Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 13, 14, 17, 18, and 20-24. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
1 Robert Bosch GmbH is identified as the real party in interest. App. Br. 1.
Appeal 2016-005601
Application 13/132,861
Appellant claims a method for determining a charge state of a
secondary intercalation cell having an anode, a cathode, a separator, and an
electrolyte phase comprising:
determining the charge state by back-calculating with an
electrochemical simulation model in which physical-chemical properties in
the anode and the cathode are considered in simplified form as being
homogeneously distributed;
determining simulation model Butler-Volmer reaction kinetics for the
anode and the cathode; and
expanding the Butler-Volmer reaction kinetics on the anode side by a
potential component in the electrolyte phase of the anode (sole independent
claim 13).
Further details of Appellant’s claimed method are set forth in
representative claim 13, a copy of which taken from the Claims Appendix of
the Appeal Brief appears below.
13. A method for determining a charge state of a secondary
intercalation cell having an anode, a cathode, a separator, and
an electrolyte phase which saturates the anode, the cathode, and
the separator, the method comprising:
determining the charge state by back-calculating based
on measured variables, which are measured on the intercalation
cell, with an electrochemical simulation model, in which
simulation model physical-chemical properties in the anode and
the cathode are considered in simplified form as being
homogeneously distributed in the anode and in the cathode in
each case;
determining simulation model Butler-Volmer reaction
kinetics in each case for the anode and the cathode; and
expanding the Butler-Volmer reaction kinetics on the
anode side by a potential component (2) in the electrolyte
phase of the anode,
2
Appeal 2016-005601
Application 13/132,861
wherein, for the anode-side expansion of the Butler-
Volmer reaction kinetics, the potential component in the
electrolyte phase of the anode is estimated based on a charge or
discharge current of the cell, a mean electrical conductivity of
the electrolyte phase, and a thickness of an anode-separator-
cathode sandwich;
wherein an overpotential i\s,a of the Butler-Volmer
reaction kinetics of the anode, which are expanded by a
potential component in the electrolyte phase of the anode, is
calculated according to
i\s,a = s,a- Ua(cs,a) - 2(k,I,L) - <1>SEI
where s,a is the voltage drop in the solid phase at a charge or
discharge current I of the cell, Ua(cs,a) is the open-circuit
voltage of the anode as a function of concentration cs,a of
atoms, molecules and/or ions which are intercalated in the
active particles of the anode during the intercalation, <1>SEI is
the potential drop due to the film resistance on the surface of
the anode, and 2(k,I,L) is the potential component in the
electrolyte phase of the anode as a function of mean electrical
conductivity k of the electrolyte phase, charge or discharge
current I of the cell, and thickness L of the anode-separator-
cathode sandwich;
wherein the potential component 2(k,I,L) in the
electrolyte phase of the anode is calculated according to 2 =
k-1 «L« I(t), where k is the mean electrical conductivity of the
electrolyte phase, L is the thickness of the anode-separator-
cathode sandwich, and I(t) is the charge or discharge current of
the cell as a function of time t;
wherein the mean electrical conductivity k of the
electrolyte phase is weighted using a weighting w.
The Examiner rejects all appealed claims under 35 U.S.C. § 112, 2nd
paragraph, as indefinite.
Under 35 U.S.C. § 103(a), the Examiner rejects independent claim 13
as unpatentable over Nishi (WO 2008/026525 Al, published March 6, 2008,
with EP 2 124 288 Al, published Nov. 25, 2009, relied on and cited to as the
English equivalent) in view of Imamura (US 2002/0180448 Al, published
3
Appeal 2016-005601
Application 13/132,861
Dec. 5, 2002) and Li (US 2008/0243461 Al, published Oct. 2, 2008) and
rejects remaining dependent claims 14, 17, 18, and 20-24 as unpatentable
over these references alone or in combination with an additional prior art
reference.
Finally, the Examiner rejects all appealed claims under 35 U.S.C.
§ 101 as directed to ineligible subject matter.
In contesting these rejections, Appellant does not present separate
arguments specifically directed to the dependent claims under rejection
(App. Br. 3-5). Therefore, the dependent claims will stand or fall with their
parent independent claim 13.
We sustain each of the Examiner’s rejections for the reasons
expressed in the Final Action, the Answer, and below.
The $ 112, 2nd paragraph. Rejection
The Examiner determines that the appealed claims are indefinite
because the independent claim equation “2=k-l -LT(t)” does not possess
the same units on the left and right hand sides (Final Action 4; see also id. at
2).
In contesting this rejection, the Appellant states that, “in the prior art
rejection, the Examiner purports to have found the potential component 2
in the asserted combination” (App. Br. 3) and argues that “[i]t cannot both
be true that the potential component is indefinite in the particular way
asserted by the Examiner, yet also found in the prior art” {id.).
The Examiner responds by explaining that in the prior art rejection the
claims were interpreted as encompassing a narrow embodiment wherein the
potential component 02 is limited to a given region or area {see Final
Action 10) (i.e., whereby the units on the left and right hand sides of the
4
Appeal 2016-005601
Application 13/132,861
equation are equivalent) but that the claims are still indefinite with respect to
broader embodiments wherein 2 is not so limited (i.e., whereby the
aforementioned units on the left and right hand sides of the equation are
different) (Ans. 2-3).
In the Reply Brief, Appellant “stands on the arguments submitted in
the Appeal Brief’ (Reply Br. 1). Asa consequence, on this record,
Appellant fails to challenge the Examiner’s determination that the appealed
claims, while encompassing a narrow embodiment which is definite, also
encompass broader embodiments which are indefinite.
We sustain, therefore, the § 112, 2nd paragraph, rejection of all
appealed claims.2
The $ 103 Rejections
In rejecting claim 13, the Examiner finds that Nishi discloses a
method for determining a charge state of a secondary intercalation cell (Final
Action 5-7) but is silent regarding the claim features relating to a mean
electrical conductivity of the electrolyte phase and wherein this mean
electrical conductivity is weighted using a weighting w {id. at 7). With
respect to these deficiencies, the Examiner finds that Imamura teaches the
mean electrical conductivity feature {id. at 7-8) and that Li teaches the
feature of using a weighted average {id. at 8). Based on these findings, the
Examiner concludes that it would have been obvious to modify Nishi by
2 We are able to assess the § 103 and § 101 rejections of the appealed claims
based on the Examiner’s undisputed determination that the claims
encompass a narrow and definite embodiment even though they also
encompass broader and indefinite embodiments.
5
Appeal 2016-005601
Application 13/132,861
using a mean conductivity of the electrolyte phase as taught by Imamura and
wherein the mean conductivity is weighted as taught by Li “because a mean
conductivity using a weighted average would give a better [and] more
accurate measure of the average” {id. at 10).
Appellant argues that “Li (at paragraph [0073]) merely refers to a
‘weighted average of thermal conductivities’ . . . [and] does not, however,
disclose applying a weighting w to a mean electrical conductivity of an
electrolyte phase” (App. Br. 4). Appellant further argues that “the Office
Action fails to specifically articulate what teachings or suggestions in Nishi
and Imamura would have motivated one of ordinary skill in the art to
combine such a disparate reference, Li, to provide the above features of
claim 13” {id.).
Appellant’s argument lacks persuasive merit. In responding to this
argument, the Examiner explains that the rejection relies on the combined
teachings of Imamura and Li wherein Imamura is relied on for teaching a
mean electrical conductivity of an electrolyte phase and Li is relied on for
teaching the use of a weighted average (Ans. 5-6). Moreover, the Examiner
convincingly articulates the motivation for combining these reference
teachings in the manner required by claim 13, namely, “to more accurately
reflect an appropriate value” {id.; see also Final Action 10). Finally, the
Examiner correctly points out that Appellant cannot show nonobviousness
by attacking references individually where the rejections are based on
combinations of references (Ans. 6, citing In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) and In re Keller, 642 F.2d 413, 426 (CCPA
1981)).
Significantly, Appellant’s Reply Brief does not rebut the Examiner’s
position in any of these respects (Reply Br. 4 (“As for the prior art
6
Appeal 2016-005601
Application 13/132,861
rejections, Appellant chooses to stand on the arguments in the Appeal
Brief.”)).
Under these circumstances, we also sustain the § 103 rejections of the
appealed claims.
The $ 101 Rejection
This rejection is based on the Examiner’s determination that the
appealed claims are directed to ineligible subject matter “because the
claim(s) as a whole, considering all claim elements both individually and in
combination, do not amount to significantly more than an abstract idea . . .
of a mathematical relationship or formula” (Final Action 4-5).
In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
(2014), the Supreme Court reiterated the following two-step analysis
(previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012)) for distinguishing patents that claim
patent-ineligible laws of nature, natural phenomenon, and abstract ideas
from those that claim patent-eligible applications of those concepts:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask, what
else is there in the claims before us? . . . We have described step
two of this 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.
Alice, 134 S. Ct. at 2355.
Appellant cites In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2009) and
SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir.
2010) (App. Br. 3—4) as support for contending that “the [claimed] method
of determining the charge state of a secondary intercalation cell (1) cannot
7
Appeal 2016-005601
Application 13/132,861
be performed without a machine and (2) the calculations could not be
performed entirely in the human mind[, and,] [accordingly, claims 13, 14,
17, 18 and 20 to 24 are directed to statutory subject matter” {id. at 4).
The Examiner responds to this contention by finding that, “[e]ven
though some mathematical calculations may be difficult to perform and
calculate in the human mind, it is still possible [whereby] [i]t may take some
time but a human mind could perform the claimed steps” (Ans. 5).
Appellant’s contention is unpersuasive for a number of reasons.
Initially, we emphasize that Appellant in the Reply Brief does not dispute
the Examiner’s above quoted finding (Reply Br. 1-4). Moreover, we
observe that Appellant does not identify any claim language or any
disclosure in the Specification requiring the claimed method to be performed
with a machine such as a computer in such a manner as to render the claimed
method patent-eligible subject matter under § 101. Finally, we point out that
the Bilski and SiRk1 Federal Circuit cases cited by Appellant are of
questionable value in analyzing the § 101 issue before us because these
cases were decided before, and thus did not have the guidance provided by,
the Supreme Court in Mayo and Alice.
Appellant also argues that “the claims here ... are not directed to any
human activity or fundamental economic practice [and] ... are not directed
to a judicial exception” (Reply Br. 2).
However, in the record before us, Appellant does not dispute the
Examiner’s previously quoted determination that the claims are directed to a
mathematical relationship or formula. A mathematical formula is judicially
recognized as patent-ineligible subject matter. See Parker v. Flook, 437
U.S. 584, 585-86, 594-95 (1978).
8
Appeal 2016-005601
Application 13/132,861
Appellant further contends that “this case resembles SiRF Technology
Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010), in
which the Federal Circuit held that, despite the claims at issue containing
calculation steps, the claimed invention was directed not to the calculations
as such, but to the use of those calculations for the accomplishment of a
specific technological purpose” (Reply Br. 4). Appellant expands this
contention by urging that “[similarly, the claims here are not directed
merely to the performance of these calculations and use of the model in an
unspecified way [but rather] [tjhese claims direct and focus these
calculations for the accomplishment of a technical improvement in the art of
intercalated cells by improving upon the way that their SOC [i.e., state of
charge] is measured” {id.).
For a number of reasons, Appellant’s contentions have no convincing
merit. As indicated earlier, SiRF is of questionable value as support for
Appellant’s position because it precedes the guidance provided by Mayo and
Alice. Moreover, in SiRF, the GPS receiver was considered to place a
meaningful limitation on the claims because “without a GPS receiver it
would be impossible to generate pseudoranges or to determine the position
of the GPS receiver whose position is the precise goal of the claims” {SiRF,
601 F.3d at 1332). In contrast, claim 13 merely recites a mathematical
formula for determining a charge state of a secondary intercalation cell and
recites no application to the operation of the cell or any other device.
Compare Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed.
Cir. 2017) (“Far from claiming the equations themselves, the claims seek to
protect only the application of physics to the unconventional configuration
of sensors as disclosed.”). Finally, we point out that, contrary to Appellant’s
apparent belief, a patent-ineligible abstract idea of a mathematical formula is
9
Appeal 2016-005601
Application 13/132,861
not transformed into a patent-eligible invention by “limiting the use of an
abstract idea ‘to a particular technological environment’” {Alice, 134 S. Ct.
at 2358, quoting Bilski v. Kappos, 561 U.S. 593, 610-11 (2010)).
Because Appellant fails to show error on the Examiner’s part, we also
sustain the § 101 rejection of all appealed claims.
Conclusion
The decision of the Examiner is affirmed.
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).
AFFIRMED
10