Joao Paulo. Ribeiro et al.

Patent Trials and Appeals Board

Sep 30, 2019

15165340 - (D) (P.T.A.B. Sep. 30, 2019)

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.
15/165,340 05/26/2016 Joao Paulo Ribeiro BRV6-56102 6732
116 7590 09/30/2019
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
EXAMINER
KING, PATRICK J
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte JOAO PAULO RIBEIRO, JEAN-PIERRE ARPIN,
and FRANCIS POURTIER1
____________

Appeal 2018-006143
Application 15/165,340
Technology Center 2800
____________

Before BEVERLY A. FRANKLIN, DONNA PRAISS,
and BRIAN D. RANGE, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellant identifies the real party in interest as Dover Europe Sὰrl.
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Appellant request our review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1, 4–6, and 21. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth
below:

1. Method of calibrating an inkjet printer that comprises a
fluid circuit, a print head connected to the fluid circuit through an
umbilical, this method comprising:
measuring with a pressure sensor at a reference point in the fluid
circuit or the print head, an ink pressure at a temperature T and at a
nominal jet velocity;
correcting data representative of a theoretical characteristic
reference curve that relates the pressure in the fluid circuit or the print
head, the ink density, the ink viscosity, the operating temperature, and
said nominal velocity of the inkjet generated by the print head, as a
function of the difference between the measured ink pressure resulting
from said characteristic reference curve for said temperature T and said
nominal jet velocity;
forming an actual characteristic reference curve based on the
corrected data, thereby accounting for variations or changes in
geometric or mechanical parameters of said fluid circuit, and
forming an inkjet based on the actual characteristic reference
curve.

The Examiner relies on the following prior art reference as evidence of
unpatentability:
Prothon et al. US 2012/0299989 A1 Nov. 29, 2012
(“Prothon”)

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THE REJECTIONS2
1. Claims 1, 4–6, and 21 are rejected under 35 U.S.C. §101 as being directed to
a judicial exception, i.e., an abstract idea.

2. Claims 1, 4, 5, and 21 are rejected under 35 U.S.C. §102(a)(2) as being
anticipated by Prothon.

ANALYSIS
Upon consideration of the evidence and each of the respective positions set
forth in the record, we find that the preponderance of evidence supports Appellant’s
position in the record. We thus reverse the Examiner’s decision for the reasons
provided by Appellant in the record, and add the following for emphasis.

Rejection 1
For the reasons discussed below, we are persuaded by Appellant’s arguments
that the claimed subject matter has not been shown to be patent-ineligible as
directed to a judicial exception without reciting significantly more.
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 35 U.S.C. §101 to include implicit exceptions:
“[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g.,
Alice Corp. v. CLS Banklnt’l, 573 U.S. 208, 216(2014).
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.

2 Claim 21 is also objected to as indicated on page 2 of the Answer.

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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 intermediated settlement, i.e., the use of
a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 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. 52, 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
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now 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 then turn 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). “[Merely requiring] 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 §101 with
regard to the first step of the Alice/Mayo test (i.e., Step 2A of the USPTO’s Subject
Matter Eligibility Guidance as incorporated into M.P.E.P. § 2106). USPTO’s
January 7, 2019, 2019 Revised Patent Subject Matter Eligibility Guidance (“Revised
Guidance”). 84 Fed. Reg. 50 (Jan. 7, 2019). Thus, under Step 1 of the Guidance, as
revised, we determine whether the claimed subject matter falls within the one of the
four statutory categories: process, machine, manufacture, or composition of matter.
Step 2A of the Guidance is two-pronged, under which we 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 § 2106.05(a)–(c), (e)–(h)).
See 84 Fed. Reg. at 54—55.
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then, under Step 2B, look to whether
the claim:
(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 84 Fed. Reg. at 56.

Guidance Step 1
Following the aforementioned revised guidance, initially, there is no dispute
that claims 1, 4–6, and 21 fall within one of the four statutory categories of
invention under Step 1 of the Guidance. Accordingly, we turn next to Step 2A(1) of
the Revised Guidance.
Guidance Step 2A, Prong 1
Under Step 2A(1), we find that claim 1 recites a judicial exception in the form
of mathematical concepts (such as the recitation of “forming an actual characteristic
reference curve based on the corrected data, thereby accounting for variations or
changes in geometric or mechanical parameters of said fluid circuit”), and therefore
the series of mathematical calculations recited in claim 1 constitutes an abstract idea.
SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding
that claims to a “series of mathematical calculations based on selected information”
are directed to abstract ideas).

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Guidance Step 2A, Prong 2
As a result, we next turn to Step 2A(2) of the Revised Guidance to determine
whether the claims integrate the judicial exception into a practical application (e.g.,
the recitation of “forming an inkjet based on the actual characteristic reference
curve”). Diehr, 450 U.S. at 187 (“A claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a mathematical
formula.”).
We are persuaded by Appellant that the claim recites steps that integrate the
judicial exception into a practical application because an article is transformed to a
different state or thing, specifically an inkjet is formed. Appeal Br. 5.
Appellant analogizes the claims to those in Diamond v. Diehr wherein the claims
were directed to measuring a temperature of a rubber mold, calculating the
Arrhenius equation for reaction time based on the measured temperature, and
opening the mold press when the appropriate time had elapsed. Id. Appellant states
that this opening, based on the calculation of measured parameters, was found to be
patent eligible. Appellant argues that the claims here are no different. Id. Appellant
explains that a measurement of pressure is made, a new characteristic reference
curve is formed, and an inkjet is formed based on that curve. Appellant states that,
in other words, just as the claims in Diehr performed a physical action based on
a calculation from measured data, the present claims perform a physical action based
on calculations from measured data. We agree and are persuaded by such argument.
Claim 1 thus integrates the abstract idea of the recited method of calibrating
an inkjet printer into a practical application by forming an inkjet based on an actual
characteristic reference curve. As a result, Appellant’s claims do not attempt to
monopolize the abstract idea of calibrating an inkjet printer itself, but rather defines
a specific method that employs the abstract idea to achieve an improvement in the
technical field of ink jet calibration.
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In view of the above, we thus reverse Rejection 1.

Rejection 2
We agree with Appellant that Prothon describes that, by knowing a volume
and the viscosity of ink in a container, the viscosity gap between the measured value
and a predetermined experimental value can be calculated to determine an amount of
solvent needed to dilute the ink to a normal viscosity. Prothon ¶ 138; Appeal Br. 3.
Appellant explains that, in other words, Prothon describes that a measured viscosity
of a theoretical form of ink (not of actual ink in the inkjet printer) can be corrected
to be a desired viscosity. Appeal Br. 3–4. Appellant explains that this correction is
predicated on ‘theoretical’ (or otherwise predetermined) relationships between ink
parameters, not the actual ink in the circuit. Claim 1 is different because claim 1
requires, inter alia,
forming an actual characteristic reference curve3 based on the corrected data,
thereby accounting for variations or changes in geometric or mechanical
parameters of said fluid circuit, and

forming an inkjet based on the actual characteristic reference curve.

In response, the Examiner fails to adequately address the aforementioned
points raised by Appellant. On pages 9–10 of the Answer, the Examiner states that
Proton discloses a Density–Temperature curve in Figure 5. But, we agree with
Appellant that Figure 5 merely shows the relationship between ink density and
viscosity, and while it can be referred to as a ‘reference curve’, it is not the claimed

3 The claimed “actual reference characteristic curve” includes the parameters of the
pressure in the fluid circuit or the print head, the ink density, the ink viscosity, the
operating temperature, and the nominal velocity of the inkjet generated by the print
head recited earlier in the claim.

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“actual characteristic reference curve” because it does not relate all of the claimed
parameters. Appeal Br. 4. The Examiner makes an effort to say that the curve
relates all of these parameters based upon Bernoulli’s equation. Ans. 10. However,
this falls short for lack of adequate explanation and evidentiary support.
In view of the above, we reverse Rejection 2.

DECISION
Each rejection is reversed.

ORDER
REVERSED