KROHNE Messtechnik GmbH

Patent Trials and Appeals Board

Aug 13, 2020

2019002533 (P.T.A.B. Aug. 13, 2020)

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.
14/566,825 12/11/2014 Kourosh Kolahi 740116-1184 5086
25570 7590 08/13/2020
Roberts Calderon Safran & Cole, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
YOHA, CONNIE C
ART UNIT PAPER NUMBER
2825
NOTIFICATION DATE DELIVERY MODE
08/13/2020 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):
docketing@rcsc-ip.com
lgallaugher@rcsc-ip.com
secretaries@rcsc-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KOUROSH KOLAHI, KROHNE MESSTECHNIK,
and RALF STORM
____________________

Appeal 2019-002533
Application 14/566,825
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, BRADLY W. BAUMEISTER, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2019-002533
Application 14/566,825

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a final
rejection of claims 1–12. Appeal Br. 8–12. 2 We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
CLAIMED SUBJECT MATTER
Claim 1 (reproduced-in-part) is illustrative of the claimed subject
matter (emphasis, formatting, and bracketed material added):
1. Method for operating a Coriolis mass flowmeter having at
least one electric setting device, at least one electric drive
forming an oscillation generator, at least one measuring tube
interacting with a medium and having at least one oscillation
sensor, comprising the steps of:
[A.] using the electric setting device to provide an electric
excitation signal for exciting the electric drive,
[B.] using the electric drive to excite the measuring tube into
oscillation in at least one first natural mode,
[C.] detecting the excited oscillation of the measuring tube
with the oscillation sensor as an oscillation measuring
variable (x, ẋ, Δt)[,]
[D.] calculating at least the mass flow of a medium through the
measuring tube as one medium parameter (ṁ) with the aid
of the oscillation measuring variable (Δt) by means of a
calculation rule, and
[E.] reducing the influence of interferences on measured values
or on medium parameters to be determined by:

1 Appellant identifies KROHNE Messtechnik GmbH as the real party in
interest. Appeal Br. 1 (Oct. 17, 2018).
2 Unless otherwise noted, all Appeal Brief references herein are to the
Appeal Brief filed October 17, 2018.
Appeal 2019-002533
Application 14/566,825

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[i.] determining a first eigenfrequency . . .
[ii.] determining a first eigenfrequency . . .
. . .
[L.] wherein the eigenfrequencies are continually measured
during operation of the Coriolis mass flowmeter and
calculation of the mass flow as the medium parameter is
continuously corrected using the integral correction function
with the continuously measured eigenfrequencies,
[M.] wherein corrected measured values and characteristic
variables of the flow through the measurement tube, in
which the influence of interferences has been reduced, are
output.
REJECTIONS
The Examiner rejects claims 1–12 under 35 U.S.C. § 101 because “the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more,” i.e.,
because the subject matter of the claimed invention is patent-ineligible.
Final Act. 3–11.
As to this rejection, our decision as to the § 101 rejection of claim 1 is
determinative as to the § 101 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 101
rejection of claims 2–12.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are determinative as to the rejections on appeal. Therefore, Appellant’s other
contentions are not discussed in detail herein.
Appeal 2019-002533
Application 14/566,825

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A.
In January 2019, the U. S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Memorandum Update at 1.
Under that guidance of these Memoranda, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2) , 84
Fed. Reg. 54–55.
Appeal 2019-002533
Application 14/566,825

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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 look, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
B.
Appellant raises the following arguments in contending that the
Examiner erred in rejecting claim 1 as being directed to patent-ineligible
subject matter because the claim includes additional elements that integrate
the judicial exception into a practical application.
Appellant contends the claim effects an improvement in computer
technology. Particularly, Appellant contends:
From . . . claim l, it should be clear to the Board that the claimed
invention is directed to the application [of] natural relationships
to achieve improved accuracy of the output from a Coriolis mass
flowmeter, and is not directed to [the natural relationships].
Appeal Br. 5.
In the appealed claims, the specific steps achieve an improve[d]
Coriolis mass flowmeter functionality by producing “corrected
measured values and characteristic variables of the flow through
the measurement tube, in which the influence of interferences has
been reduced, are output.”
Appeal Br. 6.
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Application 14/566,825

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These [claim 1] problem solving features are clearly recited in
the claims and the Examiner has failed to establish to the extent
required that these [Coriolis mass flowmeter] features . . . are
“directed to” natural relationships rather than applying natural
relationships.
Appeal Br. 7.
C.
We agree with Appellant’s argument. Essentially, Appellant is
arguing that the Examiner’s articulated reasoning for Alice/Mayo step 1 fails
to show the particular Coriolis mass flowmeter features of the invention are
not an additional element that integrates the judicial exception into a
practical application.
To provide sufficient articulated reasoning as to why a claim is
directed to an abstract idea or other patent-ineligible concept (e.g., a law of
nature), an Examiner must adequately address both (a) what the character of
the claim as a whole is directed to, and (b) whether that something is an
abstract idea or a patent-ineligible concept. Enfish, 822 F.3d at 1335.
In applying step 1 of the Alice/Mayo analysis, the Examiner’s analysis
fails to take into account the Coriolis mass flowmeter in determining
whether the claim recites additional elements that integrate the judicial
exception into a practical application. By oversimplifying claim 1 the
Examiner fails to provide sufficient articulated reasoning (i.e., notice) to
Appellant of the Examiner’s determination of what the character of claim 1
as a whole is directed to. Such an oversimplified claim analysis, at best,
Appeal 2019-002533
Application 14/566,825

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may show that the claim involves an abstract idea, but cannot show the
character of the claim as a whole is directed to an abstract idea.
D.
Appellant’s arguments persuade us the Examiner fails to properly
determine what the claim is directed to. The Examiner fails to provide
sufficient articulated reasoning to support a conclusion that all the specific
claim limitations that the Examiner labels as included in the abstract idea are
actually an abstract idea. Therefore, we do not sustain the rejection under
35 U.S.C. § 101 of claim 1.

CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 1–12 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
The Examiner’s rejection of claims 1–12 under 35 U.S.C. § 101 is
reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–12 101 Eligibility 1–12

REVERSED