SCHOTT AG

Patent Trials and Appeals Board

Mar 30, 2021

2020002605 (P.T.A.B. Mar. 30, 2021)

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.
15/264,561 09/13/2016 Andreas ORTNER 2133.317USX 9950
27623 7590 03/30/2021
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
03/30/2021 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 ANDREAS ORTNER,
THOMAS ROSSMEIER, JÜRGEN VOGT,
and MARIUS NECEL
____________

Appeal 2020-002605
Application 15/264,561
Technology Center 1700
____________
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
BRIAN D. RANGE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 of Application 15/264,561. Final
Act. (March 15, 2019). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Schott AG as the real party in interest. Appeal Br. 1.
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Application 15/264,561
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BACKGROUND
The ’561 Application describes a method and apparatus for
manufacturing thin glass strips. Spec. ¶ 2. In particular, the Specification
describes a method for reducing the occurrence and severity of “camber
defects,” which are deformations of the glass strip’s edges that cause the
glass strip to have a curvature. Id.
Claim 1 is representative of the ’561 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. A method for producing a thin glass strip, comprising:
drawing, using a drawing device, the thin glass strip
away from a glass strip forming device;
measuring, using a measuring device, variables that are
dependent on a differing length of the edges of the thin glass
strip at two measurement locations spaced apart transversely to
a longitudinal extension of the thin glass strip;
determining a difference or quotient of the variables;
determining a control variable from the difference or
quotient; and
using the control variable to control the glass strip
forming device so as to counteract a difference in velocities of
the thin glass strip between the edges of the thin glass strip.
Appeal Br. 21.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 6, 7, and 9 are rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Final Act. 8.
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2. Claims 1–6 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by
Kariya.2 Final Act. 15.
3. Claims 7–10 are rejected under 35 U.S.C. § 103 as unpatentable over
Kariya. Final Act. 19.
DISCUSSION
A. Rejection of claims 1, 6, 7, and 9 as directed to ineligible subject
matter
The Examiner rejected claims 1, 6, 7, and 9 under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 6–12. We address this
rejection below.
1. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court 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 Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 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

2 US 2013/0180285 A1, published July 18, 2013.
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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, 67 (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.
252, 267–68 (1853))); 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
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 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is 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.”).
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If the claim is “directed to” an abstract idea, we turn to the second part
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.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
2. USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.3 The Manual of
Patent Examining Procedure (“MPEP”) now incorporates this revised
guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June
2020).4

3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). 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”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
4 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
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Under MPEP § 2106, 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 (“Step 2A, Prong Two”).5
MPEP § 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,6 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 activity” in the field; or

5 “Examiners evaluate integration into a practical application 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.” MPEP
§ 2106.04(d)(II).
6 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not
directed to an abstract idea under step one of the Alice analysis, we do not
need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.7
MPEP § 2106.05(d).
3. Step 1
In step 1, we determine whether the claims at issue fall within one of
the statutory categories of claims—processes, machines, manufacturers, or
compositions of matter.
Like the Examiner, we determine that claim 1 recites a process. We
reach this conclusion because the preamble in claim 1 states that the claim is
directed to a “method for producing a thin glass strip.” The body of the
claim recites five steps in the claimed method or process: “drawing,”
“measuring,” “determining a difference or quotient,” “determining a control
variable,” and “using the control variable.”
Claims 6, 7, and 9 also recite processes because they depend from
claim 1 and specify further details of the measuring step.
On appeal, Appellant does not challenge this determination with
respect to any of the claims at issue.
4. Step 2A, prong 1
Next, we determine whether the claim recites a judicial exception.
MPEP § 2106.04(a), (d). The Revised Guidance identifies three judicially-
excepted grouping identified by the courts as abstract ideas:

7 This corresponds to Alice part two where it is determined whether the
claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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(1) mathematical concepts, (2) certain methods of organizing human
behavior such as fundamental economic practices, and (3) mental processes.
In rejecting claims 1, 6, 7, and 9, the Examiner determined that these
claims recite two different abstract ideas: a mathematical algorithm and a
mental process. Final Act. 6.
We agree with the Examiner. The step of “determining a difference or
quotient” is a straightforward recitation of a mathematical process.
Similarly, under the broadest reasonable interpretation, the step of
“determining a control variable from the difference or quotient” requires
performance of the steps of receiving the difference or quotient and
providing the control variable. These are processes for receiving and
providing information, which are actions that can be performed in the mind.
Taken together these steps focus upon “selecting certain information,
analyzing it using [a] mathematical technique, and reporting or displaying
the results of the analysis. That is all abstract.” SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). Accordingly, we conclude that
the steps of claim 1 recite judicial exceptions of mathematical concepts or
mental processes, which are categories of abstract ideas. Claims 6, 7, and 9
depend from claim 1 and, therefore, also recite these judicial exceptions.
5. Step 2A, prong 2
Next, we determine whether the claims recite additional elements that
integrate the judicial exception into a practical application. MPEP
§ 2106.04(a), (d). “[I]ntegration into a practical application” requires that the
claim recite an additional element or a combination of elements, that when
considered individually or in combination, “apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
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judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Guidance at 53.
Here, we determine that claim 1 recites sufficient additional
limitations to integrate the abstract ideas into a practical application. In
particular, claim 1 recites limitations that tie the mathematical processes of
subtraction and division to a specific, concrete method for improving control
of thin glass strip manufacturing. Claim 1 does this by specifying the source
of the data that is subjected to the mathematical process. The data are
determined for measurements of the properties of the thin glass strip that is
being manufactured. Claim 1 also limits the way in which the result of the
calculation can be used. Results are used to determine a control variable that
controls “the glass strip forming device so as to counteract a difference in
velocities of the thin glass strip between the edges of the thin glass strip.”
Thus, the claims tie the recited exception to a particular machine—a glass
strip manufacturing apparatus.
In sum, claim 1 does not represent an attempt to monopolize the use
of subtraction or division. Instead, the claim’s language integrates use of the
abstract ideas recited in the claim into a practical application carried out on a
specific type of machine. In view of the foregoing, we determine that the
Examiner erred in rejecting claim 1 as directed to patent ineligible subject
matter. Because we have reversed the rejection of claim 1, we also reverse
the rejection of dependent claims 6, 7, and 9.
B. Rejection of claims 1–6 as anticipated by Kariya
The Examiner rejected claims 1–6 of the ’561 Application as
anticipated by Kariya. Final Act. 15–19.
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Appellant argues for reversal of this rejection on the basis of the
limitations of claim 1. See Appeal Br. 15–17. Accordingly, we limit our
discussion to claim 1. Dependent claims 2–6 will stand or fall with claim 1.
In particular, Appellant argues that Kariya does not describe two of
claim 1’s limitations. Id. We address these arguments below.
First, Appellant argues that Kariya does not describe a process that
“use[s] the control variable to control the glass strip forming device so as to
counteract a difference in velocities of the thin glass strip between the
edges of the thin glass strip.” Id. at 16.
The Examiner found that Kariya’s paragraph 142 describes this step.
Final Act. 17 (finding that paragraph 142 describes both “using” the control
variable and the limitation “to control the glass strip forming device”).
We agree with Appellant that this finding is erroneous.
Kariya’s paragraph 142 describes controlling two separate sets of
heaters located at different locations along the path of the glass sheet in
Kariya’s glass sheet production process to achieve particular temperature
profiles across the glass sheet. Kariya ¶ 142. Kariya, however, is devoid of
any suggestion that these temperature profiles are selected “to counteract a
difference in velocities of the thin glass strip between the edges of the thin
glass strip.” Rather than find such evidence or offer an explanation as to why
or how Kariya’s temperature profiles perform the recited function, the
Examiner shifts the burden to Appellant. See Answer 17. Such a burden shift
is inappropriate, as the Examiner has the burden in the first instance to
establish a prima facie case of unpatentability.
Second, Appellant argues that Kariya does not describe the step of
“measuring, using a measuring device, variables that are dependent on a
differing length of edges of the thin glass strip.” Appeal Br. 16–17.
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The Examiner found that Kariya’s paragraph 118 describes this
limitation. Final Act. 16. The Examiner further found that the temperatures
are dependent (in part) upon a differing length of edges. The
length of the glass sheet strip increases as a function of time; it
is a “differing length” because it is different at different times.
This length would also be the length of each of the edges and
including the measurement locations.
Id.
Again, we agree with Appellant that this finding is erroneous.
Paragraph 118 describes the measurement of temperature profiles of
Kariya’s glass sheet at two different locations in Kariya’s production
process. There is no indication in Kariya that these variables “are dependent
on a differing length of edges of the thin glass strip at two measurement
locations spaced apart transversely to a longitudinal extension of the thin
glass strip.” The Examiner’s finding to the contrary is based upon an
unreasonably broad interpretation of claim 1. The ’561 Application’s
Specification makes clear that the differing length of the edges of the thin
glass strip refers to a difference in the relative length of one edge to the other
edge, not changes in the length of a single edge or uniform changes in length
of both edges. It is the difference in the relative length of one edge to the
other edge that causes the camber that the claimed invention is said to reduce
or eliminate. See generally Spec. `¶¶ 24–26; Figures 1, 2.
For the reasons set forth above, we reverse the Examiner’s rejection of
claim 1 as anticipated by Kariya. Because claims 2–6 depend from claim 1,
we also reverse the rejection of these claims.
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C. Rejection of claims 7–10 as unpatentable over Kariya
As discussed above, we have determined that the Examiner erred by
finding that Kariya anticipates claims 1–6 because Kariya does not describe
every limitation of claim 1. In rejecting claims 7–10 as obvious over Kariya,
the Examiner has not explained why the differences between the limitations
not expressly described by Kariya and Kariya’s description would have been
obvious to a person having ordinary skill in the art at the time of the
invention. Thus, the Examiner has not cured the defects in the rejection of
claim 1. Claims 7–10 depend from claim 1, and the Examiner has not
established a prima facie case of obviousness of those claims.
We, therefore, reverse the rejection of claims 7–10 as obvious over
Kariya.
CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 7, 9 101 Ineligible Subject Matter 1, 6, 7, 9
1–6 102(a)(1) Kariya 1–6
7–10 103 Kariya 7–10
Overall Outcome 1–10
REVERSED