SCHOTT AGDownload PDFPatent Trials and Appeals BoardMar 30, 20212020002605 (P.T.A.B. Mar. 30, 2021) Copy Citation 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. Appeal 2020-002605 Application 15/264,561 2 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. Appeal 2020-002605 Application 15/264,561 3 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. Appeal 2020-002605 Application 15/264,561 4 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.”). Appeal 2020-002605 Application 15/264,561 5 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. Appeal 2020-002605 Application 15/264,561 6 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). Appeal 2020-002605 Application 15/264,561 7 (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. Appeal 2020-002605 Application 15/264,561 8 (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 Appeal 2020-002605 Application 15/264,561 9 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. Appeal 2020-002605 Application 15/264,561 10 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. Appeal 2020-002605 Application 15/264,561 11 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. Appeal 2020-002605 Application 15/264,561 12 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 Copy with citationCopy as parenthetical citation