COLLET, Thierry et al.

Patent Trials and Appeals Board

Dec 18, 2019

14743643 - (D) (P.T.A.B. Dec. 18, 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.
14/743,643 06/18/2015 Thierry COLLET 0563-1321 9525
466 7590 12/18/2019
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
EXAMINER
MERCADO, ALEXANDER A
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
12/18/2019 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):
DocketingDept@young-thompson.com
yandtpair@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THIERRY COLLET and ROLAND HAUFLER

Appeal 2019-001318
Application 14/743,643
Technology Center 2800
____________

Before JEFFREY B. ROBERTSON, MICHAEL G. McMANUS, and
SHELDON M. McGEE, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–7 and 9–22. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real parties in interest as Continental
Automotive France and Continental Automotive, GmbH. Appeal Brief filed
June 6, 2018 (“Appeal Br.”) 2.
Appeal 2019-001318
Application 14/743,643

2

CLAIMED SUBJECT MATTER

The present application generally relates to a method for determining
the opening point of a two-position valve. Specification filed June 18, 2015
(“Spec.”) 1:5–7.
The Specification describes a method that includes the use of a pulse
width modulated (PWM) signal to open a two-position valve. Id. at 1:9–10.
A pulse width modulated signal is one where the duration that the signal is
in the high state is modulated so as to simulate amplitude proportionality.
Id. at 3:12–16. The Specification refers to this signal as “test signal ST.” Id.
at 6:1–2. The duty cycle (designated as “R”) of test signal ST is the
proportion of time that the signal ST is in a high state for a given period. Id.
at 3:22–31; id., Figure 3.
The point at which the valve opens to permit the flow of fluid or gas is
designated as the opening point PO. Id. at 4:1–6. The Specification teaches
“so that any derived model, such as a flow estimator, is precise, or for other
applications, it is necessary to know precisely the opening point PO of a
valve 1 or the minimum duty cycle R on the basis of which the valve 1
effectively opens.” Id. at 4:4–6.
Figure 4 of the Application illustrates performance of the method
taught by the patent.
Appeal 2019-001318
Application 14/743,643

3

Spec., Fig. 4. The Specification describes Figure 4 as “a partial schema of
the fuel supply system of a motor vehicle.” Id. at 4:16–17. The figure
shows valve 1, pressure sensor 2, processing unit 3, upstream pipe 4,
downstream pipe 5, and vapor filter 11.
The Specification teaches that “pressure signal 7 is typically measured
by a pressure sensor 2.” Id. at 6:12. The Specification further teaches that
“[t]he moment of opening [t0], at which a variation of the detection signal S
is produced, is noted. The opening point PO is then determined by the duty
cycle R of the test signal ST at said noted moment [t0].” Id. at 6:13–15.
Pressure signal 7 is modified so as to achieve detection signal S. Id. at
7:5–7. The Specification teaches that, as a preliminary step, the noise
associated with the pressure sensor 2 is “learned.” Id. at 6:34–7:4.
Appeal 2019-001318
Application 14/743,643

4
Subsequently, “[i]n accordance with a preferred embodiment at least one
function of the filter producing the detection signal S on the basis of the
pressure signal 7 performs a subtraction that deprives the pressure signal 7
of said learned noise.” Id. at 7:5–7.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A method for determining an opening point (PO) of
a two-position valve (1) controlled by a pulse width-
modulated signal (ST), the method comprising the following
steps:
• controlling the valve (1) by a pulse width
modulated test signal (ST) having a duty cycle (R)
growing as a function of time (T),

• detecting an opening of the valve (1) by
observation of a variation in the time of a detection
signal (S) provided by a pressure signal (7) measured
by a pressure sensor (2) arranged in a pipe (4, 5)
connected to the valve (1) and noted at the instant (to)
of said variation of the detection signal (S), the
opening point (PO) being the duty cycle (R) of the test
signal (ST) at said noted instant (to).

Appeal Br. 15 (Claims App’x).

Appeal 2019-001318
Application 14/743,643

5
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–7 and 9–22 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 3–4.
2. Claims 11–14 and 21 are rejected under 35 U.S.C. § 112(b)
as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventors regard
as the invention. Id. at 5–6.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–7 and 9–22 as directed to
non-statutory subject matter on the bases that 1) certain limitations are
directed to transitory forms of signal transmission, and 2) the claims recite
an abstract idea and, considering all claim elements both individually and in
combination, do not amount to significantly more than the abstract idea.
Final Act. 3–4.
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 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 Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that
Appeal 2019-001318
Application 14/743,643

6
framework, we first determine what concept the claim is “directed to.” See
Id. 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 mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). If
the claim is “directed to” an abstract idea, we 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). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
In January 2019, the PTO published revised guidance on the
application of section 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, 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); and
Appeal 2019-001318
Application 14/743,643

7
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–
(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then 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 Guidance.
Appellant argues that the method of the claims, considered as a whole,
is not an abstract idea under Step 2A of the Section 101 analysis. Even were
it considered abstract, Appellant argues, when considered as an ordered
combination, the claims are directed to significantly more than an abstract
idea. Appeal Br. 4–10.
Step 1
Section 101 provides that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.” 35 U.S.C. § 101.
The Examiner finds that claim 1 recites a method where a two-
position valve is controlled by a pulse width-modulated signal. Final Act. 3.
The Examiner determines that the PWM signal limitation is “directed to
transitory forms of signal transmission” rather than a statutory class of
invention and is therefore not patent-eligible. Id. (citing In re Nuijten, 500
Appeal 2019-001318
Application 14/743,643

8
F.3d 1346, 1357 (Fed. Cir. 2007)). The Examiner similarly determines that
the detection signal limitation is “directed to transitory forms of signal
transmission” and is therefore not patent-eligible. Id.
In In re Nuijten, the Federal Circuit held that transitory signals are not
patent eligible because they are not directed to one of the four categories of
statutory subject matter: process, machine, manufacture, or composition of
matter. See In re Nuijten, 500 F.3d 1346, 1354–57. Here, however, the
claims are directed to a “method” which qualifies as a “process” under
section 101. See 35 U.S.C. § 100(b); see also Appeal Br. 6. The Nuitjen
Court explained that claim one of Nuijten’s patent, “a method for embedding
supplemental data in a signal . . .” was allowed by the Patent and Trademark
Office because it was a “claim[ ] to a process he invented”). Id. at 1357 n. 9;
see also Femto-Sec Tech, Inc. v. Lensar, Inc., 2016 WL 6963049 *4 (C.D.
Cal. 2016) (holding that a method that includes the use of a pulsed laser is
directed to statutory subject matter).
In view of the foregoing, we determine that the Examiner’s
determination that the claims are not directed to statutory subject matter
because the foregoing limitations are directed to transitory forms of signal
transmission is in error.

Step 2A, Prong 1
Under Step 2A, Prong 1 of the Guidance, we determine whether claim
1, being directed to a statutory class of invention, nevertheless falls within a
judicial exception.
Appeal 2019-001318
Application 14/743,643

9
The Examiner determines that the detection step is “directed to an
algorithm run on processor (3) including filtering the pressure signal” and is
therefore abstract as a mathematical algorithm. Final Act. 3–4.
Claim 1 requires “detecting an opening of the valve (1) by observation
of a variation in the time of a detection signal (S) provided by a pressure
signal.” Appeal Br. 15.
The Guidance indicates that “concepts performed in the human mind”
fall within the category of abstract mental processes. Guidance 52. The
Guidance specifies that such mental processes include “observation,
evaluation, judgment, [and] opinion.” Id. (emphasis added). The detecting
of a valve opening “by observation” falls within this mental process
category.
The Guidance further informs that mathematical concepts fall within
the abstract idea exception. The Specification teaches that “[t]he variation
of the detection signal S over a time interval Δt is used to detect opening of
the valve 1.” Spec. 8. That is, the processing unit 3 compares detection
signal S at one time to the same signal at a subsequent time. See Spec. 6:1–
15; Fig. 4. This is further described as follows in the context of Figure 5:
At the end of a new measurement duration, the third
phase P3 starts. The control signal ST is modified such that the
corresponding duty cycle R is increased by an increment. It can
be observed over the pressure signal 7 that oscillations
reproducing the oscillations of the control signal ST can be
observed. It follows that the value of the detection signal S,
indicative of a variation, sees its value rise. Here, this rise
has the form of a ramp, due to the presence of an integrator
in the processing, so as to amplify the variation. Here in a
particular embodiment, the slope of the signal S is
proportional to the amplitude of the pressure variation.
Appeal 2019-001318
Application 14/743,643

10

It follows that the value S2 of the detection signal S has
a significant variation relative to the reference value SO.
This is indicative of an opening of the valve 1. The value of the
duty cycle R can then be noted and provides the opening point
PO.

Spec. 9 (emphasis added). Thus, the Specification teaches that the
determination of detection signal S includes various mathematical
relationships, and, as such, claim 1 recites a mathematical relationship.
Accordingly, we determine that claim 1 recites abstract subject matter
under the Guidance.

Step 2A, Prong 2
Next, we determine whether the claim as a whole integrates the
recited judicial exception into a practical application of the exception. The
Guidance teaches that one may evaluate integration into a practical
application by:
(a) identifying whether there are any additional
elements recited in the claim beyond the judicial
exception(s); and

(b) evaluating those additional elements individually
and in combination to determine whether they integrate
the exception into a practical application.
Guidance 54–55.
The Guidance further teaches certain exemplary conditions that are
indicative that an additional element (or combination of elements) may
integrate the exception into a practical application. One such circumstance
is where “an additional element reflects an improvement in the functioning
Appeal 2019-001318
Application 14/743,643

11
of a computer, or an improvement to other technology or technical field.”
Id. at 55.
Appellant argues that the claims are directed to a method of
determining an opening point of a valve “wherein the opening point
comprises the minimum value of a signal, and the minimum value is
determined via a series of steps that involve a particular sensor arranged in a
particular way in pipes connected to the valve.” Appeal Br. 7. Appellant
further argues that “the opening point that is the subject of the claimed
determining is (“being”) the duty cycle (R) of the test signal (ST) at a
particular instant, wherein the instant is determined by a pressure sensor in a
pipe connected to a valve being controlled in a particular way.” Id. at 8.
Here, in addition to the abstract comparison required by the detection
step, claim 1 requires the additional process steps of “controlling the valve”
with a pulse width modulated signal which entails increasing the duty cycle
of the signal over time. Appeal Br. 15 (Claims App’x.). Claim 1 further
requires use of a pressure sensor placed in a pipe to provide a pressure
signal. Id.
The Specification teaches that in prior art systems, in the context of an
automobile fuel system, “a method for determining the opening point PO of
the bleed valve 1 lies in progressively controlling the bleed valve and in
observing a deviation of a richness sensor or of a richness controller.” Spec.
5:20–22. The Specification further teaches that “[s]uch a method has a
number of disadvantages” including “a relatively long determination
duration, typically around 30 seconds.” Id. at 5:20–22, 30–31. The
Specification teaches that the duration of the detection measurement of the
Appeal 2019-001318
Application 14/743,643

12
claimed method “is between 1 and 4 seconds, preferably equal to 2
seconds.” Id. at 6:25–26.
We determine that the additional elements, considered in conjunction
with the detection step, reflect an improvement in the functioning of valve
opening technology. Accordingly, the claim as a whole integrates the
recited abstract subject matter into a practical application, and the claim does
not fall within a judicial exception to section 101. That is, we determine that
the Examiner erred in determining that the claim as a whole is directed to
abstract subject matter. As a result, we need not reach Step 2B. Guidance
54.

Rejection 2. The Examiner rejects claims 11–14 and 21 as being
indefinite.2 Final Act 5–6. Appellant did not address this rejection in its
Appeal Brief. See Appeal Br., generally; see also Answer 7. Accordingly,
we summarily affirm the rejection. See 37 C.F.R. § 41.37(c)(1)(iv) (2012);
see also Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed.
Mar. 2014) (“If a ground of rejection stated by the examiner is not addressed
in the appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.”).

2 Despite the Examiner indicating “[i]t also appears all of the rejections
under 112(a) and 112(b) have been overcome [by the proposed
amendment],” in the Advisory Action dated April 2, 2018, the Examiner did
not enter the proposed amendment (id. at 2) and expressly maintained this
rejection in the Answer, Ans. 3. Appellant failed to address this rejection in
either Brief.
Appeal 2019-001318
Application 14/743,643

13

CONCLUSION

The Examiner’s rejection of claims 1–7 and 9–22 as directed to patent
ineligible subject matter is reversed. The Examiner’s rejection of claims 11–
14 and 21 as indefinite is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9–22 101 Ineligible subject
matter
1–7, 9–22
11–14, 21 112(b) Indefiniteness 11–14, 21
Overall
Outcome
11–14, 21 1–7, 9, 10,
15–20, 22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART