Ex Parte McMurrough et alDownload PDFPatent Trial and Appeal BoardJan 19, 201813175007 (P.T.A.B. Jan. 19, 2018) 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. 13/175,007 07/01/2011 Brian McMurrough P016313-FCA-CHE 1804 65798 7590 01/19/2018 MILLER IP GROUP, PLC GENERAL MOTORS CORPORATION 42690 WOODWARD AVENUE SUITE 300 BLOOMFIELD HILLS, MI 48304 EXAMINER NGO, DACTHANG P ART UNIT PAPER NUMBER 2863 MAIL DATE DELIVERY MODE 01/19/2018 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 BRIAN McMURROUGH and BERND KRAUSE Appeal 2017-004203 Application 13/175,007 Technology Center 2800 Before TERRY J. OWENS, JEFFREY R. SNAY, and SHELDON M. McGEE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ rejection of claims 1—19. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method and system for detecting a possible membrane failure in a fuel cell stack’s cells. Claim 1 is illustrative: 1. A method for detecting a possible membrane failure in fuel cells for a fuel cell stack, said method comprising: monitoring voltages of the fuel cells in the fuel cell stack using voltage sensors in a voltage and current monitoring circuit which is electrically coupled to the fuel cell stack; Appeal 2017-004203 Application 13/175,007 identifying, using a processor in the voltage and current monitoring circuit, a minimum cell voltage from the cell voltages of the fuel cells in the fuel cell stack; determining a current density of the fuel cell stack using a current sensor in the voltage and current monitoring circuit; calculating, using the processor, a multiplication factor from a multiplication of representative values of the minimum cell voltage and the stack current density; comparing, using the processor, the multiplication factor to a threshold multiplication factor to determine whether the possible membrane failure is occurring; and providing a warning of the possible membrane failure if the multiplication factor is larger than the threshold multiplication factor. The Rejections Claims 1—19 stand rejected under 35U.S.C. § 112, first paragraph as failing to comply with the written description requirement, and under 35U.S.C. § 101 as failing to claim patent eligible subject matter. OPINION We reverse the rejection under 35 U.S.C. § 112, first paragraph and affirm the rejection under 35 U.S.C. § 101. Rejection under 35 U.S.C. § 112, first paragraph For an applicant to comply with the 35 U.S.C. § 112, first paragraph, written description requirement the applicant’s specification must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991)). 2 Appeal 2017-004203 Application 13/175,007 The Examiner finds that “Applicant recites ‘a processor in the voltage and current circuit’ which was not presented in the specification or previous claims” (Final Act. 7), “[tjhere is no description or detail information that indicates location of the processor” {id.), and the recited algorithm “can be performed by pencil and paper” (Ans. 3), so “there is a reasonable doubt that the Appellant had possession of the processor as described in the claim” {id.). The Appellants’ Specification discloses that the multiplication factor “is stored in a memory” (Spec. 124), “the algorithm monitors the multiplication factor being calculated” {id.), “the algorithm replaces the stored multiplication factor with the new larger multiplication factor” {id.), “the algorithm discards the lesser multiplication factors” {id.), “the algorithm scans for a maximum deviation” (Spec. 125), “the algorithm determines whether the minimum cell voltage and the stack current density are both below the predetermined values at the same time” {id.), “[t]he algorithm then compares the calculated deviation with a threshold multiplication factor” {id.), “the algorithm returns to the box 52 to continue to scan for the deviation” {id.), “the algorithm increments a counter at box 60” {id.), “[t]he algorithm then determines whether the counter is above a predetermined count” {id.), and “the algorithm sets a diagnostic trouble code for membrane failure” {id.). Those disclosures indicate that a processor in the voltage and current monitoring circuit executes the algorithm to perform those functions. Thus, the Appellants’ Specification would have conveyed with reasonable clarity to those skilled in the art that the Appellants, as of their filing date, were in possession of such a processor. Accordingly, we reverse the rejection under 35U.S.C. § 112, first paragraph. 3 Appeal 2017-004203 Application 13/175,007 Rejection under 35 U.S.C. §101 “Whoever 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 Supreme Court stated in Bilski v. Kappos, 561 U.S. 593, 601 (2010) that “[t]he Court’s precedents provide three specific exceptions to § 101 ’s broad patent-eligibility principles: Taws of nature, physical phenomena, and abstract ideas.’ [Diamond v.] Chakrabarty, [447 U.S. 303,] 309, 100 S. Ct. 2204 [(1980)].” The Court further stated that limiting an abstract idea to a particular technological environment does not make the concept patentable. See Bilski, 561 U.S. at 610-611. Determining whether a claimed invention is patent- eligible subject matter requires determining whether the claim is directed toward a patent-ineligible concept and, if so, determining whether the claim’s elements, considered both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application. See Alice Corp. v. CLS Banklnt’l, 134 S. Ct. 2347, 2350 (2014). The Appellants’ claims are directed toward the abstract idea of using sensors to monitor a fuel cell stack’s cell voltages and stack current density, calculating a multiplication factor by multiplying representative values of minimum cell voltage times stack current density, comparing the multiplication factor to a threshold multiplication factor to determine whether a possible membrane failure is occurring, and providing a warning of possible membrane failure if the multiplication factor is larger than the threshold multiplication factor. The voltage monitoring, minimum cell 4 Appeal 2017-004203 Application 13/175,007 voltage identification and fuel cell stack current density determination, considered individually and as an ordered combination, do not transform the nature of the claim into a patent-eligible application because they merely gather the data input to the algorithm. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (“[M]ere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’”) (quoting In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989)); see also OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015) (“These processes are well-understood, routine, conventional data-gathering activities that do not make the claims patent eligible.”). The Appellants argue (Br. 18—19): One definition of the word “abstract” is “existing in thought or as an idea but not having a physical or concrete existence”. Appellant’s claims include sensors and a processor in the voltage and current monitoring circuit, and interactions between those items and the fuel cells. Appellant’s claims do not merely “exist in thought or as an idea”; they cannot be accomplished without the fuel cell stack, the processor and the sensors. By including in the claims a particularly programmed processor and voltage and current sensors, and interactions between those items and the fuel cells in the fuel cell stack. Appellant submits that the claims are in fact concrete, not abstract. “‘[I]f a claim is directed essentially to a method of calculating, using a mathematical formula [the Appellants’ algorithm], even if the solution is for a specific purpose [detecting a possible membrane failure in a fuel cell stack’s cells], the claimed method is nonstatutory.” Parker v. Flook, 437 U.S. 584, 596 (1978) (quoting In re Richman, 563 F.2d 1026, 1030 (C.C.P.A. 1977)). Also, “simply implementing a mathematical principle on 5 Appeal 2017-004203 Application 13/175,007 a physical machine, namely a computer, [i]s not a patentable application of that principle.” Alice 134 S. Ct. at 2357—58 (quoting Mayo Collaborative Services v. Prometheus Labs., 566 U.S. 66, 84 (2012)) (citing Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). See also CyberSource, 654 F.3d at 1375 (“Abele made clear that the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium.”). Furthermore, “simply appending conventional steps [using sensors to monitor voltages and current density], specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.” Mayo, 566 U.S. at 82. The Appellants argue that “Appellant’s claims are not analogous to Alice, as Appellant’s claims are not directed to a computerized implementation of a ‘known, well-understood or routine’ process; in contrast, Appellant’s claims have been found by the USPTO to be novel and unobvious over the prior art” (Reply Br. 3) and “embody a novel and unobvious process and system for detecting possible membrane failure, which is implemented on a particularly programmed computing machine” (Br. 18). The second step of the Alice test set forth above determines whether a claim’s elements, considered individually and as an ordered combination, transform the nature of the claim into a patent-eligible application, not whether the claim’s elements render the claimed invention patentable over the prior art. As pointed out above, the Appellants’ claims’ voltage and 6 Appeal 2017-004203 Application 13/175,007 current monitoring sensors and processor do not transform the nature of the claims into a patent eligible application. Hence, we are not persuaded of reversible error in the rejection under 35 U.S.C. § 101. DECISION/ORDER The rejection of claims 1—19 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement is reversed. The rejection of claims 1—19 under 35 U.S.C. § 101 as failing to claim patent eligible subject matter is affirmed. It is ordered that the Examiner’s decision is affirmed. 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 7 Copy with citationCopy as parenthetical citation