Hypertherm, Inc.Download PDFPatent Trials and Appeals BoardMay 14, 20202019001865 (P.T.A.B. May. 14, 2020) 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. 15/359,880 11/23/2016 Roger E. Young JR. HYP-133C1 2728 42532 7590 05/14/2020 PROSKAUER ROSE LLP ONE INTERNATIONAL PLACE BOSTON, MA 02110 EXAMINER ANDREI, RADU ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 05/14/2020 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): DocketingPatentBoston@proskauer.com oandrews@proskauer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte ROGER E. YOUNG JR., RICHARD ADAMS, and PHILLIP N. PARKER ________________ Appeal 2019-001865 Application 15/359,880 Technology Center 3600 ________________ Before ALLEN R. MacDONALD, JASON J. CHUNG, and DAVID J. CUTITTA, II, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals2 the Final Rejection of claims 1–11 and 13–16.3 A transcript (“Tr.”) of the Oral Hearing held on April 24, 2020 is in the record. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, Hypertherm, Inc. is the real party in interest. Appeal Br. 3. 2 Appellant filed two Appeal Briefs: one on August 7, 2018 and the other on September 26, 2018. In this Decision, we refer to the Appeal Brief filed on September 26, 2018. 3 Claim 12 is cancelled. Appeal Br. 31. Appeal 2019-001865 Application 15/359,880 2 INVENTION The invention relates to developing material processing systems. Spec. 1:8–9. Claim 1 is illustrative of the invention and is reproduced below: 1. A method of operating a material processing system having a processing head with a consumable component installed therein, the method comprising: providing the material processing system in electrical communication with an internet-based cloud-computing network, the material processing system being one of a plasma cutting system, a waterjet cutting system, or a laser cutting system; installing the consumable component in the processing head, the consumable component having an RFID device, the RFID device being configured to store data about the consumable component; processing a workpiece using the material processing system; reading, during processing of the workpiece, the stored data about the consumable component from the RFID device by a reading device in the processing head; and transmitting, by the material processing system during processing of the workpiece, the stored data about the consumable component installed in the processing head to the internet-based cloud-computing network. Appeal Br. 29 (Claims Appendix). REJECTIONS The Examiner rejects claims 1–11 and 13–164 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. Final Act. 2–8. 4 The Examiner states that claims 1–16 are rejected. Final Act. 2–8. However, claim 12 is cancelled. We interpret this as a typographical harmless error. Appeal 2019-001865 Application 15/359,880 3 The Examiner rejects claims 1–11 and 13–165 under 35 U.S.C. § 103 as being unpatentable over the combination of Abe (US 2008/0118253 A1; published May 22, 2008), De Joannis De Verclos (US 2007/0193988 A1; published Aug. 23, 2007) (hereinafter “De Joannis”), and Parry (US 2002/0194064 A1; published Dec. 19, 2002). Final Act. 9–18. ANALYSIS I. Rejection of Claims 1–11 and 13–16 Under 35 U.S.C. § 101 A. Principles of Law 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 risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 5 The Examiner states that claims 1–16 are rejected. Final Act. 9–18. However, claim 12 is cancelled. We interpret this as a typographical harmless error. Appeal 2019-001865 Application 15/359,880 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 waterproof 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 2019-001865 Application 15/359,880 5 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. (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. B. USPTO Section 101 Guidance 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”).6 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Id. at 51; see also Update at 1. Under the 2019 Revised Guidance and the Update, 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 6 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 “Update”) (available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df). Appeal 2019-001865 Application 15/359,880 6 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”).7 2019 Revised Guidance, 84 Fed. Reg. at 52–55. 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. C. Step 2B For the sake of brevity, we bypass Step 2A, Prong 1 and Step 2A, Prong 2 to focus on a dispositive issue. Turning to Step 2B of the Guidance, “[t]he second step of the Alice test is satisfied when the claim limitations ‘involve more than performance of []well-understood, routine, [and] 7 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 2019-001865 Application 15/359,880 7 conventional activities previously known to the industry.’” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (quoting Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) and Alice, 573 U.S. at 225). “Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Berkheimer, 881 F.3d at 1369. In this case, the Examiner finds “[a]ll these computer functions are well-understood, routine, and conventional activities, previously known to the industry.” Final Act. 4 (emphasis added); Ans. 3–4 (citing Cybernetics: Or Control and Communication in the Animal); Final Act. 3–8, 19–20 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014), Alice, 573 U.S. at 225–26). As pointed out by Appellant, the Examiner does not provide the evidence required by Berkheimer to support the determination that an RFID device in a material processing system is well-understood, routine, or conventional. See Reply Br. 5–7; Appeal Br. 11; Berkheimer, 881 F.3d at 1369. In particular, the Examiner does not provide any of the four categories of information required by the Memorandum of Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (“Berkheimer Memorandum”): 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). . . . Appeal 2019-001865 Application 15/359,880 8 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s). 3. A citation to a publication that demonstrates the well- understood, routine, conventional nature of the additional element(s). . . . 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s). . . . Berkheimer Memorandum at 3–4. Because the Examiner, in identifying the claimed additional elements, only generally discusses “generic computing functions” (Final Act. 4–5), we agree with Appellant that the Examiner does not cite to one of the four categories of evidence to demonstrate that the claimed RFID device is well- understood, routine, or conventional as required by the Berkheimer Memorandum. Compare Reply Br. 5–7 (arguing that the Examiner does not provide sufficient evidence to support the determination that an RFID device in a material processing system is well-understood, routine, or conventional); Appeal Br. 11 with Ans. 3–4 (citing Cybernetics: Or Control and Communication in the Animal); Final Act. 3–8, 19–20 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014), Alice, 573 U.S. at 225–26). Therefore, the Examiner erred with respect to Step 2B pursuant to the Berkheimer Memorandum and the 2019 Revised Guidance. Accordingly, we do not sustain the Examiner’s rejection of: (1) independent claims 1 and 9; and (2) dependent claims 2–8, 10, 11, and 13–16 under 35 U.S.C. § 101 Appeal 2019-001865 Application 15/359,880 9 on procedural grounds. II. Rejection of Claims 1–11 and 13–16 Under 35 U.S.C. § 103 A. Whether the combination of Abe, De Joannis, and Parry teach a consumable component in the processing head, the consumable component having an RFID device, as required by claims 1 and 9 The Examiner finds De Joannis teaches a laser cutting device with sensors disposed within, which the Examiner maps to the limitation a “material processing system being one of a plasma cutting system, a waterjet cutting system, or a laser cutting system” recited in claim 1 (and similarly recited claim 9). Final Act. 9, 13–14 (citing De Joannis ¶ 13; Fig. 1). The Examiner finds Abe teaches, inter alia, an RFID tag reader that retrieves data from an RFID tag provided in a toner cartridge, which the Examiner maps to the limitation “installing the consumable component in the processing head, the consumable component having an RFID device, and the RFID device being configured to store data about the consumable component” recited in claim 1 (and similarly recited in claim 9). Final Act. 9–10, 13–14 (citing Abe ¶¶ 10, 11, 40, 41, 43; Fig. 2). The Examiner concludes it would have been obvious to a person having ordinary skill in the art at the time of the invention (hereinafter “PHOSITA”) to combine De Joannis’s laser cutting system with Abe’s means to store and retrieve functional parameters using an RFID device that can be used to control the operation. Final Act. 10, 14–15. Appellant argues De Joannis fails to teach the limitation “consumable component in the processing head, the consumable component having an RFID device” recited in claim 1 (and similarly recited claim 9) because De Joannis’s laser cutting head does not contain a consumable that is exhausted by operation of the machine tool (hereinafter “argument (A1)”). Appeal Appeal 2019-001865 Application 15/359,880 10 Br. 21; Reply Br. 11. Appellant argues Abe fails to teach the limitation “installing the consumable component in the processing head, the consumable component having an RFID device” because the consumable component in Abe is a toner cartridge that is disposed in the body casing of the image-forming apparatus, and is not disposed in a “processing head” (hereinafter “argument (B1)”). Appeal Br. 16; Reply Br. 9–10. Appellant argues Abe teaches away from installing a consumable component having an RFID device disposed in the processing head because Abe does not require an RFID device (hereinafter “argument (C1)”). Appeal Br. 17 (citing Abe ¶ 60, claim 1). Appellant argues a PHOSITA would have understood that enabling an RFID device and its respective reading device to function inside the processing head of a thermal processing torch during torch operation is extremely difficult in practice because of: (1) high temperatures in a torch; (2) the large amount of metal inside of the torch that tends to generate electromagnetic interference to weaken communication between the RFID tag and its reader; and (3) the presence of high frequency electromagnetic radiation that is common in torches (hereinafter “argument (D1)”). Appeal Br. 17; Reply Br. 11. Appellant argues a PHOSITA would not combine Abe and De Joannis because Abe’s teaching of a memory device functions to verify genuineness of a consumable, whereas De Joannis fails to teach a consumable, subject to exhaustion, as part of its machine tool (hereinafter “argument (E1)”). Appeal Br. 22. We disagree with Appellant. Regarding argument (A1) and argument (B1), one cannot show nonobviousness “by attacking references individually” where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA Appeal 2019-001865 Application 15/359,880 11 1981)). In this case, the Examiner relies on De Joannis’s laser cutting device with sensors disposed within, which teaches the limitation a “material processing system being one of a plasma cutting system, a waterjet cutting system, or a laser cutting system” recited in claim 1 (and similarly recited claim 9). Final Act. 9, 13–14 (citing De Joannis ¶ 13; Fig. 1). Also, the Examiner relies on Abe’s teaching of an RFID tag reader that retrieves data from an RFID tag provided in a toner cartridge, which teaches the limitation “installing the consumable component in the processing head, the consumable component having an RFID device, and the RFID device being configured to store data about the consumable component” recited in claim 1 (and similarly recited in claim 9). Final Act. 9–10, 13–14 (citing Abe ¶¶ 10, 11, 40, 41, 43; Fig. 2). In addition, we disagree with argument (C1). Appeal Br. 17 (citing Abe ¶ 60, claim 1). The Federal Circuit has held that “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In this case, Abe teaches more than one embodiment rather than teaching away from an RFID device because Abe teaches a toner cartridge with or without an RFID device. Compare Act. 9–10 (citing Abe ¶¶ 40, 41; Fig. 2) with Appeal Br. 17 (citing Abe ¶ 60). Furthermore, we disagree with argument (D1). Appeal Br. 17; Reply Br. 11. Appellant does not cite to sufficient evidence in the form of an affidavit, paragraphs in the Specification, or any other evidence to support Appeal 2019-001865 Application 15/359,880 12 this argument. See MPEP § 2145 (requiring objective evidence). Rather, this argument is merely attorney argument, as acknowledged by Appellant. Tr. 6:16–8:3, 10:1–17; see also In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996) (arguments of counsel cannot take the place of factually supported objective evidence); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (arguments of counsel cannot take the place of factually supported objective evidence). Additionally, we disagree with argument (E1). Appeal Br. 22. Appellant’s arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art, and are therefore ineffective to rebut the Examiner’s prima facie case of obviousness. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d at 425. “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). In this case, DeJoannis illustrates in Figure 1 that a laser cutting head includes sensors disposed within, as Appellant acknowledges. Reply Br. 11 (citing De Joannis ¶¶ 22, 24); Final Act. 9, 13–14 (citing De Joannis, Fig. 1). Moreover, we agree with the Examiner’s conclusion that it would have been obvious to a PHOSITA at the time of the invention to combine De Joannis’s laser cutting Appeal 2019-001865 Application 15/359,880 13 system with Abe’s means to store and retrieve functional parameters using an RFID device that can be used to control the operation. Final Act. 10, 14– 15. Therefore, we find the Examiner has set forth sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 418 (quoting In re Kahn, 441 F.3d at 988). Accordingly, we discern no error in the Examiner’s findings and conclusions for at least the reasons articulated above. B. Whether the combination of De Joannis, Abe, and Parry teach transmitting, during processing of the workpiece, the stored data about the consumable component to the internet-based cloud-computing network, as required by claims 1 and 9 The Examiner finds Abe teaches an RFID tag reader that retrieves data from an RFID tag provided in a toner cartridge and transmitting the retrieved data through RFID tag reader 160 to control unit 100, which the Examiner maps to the limitation “transmitting, by the material processing system, during processing of the workpiece, the stored data about the consumable component” recited in claim 1 (and similarly recited claim 9). Final Act. 9–10, 13–14 (citing Abe ¶¶ 10, 41, 43; Fig. 2). The Examiner finds Parry teaches connecting a device to the Internet, which the Examiner maps to the limitation “internet-based cloud-computing network” recited in claims 1 and 9. Final Act. 11, 15 (citing Parry ¶¶ 23, 42, 44, Figs. 1, 2). The Examiner concludes a PHOSITA would have combined De Joannis’s laser cutting system with Abe’s means to store and retrieve functional parameters that can be used to control the operation with Parry’s internet communication as known methods yielding predictable results. Final Act. 10–12, 14–16. Appeal 2019-001865 Application 15/359,880 14 Appellant argues Abe fails to teach transmission of the data during processing of the workpiece because Abe teaches processing of the workpiece occurs before processing a workpiece begins (i.e., after Abe’s step 13 in Figure 4, but before normal operation in Abe’s Figure 4 begins) (hereinafter “argument (A2)”). Appeal Br. 18 (citing Abe ¶ 56, Fig. 4). Appellant argues Abe is only locally connected to the laser printer of Abe and is not an “internet-based cloud-computing network” (hereinafter “argument (B2)”) as required by claims 1 and 9. Appeal Br. 19 (citing Abe ¶ 41, Fig. 2). Appellant argues a PHOSITA would not be motivated to combine De Joannis and Parry because Parry’s consumable, if not resupplied, will eventually be consumed to exhaustion following sufficient use, whereas, De Joannis’s laser cutting head includes a collimation lens, a focusing lens, and a cutting nozzle that are not often exhausted and are not the media on which the image is formed or the substance used to form the image itself (hereinafter “argument (C2)”). Appeal Br. 24–27 (citing De Joannis ¶¶ 5, 15; Parry ¶¶ 2, 5, 6). Appellant argues Parry fails to teach the limitation “transmitting . . . the stored data about the consumable component installed in the processing head to an internet-based cloud-computing network” recited in claims 1 and 9 because Parry merely teaches retrieving data from a web server (hereinafter “argument (D2)”). Appeal Br. 25; Reply Br. 13. Appellant argues Parry teaches away from transmitting storing data during processing of the workpiece because Parry teaches a non-operational time for when usage information is transmitted (hereinafter “argument (E2)”). Appeal Br. 25–26 (citing Parry ¶¶ 35, 38). We disagree with Appellant. We disagree with argument (A2). Appeal Br. 18 (citing Abe ¶ 56, Appeal 2019-001865 Application 15/359,880 15 Fig. 4). Appellant does not provide a special definition of “during processing” that precludes an interpretation that processing occurs after Abe’s step 11 in Figure 4. Under the broadest reasonable construction, we agree with the Examiner’s finding that Abe’s counter counting the number of light-emitting dots teaches “during processing of the workpiece.” Final Act. 10, 13–14 (citing Abe ¶¶ 41, 43). We disagree with argument (B2) and argument (D2). Appeal Br. 19, 25 (citing Abe ¶ 41, Fig. 2); Reply Br. 13. One cannot show nonobviousness “by attacking references individually” where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d at 1097 (citing In re Keller, 642 F.2d at 425). In this case, the Examiner relies on Parry to teach connecting a device to the Internet, which teaches the limitation “internet-based cloud-computing network” recited in claims 1 and 9. Final Act. 11, 15 (citing Parry ¶¶ 23, 42, 44, Figs. 1, 2). In addition, the Examiner relies on Abe’s teaching of an RFID tag reader that retrieves data from an RFID tag provided in a toner cartridge and transmitting the retrieved data through RFID tag reader 160 to control unit 100, which teaches the limitation “transmitting” recited in claim 1 (and similarly recited claim 9). Final Act. 9–10, 13–14 (citing Abe ¶¶ 41, 43; Fig. 2). We disagree with argument (C2) (Appeal Br. 24–27 (citing De Joannis ¶¶ 5, 15; Parry ¶¶ 2, 5, 6)) because it does not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art, and are therefore ineffective to rebut the Examiner’s prima facie case of obviousness. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must Appeal 2019-001865 Application 15/359,880 16 be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co., 550 U.S. at 419. In this case, we agree with the Examiner’s conclusion that it would have been obvious to a PHOSITA at the time of the invention to combine De Joannis’s laser cutting system with Abe’s means to store and retrieve functional parameters that can be used to control the operation with Parry’s internet communication as known methods yielding predictable results. Final Act. 10–12, 14–16. Moreover, we find the Examiner has set forth sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co., 550 U.S. at 418 (quoting In re Kahn, 441 F.3d at 988). We disagree with argument (E2). Appeal Br. 25–26 (citing Parry ¶¶ 35, 38). The Federal Circuit has held that “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Kahn, 441 F.3d at 990 (quoting In re Gurley, 27 F.3d at 553). In this case, a PHOSITA reading Parry would not be discouraged from following the path set out in the reference. That is, Appellant is interpreting “during processing” too narrowly and notably does not refer to a special definition of “during processing” in the Specification. Moreover, Abe’s Appeal 2019-001865 Application 15/359,880 17 counter counting the number of light-emitting dots teaches “during processing of the workpiece” because these steps occur after step 11 of Abe’s Figure 4. Final Act. 10, 13–14 (citing Abe ¶¶ 41, 43). Similarly, a PHOSITA reading Parry’s removal of the cartridge would interpret this reasonably as “during processing” because users sometimes replace print cartridges in the middle of an incomplete printing job when printer toner is low. Accordingly, we discern no error in the Examiner’s findings and conclusions for at least the reasons articulated above. C. Whether the combination of De Joannis, Abe, and Parry teaches determining at least one of usage history of the consumable component or an identifier of the consumable component, as required by claim 9 The Examiner finds that Parry teaches measuring the use of a consumable product and determining that a predefined total value of the consumable product has been consumed, which the Examiner maps to the limitation “at least one usage history of the consumable component” recited in claim 9. Final Act. 15 (citing Parry ¶ 42); Ans. 12. Appellant argues that the combination of Abe and De Joannis fails to teach the limitation “at least one of usage history of the consumable component or an identifier of the consumable component” recited in claim 9 because De Joannis’s machine tool uses a single laser bean generator and source that obviates Abe’s need to identify or verify the genuineness of a consumable component (hereinafter “argument (A3)”). Appeal Br. 22–23. Appellant argues that Abe’s RFID tag does not have the ability to transmit both the identification of the consumable component and usage metrics relating to operation time (hereinafter “argument (B3)”) as required by claim 9. Id. at 19–20 (citing Abe ¶¶ 43, 45). We disagree with Appellant. Appeal 2019-001865 Application 15/359,880 18 As an initial matter, we disagree with argument (A3) because one cannot show nonobviousness “by attacking references individually” where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d at 1097 (citing In re Keller, 642 F.2d at 425). In this case, the Examiner relies on Parry to teach the limitation “at least one of usage history of the consumable component or an identifier of the consumable component” recited in claim 9. Compare Final Act. 15 (citing Parry ¶ 42); Ans. 12 with Appeal Br. 22–23. Furthermore, we disagree with argument (B3). Appeal Br. 19–20 (citing Abe ¶¶ 43, 45). “[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). We note that transmitting “both” the identification of the consumable and usage metrics relating to operation time is not recited in claim 9. Instead, claim 9 recites “at least one of usage history of the consumable component or an identifier of the consumable component” (emphases added) meaning that the references teaching either one of (1) “at least one of usage history of the consumable component;” or (2) “an identifier of the consumable component” is sufficient to teach this limitation. Moreover, the Examiner cites Parry for teaching measuring the use of a consumable product and determining that a predefined total value of the consumable product has been consumed, which teaches the limitation “at least one of usage history of the consumable component” recited in claim 9. Final Act. 15 (citing Parry ¶ 42). Accordingly, we discern no error in the Examiner’s findings and conclusions for at least the reasons articulated above. We, therefore, sustain the Examiner’s rejection of: (1) independent claims 1 and 9; and Appeal 2019-001865 Application 15/359,880 19 (2) dependent claims 2–8, 10, 11, and 13–16 under 35 U.S.C. § 103. We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION In summary: No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–11, 13– 16 101 Eligibility 1–11, 13–16 1–11, 13– 16 103 Abe, De Joannis, Parry 1–11, 13– 16 Overall Outcome 1–11, 13– 16 Copy with citationCopy as parenthetical citation