Ex Parte Deslauriers et al

Patent Trial and Appeal Board

Feb 15, 2018

12462713 (P.T.A.B. Feb. 15, 2018)

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.
211146US00 (4081-17900) 8967
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
12/462,713 08/07/2009 Paul J. Deslauriers
37814 7590 02/15/2018
CHEVRON PHILLIPS CHEMICAL COMPANY
5601 Granite Parkway, Suite 500
PLANO, TX 75024
02/15/2018 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 PAUL J. DESLAURIERS and DAVID C. ROHLFING1
Appeal 2016-008670
Application 12/462,713
Technology Center 1600
Before ERIC B. GRIMES, RICHARD J. SMITH, and
TAWEN CHANG, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a method
to determine a virtual density of a polymer.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejection under Section 101 and reverse the rejection
under Section 103(a).
1 According to Appellants, the real party in interest is Chevron Phillips
Chemical Company LP. (Appeal Br. 3.)
Appeal 2016-008670
Application 12/462,713
STATEMENT OF THE CASE
Background
Traditionally, in order to determine a value of a desired
physical or chemical property, a certain quantity of the particular
polymer resin was needed to fabricate an article or a test
specimen, and then the resulting article or test specimen was
subsequently tested via the prescribed analytical test procedure
to determine the value of the property. This procedure is
cumbersome not only due to the time required for fabricating, but
also the time required to perform the respective analytical test
procedure. . . .
Hence, there exists a need for methods of virtually determining
a value of a desired polymer property without fabricating
samples or performing the analytical test for the physical or
chemical property.
(Spec. 115.)
Claims on Appeal
Claims 1—15, 18, and 19 are on appeal.2 (Appeal Br. 18—24
(CLAIMS APPENDIX).) Claim 1 is illustrative and reads as follows
(emphasis added):
1. A method to determine a virtual density of a polymer
comprising:
a) performing at least one instrumented analytical
technique to determine the molecular weight distribution profile
of the polymer;
b) determining a plurality of density values as a
function of a Molecular Weight (MW) and Molecular Weight
Distribution (MWD) profile of the polymer wherein each of the
2 Claims 16 and 17 are cancelled, and claims 20—22 are withdrawn from
consideration as directed to a non-elected invention. (Final Action dated
July 28, 2015 (“Final Act.”), at 2.)
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Application 12/462,713
plurality of density values is determined at a different MW
location across the MWD profile;
c) summing the plurality of density values to obtain
the virtual density;
wherein the MW and the MWD comprise data obtained
as measured properties, data provided as a digitally determined
value, data obtained by curve fitting the data obtained as
measured properties, data provided as an arbitrarily assigned
value or a combination thereof and wherein all polymers having
a molecular weight less than 715 g/mol are assigned a density
value of 1.006 g/cm3 and wherein steps a, b, c or combinations
thereof are performed using a suitably programmed computer
associated with a polymerization reactor in real time or stages;
and
d) fabricating an article from the polymer wherein
the polymer exhibits a natural draw ratio, Young’s modulus,
yield strength or a combination thereof within a predicted
value.
Examiner’s Rejections
1. Claims 1—15, 18, and 19 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without additional elements that are
sufficient to amount to significantly more than the judicial exception. (Ans.
2-A.)
2. Claims 1—3, 5—7, 9-11, 13, 14, 18, and 19 stand rejected under 35
U.S.C. § 103(a) as unpatentable over DesLauriers3 and Elias.4 (Id. at 5—7.)
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
3 DesLauriers et al., Modeling Tie Molecules in Polyethylene
(“DesLauriers”), cited in an Information Disclosure Statement filed in US
2007/0298508 Al, pub. Dec. 27, 2007 (“the ’508 application”).
4 Elias, Polymolecularity and Polydispersity in Molecular Weight
Determinations, Pure Appl. Chem. 43, 115—47 (1975).
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over DesLauriers and Sakaguchi.5 (Id. at 7—8.)
DISCUSSION
Rejection No. 1
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection under 35 U.S.C. § 101.
Principles of Law
In analyzing patent eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to “first determine whether the claims at issue
are directed to a patent-ineligible concept.” Alice Corp. Pty Ltd. v. CLS
Bank Inti, 134 S. Ct. 2347, 2355 (2014). If this threshold is met, we move
to a second step of the inquiry and “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78-79 (2012)).
Analysis
We adopt the Examiner’s findings, analysis, and conclusions
regarding the rejection under Section 101, and discern no error in that
rejection. We limit our consideration to claim 1 because the claims were not
argued separately.
5 Sakaguchi et al., Physical Properties of Copolymers of Styrene and a-
Olefins, Bull, of the Inst, for Chem. Res. (Kyoto Univ.) 43, 455-68
(1966).
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The Examiner finds that claim 1 is “directed to an abstract algorithmic
procedure . . . [and] encompass[es] a purely mathematical series of steps and
operation based upon [] molecular weight distribution data.” (Ans. 2.) The
Examiner further finds that “the instantly claimed process encompasses a
non-statutory algorithmic procedure without involving anything significantly
more than a purely computational analysis of polymer molecular weight
data.” (Id. at 3.) The Examiner notes Appellants’ amendment of claim 1 to
recite a step of “fabricating an article” (step (d) italicized above) but finds
that “[t]hese limitations do not add anything significantly more to the claim
because there is no improvement to either the fabrication procedure or the
article [] ultimately being fabricated. . . . applicants’ amendment amounts to
nothing more than a recitation of insignificant post solution activity.” (Id. )
Appellants contest the rejection by arguing that the “fabricating an
article” step (d) qualifies as “significantly more” under the Interim
Guidance6 as “[effecting a transformation or reduction of a particular article
to a different state or thing.” (Appeal Br. 9-11.) In particular, Appellants
argue that “[t]he transformation of a polymer into an article utilizing the
instantly claimed improved methodologies represents ‘significantly more,”’
and that the claims “recite features that include a transformation and
constitute ‘significantly more’ than the alleged abstract idea.” (Id. at 10-
11.)
We find that the Examiner has the better position. Appellants’
argument is directed to the second step of the Alice inquiry. In particular,
Appellants argue that claim 1 recites “significantly more” than the judicial
6 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg.
74618, 74624 (Dec. 16, 2014) (“Interim Guidance”).
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exception based on the alleged transformation of the polymer, relying on
Diamond v. Diehr, 450 U.S. 175 (1981).7 (Appeal Br. 9—11; see also Reply
Br. 5—18.) The Court in Diehr held that the claimed method for molding
raw, uncured rubber into cured, molded products was patent eligible,
notwithstanding its use of a known mathematical equation (the Arrhenius
equation). See Diehr, 450 U.S. at 177.
Here, Appellants are claiming a mathematical algorithm for obtaining
(calculating) the virtual density of a polymer and fabricating an article from
the polymer, the polymer having certain properties consistent with the
calculated virtual density. (Appeal Br. 18.) Unlike the facts in Diehr, where
raw, uncured rubber was transformed into cured, molded products through a
series of steps, claim 1 does not recite a transformation of the polymer.
Rather, claim 1 only recites that the same polymer (whose virtual density has
been determined) is used to fabricate an article. Stated another way, the
polymer used to fabricate the article is the same polymer whose virtual
density has been determined, and claim 1 recites nothing about a
transformation of the polymer.8 (See Ans. 8.) In fact, Appellants
7 The “transformation” quote from the Interim Guidance relied on by
Appellants cites to Diehr, and Example 25 of the July 2015 Update
Appendix 1: Examples cited by Appellants in the Reply Brief is based on
Diehr. (Appeal Br. 10; Reply Br. 6—7, citing July 2015 Update Appendix 1:
Examples, available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf.)
8 We acknowledge Appellants’ comparison of claim 1 at issue in Diehr and
Appellants’ claims 1—5, argued for the first time in the Reply Brief. (Reply
Br. 11—18.) We are not persuaded, at least because the claimed method at
issue in Diehr was directed to a method for molding raw, uncured rubber
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acknowledge that the “predicted value” of the properties of the polymer used
to fabricate an article (step (d)) is based on the calculated virtual density.
(Reply Br. 16—17, citing Spec. 178, 180—182.)
Appellants also take issue with the Examiner’s statement that “[t]he
claims recite only the generic, unaltered act of ‘fabricating’. . . the scope of
the claim[s] necessarily encompasses unmodified fabricating methods
already routine and congenitally [sic, conventionally] applied in the art.”
(Ans. 8.) Appellants argue that “the Examiner provides no citations to case
law to establish that courts have recognized, or those in the field of
polymerization would recognize, that fabricating an article from the polymer
is well-understood, routine, and conventional in the field.” (Reply Br. 8.)
We are not persuaded. The law is clear that “simply appending
conventional steps, specified at a high level of generality, to . . . abstract
ideas cannot make those . . . ideas patentable.” Mayo, 566 U.S. at 82.
Moreover, Appellants acknowledge the traditional step of fabricating an
article from a polymer (Spec. 115), and claim 1 does not recite any aspect of
the fabricating step that is other than a traditional or conventional step,
recited at a high level of generality.
We also agree with the Examiner that Appellants’ added “fabricating”
step is insignificant post-solution activity, and further find such step to be a
mere instruction to “apply” the abstract idea or mathematical calculation,
which is not sufficient to transform the nature of the claim into a patent-
eligible application. See Mayo, 566 U.S. at 77—80; see also Diehr, 450 U.S.
191—92 (“insignificant post-solution activity will not transform an
into cured, molded products (i.e. transformation of raw, uncured rubber), and
Appellants’ claim 1 does not recite a transformation of the polymer.
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unpatentable principle into a patentable process”); Parker v. Flook, 437 U.S.
584, 590 (1978) (“The notion that post-solution activity, no matter how
conventional or obvious in itself, can transform an unpatentable principle
into a patentable process exalts form over substance. A competent draftsman
could attach some form of post-solution activity to almost any mathematical
formula”); Two-Way Media Ltd. v. Comcast Cable Comms., LLC, 874 F.3d
1329, 1338 (Fed. Cir. 2017) (“Merely . . . adding the words ‘apply it with a
computer’ cannot convert a patent-ineligible abstract idea into a patent-
eligible invention.”).
Accordingly, for the reasons of record and as set forth above, we
affirm the Examiner’s rejection of claim 1 under 35 U.S.C. § 101. Claims
2—15, 18, and 19 were not argued separately and fall with claim 1.
Rejection Nos. 2 and 3
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejections under pre-AIA 35 U.S.C. § 103(a).
Principles of Law
“Because there are many ways in which a reference may be
disseminated to the interested public, ‘public accessibility’ has been called
the touchstone in determining whether a reference constitutes a ‘printed
publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898—
99 (Fed. Cir. 1986). “Whether a reference qualifies as a printed publication
is a legal conclusion based on underlying factual determinations.” Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016).
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Discussion
The Examiner contends that DesLauriers “was made available” in an
Information Disclosure Statement of the ’508 application (see n.3), and was
publicly available on December 27, 2007, when the ’508 application was
published. (Ans. 9; see also Non-Final Action dated July 16, 2014, at 9
(“DesLauriers [] qualifies as prior art under 35 USC 102(b).”).) Appellants
contest the Examiner’s reliance on DesLauriers as a prior art printed
publication for purposes of the obviousness rejections. (Appeal Br. 11—16.)
Based on the facts and circumstances of the present case, and for the
reasons set forth below, we conclude that DesLauriers was not publicly
accessible as of December 27, 2007, so as to qualify as a prior art printed
publication as of that date.
Findings of Fact
FF 1. DesLauriers was cited in an Information Disclosure Statement
that was filed in the ’508 application on January 26, 2007. (Information
Disclosure Statement dated Jan. 26, 2007 (“IDS”).) The IDS cited
DesLauriers by listing “DESLAURIER[sic, S], et al, ‘Modeling Tie
Molecules in Polyethylene,”’ and that citation was among a group of twenty
items of non-patent literature (NPL) that were cited. {Id. (Cite No. BR,
Sheet 3 of 3).)
FF 2. Upon publication of the ’508 application on December 27,
2007, the IDS became available through public PAIR (Patent Application
Information Retrieval). See MPEP § 1730(II)B(l)d.
FF 3. DesLauriers was not mentioned, as a cited reference or
otherwise, in the ’508 application as published on December 27, 2007.
(Appeal Br. 12.)
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FF 4. As non-patent literature, DesLauriers was not accessible on
public PAIR upon publication of the ’508 application. Access to a copy of
DesLauriers was limited to those persons having access to the ’508
application through private PAIR9 or obtaining a copy directly from the
Patent and Trademark Office. See MPEP § 1730(II)B(l)d (“Non-patent
literature (NPL) may be viewed using private PAIR (if an [image file
wrapper] file has been created) or obtained from the USPTO Office of
Public Records”).
Analysis
The law regarding “public accessibility” of a printed publication has
developed a framework that generally looks at whether there is a “roadmap”
from an accessible document or item to the potentially invalidating
reference. See Blue Calypso, 815 F.3d at 1347—50 (discussing cases). As
stated in Blue Calypso, “[a]n adequate roadmap need not give tum-by-tum
directions, but should at least provide enough details from which we can
determine that an interested party is reasonably certain to arrive at the
destination: the potentially invalidating reference.” Id. at 1350.
The facts of the present case are similar to those arising in the context
of references stored in libraries, with the Patent and Trademark Office
essentially serving as the library. In Hall, 781 F.2d at 899-900, our
9 Access to the contents of a pending patent application through private
PAIR is limited to a registered patent attomey/agent (or Independent
Inventor) associated with that patent application through a Customer
Number. See
https://www.uspto.gov/sites/default/files/patents/process/status/private_pair/
PrivPairOverview_Oct09.pdf.
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reviewing court found that a dissertation was publicly accessible because it
was shelved and indexed in a card catalog at a German university. Id. In
contrast, our reviewing court found in In re Cronyn, 890 F.2d 1158, 1161
(Fed. Cir. 1989), that three undergraduate theses were not publicly
accessible because they were indexed only by title and author’s name, rather
than by subject, and thus not cataloged or indexed in a meaningful way. Id.
Here, as of December 27, 2007, the file corresponding to the ’508
application included the IDS that listed, among other references,
“DESLAURIER, et al, ‘Modeling Tie Molecules in Polyethylene.’” No
other information was provided regarding DesLauriers. As such, even if we
were to consider the ’508 application as a form of index, only the author’s
name and the title of the publication are listed. Thus, the facts in the present
case are similar to the facts in Cronyn, and we do not find that a listing by
author’s name and title in the IDS, among other cited references, is a
sufficient roadmap so as to lead an interested party to DesLauriers. See Blue
Calypso, 815 F.3d at 1349 (“[ijndexing only by title and author’s name did
not amount to the references [in Cronyn] being ‘either cataloged or indexed
in a meaningful way.’”) (citing Cronyn, 890 F.2d at 1161).
Accordingly, because we conclude that DesLauriers was not publicly
accessible so as to permit its use as a prior art printed publication as of
December 27, 2007, and because the Examiner’s obviousness rejections rely
on DesLauriers as a prior art printed publication as of that date, we reverse
the rejections of claims 1—3, 5—7, 9-14, 18, and 19 under 35 U.S.C. § 103(a).
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Conclusions
A preponderance of evidence of record supports the Examiner’s
rejection of claims 1—15, 18, and 19 under 35 U.S.C. § 101.
A preponderance of evidence of record fails to support the Examiner’s
rejections of claims 1—3, 5—7, 9-14, 18, and 19 under 35 U.S.C.
§ 103(a).
SUMMARY
We affirm the rejection under Section 101 and reverse the rejections
under Section 103(a).
TIME PERIOD FOR RESPONSE
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
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