Ex Parte Duval et al

Patent Trials and Appeals Board

Jul 5, 2019

13884682 - (D) (P.T.A.B. Jul. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/884,682 05/10/2013 Sylvain Yves Jean Duval
22850 7590 07/09/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
415683US41X PCT 6082
EXAMINER
BEEBE, JOSHUA R
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
07/09/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SYLVAIN YVES JEAN DUVAL,
CLEMENT ROUSSILLE, ALAIN SCHWEITZER,
and PATRICK JOSEPH MARIE GIRARD
Appeal2017-010165
Application 13/884,682
Technology Center 3700
Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sylvain Yves Jean Duval et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claims 9-15 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter and claim 16
under 35 U.S.C. § 112, second paragraph, for indefiniteness. Claims 1-8
have been canceled. An Oral Hearing in accordance with 37 C.F.R. § 41.47
was held on May 21, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2017-010165
Application 13/884,682
CLAIMED SUBJECT MATTER
The claimed subject "relates to the general field of designing a
composite material blade for a rotor wheel of a turbine engine." Spec. I :6-8,
Fig. 1. Claims 9 and 16 are independent.
Claim 9 is illustrative of the claimed subject matter and recites:
9. A method of manufacturing a composite material blade
having an optimized profile for a rotor wheel of a turbine engine,
the blade including an airfoil including a plurality of blade
sections stacked in a radial direction of the wheel, a root for
mounting on a disk of the wheel and extended by a tang, and an
inner platform situated between the tang and the airfoil, the root
being connected to the tang by a neck, the method comprising:
entering values relating to a geometrical profile of the
blade, to dimensions of the blade, and to a mass of the blade into
calculation software;
optimizing the profile of the blade by shifting centers of
gravity of various blade sections in tangential and longitudinal
directions, said optimizing of the profile of the blade comprising:
compensating the blade airfoil, including
subdividing the airfoil into slices, each slice defined
between a bottom section and a top section, and for each
airfoil slice and for a predetermined speed of rotation of
the wheel disk, calculating centrifugal force to which the
slice is subjected, calculating moment of aerodynamic
force acting on the bottom section of the slice, and
calculating shift values to be applied to a center of gravity
of the slice in tangential and longitudinal directions to
cancel a moment of aerodynamic force acting on the
bottom section of the slice; and
compensating the blade tang, including calculating
centrifugal force to which a portion of the blade situated
above the neck is subjected, which portion is constituted
by the airfoil, by the inner platform, and by the tang,
calculating a moment of the aerodynamic force acting on
a bottom section of the tang of the blade, and calculating
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shift values to be applied to a center of gravity of the blade
tang along tangential and longitudinal directions to cancel
a moment of aerodynamic force acting on the bottom
section of the blade tang; and
manufacturing the blade having the optimized
profile.
ANALYSIS
Rejection I - Patent-Ineligible Subject Matter
Claims 9-15
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 Bankint'l, 573 U.S. 208,
216 (2014) ("Alice").
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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012) ("Mayo")). 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. Kappas, 561 U.S. 593, 611 (2010)
("Bilski") ("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
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Application 13/884,682
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)
("Floo~')); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972) ("Benson")). Concepts determined to be patent eligible include
physical and chemical processes, such as "molding rubber products"
(Diamondv. Diehr, 450 U.S. 175, 192 (1981) ("Diehr")); "tanning, dyeing,
making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at
184 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
Supreme 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 176; 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 Supreme 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. ( 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.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
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Application 13/884,682
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 ( citation 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.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Thus, under Step 1 of
the Guidance, as revised, we determine whether the claimed subject matter
falls within the four statutory categories: process, machine, manufacture, or
composition of matter. Step 2A of the Guidance is two-pronged, under
which we 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
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP1 § 2106.05(a)-(c), (e)-(h) (9th ed.
2018)).
1 Manual of Patent Examining Procedure.
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then, under step 2B, look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field
(see MPEP § 2106.0S(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 Revised Guidance.
Based upon our de nova review of the record in light of recent Director
Policy Guidance with respect to patent-eligible subject matter rejections under
3 5 U.S. C. § 101, we reverse the rejection of claims 9-15 for the specific
reasons discussed below.
Step 1 - Statutory Category
Claim 9, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether the claims are directed to a judicial exception without
significantly more.
Step 2A(l)-Does the Claim Recite a Judicial Exception?
The Examiner determines that claim 9 is "directed to Mathematical
Relationships and Formulas and 'An Idea of itself."' Final Act. 4; see also
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Ans. 2 (Claim 9 is an "abstract application of mathematical formula and
relationships."). 2
As to the first prong of Step 2A of the 2019 Guidance, we agree with
the Examiner that claim 9 is directed to mathematical concepts-
mathematical relationships, mathematical formulas or equations,
mathematical calculations. See Final Act. 4; see also Ans. 2;
Here, claim 9 recites "entering values" relating to a geometrical
profile, dimensions, and mass of a blade into "calculation software,"
"optimizing the profile" of the blade by shifting centers of gravity,
"compensating" the blade airfoil by "subdividing" the airfoil into slices,
"compensating" the blade tang by "calculating" a centrifugal force,
"calculating" moments of aerodynamic force, and "calculating" shift values.
These limitations, under the broadest reasonable interpretation, are steps
performed via a computational aid (i.e., calculation software) utilizing
mathematical relationships, equations, or calculations, to design a blade. See
Appeal Br. 18 (Claims App.)3; see also Revised Guidance 52; SAP America,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that
claims to a "series of mathematical calculations based on selected
information" are directed to abstract ideas); Digitech Image Techs., LLC v.
Elecs. For Imaging. Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding that
claims to a "process of organizing information through mathematical
correlations" are directed to an abstract idea).
2 Final Office Action ("Final Act."), dated Sept. 7, 2016; Examiner's Answer
("Ans."), dated June 1, 2017.
3 Appeal Brief ("Appeal Br.") Claims Appendix ("Claims App."), filed Feb.
2, 2017.
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Thus, under step 2A(l), we conclude claim 9, as a whole, under our
Revised Guidance, recites a judicial exception of mathematical concepts,
(i.e., mathematical relationships, equations, or calculations), and thus, is an
abstract idea.
Step 2A(2)-Is the Judicial Exception Integrated into a Practical
Application?
If the claims recite a patent-ineligible concept, as we conclude above,
we proceed to the "practical application" Step 2A, second prong, in which
we determine whether the recited judicial exception is integrated into a
practical application of that exception 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. The Revised Guidance is "designed to more accurately and
consistently identify claims that recite a practical application of a judicial
exception [] and thus are not 'directed to' a judicial exception." Revised
Guidance 53.
In addition to the abstract steps discussed above in step 2A(l ), claim 9
further recites the step of "manufacturing the blade having the optimized
profile." Appeal Br. 18-19 (Claims App.).
Here, we do not agree with the Examiner's position that claim 9 is a
"generic" method of manufacture, that the manufacturing step of claim 9 is
applied to a "generic" blade, or that the manufacturing step of claim 9
represents "insufficient post-solution activity." See Final Act. 2-3; see also
Ans. 2-7. Rather, we agree with Appellants that the final step of
manufacturing/producing a blade to have the optimized profile, obtained by
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utilizing the mathematical relationships, equations, or calculations recited in
claim 9, "is in itself applying the shifting of the center of gravity and other
steps taken to optimize the blade." Appeal Br. 12.
Thus, under step 2A(2), claim 9 recites an additional element (step)
that integrates the mathematical concepts into a practical application directed
to a blade's overall design. In particular, the manufacturing/producing step
is a physical act that cannot be performed by purely mathematical processes.
As explained in the Specification, the claimed subject matter, viewed as
whole, including the mathematical concepts, provides an improved blade
because optimizing the blade's profile makes it possible to reduce the
mechanical stresses to which the blade is subjected in operation. Spec.
1:33-37; see also Revised Guidance 55; Diehr 450 U.S. at 184, 187; MPEP
§ 2106.05(c), or alternatively,§ 2106.05(e).
Because our analysis under Step 2A of the Revised Guidance is
dispositive, we need not consider Step 2B of the guidance.
Therefore, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we are persuaded
the claims are directed to patent-eligible subject matter, such that we do not
sustain the Examiner's rejection of claims 9-15 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
Rejection II - Indefiniteness
Claim 16
The Examiner determines that Appellants provide "a mathematical
formula for determining a center of gravity ... but only define[] said
coordinates which are dependent upon a 'the blade without optimized
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profile,' which does not exist nor has existed, as the blade without an
optimized profile is an indefinite claimed baseline." Final Act. 7; see also
Ans. 8.
In this case, we agree with Appellants that a skilled artisan, upon
review of independent claim 16, would have "no issue understanding that
the geometrical profile of the blade without the optimized profile is used as a
reference point to define the geometrical profile of the blade with the
optimized profile in the present context." Appeal Br. 16 ( emphasis added);
see also Spec. 5:3-12.
The Examiner also determines that claim 16 is "incomplete for
omitting essential structural cooperative relationships of elements." Final
Act. 8. In particular, the Examiner determines that "[t]he omitted structural
cooperative relationships are: an uncompensated blade tang, since the claim
is an already compensated blade tang, formed based upon values derived
from an indefinite tang of a blade without the optimize[ d] profile." Id.
However, as discussed above, the claimed "blade without the
optimized profile" is merely used as a reference point to define the
geometrical profile of the blade with the optimized profile. Therefore, the
tang of the blade without the optimized profile is not "indefinite." The
Examiner's concern with respect to "an uncompensated [i.e., indefinite]
blade tang" appears to relate to the breadth of the claim, and is not a
consideration of the possible indefiniteness of the claim. Final Act. 8. See
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir.
2005) (breadth is not indefiniteness); see also Appeal Br. 16.
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For these reasons, we do not sustain the Examiner's rejection of
independent claim 16 under 35 U.S.C. § 112, second paragraph, for
indefiniteness.
DECISION
We REVERSE the decision of the Examiner to reject claims 9-15
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
We REVERSE the decision of the Examiner to reject claim 16 under
35 U.S.C. § 112, second paragraph, for indefiniteness.
REVERSED
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