Ex Parte Hasegawa et al

Patent Trial and Appeal Board

Nov 30, 2018

13273602 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/273,602 10/14/2011 Koji Hasegawa
22850 7590 12/04/2018
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.
388240US71 7672
EXAMINER
PETERS, LISA E
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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 KOJI HASEGAWA, KOJI KITO, T AKASHI MATSUI,
NOBUMITSU HORI, and OSAMU HIGASHIMOTO
Appeal 2017-003081 1
Application 13/273,6022
Technology Center 2800
Before JASON V. MORGAN, HUNG H. BUI, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
1 Our Decision references the Specification filed October 14, 2011 ("Spec."),
Appeal Brief filed July 27, 2016 ("App. Br."), and Reply Brief filed
December 13, 2016 ("Reply Br."), as well as the Examiner's Answer mailed
October 26, 2016 ("Ans.") and Non-Final Office Action mailed
September 23, 2015 ("Non-Final Act."). An oral hearing was held on
November 7, 2018, and the record includes a transcript of the hearing.
2 Appellants identify JTEKT Corporation as the real party in interest.
App. Br. 1.
Appeal2017-003081
Application 13/273,602
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 3-14. We have jurisdiction under
§ 6(b ). We REVERSE.
SUBJECT MATTER ON APPEAL
The invention is directed to a spindle condition detection device for
machine tool. App. Br. 1. Claims 5 and 6 are the only independent claims
on appeal. Claim 5, reproduced below, is illustrative of the claimed subject
matter:
Claim 5. A machine tool including a spindle condition
detection device, comprising:
a spindle;
a bearing that rotatably supports the spindle;
a bearing load detector that detects a load on the bearing;
a rotational speed sensor that detects a rotational speed of
the spindle; and
a present usage ratio calculation portion that calculates a
present usage ratio based on at least one load that is detected by
the bearing load detector,
wherein the present usage ratio calculation portion:
divides a range for the rotational speed of the
spindle into multiple rotational speed ranges, divides a
range for the load on the bearing into a set of load ranges
for each rotational speed range,
presets, for each load range of each rotational speed
range, a prescribed operating life of the bearing,
calculates an operating time in each load range for
each rotational speed range from a beginning of use to a
present moment, based on loads detected by the bearing
load detector and rotational speeds detected by the
rotational speed sensor,
calculates, for each load range of each rotational
speed range, a divisional usage ratio of the bearing by
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dividing a respective operating time by a respective
prescribed operating life, and
calculates the present usage ratio by summing up all
the divisional usage ratios.
REJECTION3
The Examiner rejects claims 3-14 under 35 U.S.C. § 101 as directed
to a judicial exception, i.e., an abstract idea, without significantly more.
Non-Final Act. 3--4.
ANALYSIS
An invention is patent eligible if it is a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include an implicit
exception: "[l]aws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014)
(quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In Alice, the Supreme Court provides a two-step analytical framework
for "distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66 (2012)). The first step of this analysis
is to consider whether the claims are directed to a patent-ineligible concept,
e.g., an abstract idea. Id. (citing Mayo, 566 U.S. at 77). If the claims are
3 The Examiner has withdrawn the rejection of claims 9 and 14 under
35 U.S.C. § 112, second paragraph. Ans. 2.
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Application 13/273,602
directed to eligible subject matter, the inquiry ends. Thales Visionix Inc. v.
United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step is to consider the elements of the claims "individually and 'as an
ordered combination"' to determine whether there are additional elements
that "'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). In other
words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (quoting Mayo, 566 U.S. at 72-73).
"'[W]ell-understood, routine, [and] conventional activit[ies]' previously
known to the industry" are insufficient to transform an abstract idea into
patent-eligible subject matter. Id. at 2359 (quoting Mayo, 566 U.S. at 73).
In rejecting the claims under 35 U.S.C. § 101, the Examiner
determines the claims are directed to
a judicial exception comprising the series of steps of dividing a
range for the rotational speed of the spindle, dividing a range for
the load on the bearing, presetting a prescribed operating life,
calculating an operating time, calculating a divisional usage
ratio, and calculating the present usage ratio which amounts to
no more than merely organizing information through
mathematical correlations.
Non-Final Act. 3. The Examiner also determines that
[ t ]he claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the steps of detecting a load and a rotational speed are
merely data gathering and deemed no more than extra-solution
activity; and the limitations of "a spindle" and "a bearing" are
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Application 13/273,602
generically recited and do not serve to apply the judicial
exception with a particular machine or confine the claim to a
particular useful application.
Id. at 4.
Appellants argue that the claims are patent eligible because they
recite: ( 1) a spindle condition detection device; (2) a spindle; (3) a bearing
that rotatably supports the spindle; (4) a bearing load detector that detects a
load on the bearing; and ( 5) a present usage ratio calculation portion that
calculates a present usage ratio based on a load detected by the bearing load
detector, such that the claimed invention is an improvement to existing
technology. App. Br. 8; Reply Br. 2. Appellants' argument is persuasive.
At the outset, the Federal Circuit has instructed that the "directed to"
inquiry does not simply consider whether claims involve excluded subject
matter, e.g., an abstract idea, but instead considers whether the character of
the claims as a whole is directed to excluded subject matter. Namely, the
court has explained:
The "directed to" inquiry ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon-after a11, they take place in the physical world.
Rather, the "directed to" inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether
"their character as a whole is directed to excluded subiect
matter."
Enfzsh, 822 F.3d at 1335 (citations omitted).
The present claims recite a machine tool comprising a spindle
condition detection device, a spindle, a bearing, a bearing load detector, a
rotational speed sensor, and a present usage ratio calculation portion. The
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claims further recite that the present usage ratio calculation portion performs
various calculations to determine a present usage ratio.
According to the Specification, the present usage ratio results in an
improvement to the machine tool. Namely, the Specification explains that
conventional machine tools are able to determine when a spindle has reached
the end of its operating life. Spec. ,r 4. The present usage ratio improves the
machine tool by ascertaining the remaining operating life of the spindle at
the present moment. Id. More specifically, "it is possible to increase the
machine efficiency by changing the use conditions of the spindle, such as the
rotational speed of the spindle and the cutting depth, in consideration of the
present usage ratio." Id. ,r 6.
Here, the Examiner's determination as to what the claims are directed
to considers only the calculations and does not account for the machine tool
components or how the calculated present usage ratio improves the machine
tool. The Examiner, therefore, has not shown persuasively that the character
of the claims as a whole is directed to an abstract idea pursuant to the first
step of the Alice analysis. Because the first step of the Alice analysis is
dispositive, we need not reach the second.
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 3-14 under 35 U.S.C. § 101.
DECISION
The Examiner's decision to reject claims 3-14 is reversed.
REVERSED
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