Ex Parte Itabashi et al

Patent Trial and Appeal Board

Oct 19, 2018

14359692 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/359,692 05/21/2014
136404 7590 10/23/2018
Pepper Hamilton LLP/Boston
Attn: Boston IP Docketing Department
125 High Street
19th Floor
Boston, MA 02110-2736
FIRST NAMED INVENTOR
Kinnosuke Itabashi
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.
140709.03601 3919
EXAMINER
TRISCHLER, JOHN T
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
10/23/2018 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):
docketingbn@pepperlaw.com
davisdr@pepperlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KINNOSUKE ITABASHI
and SHUICHI ADACHI
Appeal2017-011814
Application 14/359,692
Technology Center 2800
Before GEORGE C. BEST, DONNA M. PRAISS, and
SHELDON M. McGEE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1---6 of Application 14/359,692 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter,§ 112, ,r 1, as
failing to comply with the written description requirement, and§ 103(a) as
obvious. Non-Final Act. (December 2, 2016). Appellants 1 seek reversal of
these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we affirm.
1 Calsonic Kansei Corp. and Keio University are identified as the patent
applicants and the real parties in interest. Appeal Br. 1.
Appeal2017-011814
Application 14/359,692
BACKGROUND
The '692 Application describes an apparatus for battery state
estimation that can accurately estimate the internal state of a battery.
Spec. ,r 1. 2 When rechargeable batteries are used in electric vehicles, it is
useful to know the drivable distance on the current charge, the current rates
at which charge and discharge are possible, and the like. Id. ,r 2. To
determine these quantities, however, it is necessary to know the battery's
internal state properties. Id. Because these properties cannot be directly
detected, two methods are used to estimate them. Id. The first method, a
current integration method, is very accurate over the short run, but over the
long run it accumulates error and becomes less accurate. Id. ,r,r 2-3. The
second method, open circuit voltage estimation, provides poor estimation
accuracy over short periods of time, but is superior to the current integration
method over long periods of time. Id. Conventional apparatus for battery
state estimation, therefore, uses a combination of these two methods. Id. ,r 3.
Sole independent claim 1 is representative of the '692 Application's
claims and is reproduced below from the Claims Appendix of the Appeal
Brief.
1. An apparatus for battery state estimation comprising:
[A] a charge/discharge current detection unit configured to
detect a charge/ discharge current value of a battery;
[BJ a terminal voltage detection unit configured to detect a
terminal voltage value of the battery;
2 We note that Appellants cite the published version of the '692 Application.
E.g., Reply Br. 5, 6. Such citations are inappropriate and against our rules.
Citation should be to the originally filed version of the Specification, which
is part of the record on appeal. 37 C.F.R. §§ 41.30, 4I.37(c)(l)(iv).
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[CJ an equivalent circuit model including a fast response
portion at the interface where the charge-transfer process takes
place in a slow response portion that becomes the diffusion
process in the diffusion layer between the electrolyte interface
and the bulk region of the battery;
[DJ a sequential parameter estimation unit configured to
perform sequential parameter estimation, using only the fast
response portion among the response portions of the equivalent
circuit model, based on a charge/ discharge current value input
from the charge/discharge current detection unit and the
terminal voltage value input from the terminal voltage detection
unit;
[EJ a constant setting unit configured to set a constant
representing resistance and capacitance in the slow response
portion of the equivalent circuit model;
[FJ a first multiplication unit configured to obtain an
overvoltage value of the fast response portion by multiplying a
parameter estimated by the sequential parameter estimation unit
by the charge/discharge current value;
[GJ a second multiplication unit configured to obtain an
overvoltage value of the slow response portion by multiplying
the constant set by the constant setting unit by the
charge/discharge current value; and
[HJ an addition unit configured to obtain an overvoltage
value of the battery by adding the overvoltage value of the fast
response portion obtained by the first multiplication unit and
the overvoltage value of the slow response portion obtained by
the second multiplication unit.
Appeal Br. 19 (reference letters added).
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-6 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception-i.e., an abstract
idea-without significantly more. Non-Final Act. 3.
2. Claims 1-6 are rejected under 35 U.S.C. § 112, ,r 1, as failing to
comply with the written description requirement. Non-Final
Act. 8.
3. Claims 1-6 are rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Giitlein 3 and Yoshioka. 4 Non-Final
Act. 13.
DISCUSSION
Rejection 1. The Patent Act defines patent-eligible subject matter as
including "any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof." 35
U.S.C. § 101. In particular, laws of nature, natural phenomena, and abstract
ideas are not patent-eligible. Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71 (2012).
Since the Supreme Court's decision in Alice Corp. v. CLS Bank
International, 134 S. Ct. 2347 (2014), patent-eligible subject matter has been
distinguished from patent-ineligible laws of nature, natural phenomena, and
abstract ideas using a two-step process. Id. at 2355. The first step requires
us to "determine whether the claims at issue are directed to one of those
3 US 7,872,449 B2, issued January 18, 2011.
4 US 2013/0027047 Al, published January 31, 2013.
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patent-ineligible concepts." Id. If they are, we must then analyze whether
the claim elements, both individually and "'as an ordered combination,"'
contain an "inventive concept" that "'transform[ s] the nature of the claim'
into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 72-73).
Appellants do not distinguish between the claims in arguing for the
reversal of this rejection. We, therefore, select claim 1 as representative of
the claims on appeal. 37 C.F.R. § 41.37(c)(l)(iv) (2015). Claims 2-6 stand
or fall with claim 1 with respect to this ground of rejection.
Appellants argue that the rejection of claim 1 should be reversed
because the rejection misapplies precedent and fails to consider the manner
in which the claimed invention as a whole improves the performance of
known state of charge monitoring technology. Appeal Br. 6-8. We address
these arguments in tum.
First, Appellants argue that the cases cited in the Non-Final Action
address claims directed to manipulating intangible data. On the other hand,
claim 1 's apparatus is "a tangible system that provides a technical solution to
the problem recognized by the inventors in the particular context in which
the system operates." Id. at 6. Appellants argue that this renders claim 1
distinct from claims directed to manipulation of intangible or disembodied
information like those found to be patent-ineligible subject matter in the
cases relied upon by the Examiner. Id.
As part of the Alice step 1 analysis, the Examiner analogized the
various elements of claim 1 to abstract ideas found to be patent-ineligible
subject matter in Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), SmartGene, Inc. v. Advanced
Biological Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014), and
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CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011).
See Non-Final Act. 7.
Appellants assert that the Examiner's misplaced reliance on these
cases requires reversal of this rejection. Appeal Br. 6-7.
For the following reasons, we are not persuaded by Appellants'
attempt to distinguish Digitech, SmartGene, and CyberSource.
The Federal Circuit has described the inquiry in Alice step 1 as
looking at the focus of the claims and determining whether their character as
a whole is directed to patent-ineligible subject matter. Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In doing so, "courts
'must be careful to avoid oversimplifying the claims' by looking at them
generally and failing to account for the specific requirements of the claims."
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
Cir. 2016) (quoting In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607,
611 (Fed. Cir. 2016)); see also Diamondv. Diehr, 450 U.S. 175, 189 n.12
( 1981 ). Finally, as part of step 1, we must also "look to whether the claims
in these patents focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314 (citing Enfish, 822 F.3d at 1336).
In determining whether claim 1 is focused upon an abstract idea, the
Examiner correctly applied precedent that identifies data-gathering
(SmartGene), mental processes (SmartGene, CyberSource), data
manipulation (Digitech), and mathematical models (Parker v. Flook, 437
U.S. 584, 595 (1978)) as patent-ineligible abstract ideas. See Non-Final
Act. 3-5. The Examiner also correctly determined that the claimed
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charge/discharge current detection unit and the terminal voltage detection
unit are well-known sensors that are widely used in the art. Id. at 4.
Appellants present no evidence to the contrary.
The Examiner, therefore, correctly determined that Appellants' claims
recite a combination of well-known physical elements and abstract ideas. In
this regard, they are similar to the claims at issue in Digitech, SmartGene,
and CyberSource. The Examiner did not misapply precedent in the manner
alleged by Appellants.
Second, Appellants argue that the Examiner erred by determining that
claim 1, taken as a whole, does not amount to significantly more than a
generic, abstract mathematical relationship. Appeal Br. 7. In particular,
Appellants argue that "[i]n performing step [2] of the Alice analysis, the
Office Action impermissibly analyzes the claimed system as individual
elements." Id. Appellants argue that,
Id.
when taken as a whole, claim 1 does not merely provide an
abstract idea that can be implemented on any general purpose
computer ... , but rather cites an apparatus that integrates a
charge/discharge detection unit and a terminal voltage detection
unit that result in the improved performance of the sensors in
estimating the [State of Charge].
This argument is not persuasive. In the second step of the Alice test,
we consider the elements of each claim, individually and as an ordered
combination, to determine whether additional elements may transform the
nature of the claim into a patent-eligible application of the law of nature,
natural phenomenon, or abstract idea. See Mayo, 566 U.S. at 77-80. "The
Supreme Court has described the second step of this analysis as a search for
an 'inventive concept'-i.e., an element or combination of elements that is
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'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Ariosa Diagnostics Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015) (quoting Mayo, 566
U.S. 72-73).
The Examiner determined that the charge/ discharge current detection
unit and the terminal voltage detection unit ( claim elements A and B) are
described at a high level of generality and are in common use. The
Examiner, therefore, determined that they do not, individually or in
combination, make the claim more than the abstract idea itself. Non-Final
Act. 7-8. We agree with the Examiner.
Moreover, Appellants' argument that the claimed invention in result
in improved function of the sensors is unsupported by any evidence.
Appellants' briefing points to no evidence in the Specification or in any
declaration demonstrating the alleged improvement in function. As a result,
Appellants' contention is nothing more than unsupported attorney argument
and has no persuasive value. Icon Health & Fitness, Inc. v. Strava, Inc., 849
F.3d 1034, 1043 (Fed. Cir. 2017) ("Attorney argument is not evidence."). It
is well settled that arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40
(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
In view of the foregoing, we affirm the rejection of claims 1-6 as
directed to patent-ineligible subject matter.
Rejection 2. The Examiner rejected claims 1---6 as lacking written
description support. Non-Final Act. 8-10. In particular, the Examiner
determined that the following claim terms should be construed as means-
plus-function elements according to 35 U.S.C. § 112, ,r 6:
(a) sequential parameter estimation unit
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(b) constant setting unit
( c) first multiplication unit
( d) second multiplication unit
( e) addition unit
( f) subtraction unit
(g) open circuit voltage/state of charge estimation unit.
Id. at 8-9. The Examiner determined that these terms used the generic place
holder "unit" coupled with functional language. Id. at 9. The Examiner
further determined that the claims failed to "recite sufficient structure to
achieve the function. Further, the generic place holder is not preceded by a
structural modifier." Id.
Applying § 112, ,r 6, the Examiner looked to the Specification to
determine the structure that performs the recited functions. Id. at 9-10. The
Examiner determined that the Specification failed to set forth structure
sufficient to perform the recited functions. Id. The Examiner, therefore,
rejected the claims under 35 U.S.C. § 112, ,r 1, as lacking written description
support. Id. at 10.
We cannot sustain the Examiner's rejection. As an initial matter, we
note that the Examiner's rejection is based upon an incorrect provision of
law. As the Federal Circuit has explained, when a specification does not
describe sufficient structure to perform the recited function of a means-plus-
function claim element, the claim is properly rejected as indefinite under 35
U.S.C. § 112, i12 (pre-AIA) or 35 U.S.C. § 112(b) (post-AIA):
[I]f one employs means-plus-function language in a claim, one
must set forth in the specification and adequate disclosure
showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect
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failed to particularly point out and distinctly claim the invention
as required by the second paragraph of section 112.
In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en bane); see
also In re Dassel, 115 F.3d 942, 946 (Fed. Cir. 1997).
We reverse this rejection on this basis alone.
We also reverse this rejection because the Examiner erred in
construing claim 1 as invoking § 112, ,r 6.
We begin by recognizing the rebuttable presumption that claims 1-6
are not intended to invoke§ 112, ,r 6, and should not be construed as having
means-plus-function elements. See Williamson v. Citrix Online, LLC, 792
F.3d 1339, 1348 (Fed. Cir. 2015) ("[T]he failure to use the word 'means' ...
creates a rebuttable presumption ... that§ 112, para. 6, does not apply.").
To rebut this presumption, the Examiner must find that the claim term fails
to recite sufficiently definite structure or recites function without reciting
sufficient structure for performing that function. Id. (citing Watts v. XL Sys.,
Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). The Federal Circuit has further
explained:
To determine whether the claim recites sufficient structure, "it
is sufficient if the claim term is used in common parlance or by
persons of skill in the pertinent art to designate structure, even
if the term covers a broad class of structures and even if the
term identifies the structures by their function."
Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1019 (Fed. Cir. 2017)
(quoting TecSec, Inc. v. Int'! Bus. Machs. Corp., 731 F.3d 1336, 1347 (Fed.
Cir. 2013) (internal quotation marks and citations omitted)).
In this case, the Examiner erred by finding that the presumption had
been overcome with respect to the seven claim terms identified. Our review
of the '692 Application's Specification and Figures, general and technical
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dictionaries, and the prior art convince us that the terms used in claims 1---6
designate sufficient structure to perform the functional language proceeding
the term "unit." We explain further with respect to each of the claim terms
below.
First, the Specification demonstrates that a person of ordinary skill in
the art at the time of the invention would have understood that "sequential
parameter estimation unit" recited in claim 1 refers to a known structure
from one of the known methods of estimating a battery's state of charge.
For example, the Specification states:
The open circuit voltage estimation method establishes a
battery model, compares the input/output with an actual battery,
estimates sequential parameters of the battery model while
reducing the differences with an adaptive filter such as a
Kalman filter, and estimates the open circuit voltage of the
battery in order to estimate the state of charge.
Spec. ,r 2; see also id. ,r,r 4, 6-11, 27. Based upon this disclosure, we
determine that a person of ordinary skill in the art at the time of the
invention would have understood a range of possible structures for the
sequential parameter estimation unit recited in claim 1.
Second, the Specification also indicates that the constant setting unit
is a portion of the apparatus that sets a constant representing resistance and
capacitance in the slow response portion of the equivalent circuit model
based upon prior experimentation. See Spec. ,r,r 13, 33; Figs. 1, 4. The
description provided is sufficient to define possible structures, e.g., a lookup
table, used for the constant setting unit in the mind of a person of ordinary
skill in the art.
Third, an examination of general purpose dictionaries demonstrates
that the terms "multiplier," "adder," and "subtractor" are recognized terms
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for designating particular structures within computers or other devices. See,
e.g., Shorter Oxford English Dictionary, 25 ( 6th ed. 2007) ( defining adder:
"in a computer, a unit which adds together to input variables"); id. at 1864
( defining multiplier: "a calculating instrument for use in multiplication");
Webster's Ninth New Collegiate Dictionary, 779 (1983) (defining multiplier:
"a key-operated machine or mechanism or circuit on a machine that
multiplies figures and records the products"); Shorter OED, 3090 (defining
subtractor: "a circuit or device the produces an output dependent on the
difference of two input or of multiples of them").
Fourth, the Specification states:
The open circuit voltage / state of charge conversion unit
10 stores data representing the relationship between the open
circuit voltage and the state of charge obtained in advance by
experiment as a look up table, takes the open circuit voltage
value OCV obtained by the subtracter 9 as input, and outputs a
corresponding state of charge SOCocv.
Note that the open circuit voltage/ state of charge
conversion unit 10 corresponds to the open circuit
voltage / state of charge estimation unit of the present
invention.
Spec. ,r 32.
In sum, we are persuaded that the Examiner erred by construing the
claim elements set forth above under 35 U.S.C. § 112, ,r 6. We, therefore,
reverse this rejection.
Rejection 3. The Examiner rejected claims 1---6 as unpatentable over
the combination of Giitlein and Yoshioka. Non-Final Act. 13-19. As
discussed above, however, the Non-Final Action contains errors in
construction of multiple terms in claims 1 - 6. Because this rejection is
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premised upon these erroneous claim interpretations, we are constrained to
reverse this rejection.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1---6
of the '692 Application under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter. We reverse the rejections of claims 1-6 under 35
U.S.C. § 112, if 1, and 35 U.S.C. § 103(a).
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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