Ex Parte MOTL et al

Patent Trial and Appeal Board

Jul 31, 2018

13398114 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/398,114 02/16/2012
21839 7590 08/02/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
David MOTL
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.
0079660-000001 7396
EXAMINER
NGON,RICKY
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MOTL and VOJTECH FILIP
Appeal2017-010532
Application 13/398, 114
Technology Center 2800
Before CATHERINE Q. TIMM, RAEL YNN P. GUEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision to reject claims 1-19 under 35 U.S.C. § 101 as directed
1 In explaining our Decision, we cite to the Specification of February 16,
2012 (Spec.), Final Office Action of June 3, 2016 (Final), Appeal Brief of
April 3, 2017 (Appeal Br.), Examiner's Answer of June 16, 2017 (Ans.), and
Reply Brief of August 7, 2017 (Reply Br.).
2 Appellants identify the real party in interest as Tescan, A.S. Appeal Br. 2.
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Application 13/398,114
to non-statutory subject matter. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The subject matter of the claims relates to a method and apparatus for
material analysis (see, e,g., claims 1, 5, 9, 15). Claim 1 is illustrative:
1. A computer-implemented method of material analysis
by a focused electron beam using characteristic X-rays and
back-scattered electrons comprising the steps of:
[ 1] specifying an adequately large set P of chemical
elements which might occur in an assayed sample;
[2] determining an interval of energies of X-ray photons
t corresponding with an emission line for each element Pi from
the set P;
[3] deflecting the focused electron beam consecutively
into points on the assayed sample;
[ 4] creating an electron map B, where values B(x, y)
stored in the electron map B are related to the points on the
assayed sample with coordinates (x, y) and correlate with an
intensity of back-scattered electrons generated in these points;
[5] creating a spectral map S by establishing a histogram
of energies of X-ray radiation emitted at these points;
[6] creating an X-ray map Mi for each element Pi from
the set P, where values Mi(x, y) stored in the map Mi are related
to the points on the sample with coordinates (x, y) and correlate
with intensity of X-ray radiation with energy within interval t
emitted in these points, the values Mi(x, y) being computed as a
total number of X-ray energies recorded in the spectral map S
as energies emitted from a point on the sample with coordinates
(x, y) and have energy within interval t;
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[7] converting the X-ray maps Mi and the electron map B
into a differential map Dusing a multi-channel edge-detection
algorithm;
[8] performing image segmentation using a watershed
transformation applied to the differential map Din order to
search for particles to produce a set Q of particles, where each
particle is assigned a sequence number j, and a map R of
particle distribution, where values R(x, y) stored in the map R
are related to the points on the sample with coordinates (x, y)
and correspond with the sequence number of the particle;
[9] setting a value of coefficient a and determining
spectrum Xj of X-ray radiation for each particle Cli from the set
Q based on the spectral map S using the coefficient a, where the
values Xj(E) are accumulated values of the intensity of X-ray
radiation with energy E;
[ 10] computing total number of X-ray events that were
recorded in spectrum Xj with energies within intervals Ii
corresponding to each element Pi from the set P and each
particle CJj from the set Qin order to get determined values NiJ;
and
[ 11] displaying, on a display device, an image
representing a spatial distribution of particles of the assayed
sample based upon the preceding steps.
Appeal Br. 11-12 ( claims appendix) (numbering added).
Claim 9 is similarly directed to a computer-implemented method of
material analysis, but is broader in scope as it does not require the initial
specifying and determining steps of claim 1. Nor does it require creating a
spectral map S or setting a value of coefficient a and determining spectrum
Xj, among other things.
Claims 5 and 15 are directed to equipment for material analysis
including a scanning electron microscope that has devices for detecting
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back-scattered electrons and X-ray radiation and converting analog signals
to digital signals, a processing unit that performs the data processing steps of
the method, and a display device that displays an image based on an output
of the processing unit.
OPINION
Appellants do not argue any claim apart from the others. Appeal Br.
5-10. We select claim 1 as representative to resolve the issues on appeal.
We agree with the Examiner that the claims are directed to non-
statutory subject matter because they do not amount to significantly more
than an abstract idea embodied in a mathematical algorithm. Final 4--5; Ans.
4--15. We adopt the Examiner's reasoning as our own and add the following
for emphasis.
Section 101 states that "[ w ]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title." But even if a claim at first blush
appears to be directed to one of the statutory classes of invention listed in
§ 101, it may be not eligible for a patent. "Phenomena of nature, though just
discovered, mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work."
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70-72
(2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185 (1981) (quoting
Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Thus, a claim that, due to the
drafting efforts of the applicant, appears to fit into one of the statutory
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classes, but, in fact, would unduly pre-empt others from making and using
the basic tools of scientific and technological work, is not patentable. Alice
Corp. Pty. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354--55, 57 (2014).
In Alice, the Court extended a framework that had been used in Mayo
for distinguishing claims pre-empting laws of nature, natural phenomena,
and abstract ideas from claims amounting to patent-eligible applications of
those concepts. Alice, 134 S. Ct. at 2355. As stated in Alice:
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we
then ask, "what else is there in the claims before us?" To
answer that question, we 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. We have described step
two of this analysis as a 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.
Alice, 134 S. Ct. at 2355 (internal quotation marks and citations to Mayo
omitted).
Although each step involves its own separate inquiry, the two stages
involve overlapping scrutiny of the content of the claims. Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
The Alice analysis begins with the question "whether the claims at
issue are directed to a patent-ineligible concept." Alice, at 2355. "[T]he
'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 subject matter. "' Enfzsh, LLC v. Microsoft Corp., 822 F .3d
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1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
One way to determine what the claim is "directed to" is to focus on
the claimed advance over the prior art. Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1375 (Fed. Cir. 2016). The advance cannot wholly reside in
patent-ineligible concepts themselves such as mathematical formulas and
algorithms. See Parker v. Flook, 437 U.S. 584, 591 (1978) ("The process
itself, not merely the mathematical algorithm, must be new and useful.").
Looking to the written description of Appellants' Specification, we
determine that the advance resides in the mathematical formulas and
algorithms the computer processing unit uses to configure data for
displaying an image.
The method uses a conventional scanning electron microscope, which
Appellants depict in Figure 1. Spec. ,r,r 3, 28, 34, 37, Fig. 4. This
microscope includes an electron gun 1 that creates a beam of accelerated
electrons that pass through coils that deflect the beam so it impacts
consecutively on assayed sample 4 at various points, most often in a regular
rectangular grid. Spec. ,r 3. On impact, the electrons interact with material
at the impact point to create back-scattered electrons (BSE) 6 and X-ray
radiation 7. Spec. ,r,r 3, 4. The back-scattered electrons 6 are detected by
detector 8 and the X-ray radiation 7 is detected by detector 10 and the
signals are converted to digital signals in analog-to-digital converter 9 and
pulse processor 11, respectively. Spec. ,r,r 4, 5.
Turning to the steps of the method, we note that some of the steps
involve mental steps of inputting data. Specifically, the first two steps
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recited in claim 1 are steps of entering information by, e.g., keyboard, into
the computer system. Spec. ,r 44. Also, the step of setting a value of
coefficient a (in step 9) is a mental step. According to the Specification,
"[ c ]oefficient a is determined by an experienced user prior to starting the
analysis based on a knowledge of the nature of the assayed samples." Spec.
,r 50. "[M]ental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work."
Benson, 409 U.S. at 67.
Moreover, the Specification makes clear that the first five steps of
claim 1 were known steps in the data analyzing process, i.e., up to the step of
creating an X-ray map Mi. Spec. ,r 34. These known steps include step [3]
of deflecting the focused electron beam consecutively into points on the
assayed sample, which is the only particularly feature Appellants argue
renders the claim patent eligible, even though the step was conventional and
known in focused electron beam material analysis processes at the time of
the invention. Appeal Br. 7. The last step, step 11, is merely a step of
displaying the data resulting from the algorithm of the prior steps. Thus, the
advance lies in steps 6-10.
The problem is that the steps said to be unconventional, i.e., steps 6-
10, are steps of manipulating data performed by computer without any new
equipment and merely in a method where data is gathered, computers are
used as tools to manipulate data that is then displayed. It is, thus, merely an
advance in the algorithm itself. An improvement to a mathematical
algorithm is simply not the type of improvement our patent laws, as
currently written, were designed to protect. As stated in Flook, "if a claim is
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directed essentially to a method of calculating, using a mathematical
formula, even if the solution is for a specific purpose, the claimed method is
nonstatutory." Flook, at 595 (quoting In re Richman, 563 F.2d 1026, 1030
(CCPA 1977)).
Considering the elements of claim 1 both individually and as an
ordered combination to determine whether the additional elements transform
the nature of the claim into a patent-eligible application as required in step 2
of the Alice framework does not change the result. As we said above, the
scanning electron microscope and its method of use were conventional and
the displaying of the resulting data does not amount to significantly more
than the ineligible mental steps and mathematical algorithms of the claim.
This conclusion is evinced from our discussion above.
Appellants' own discussion of the advance in the Specification
supports the Examiner's determination. Appellants have not identified a
reversible error in the Examiner's determination that the claims are directed
to non-statutory subject matter.
CONCLUSION
We sustain the rejection of claims 1-19 under 35 U.S.C. § 101.
DECISION
The Examiner's decision is affirmed.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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