Ex Parte Pines et al

Patent Trials and Appeals Board

Apr 2, 2019

13559437 - (D) (P.T.A.B. Apr. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/559,437 07/26/2012
22879 7590 04/04/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Assaf Pines
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.
83014269 3553
EXAMINER
HERRMANN, JOSEPH S
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
04/04/2019 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASSAF PINES, EREZ HELDY, and
JONATHANNIR
Appeal2018-006734
Application 13/559,437
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Assaf Pines et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1-14, 16-18, and 20. Claim
15 has been withdrawn from consideration. Claim 19 has been canceled.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal2018-006734
Application 13/559,437
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "[a] method for determining a
pump setpoint for delivering a desired volumetric flow rate of a substance
through a channel." Spec. Abstract; Figs. 1 a, 2a, 3 a. Claims 1, 13, and 18
are independent.
recite:
Claims 1 and 13 are illustrative of the claimed subject matter and
1. A method for determining a desired pump setpoint for
delivering a desired volumetric flow rate of a substance through
a channel, the method comprising
measuring a first volumetric flow rate of the substance
moved by a pump through the channel for a first pump setpoint,
and
determining the desired pump setpoint for delivering the
desired volumetric flow rate based on a plurality of performance
curves of the pump and a quantified flow resistance of the
channel,
wherein each of the performance curves represents a
relation between volumetric flow rate and pressure at an exit of
the pump for a different pump setpoint, and
wherein the flow resistance of the channel is determined
based on said first volumetric flow rate and on the performance
curves of the pump.
13. A system for determining a desired pump setpoint for
delivering a desired volumetric flow rate of a substance from a
pump through a channel, comprising
a sensor for determining a volumetric flow rate of the
substance through the channel when driven by the pump,
a data repository comprising a plurality of performance
curves of the pump for different setpoints, each performance
curve representing a relation between volumetric flow rate and
pressure at an exit of the pump for different setpoints, and
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a pump controller configured to send a first pump setpoint
to the pump, to receive from the sensor the volumetric flow rate
at said first pump setpoint, to determine a value for flow
resistance of the channel based on the performance curve of the
pump at the first pump setpoint, determine the desired pump
setpoint for delivering the desired volumetric flow rate based on
the determined flow resistance value of the channel and to send
the desired pump setpoint for the desired volumetric flow rate to
the pump.
THE REJECTIONS 1
I. Claims 1-14, 16-18, and 202 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
II. Claims 1-12, 18, and 203 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
1 In the Final Office Action, the drawings are objected to under 37 C.F.R.
§ 1.84(0) and 1.84(r). See Final Office Action 4--5 ("Final Act."), dated Aug.
2, 2017. However, the objection is not within the jurisdiction of the Board.
See 37 C.F.R. § 1.181.
2 The Final Office Action lists claim 15 as being rejected under 35 U.S.C.
§ 112, first paragraph, and under 35 U.S.C. § 101. Final Act. 5, 11. However,
claim 15 has been withdrawn from consideration. See Answer 2 ("Ans."),
dated Apr. 19, 2018. Thus, we understand claim 15 as not being rejected
under 35 U.S.C. § 112, first paragraph, or under 35 U.S.C. § 101. See Ans. 2,
8.
3 At page 11 of the Final Office Action, the Examiner lists claims 1-18 and
20 for this rejection but at page 12 of the Final Office Action and pages 8-9
of the Answer, the Examiner lists claims 1-12, 18, and 20 instead. See Final
Act. 11-12; Ans. 8-9. We thus understand claims 1-12, 18, and 20 are
rejected under 35 U.S.C. § 101.
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III. Claims 13, 14, and 16 stand rejected under 35 U.S.C. § I02(b) as
being anticipated by Watanabe4 (US 5,213,477, issued May 25, 1993).
IV. Claim 17 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Watanabe and Shipley (US 2007 /0078703 Al, published Apr. 5, 2007).
V. Claims 1-7, 9, 18, and 20 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Mabe (US 5,240,380, issued Aug. 31, 1993) and Lorett
(US 4,678,404, issued July 7, 1987).
VI. Claim 8 and 10-12 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Mabe, Lorett, and Bartley (US 4,108,574, issued Aug. 22,
1978).
ANALYSIS
Rejection I - Written Description
The Examiner finds that the Specification fails to disclose the subject
matter of claims 1, 13, and 18. Final Act. 5-10. The Examiner questions
"what hardware and/or software (specifically the steps and procedures) the
inventor uses to accomplish the claimed function" and "how the inventor
intended the claimed function to be performed" in regard to the limitation
"the flow resistance of the channel is determined" of claim 1, the limitation
"determine a value for flow resistance of the channel" of claim 13, and the
limitation "determining ... a value for flow resistance of the channel" of
claim 18. Id. at 5-7 (emphasis omitted); see also id. at 7-10 (questioning
4 The Examiner incorrectly refers to this reference as "Watnabe" rather than
"Watanabe." See Final Act. 14--17.
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the constants described in paragraphs 26-27, 29, 32, 34, and 38 of the
Specification); Ans. 25-28.
Appellants contend in regard to the Examiner's questions and inquiry
in general, "[t]his is incorrect and is not the legal standard for evaluating
written description." Appeal Br. 10. 5 Appellants argue the limitation at
issue is supported by the Specification, for example in the Abstract, which
states that "[t]he flow resistance of the channel is determined based on said .
. . [first] volumetric flow rate and on the performance curves of the pump."
Id. at 11. In response to the Examiner's assertion that the Abstract does not
mention a measured volumetric flow rate, Appellants point out that the
Abstract recites "measuring a first volumetric flow rate through the
channel." Reply Br. 56 (referring to Ans. 26) ( emphasis omitted).
The test for sufficiency under the written description requirement of
35 U.S.C. § 112, first paragraph, "is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
( en bane). To have "possession," "the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed." Id.
As Appellants point out, the Abstract discloses that "[t]he flow
resistance of the channel is determined based on said first volumetric flow
rate and on the performance curves of the pump." See Spec. Abstract. The
5 Appeal Brief ("Appeal Br."), filed Nov. 10, 2017.
6 Reply Brief ("Reply Br."), filed June 14, 2018.
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Examiner appears to recognize that the Specification discloses in paragraphs
32, 34, and 38 determining flow resistance using the equation P = h[· ]Q2
where his the flow resistance. See id. ,r,r 32, 34, 38; see also Final Act. 7-
10. We thus agree with Appellants that the Examiner's questions "[are]
more appropriately directed to a concern that the claims lack enablement,
under§ 112, first paragraph, rather than lack of written description." Appeal
Br. 12.
Accordingly, we do not sustain the Examiner's rejection of claims 1-
14, 16-18, and 20 for lack of written description.
Rejection II - Patent-Ineligible Subject Matter
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 Bank Int '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
andAlice. Id. at217-18 (citingMayo CollaborativeServs. 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)
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("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
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)
("Flook")); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69
(1972) ("Benson")). Concepts determined to be patent eligible include
physical and chemical processes, such as "molding rubber products"
(Diamond v. Diehr, 450 U.S. 175, 191 (1981) ("Diehr")); "tanning, dyeing,
making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at
182 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
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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 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) ("Memorandum"). Under that guidance, we
first 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 interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h) (9th ed.
2018).
Only if a claim ( 1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field
(see MPEP § 2106.05(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 Memorandum.
STEP 2A, FIRST PRONG, OF THE 2019 GUIDANCE
As to the first prong of Step 2A of the 2019 Guidance, the Examiner
determines the claims "are directed towards the idea of --determining a
second value ( determining the pump setpoint for delivering the desired
volumetric flowrate) based on a determined first value (flow resistance of
the channel)" and "without either the determined first value or the
determined second value being used to transform any of the structure recited
in the claim." Final Act. 12-13. The Examiner further explains that "the
claims are directed to the abstract idea of 'obtaining and comparing
intangible data' (i.e. obtaining a flow resistance in an unknown undisclosed
manner and comparing it [to] other flow resistance data)." Id. at 13
( emphasis omitted). The Examiner notes that"[ e ]xamples of abstract ideas"
include: "[ a ]n idea of itself' and "[ m ]athematical relationships/formulas."
Id. at 12.
Appellants argue claims 1-12, 18, and 20 as a group. See Appeal Br.
13-14. We select claim 1 as the representative claim, and claims 2-12, 18,
and 20 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
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Appellants contend the claims are not directed to an abstract idea
because "some applications, such a printing, require a constant volumetric
flow rate from a pump which can be challenging if the channel's flow
resistance varies because of clogging or other deterioration," "[ c ]onstant
calibration and recalibration to address this can be cumbersome," and
Appellants' "claimed subject matter solves this technological problem in the
industry." Appeal Br. 13 (citing Spec. ,r,r 5-6); Reply Br. 7. Appellants
argue that the claimed subject matter is analogous to that in "the landmark
case of Diamond v. Diehr (450 U.S. 175) which was discussed and approved
in the decision in Alice v. CLS Bank (134 S. Ct. 2347)" in that Appellants'
"solution includes taking data from a sensor and using a computer [to]
determine the proper operational parameters of the system to solve a
technological problem in the industry." Appeal Br. 13-14; Reply Br. 7.
Appellants further contend that: ( 1) the Examiner's determination that "the
claims are directed to the abstract idea of 'obtaining and comparing
intangible data' (i.e. obtaining a flow resistance in an unknown undisclosed
manner and comparing it other flow resistance data)" "is clearly an over-
generalization of the claims" (Appeal Br. 14; Reply Br. 8-97) and (2)
Appellants are "not merely claiming 'obtaining and comparing intangible
data"' (Appeal Br. 15; Reply Br. 9).
7 We note Appellants' request that "[ifJ Appellant[s] needs to explicitly recite
operating the pump at the determined desired pump setpoint, Appellant[ s]
request[] that leave be given to amend the claims." Reply Br. 8. However,
the entry and non-entry of Amendments is not within the jurisdiction of the
Board. See 37 C.F.R. § 1.181.
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As an initial matter, we note that patent eligibility under 35 U.S.C.
§ 101 is a question of law that is reviewable de novo. See Dealertrack, Inc.
v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
As to the first prong of Step 2A of the 2019 Guidance, the subject
application is directed to mental processes and mathematical relationships.
See Memorandum.
The Specification discloses that: ( 1) "[ t ]he process of calibration may
generally be an iterative process based on trial and error" (Spec. ,r 6; see also
id. ,r 21 ); (2) "performance curves, also sometimes referred to as
'characteristic curves' may be obtained empirically, through standardized
tests" and "[ a ]ltematively, they may be deduced from the pump data sheet
supplied by the pump manufacturer" (id. ,r 25); (3) "[ c ]ompared to the prior
art, wherein the determination of the required setpoint is an iterative process
of educated guessing, the solution according to the present example is much
quicker and can be fully automated" (id. ,r 35); and (4) "[t]he pump control
may incorporate a computing apparatus having a memory comprising
computer readable instructions for carrying out the above process" (id. ,r 45).
To the extent that Appellants' method is merely an automation of the
calibration process, we note that it has been held that where "[t]he concept
of manually tracking modifications across multiple sheets is an abstract
idea[, t ]he mere automation of this process does not negate its abstraction."
Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1013 (Fed. Cir.
2018). Further, "[ u ]sing a computer to accelerate an ineligible mental
process does not make that process patent-eligible." Bancorp Servs. LLC v.
Sun Life Assurance Co. of Canada (US.), 687 F.3d 1266, 1279 (Fed. Cir.
2012). Here, claim I merely recites two steps, namely, (1) "measuring a
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first volumetric flow rate of the substance moved by a pump through the
channel for a first pump setpoint" and (2) "determining the desired pump
setpoint for delivering the desired volumetric flow rate based on a plurality
of performance curves of the pump and a quantified flow resistance of the
channel" in which calculations for measuring a volumetric flow rate and
determining a setpoint can be performed via pen and paper or within the
human mind. The limitations (3) "wherein each of the performance curves
represents a relation between volumetric flow rate and pressure at an exit of
the pump for a different pump setpoint" and ( 4) "wherein the flow resistance
of the channel is determined based on said first volumetric flow rate and on
the performance curves of the pump," merely relate to data that are collected
or analyzed. These limitations, under the broadest reasonable interpretation,
recite determining a desired pump setpoint because the limitations all recite
operations that would ordinarily take place in determining a desired pump
setpoint.
For example, "measuring a first volumetric flow rate," as recited in
limitation (1) and "determining the desired pump setpoint," as recited in
limitation (2) are activities that would take place whenever one is
determining a desired pump set point. Similarly, "each of the performance
curves represents a relation between volumetric flow rate and pressure at an
exit of the pump for a different pump setpoint" and "the flow resistance of
the channel is determined based on said first volumetric flow rate and on the
performance curves of the pump," as recited in limitations (3) and ( 4) are
also characteristics of determining a desired pump set point. The
determining of a desired pump set point is a process that compares data
similar to mathematical formulas in Flook and can be performed in the
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human mind similar to mental processes as discussed in Benson. Parker v.
Flook, 437 U.S. at 594--95; Gottschalk v. Benson, 409 U.S. at 69.
Accordingly, we conclude that claim 1 recites mathematical relationships
and mental processes, and thus is an abstract idea.
This determination fulfills the first prong of Step 2A of the 2019
Guidance, in that we conclude claim 1 is directed to an abstract idea.
STEP 2A, SECOND PRONG, OF THE 2019 GUIDANCE
As to the second prong of Step 2A of the 2019 Guidance, the
Examiner determines that:
[ t ]he additional elements or combination of elements in the
claims such as (no additional elements are found in Claim 1;
centrifugal pump - claim 4; a pump, a sensor - claim 18, a
computer system - claim 20), fail to amount to more than: (i)
mere instructions to implement the idea on a computer ....
Further the comparison of data never transforms the pump in
claims 1 and 18.
Final Act. 13. Thus, the Examiner determines that "[t]he claims do not
provide meaningful limitations to transform the abstract idea into a patent
eligible application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself." Final Act. 13.
In regard to the second prong of Step 2A, claim 1 does not integrate
the judicial exception into a practical application. As explained above and
further explained below, (a) claim 1 does not provide specific improvements
in computer capabilities or functioning to other technology or technical
fields, (b) the judicial exception is not applied with, or by use of, a particular
machine, ( c) claim 1 does not effect a transformation or reduction of a
particular article to a different state or thing, ( d) claim 1 does not include
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additional features to ensure that the claim describes a process or product
that applies the exception in a meaningful way, such that it is more than a
drafting effort designed to monopolize the exception, ( e) claim 1 does not
recite additional elements that amount to more than a recitation of the words
"apply it" ( or an equivalent) or are more than mere instructions to implement
an abstract idea or other exception on a computer, and (f) claim 1 does not
recite additional elements that amount to more than generally linking the use
of a judicial exception to a particular technological environment or field of
use.
Further as to the second prong of Step 2A, we determine "whether the
focus of the claims is on the specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d at 1327, 1335-36 (Fed. Cir. 2016); see also
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed.
Cir. 2016) (The claims were directed to "a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a particular type.").
The limitations at issue are not directed to an improvement of a
computer's functionality. There is nothing recited in claim 1 to suggest that,
once a desired pump setpoint is determined, the function of a machine or
computer used to implement the claimed steps will be improved. Instead,
like the claims in Electric Power, claim 1 relates to a purported advance in
uses for existing computer capabilities, not new or improved computer
capabilities. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353-1354 (Fed. Cir. 2016) ("Electric Power") (Explaining that the
invention is merely directed to the collection, manipulation, and display of
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data.); see also Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding the mere
concept of "1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory" is patent
ineligible subject matter). We note that Appellants do not apprise us as to
how "proper operational parameters of the system" are determined to "solve
a technological problem in the industry," (Appeal Br. 13-14; Reply Br. 7),
which are not performed already in the industry----other than perhaps
automating the process, as discussed above.
STEP 2B OF THE 2019 GUIDANCE
As to Step 2B of the 2019 Guidance, the Examiner determines that:
[t]he additional elements or combination of elements in the
claims such as (no additional elements are found in Claim 1;
centrifugal pump - claim 4; a pump, a sensor - claim 18, a
computer system - claim 20), fail to amount to more than: ... (ii)
recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine,
and conventional activities previously known to the pertinent
industry.
Final Act. 13.
Appellants do not appear to make any arguments regarding Step 2B
other than what is discussed above. Appeal Br. 13-15; Reply Br. 7-9. As
the Examiner points out, claim 1 does not recite any additional elements to
consider, and the recitation of a pump, a sensor, and a computer system in
claims 4, 18, or 20 amounts to structure that serves to perform functions that
are "well-understood, routine, and conventional activities previously known
to the pertinent industry." Final Act. 13.
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Thus, for these reasons, we sustain the Examiner's rejection of claim
1 as being directed to patent-ineligible subject matter. We further sustain the
rejection of claims 2-12, 18, and 20, which fall with claim 1.
Rejection III -Anticipation by Watanabe
The Examiner finds that Watanabe discloses a system for determining
a desired pump setpoint for delivering a desired volumetric flow rate of a
substance from a pump through a channel having all limitations of claim 13.
Final Act. 14--16 (citing Watanabe Figs. 18-19; 32:47---61; 35:25-33; 36:1-
48). The Examiner finds that Watanabe also discloses a pump controller
configured to determine a value for flow resistance of a channel because the
"value for flow resistance of the channel= necessary pressure drop (and/or
piping losses of the system in the plant) to achieve required delivery
flowrate 'a' at required pressure from pumps (2-1, 2-2) in [the] channel" of
Watanabe. Id. at 15; see also Ans. 31-36.
Appellants contend that "Watanabe describes a control apparatus that
operates based on pressure and temperature of the process liquid" and that
"there is nothing in ... [the cited] portion[s] of Watanabe about actually
determining a flow resistance of the channel." Appeal Br. 16.
The correct inquiry in giving a claim term its broadest reasonable
interpretation in light of the specification is not whether the
specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an
interpretation that is not inconsistent with the specification. It is
an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an
interpretation that is "consistent with the specification."
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In re Smith Int'!, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (citing In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation omitted); In re Suitco
Surface, 603 F.3d 1255, 1259---60 (Fed. Cir. 2010)).
Claim 13 recites "a data repository comprising a plurality of
performance curves of the pump for different setpoints, each performance
curve representing a relation between volumetric flow rate and pressure at
an exit of the pump for different setpoints" and "determin[ing] a value for
flow resistance of the channel." Appeal Br. 26, Claims App. (emphases
added). As such, claim 13 requires quantifying flow resistance or
determining a value of flow resistance, not just determining that there is flow
resistance. The Examiner does not establish that Watanabe discloses
quantification of flow resistance or determining a value of flow resistance.
Further, as noted above, the Specification provides the equation P = h[· ]Q2
indicating that flow resistance, h, is different than pressure, P. See Spec.
,r 32. To the extent the Examiner is equating flow resistance to flow rate
and/or pressure, such a determination would render the claim terms "flow
rate" and "pressure" superfluous and is not consistent with the Specification.
"[C]laims are interpreted with an eye toward giving effect to all terms in the
claim." Bicon, Inc. v. Straumann Co., 441 F.3d. 945, 950 (Fed. Circ. 2006).
For these reasons, we do not sustain the Examiner's rejection of claim
13, and claims 14 and 16 depending therefrom, as anticipated by Watanabe.
Rejection IV- Obviousness over Watanabe and Shipley
Claim 1 7 depends from claim 13. Appeal Br. 2 7, Claims App. The
Examiner's rejection of claim 17 is based on the same unsupported findings
in Watanabe discussed above. See Final Act. 17. The Examiner relies on
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Shipley for disclosing a printing apparatus and thus does not rely on Shipley
to remedy the deficiencies of Watanabe. Id. Accordingly, for reasons
similar to those discussed above for claim 13, we do not sustain the rejection
of claim 17 as unpatenable over Watanabe and Shipley.
Rejection V- Obviousness over Mabe and Lorett
In regard to claims 1 and 18, the Examiner finds that Mabe discloses
determining a quantified flow resistance or a value for flow resistance
because the Examiner determines that "quantified flow resistance = the
internal losses in the channel and/ or the amount backpressure ( that the flow
must overcome to flow through the valve)" (Final Act. 18) ( emphasis
omitted), and that "value for flow resistance = the internal losses in the
channel and/or the amount backpressure (that the flow must overcome to
flow through the valve)" (id. at 22). The Examiner relies on Lorett for
disclosing that "if the flow drops for the same pump set point (speed) the
resistance is determined to increase ... [and] if the flow increases for the
same pump setpoint the resistance is determined to decrease." Id. at 20, 23;
see also Ans. 37--40.
Appellants contend that "[l]ike Watanabe ... , Mabe does not address
'flow resistance"' and that the Examiner "does not cite to Mabe on this point
and does not establish how or where Mabe teaches or suggests actually
determining a flow resistance of a channel as claimed." Appeal Br. 19.
Appellants further argue that both "Mabe and Lorett do not actually quantify
the flow resistance." Id. at 21.
Claim 1 recites "determining ... a quantified flow resistance of the
channel." Appeal Br. 24, Claims App. ( emphasis added). Claim 18 recites
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"determining ... a value forjlow resistance of the channel." Id. at 27
( emphasis added). Thus, claims 1 and 18 require determining a value for
flow resistance for a channel rather than just determining a presence of flow
resistance. The Examiner's finding that Mabe discloses these limitations is
in error. Further, as discussed above, interpreting the claim term "flow
resistance" as "flow rate" or "pressure" is not consistent with the
Specification and would render the latter terms as recited in the claims
superfluous. See Spec. ,r 32; see also Bicon, 441 F.3d. at 950. The
Examiner's reliance on Lorett for disclosing that flow resistance is increased
or decreased when flow drops or increases, does not remedy the deficiencies
of Mabe in that the Examiner does not establish that Lorett discloses
determining an actual or determined value for flow resistance.
For these reasons, we do not sustain the Examiner's rejection of
claims 1 and 18, and claims 2-7, 9, and 20 depending therefrom, as
unpatentable over Mabe and Lorrett.
Rejection VI - Obviousness over Mabe, Lorett, and Bartley
Claim 8 and 10-12 either depend directly or indirectly from claim 1.
Appeal Br. 25-26, Claims App. The Examiner's rejection of these claims is
based on the same unsupported findings in the combination of Mabe and
Lorett discussed above. See Final Act. 24--27. The Examiner relies on
Bartley for disclosing pump performance curves and thus does not rely on
Bartley to remedy the deficiencies of Mabe and Lorett. Id. Accordingly, for
reasons similar to those discussed above for claim 1, we do not sustain the
Examiner's rejection of claims 8 and 10-12 as unpatentable over Mabe,
Lorett, and Bartley.
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DECISION
We REVERSE the decision of the Examiner to reject claims 1-14,
16-18, and 20 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
We AFFIRM the decision of the Examiner to reject claims 1-12, 18,
and 20 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
We REVERSE the decision of the Examiner to reject claims 1-14,
16-18, and 20 under 35 U.S.C. § 102(b) or under 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)(l )(iv).
AFFIRMED-IN-PART
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