Ex Parte Shreve et alDownload PDFPatent Trial and Appeal BoardOct 19, 201713989180 (P.T.A.B. Oct. 19, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. W-685-US2 (WAT-026US) 9608 EXAMINER GRABER, KARA M ART UNIT PAPER NUMBER 1777 MAIL DATE DELIVERY MODE 13/989,180 05/23/2013 Joshua A. Shreve 14299 7590 10/19/2017 WATERS TECHNOLOGIES CORPORATION c/o Schmeiser, Olsen & Watts LLP 33 Boston Post Road West Suite 410 Marborough, MA 01752 10/19/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSHUA A. SHREVE and PETER KIRBY Appeal 2017-003460 Application 13/989,1801 Technology Center 1700 Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and JAMES C. HOUSEL, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL A. STATEMENT OF THE CASE Appellants filed an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1, 6, 9, 10, 20, and 21.2 We have jurisdiction under 35 U.S.C. § 6(b).3 1 Waters Technology Corporation is identified in the Appeal Brief as the real party in interest. Appeal Br. 3. 2 Claims 3,4, 8, and 11—19 are withdrawn from consideration. Final Act. 2. 3 Our Decision refers to Appellants’ Specification (Spec.) filed Sept. 24, 2014, the Final Office Action (Final Act.) dated Nov. 16, 2015, Appellants’ Appeal Brief (Appeal Br.) filed Apr. 12, 2016, the Examiner’s Answer (Ans.) dated Nov. 22, 2016, and Appellants’ Reply Brief (Reply Br.) filed Dec. 30, 2016. Appeal 2017-003460 Application 13/989,180 We AFFIRM. The subject matter on appeal relates to methods for delivering a solvent mixture having a predetermined mass composition in a liquid chromatography system (see, e.g., claim 1). Appellants disclose that conventional pumps for liquid chromatography meter solvents by volume but solvents generally have a mass density that depends upon temperature. Spec. 2:3—9. Thus, changes in temperature affect solvent density, which in turn can adversely affect chromatography measurement data, such as a loss of measurement accuracy and repeatability. Id. 2:7—15. Appellants disclose that their invention addresses this by maintaining a desired mass composition of a mobile phase solvent regardless of temperature changes. Id. 2:19-21. Independent claim 1 is illustrative and is reproduced below from the Claims Appendix of the Appeal Brief.4 1. A method for delivering a solvent mixture having a predetermined mass composition in a liquid chromatography system, the method comprising: defining a mass composition for the solvent mixture at a reference temperature; for each solvent to be mixed to create the solvent mixture: sensing a temperature of the solvent; and determining a density of the solvent at the sensed temperature from data stored in a memory module, the data indicating the density of the solvent with respect to temperature for an operational temperature range of the liquid chromatography system; 4 Appeal Br. 14. 2 Appeal 2017-003460 Application 13/989,180 determining a volume of each of the solvents to be mixed based on the determined densities of the solvents at the sensed temperatures so that a mixture of the determined volumes of the solvents would create the solvent mixture having a mass composition that is equal to the mass composition defined for the solvent mixture at the reference temperature; controlling a flow rate of a plurality of solvent pumps, wherein each one of the solvent pumps supplies a flow of one of the solvents at a flow rate proportional to the determined volume of the solvent; and combining the flows of the solvents to create the solvent mixture. The claims on appeal stand rejected as follows: A. claims 1, 6, 9, 10, 20, and 21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement; B. claims 9 and 10 under 35 U.S.C. § 112, second paragraph, as indefinite; and C. claims 1, 6, 9, 10, 20, and 21 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. B. DISCUSSION Enablement Rejection Claims 1, 6, 9, 10, 20, and 21 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. “[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (citation omitted). “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached 3 Appeal 2017-003460 Application 13/989,180 by weighing many factual considerations.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Some experimentation, even a considerable amount, is not “undue” if, e.g., it is merely routine, or if the Specification provides a reasonable amount of guidance as to the direction in which the experimentation should proceed. Factors to consider for enablement include “(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” Id. Here, the Examiner reviews the factors set forth in In re Wands to consider whether Appellants’ disclosure would have required undue experimentation for one of ordinary skill in the art. Ans. 3—6. Specifically, the Examiner finds “[t]he nature of the invention is drawn to a method for delivering a fluid as set forth in claim 1.” Id at 3. (emphasis omitted). This factor is neutral for enablement of the claimed invention. The Examiner considers the state of the prior art and finds Poling5 discloses “that volumetric behavior of mixtures is a function of temperature, pressure, and composition and their properties are modeled based on equations of state - choosing an equation of state to estimate the fluid properties is a complicated process and there are many options.” Id. at 3^4. Appellants argue that Poling is not relevant for showing the state of the prior art because claim 1 is directed to, among other things, sensing a temperature for each solvent of a solvent mixture and determining the 5 Bruce E. Poling, et al., The Properties of Gases and Liquids, pp. 163, 164, 184, 185 (McGraw-Hill, Fifth Edition, 2001) (“Poling”). 4 Appeal 2017-003460 Application 13/989,180 density for each solvent while Poling concerns mixtures. Appeal Br. 6. Appellants’ argument is persuasive. Claim 1 recites, among other things, a method for delivering a solvent mixture in which a temperature is sensed for each solvent of the solvent mixture and a density is determined for each solvent of the mixture. Thus, claim 1 concerns the temperature and density of individual solvents for a solvent mixture, not the behavior of the combined mixture. In contrast, Poling concerns the behavior of mixtures. Poling 5.1—5.2. Thus, the record does not support the Examiner’s finding that the state of the prior art weighs negatively for enablement of the claimed invention. The Examiner finds the relative skill of those in the art is “fairly high” and predictability in the art of chromatography for fluid delivery is high. Ans. 4. The Examiner also finds predictability becomes more complex as the number of components in a system increases, citing Poling. Id. However, as stated above, Poling does not support the Examiner’s finding because Poling regards mixtures. Therefore, these factors weigh positively for enablement of the claimed invention. With regard to the breadth of the claims, the Examiner finds the claims are broad and do not specify temperatures; solvents; whether the solvent is a liquid, gas, or supercritical fluid; or the relationship between temperature and density. Id. at 5. For the amount of guidance presented, the Examiner finds Appellants’ Specification lacks specific examples of fluids or their properties (i.e., density and volume at specific temperatures) and although the Specification states that densities may be determined from a lookup table, “this is not sufficient for someone of ordinary skill in the art to determine how to precisely determine the density of the fluid; there are 5 Appeal 2017-003460 Application 13/989,180 multiple ways to determine density in the art and one of ordinary skill would need to consider how the values in the ‘lookup table’ are determined.” Id. In response, Appellants contend the claims concern methods for liquid chromatography systems so the solvents would be compatible for such systems. Appeal Br. 8. Thus, Appellants argue, the solvents would be liquids. Reply Br. 2. Appellants further assert that one of ordinary skill in the art would be knowledgeable of the operating temperatures for such systems and that lookup table data exists or can be generated experimentally, as is known in the art. Appeal Br. 8—9. Appellants’ arguments are persuasive. Claim 1 recites a method for liquid chromatography systems and Appellants state the solvents would be liquids. Reply Br. 2. Thus, the claims are not as broad as the Examiner finds. With regard to the particular solvents used, operating temperatures for solvents in liquid chromatography systems, the relationship between temperature and density for an individual solvent, and the lack of specific guidance in Appellants’ disclosure, we note that the test for enablement is whether a disclosure teaches “those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation,” as stated above. In re Wright, 999 F.2d at 1561 (emphasis added). Thus, the subject of the enablement test is a person possessing ordinary skill and knowledge in the art. In other words, an inventor need not include in the Specification that which is already known and available to one of ordinary skill in the art. See In re Howarth, 654 F.2d 103, 105 (CCPA 1981) (“An inventor need not, however, explain every detail since he is speaking to those skilled in the art.”). Therefore, it is not fatal that the claims encompass various solvents 6 Appeal 2017-003460 Application 13/989,180 and operating temperatures or that Appellants have not disclosed specific solvents for liquid chromatography systems or their properties, specific operating temperatures, or the specific relationship between temperature and density if one of ordinary skill in the art would have already possessed such knowledge or would have been able to obtain it without undue experimentation. Thus, there is insufficient support for the Examiner’s findings that “there are multiple ways to determine density in the art” (without stating the ways) and it is uncertain how one of ordinary skill in the art would determine density and the data for lookup tables (Ans. 5). As such, the Examiner has not established that the breadth of the claims and the amount of guidance in Appellants’ disclosure weigh negatively against enablement. For the quantity of experimentation necessary, the Examiner finds “[tjhere would be a considerable amount of experimentation necessary to ascertain when the volumetric composition of the mixture of the fluids at the sensed temperature is equal to a volumetric composition of a mixture of the fluids at the reference temperature,” “[t]he quantity of experimentation for all the combinations of fluids in a mixture would be quite high as physical properties such as volume and density change significantly with small changes in pressure and temperature,” and “a thorough understanding of the thermodynamic properties of fluids and mixtures would be necessary to fully address this problem.” Id. at 6. Here, the Examiner again refers to mixtures even though claim 1 recites sensing the temperature and determining the density for each solvent of a solvent mixture, not the mixture itself. Thus, the Examiner appears to confuse the complexity and quantity of experimentation necessary for 7 Appeal 2017-003460 Application 13/989,180 mixtures of solvents with that required for individual solvents. Moreover, the mere fact that there is a considerable quantity of experimentation does not mean there is a lack of enablement. Some experimentation, even a considerable amount, is not “undue” if, e.g., it is merely routine, or if the Specification provides a reasonable amount of guidance as to the direction in which the experimentation should proceed. Wands, 858 F.2d at 737. In view of the Examiner’s findings regarding mixtures instead of individual solvents, the Examiner has failed to establish that the experimentation necessary to practice the claimed invention would not be routine and would require undue experimentation. In view of the above, the Examiner has not set forth a prima facie case for lack of enablement. Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C. § 112, first paragraph, for failure to comply with the enablement requirement. Indefiniteness Rejection of Claims 16, 18, 19, 21, and 22 Claims 9 and 10 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 7. Appellants fail to submit any argument regarding the propriety of this rejection. Appeal Br. 5—12. We, therefore, summarily affirm the Examiner’s § 112, second paragraph, rejection of claims 9 and 10. Patent Eligible Subject Matter Rejection Claims 1, 6, 9, 10, 20, and 21 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 8 Appeal 2017-003460 Application 13/989,180 The first step in analyzing whether a claim is directed to patent- eligible subject matter is determining whether the claim is directed to one of the patent-ineligible concepts: laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLSBankInt'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)). If a claim is directed to a patent-ineligible concept, the second step in the analysis is to determine whether additional elements of the claim, “both individually and ‘as an ordered combination,’” “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297). Thus, 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. at 2357 (quoting Mayo, 132 S. Ct. at 1297). Here, the Examiner finds the claims are directed to the abstract idea of “a mathematical relationship between volume, density, and temperature.” Ans. 7. With regard to the second step of Alice, the Examiner finds the steps of claim 1 are routine and conventional and are directed to conventional components for chromatography systems. Id. at 11—12. In view of this, the Examiner finds “[t]he claims at issue amount to nothing significantly more than an instmction to apply the abstract idea, linking volume to density and temperature through an unspecified variable relationship.” Id. at 7. In order to overcome the Examiner’s rejection, Appellants must identify with sufficient particularity what the Examiner did wrong, i.e., identify a reversible error in the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010). Moreover, “the examiner bears the initial burden, on review of the 9 Appeal 2017-003460 Application 13/989,180 prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, the Examiner has made a prima facie case under § 101 by finding claim 1 is directed to an abstract idea and that the elements of claim 1 do not transform claim 1 into patent-eligible subject matter. We therefore consider whether Appellants have identified a reversible error in the Examiner’s rejection. Appellants contend6 that: [ajthough claim 1 relies upon a relationship between solvent density and temperature. . .this reliance involves the use of that data and not the generation of that data. In other words, the claimed invention is not directed to the abstract idea of the mathematical relationship but instead is directed to the control of solvent pumps in a liquid chromatography system to achieve improved accuracy and repeatability under varying environmental temperatures (e.g., paragraphs [0005] and [0006]) Appeal Br. 11—12. These arguments are unpersuasive. Claim 1 encompasses the generation of data. Claim 1 recites that the density of a solvent is determined “from data stored in a memory module” with “the data indicating the density of solvent with respect to temperature.” Claim 1 does not limit the stored data to a lookup table, which is described at page 7, lines 18—20, of Appellants’ Specification. In fact, dependent claim 20 recites that the 6 Appellants also refer to the arguments set forth for the lack of enablement rejection under 35 U.S.C. § 112, first paragraph. Appeal Br. 11. These arguments are unpersuasive because they do not address the test for patent eligible subject matter set forth in Alice. 10 Appeal 2017-003460 Application 13/989,180 density is determined from a lookup table and dependent claim 21 recites that the density is calculated “using stored parameters that describe the functional relationship of the solvent density with respect to temperature,” , as described at page 7, lines 27—30, of Appellants’ Specification. Therefore, claim 1 is directed to the abstract idea of a mathematical relationship between at least density and temperature. Appellants further argue that claim 1 recites a memory module, which is a positive structure and claim 1 recites steps that “involve action on physical items (the solvents) and further require the use of other physical items (e.g., pumps) to perform the associated steps.” Appeal Br. 12. Appellants do not submit further arguments in the Reply Brief but “reiterate the arguments presented in the Appeal Brief.” Reply Br. 3. These arguments are unpersuasive. The test in Alice is not whether a claim recites physical items or acts upon physical items. As discussed above, step two of Alice queries whether the elements of a claim, both individually and as an ordered combination, transform the nature of the claim into patent-eligible subject matter. Appellants’ arguments do not address these Alice step two queries. Moreover, these arguments do not identify a reversible error in the Examiner’s findings that the elements of claim 1 regard routine and conventional steps and conventional components for chromatography systems (i.e., are insufficient to transform claim 1 into patent-eligible subject matter). Ans. 11—12. As discussed in Alice, claim elements that regard “[pjurely conventional” functions or steps or “well- understood, routine, conventional activities]” known in the art, whether considered separately or as an ordered combination, are insufficient to transform claims directed to a patent-ineligible concept into patent-eligible 11 Appeal 2017-003460 Application 13/989,180 subject matter. Alice, 134 S. Ct. at 2359-2360 (quoting Mayo, 132 S. Ct. at 1294, 1298). Furthermore, as explained by the Supreme Court in Alice, although the process in Diamond v. Diehr, 450 U.S. 175 (1981) was computer- implemented and involved a “‘well-known’ mathematical equation,” the process also used a thermocouple to obtain temperature measurements inside a mold (which the industry had not been able to obtain) and input the measurements to a computer that used the equation to recalculate a remaining cure time. Alice, 134 S. Ct. at 2358. These steps were found to be an improvement of an existing technological process that “transformed the process into an inventive application of the formula.” Id. (quoting Mayo, 132 S. Ct. at 1299). Here, Appellants do not explain how the claimed invention is an improvement for an existing technological process despite the Examiner’s findings. Appellants’ contention that the claimed invention achieves “improved accuracy and repeatability under varying environmental temperatures” (Appeal Br. 11—12) asserts advantages for the claimed invention without citing evidence demonstrating an actual improvement of the prior art. Nor do Appellants explain that although their invention regards conventional or generic steps or components, such as when considered individually, they are “combined in an unconventional manner” that provides an improvement and thus patent-eligible subject matter under step two of Alice. Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256—59 (Fed. Cir. 2014) and BASCOM Glob. Internet Servs. Inc. v. AT & TMobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016)). Nor do Appellants explain 12 Appeal 2017-003460 Application 13/989,180 that the claimed invention does not preempt all ways of determining the density for a solvent of a solvent mixture for a liquid chromatography system via a relationship between temperature and density for the solvent. See Amdocs, 841 F.3d at 1299 (citing BASCOM, 827 F.3d at 1350)). In view of the above, Appellants have not met their burden of identifying a reversible error in the Examiner’s § 101 rejection of claim 1. Appellants do not argue claims 6, 9, 10, 20, and 21 separately from claim 1. Appeal Br. 12. For the reasons discussed above and those set forth in the Examiner’s Answer, we sustain the Examiner’s § 101 rejection of claims 1, 6, 9, 10, 20, and 21. C. DECISION On the record before us, we: A. do not sustain the Examiner’s decision to reject claims 1, 6, 9, 10, 20, and 21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement; B. sustain the Examiner’s decision to reject claims 9 and 10 under 35 U.S.C. § 112, second paragraph, as indefinite; and C. sustain the Examiner’s decision to reject claims 1, 6, 9, 10, 20, and 21 under 35 U.S.C. § 101 as directed to non-statutory subject matter. The decision of the Examiner is affirmed. 13 Appeal 2017-003460 Application 13/989,180 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 14 Copy with citationCopy as parenthetical citation