Ex Parte Shreve et al

Patent Trial and Appeal Board

Oct 19, 2017

13989180 (P.T.A.B. Oct. 19, 2017)

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2 Claims 3,4, 8, and 11—19 are withdrawn from consideration.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.
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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
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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”).
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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
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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
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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
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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.
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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
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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.
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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
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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
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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.
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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
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