Ex Parte Vaynberg et al

Patent Trial and Appeal Board

Oct 29, 2018

13710086 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/710,086 12/10/2012
109668 7590
Hercules Incorporated
Dunlap Codding, P.C.
500 Hercules Road
Wilmington, DE 19808
10/31/2018
FIRST NAMED INVENTOR
Konstantin Abraham Vaynberg
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.
DKT 10984 (1233.009) 9880
EXAMINER
TOATLEY,GREGORYJ
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
docketing@dunlapcodding.com
ntietcheu@ashland.com
schen@ashland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KONSTANTIN ABRAHAM VA YNBERG,
JENNIFER M. BUCKLEY, MATTHEW REUBEN DURST,
BRIAN OWENS, STEPHEN JAMES WEATHERS, and
DANIEL APPEL WILKINS
Appeal 2018-004196
Application 13/710,086
Technology Center 2800
Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1 and 3-18. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant is the applicant, Hercules Incorporated. Application Data Sheet
filed December 10, 2012. According to the Appeal Brief, the real party in
interest is Ashland Licensing and Intellectual Property LLC. Appeal Brief
filed July 14, 2017 ("App. Br."), 1.
Appeal2018-004196
Application 13/710,086
STATEMENT OF THE CASE
Appellant claims a product testing assembly and method.
Independent claims 1 and 16 illustrate the subject matter on appeal and are
reproduced below:
1. A product testing assembly, comprising:
a panel configured to support at least one of a substrate
and a test subject having at least one surface
configured to receive an application of a product to
be tested; and
at least one measuring device configured to sense
measured quantities as product is applied to the at
least one of the substrate and the test subject and
output one or more signals representative of a
sequence of forces and/or moments being applied
to the surface by the application of the product to
be tested;
at least one data processing system having an interface
device coupled to the at least one measuring device
via a wired or a wireless communication link, and
one or more processors configured to receive the
one or more signals representative of the sequence
of forces and/or moments being applied to the
surface via the interface device, and to convert the
one or more signals into an output signal
representative of one or more quantitative
application performance characteristics of the
product to be tested; and
wherein the one or more quantitative application
performance characteristics are correlated with
calibration data collected during application of one
or more calibration products that had been
determined by a human to meet or exceed
subjectively determined expectations related to the
way the application of the calibration product felt
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to the human as the calibration product was
applied.
16. A method, comprising:
receiving, by a processor of at least one data processing
system, a sequence of data via an interface device
coupled to at least one measuring device via a
wired or a wireless communication link indicative
of measured quantities measured by at least one
measuring device of a product testing assembly as
a product is applied to a surface of at least one of a
substrate and a test subject in the product testing
assembly, the measured quantities representative
of a sequence of forces and/ or moments being
applied to the surface by the application of the
product; and
translating, by the processor, the sequence of data
indicative of measured quantities into an output
signal using calibration data collected during
application of one or more calibration products
that had been determined by a human to meet or
exceed subjectively determined expectations
related to the way the application of the calibration
product felt to the human as the calibration product
was applied, the output signal representative of one
or more application performance characteristics of
the product being tested.
App. Br. 29, 32-33 (Claims Appendix).
The Examiner sets forth the rejection of claims 1 and 3-18 under
35 U.S.C. § 101 in the Final Office Action entered May 3, 2017 ("Final
Act."), and maintains the rejection in the Examiner's Answer entered
December 14, 2017 ("Ans.").
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Application 13/710,086
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we reverse the Examiner's rejection of
claims 1 and 3-18 under 35 U.S.C. § 101 for the reasons set forth in the
Appeal Brief and below.
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Court identified a two-step framework for determining whether
claimed subject matter is judicially excepted from patent eligibility under
§ 101. In the first step, "[ w ]e must ... determine whether the claims at issue
are directed to a patent-ineligible concept," such as an abstract idea. Alice,
134 S. Ct. at 2355. The second step involves "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,"' and is more than "'well-understood,
routine, conventional activit[y]. "' Alice, 134 S. Ct. at 2355, 2359 (first
alteration in original) ( quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The Examiner applies Alice's two-step framework in rejecting claim 1
under 35 U.S.C. § 101. Final Act. 1-3. For the first step, the Examiner
determines that the following limitations of claim 1 are directed to an
abstract idea:
at least one data processing system having an interface device
coupled to the at least one measuring device via a wired or a
wireless communication link, and one or more processors
configured to receive the one or more signals representative of
the sequence of forces and/or moments being applied to the
surface via the interface device, and to convert the one or more
signals into an output signal representative of one or more
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Application 13/710,086
quantitative application performance characteristics of the
product to be tested; and
wherein the one or more quantitative application performance
characteristics are correlated with calibration data collected
during application of one or more calibration products that had
been determined by a human to meet or exceed subjectively
determined expectations related to the way the application of the
calibration product felt to the human as the calibration product
was applied.
Final Act. 1.
The Examiner determines that these limitations involve subject matter
that is similar to concepts identified by the Federal Circuit as abstract.
Specifically, the Examiner determines that the following limitation is similar
to an algorithm for calculating parameters indicating an abnormal condition:
at least one data processing system ... configured to receive the
one or more signals representative of the sequence of forces
and/or moments being applied to the surface ... and to convert
one or more signals into an output signal representative of one
or more quantitative application performance characteristics of
the product to be tested
Final Act. 2 (citing In re Grams, 888 F.2d 835 (Fed. Cir. 1989). And the
Examiner determines that the following limitation is similar to organizing
information through mathematical correlations; (Digitech Image Techs., LLC
v. Elecs.for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014); collecting and
comparing known information ( Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057 (Fed. Cir. 2011)); and collecting information,
analyzing the information, and displaying certain results of the collection
and analysis (Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016)):
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wherein the one or more quantitative application performance
characteristics are correlated with calibration data collected
during application of one or more calibration products that had
been determined by ... exceed subjectively determined
expectations related to the way the application of the calibration
product felt to the human as the calibration product was applied
Final Act. 2.
For the second step of the Alice framework, the Examiner determines
that the additional elements recited in claim 1, taken individually or in a
combination, do not amount to significantly more than the judicial exception
( the abstract idea) because these elements "must be used/taken by others to
apply the judicial exception( s ). " Final Act. 3. The Examiner finds that a
panel to support a substrate, a surface to receive an application of a product,
a measuring device, "presumable sensors," a data processor, and a wire or
wireless interface, are "well-understood, purely conventional or routine in
the relevant field." Id. The Examiner also finds that a "measuring device to
sense measured quantities as product is applied to the substrate, is a
conventional process needed to test a subject using the output[] signals of[]
forces or moments." Id.
The Examiner determines that independent claim 16 "is directed to [a]
similar abstract idea ( algorithm) as in claim 1." Final Act. 3.
To address the first step of the Alice framework, we first look to
Appellant's Specification to inform our understanding of the product testing
assembly of claim 1 and the method of claim 16. The Specification explains
that conventional evaluation of the application feel of products such as paint,
construction materials, cosmetic creams or ointments, and hair treatments, is
subjectively determined by evaluators who apply a consumer product and
then answer various questions related to application of the product, such as
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Application 13/710,086
the ease of application, the ease of spreading, or the degree of stickiness.
Spec. ,r,r 1, 3. The Specification explains that Appellant's invention relates
to "a product testing assembly that allows collection of real time physical
data during a sensorial evaluation of product application feel." Spec. ,r 3.
The Specification indicates that the data "may offer a detailed quantitative
understanding of the product's application feel which helps to understand
the reasons behind [a] given subjective sensorial assessment, and may be an
invaluable tool in product performance design." Spec. ,r 9.
The Specification describes an embodiment of Appellant's invention
in which test participants first apply a product to a substrate and then fill out
a questionnaire about the application characteristics of the product. Spec. ,r
9. A product that meets expectations based on the test participants'
evaluations is then tested with Appellant's product testing assembly, and the
forces and moments applied when the product is applied to a surface of a
substrate in the assembly are concurrently measured/calculated by a
measuring device, and the resulting data are stored. Spec. ,r,r 8, 9. The
stored data are compared to data collected/calculated when the product
testing assembly is used to test a product having unknown application
performance characteristics. Spec. ,r 9. This comparison is used to convert
the data collected/calculated by the product testing assembly for the
unknown product into an output signal representative of one or more
application performance characteristics of the product being tested. Spec. ,r
9.
Consistent with this description in Appellant's Specification, the
product testing assembly of claim 1 and method of claim 16 use a measuring
device to sense a sequence of forces and/or moments applied to the surface
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of a substrate as a product is applied to the surface, convert the measured
forces and/or moments into one or more quantitative application
characteristics of the product, correlate the application characteristics with
calibration data previously collected during application of a calibration
product determined by a human to meet subjective application expectations,
and output a signal representing the application characteristics of the product
being tested
"Whether at step one or step two of the Alice test, in determining the
patentability of a method, a court must look to the claims as an ordered
combination, without ignoring the requirements of the individual steps."
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
Cir. 2016).
As Appellant correctly argues (Reply Br. 4), the assembly and method
of claims 1 and 16, respectively, when considered as an ordered
combination, improve the technical area of product testing by automating
sensorial assessments that previously could be performed only by humans,
similar to the claims in McRO. McRO, 837 F.3d at 1314 ("The computer
here is employed to perform a distinct process to automate a task previously
performed by humans."). Claims 1 and 16 do not encompass all assemblies
and methods for automating sensorial assessments in the field of product
testing. Instead, claims 1 and 16 are limited to a specific assembly and
process that use particular equipment, particular techniques, and particular
information. Id. ("The abstract idea exception prevents patenting a result
where 'it matters not by what process or machinery the result is
accomplished."') (quoting O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113, 14
L. Ed. 601 (1854)).
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Application 13/710,086
Although the assembly and method of claims 1 and 16 involve use of
an algorithm to convert signals output by the measuring device into
quantitative application performance characteristics, and correlate the
characteristics with calibration data, claims 1 and 16 do more than simply
limit use of the algorithm to a particular technological environment. Rather,
claims 1 and 16 apply the algorithm in the context of a particular assembly
and method to provide "a quantitative understanding of the product's
application feel to aid in replacing or understanding subjective sensorial
assessments." Reply Br. 4. When claims 1 and 16 are each considered as an
ordered combination, therefore, they are directed to application of an
algorithm to achieve a technological improvement over existing product
testing approaches. See Thales Visionix Inc. v. US., 850 F.3d 1343, 1349
(Fed. Cir. 2017) ("At step one, 'it is not enough to merely identify a patent-
ineligible concept underlying the claim; we must determine whether that
patent-ineligible concept is what the claim is 'directed to."') ( quoting Rapid
Litig. Management Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir.
2016)); McRO, 837 F.3d at 1316 ("When looked at as a whole, claim 1 is
directed to a patentable, technological improvement over the existing,
manual 3-D animation techniques. The claim uses the limited rules in a
process specifically designed to achieve an improved technological result in
conventional industry practice.")
Although the Examiner finds that a "measuring device to sense
measured quantities as product is applied to the substrate, is a conventional
process needed to test a subject using the outputs signals of a forces or
moments," the Examiner does not provide a factual basis grounded in
evidence of record to support this assertion. Final Act. 3. Our reviewing
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Application 13/710,086
court has explained that the second step of the Alice framework requires a
factual determination as to whether a claim element or combination of
elements is well-understood, routine, and conventional to a skilled artisan in
the relevant field. Berkheimer v. HP Inc., 881 F.3d 1360, 1368-69 (Fed
Circ. 2018); Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice, 134 S.
Ct. at 2359) (The second step of the Alice test is satisfied when the claim
limitations "involve more than performance of 'well-understood, routine,
[and] conventional activities previously known to the industry."'). Factual
determinations must be made on the basis of the preponderance of the
evidence of record. Because the Examiner does not direct our attention to
credible evidence of record establishing that sensing measured quantities as
a product is applied to a substrate was conventional in the product testing art
at the time of Appellant's invention, the Examiner's analysis of step two of
the Alice framework is based on reversible error
We accordingly do not sustain the Examiner's rejection of claims 1
and 16 under 35 U.S.C. § 101, and of claims 1, 3-15, 17, and 18, which each
depend from claim 1 or 16.
DECISION
We reverse the Examiner's rejection of claims 1 and 3-18 under
35 U.S.C. § 101.
REVERSED
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