Ex Parte Zu et al

Patent Trial and Appeal Board

Jun 23, 2017

12736848 (P.T.A.B. Jun. 23, 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.
12/736,848 02/09/2011 Yanqi Zu BOSC.P6293US/11602927 3864
24972 7590 06/27/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
ASSOUAD, PATRICK J
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YANQI ZU, STEFAN SCHEMPP, and
MATTHIAS BITZER
Appeal 2016-005286
Application 12/736,848
Technology Center 2800
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
MERRELL C. CASHION JRAdministrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 12—27 and 29—35. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a method, device and computer program
product for diagnosing a load drop on an injection device piezo actuator.
Claims 12, 24, and 29 are illustrative:
12. A method for diagnosing a load drop on a piezo
actuator in an injection device, comprising:
Appeal 2016-005286
Application 12/736,848
calculating a variable threshold voltage as a function
of an operating parameter of the injection device;
in a first measuring step, measuring a voltage at the
piezo actuator to obtain a first measured voltage;
comparing the first measured voltage to the
threshold voltage; and
determining that a load drop is present when the first
measured voltage is greater than the threshold voltage.
24. A device for diagnosing a load drop on a piezo
actuator in an injection device, the diagnosing device
comprising a computer processor that is configured to:
calculate a variable threshold voltage as a function
of an operating parameter of the injection device;
measure a voltage at the piezo actuator to obtain a
first measured voltage; compare the first measured
voltage to the threshold voltage; and
determine a presence of a load drop when the first
measured voltage is greater than the threshold voltage.
29. A computer program product having program code
means, which are stored on a computer-readable data
carrier, for implementing the method as recited in
claim 12 when the computer program is executed on a
computer or a corresponding processing unit.
1 The Examiner cites to US 7,525,783 B2 (issued Apr. 28, 2009) which
issued from US 2006/0067024 A1 (Ans. 4). For consistency we likewise do
so.
The References
Roosdorp
Rueger
Chemisky
US 2,577,483 Dec. 4, 1951
US 2003/0150429 A1 Aug. 14, 2003
US 2006/0067024 A1 Mar. 30, 2006
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The Rejections
The claims stand rejected as follows: claims 12, 24, and 29 under
35 U.S.C. § 101 as being directed toward a judicial exception to patentable
subject matter, claims 12—27 and 29 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement, claims 12, 24,
25, and 29 under 35 U.S.C. § 103 over Chemisky, claims 26 and 27 under
35 U.S.C. § 103 over Chemisky in view of Roosdorp, and claims 13—23
and 30-35 under 35 U.S.C. § 103 over Chemisky in view of Rueger.2
OPINION
We affirm the rejection under 35 U.S.C. § 101 and reverse the
rejections under 35 U.S.C. § 112, first paragraph written description
requirement and 35 U.S.C. § 103.
Rejection under 35 U.S.C. § 101
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. The Supreme Court stated in
Bilski v. Kappos, 130 S.Ct. 3218, 3225 (2010) that “[t]he Court’s precedents
provide three specific exceptions to § 101 ’s broad patent-eligibility
principles: Taws of nature, physical phenomena, and abstract ideas.’
[Diamond v.] Chakrabarty, [447 U.S. 303,] 309, 100 S. Ct. 2204 [(1980)].”
Determining whether a claimed invention is patent-eligible subject matter
requires determining whether the claim is directed toward a patent-ineligible
concept and, if so, determining whether the claim’s elements, considered
2 A rejection of claim 29 under 35 U.S.C. § 112, second paragraph is
withdrawn in the Examiner’s Answer (Ans. 9).
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Application 12/736,848
both individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application. See Alice Corp. v. CIS Bank Int 7,
134 S.Ct. 2347, 2350 (2014).
The Appellants assert that the “measuring, comparing and
determining steps are not capable of being mentally performed because the
first measured voltage and the threshold voltage are electrical signals
derived from the operation of an injection device that includes a piezo
actuator and also require a measuring device” (App. Br. 4), the method
“steps require implementation of machine components, and the method as a
whole is entirely integral to a machine” (Reply Br. 1), and the “method is
not merely an automation of an otherwise mental process, but in fact cannot
be performed without use of a device for obtaining the necessary voltage and
operating parameter measurements/detections” (Reply Br. 2).
The Appellants’ method claim 12 does not require any particular
device for carrying out any step, including the voltage measuring step. The
claim, therefore, encompasses the abstract idea of determining an injection
device piezo actuator load drop by comparing a measured voltage to a
variable threshold voltage. The use of a computer processor to perform the
comparison by comparing electrical signals “fails to transform that abstract
idea into a patent-eligible invention.” Alice, 134 S.Ct. at 2352. Claims 24
and 29 also encompass that abstract idea. In claim 24 the entire method is
performed by a computer processor and in claim 29 the method of claim 12
is implemented by a computer or a corresponding processing unit.
The Appellants assert that the determination of whether a load drop is
present at the injection device improves the operation of the injection device
with respect to safety and that, therefore, “the subject matter of the claims
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would amount to significantly more than the exception when the claims are
read as an ordered combination” (App. Br. 4—5).
“[W]e 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, 134 S.Ct. at 2357
(quoting Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S.Ct.
1289, 1294, 1298 (2012)). “[W]e consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S.Ct. at 2355 (quoting Mayo, 132 S.Ct. at 1298,
1297)). The Appellants’ assertion that the claimed invention improves
safety does not establish that any of the claims includes such an additional
element.
For the above reasons we are not persuaded of reversible error in the
rejection under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 112, first paragraph
For an applicant to comply with the 35 U.S.C. § 112, first paragraph
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
The Examiner finds that the Appellants’ claim requirement that the
threshold voltage is variable lacks written descriptive support in the
Appellants’ Specification because “variable” “departs from the closest term
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Application 12/736,848
in meaning that has been disclosed, e.g., ‘relative thresholds to a setpoint
value’ (substitute specification, p. 5, line 1)” (Ans. 3, 11—12).
That portion of the Appellants’ Specification states that the diagnosis
“takes place using relative thresholds to a setpoint value, and not, as was the
case in procedures up to now, using absolute values, which are typically
fixed ahead of time” (Spec. 4:31 — 5:3). The Specification also discloses
that the threshold voltage is a function of at least one operating parameter of
the injection device, such as the fuel pressure (Spec. 3:2—23). The threshold
voltage, due to being a function of the operating parameter, varies with
changes in the operating parameter. The Appellants’ Specification,
therefore, would have conveyed with reasonable clarity to those of ordinary
skill in the art that the Appellants were in possession of a variable threshold
voltage.
Accordingly, we reverse the rejection under 35U.S.C. § 112, first
paragraph written description requirement.
Rejections under 35 U.S.C. § 103
We need address only the independent claims (12, 24, and 29), each
of which requires a variable threshold voltage.3
Chemisky discloses a driver circuit for an internal combustion engine
injection valve piezoelectric actuator wherein an interruption such as a line
interruption is detected based upon the time which elapses until a
predetermined threshold voltage is reached (col. 1,11. 9—12; col. 2,11. 37-42;
col. 8,11. 15-29).
3 The Examiner does not rely upon Roosdorp or Rueger for any disclosure
that remedies the deficiency in Chemisky as to the independent claims
(Ans. 5—8).
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The Examiner cites to a number of portions of Chemisky for a
disclosure of a variable threshold voltage, but the Examiner does not
specifically point out, and it is not apparent, where those portions disclose a
variable threshold voltage (Ans. 4—5).
The Examiner appears to find that a variable threshold voltage is fixed
until it is changed and that, therefore, a fixed threshold voltage is variable
(Ans. 12).
‘“[Djuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellants’ claims
require that the threshold voltage is a function of an operating parameter
and, therefore, require that the threshold voltage varies as the operating
parameter of which it is a function changes. The Examiner does not point
out, and it is not apparent, where the Appellants’ Specification indicates that
the broadest reasonable interpretation of the claim term “variable threshold
voltage” includes a fixed voltage.
We therefore reverse the rejections under 35 U.S.C. § 103.
DECISION/ORDER
The rejection of claims 12, 24, and 29 under 35 U.S.C. § 101 as being
directed toward a judicial exception to patentable subject matter is affirmed.
The rejections of claims 12—27 and 29 under 35 U.S.C. § 112, first
paragraph written description requirement, claims 12, 24, 25, and 29 under
35 U.S.C. § 103 over Chemisky, claims 26 and 27 under 35 U.S.C. § 103
over Chemisky in view of Roosdorp, and claims 13—23 and 30-35 under
35 U.S.C. § 103 over Chemisky in view of Rueger are reversed.
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It is ordered that the Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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