Yoshiyuki Umegaki et al.

Patent Trials and Appeals Board

Jul 17, 2019

14397495 - (D) (P.T.A.B. Jul. 17, 2019)

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.
14/397,495 10/28/2014 Yoshiyuki Umegaki SIP-14-2415 7174
35811 7590 07/17/2019
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
DALBO, MICHAEL J
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
07/17/2019 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):
pto.phil@dlapiper.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHIYUKI UMEGAKI and MANABU HARAZONO
____________

Appeal 2018-008174
Application 14/397,495
Technology Center 2800
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
DONNA M. PRAISS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Applicant1 (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Primary Examiner’s final decision to reject claims 1–12.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Applicant is JFE Steel Corporation (Application Data Sheet filed
October 28, 2014, 4), which is also identified as the real party in interest
(Appeal Brief filed April 18, 2018 (“Br.”), 1).
2 Br. 3–11; Final Office Action entered December 21, 2017 (“Final Act.”),
2–7, 10–13; Examiner’s Answer entered May 17, 2018 (“Ans.”), 2–11.
Appeal 2018-008174
Application 14/397,495

2
I. BACKGROUND
The subject matter on appeal relates to a method for measuring a
surface’s shape and to a device for measuring such a surface’s shape, e.g.,
grooves in a steel sheet (Specification filed October 28, 2014 (“Spec.”), ¶¶ 1,
2, 8, 28). Representative claim 1 is reproduced from the Claims Appendix
to the Appeal Brief, as follows:
1. A surface shape measuring method comprising:
a displacement data acquiring step of acquiring
displacement data on an object surface facing an optical
displacement meter by scanning the object surface with an
optical displacement meter that applies a light beam on the object
surface and performs measurement;
a groove approximate range detecting step of detecting an
approximate range on the object surface including groove formed
on the object surface by searching the displacement data;
a groove width calculating step of calculating a groove
start point and a groove terminating point of the groove included
in the approximate range;
a deepest position detecting step of calculating a smallest
value of the displacement data in a restricted range from a center
position between the groove start point and the groove
terminating point to a width defined at a predetermined ratio with
respect to the groove width, the width defined at the
predetermined ratio being narrower than the groove width; and
a groove depth calculating step of calculating a difference
between the smallest value of the displacement data calculated at
the deepest position detecting step and the height of the object
surface as the depth of the groove formed on the object surface.
(Br. 12).
II. REJECTION ON APPEAL
Claims 1–12 stand rejected under 35 U.S.C. § 101 as patent-ineligible
because these claims are directed to a judicial exception without reciting
significantly more (Ans. 2; Final Act. 2–7, 10–13).
Appeal 2018-008174
Application 14/397,495

3
III. DISCUSSION
1. The Examiner’s Position
The Examiner states that “[c]laims 1–12 are directed to an abstract
idea of processing displacement data, via a data processing algorithm, in
order to identify and determine various features of a groove within the
displacement data” (Final Act. 2). The Examiner asserts further that these
“claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception” (id.). With respect to claim 1,
the Examiner asserts that the claim’s preamble and every step other than the
“displacement data acquiring step” constitute “abstract claim language” (id.
at 2–3). In the Examiner’s view, “[t]he additional elements of the a
displacement data acquiring step” constitute “mere data gathering” and “are
well-understood, routine, and conventional in the art” (id. at 3–4). The
Examiner advances a similar analysis for the other independent claim (i.e.,
claim 8), which is directed to a device with specified units, each of which
must carry out a specific function (id. at 4–6).
2. The Appellant’s Principal Contentions
The Appellant contends that although the claims involve a patent-
ineligible concept, the claims are not “directed to” an abstract idea (Br. 3–4).
The Appellant argues that “[i]nstead, the claims are directed to much more
limited novel devices and methods having improved functioning and
accuracy of surface shape measurement” (id. at 4). Referring to the
Specification (Spec. ¶¶ 6–8), the Appellant argues that “measurement of the
shape of a fine groove by conventional triangulation optical displacement
techniques is problematically unstable at a slant portion of the groove due to
a shortage of a received light amount” (Br. 4). Specifically, the Appellant
Appeal 2018-008174
Application 14/397,495

4
explains that “the shape at a slant portion of the groove is misrecognized
because a conventional triangulation optical displacement meter receives
secondary reflection light caused by the reflection of the light applied to the
slant portion of the groove in multiple directions inside the groove” and that
“[d]ue to such misrecognition, abnormal displacement, in which the groove
is recognized deeper than its actual depth, is frequently observed” (id.).
Additionally, the Appellant states that the “use of an optical displacement
meter to measure the surface of steel sheet may cause comparatively large
noise for the size of a groove formed on the surface” (id.). The Appellant
asserts that the “deepest position detecting step” and the “groove depth
calculating step” in claim 1 provides an improvement by addressing these
problems in the prior art techniques (id. at 5–6). The Appellant argues “that,
like the claims in Thales Visionix Inc. v. United States, [850 F.3d 1343,
1345–46 (Fed. Cir. 2017),] the rejected claims are ‘directed to’ use of a
sensor in a specific, non-conventional manner that improves the accuracy of
measurements” (id. at 8). The Appellant urges that, therefore, “the rejected
claims are neither purely mental nor do they use routine and conventional
analy[tical] techniques” (id. at 9).
3. Opinion
For the reasons discussed below, we agree with the Appellant that the
claimed subject matter has not been shown to be patent-ineligible as directed
to a judicial exception without reciting significantly more. Because the
Examiner’s reasoning is basically the same for both independent claims 1
and 8, we focus our discussion on claim 1.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Appeal 2018-008174
Application 14/397,495

5
Supreme Court, however, 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).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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. Kappos, 561 U.S. 593, 611 (2010) (“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)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). 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)); “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 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
Appeal 2018-008174
Application 14/397,495

6
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 187; 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
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn 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 (quotation marks 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 with regard to the first step of the Alice/Mayo test (i.e., Step 2A of the
Appeal 2018-008174
Application 14/397,495

7
USPTO’s Subject Matter Eligibility Guidance as incorporated into M.P.E.P.
§ 2106). USPTO’s January 7, 2019, 2019 Revised Patent Subject Matter
Eligibility Guidance (“Revised Guidance”). 84 Fed. Reg. 50 (Jan. 7, 2019).
Thus, under Step 1 of the Guidance, as revised, we determine whether the
claimed subject matter falls within the four statutory categories: process,
machine, manufacture, or composition of matter. Step 2A of the Guidance is
two-pronged, under which we 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 activity 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)).
See 84 Fed. Reg. at 54–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then, under Step
2B, look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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 84 Fed. Reg. at 56.
We find, under Step 1 of the Guidance, that claim 1 is directed to a
process (i.e., a surface shape measuring method) including “a displacement
Appeal 2018-008174
Application 14/397,495

8
data acquiring step” in which an object’s surface is scanned by an optical
displacement meter that applies a light beam and measurement is performed
(Br. 12; Spec. ¶ 11). That measurement involves performing various steps—
namely, “a groove approximate range detecting step,” “a groove width
calculating step,” a deepest position detecting step,” and “a groove depth
calculating step” (Br. 12; Spec. ¶ 55; Fig. 5).
Figure 1 (annotated), which is illustrative of a surface shape
measuring device that may be used to carry out the method recited in claim
1, is reproduced from the Drawings filed October 28, 2014, as follows:

Figure 1 above is described as a schematic diagram of a surface shape
measuring device 1, which measures the shape of a groove formed on the
surface of a steel sheet S conveyed on a production line using, inter alia:
(i) a displacement meter head 2 including a laser light source 21 and an
optical position sensor 23; (ii) a displacement meter controller 3; and (iii) a
signal processing device 4 (Spec. ¶¶ 28–35). The signal processing device 4
Appeal 2018-008174
Application 14/397,495

9
is described as including the units that are configured to perform “a groove
approximate range detecting step,” “a groove width calculating step,” a
deepest position detecting step,” and “a groove depth calculating step” as
required by claim 1 (id. ¶ 41; Fig. 3).
Although claim 1 falls within one of the four categories of invention
recited in 35 U.S.C. § 101, that does not end our inquiry. Under Step 2A(1),
of the Revised Guidance, we find that claim 1 recites a judicial exception in
the form of mathematical concepts or mental processes—i.e., “a groove
approximate range detecting step,” “a groove width calculating step,” a
deepest position detecting step,” and “a groove depth calculating step” as
recited in claim 1. Specifically, the “groove approximate range detecting
step” detects “an approximate range on the object[’s] surface including a
groove formed on the object surface by searching the displacement data”
(Br. 12). The “groove width calculating step” calculates “a groove start
point and a groove terminating point of the groove included in the
approximate range” (id.). The “deepest position detecting step” calculates
a smallest value of the displacement data in a restricted
range from a center position between the groove start point
and the groove terminating point to a width defined at a
predetermined ratio with respect to the groove width, the
width defined at the predetermined ratio being narrower
than the groove width.
(Id.).
The “groove depth calculating step” calculates “a difference between
the smallest value of the displacement data calculated at the deepest
position detecting step and the height of the object surface as the depth of
the groove formed on the object[’s] surface” (id.).
Appeal 2018-008174
Application 14/397,495

10
But the mere fact that the claim recites mathematical concepts or
mental processes does not automatically render the claim patent-ineligible.
Diehr, 450 U.S. at 187 (“A claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.”).
Under Step 2A(2), as in Diehr (integrating concepts from the
Arrhenius equation to provide an improved rubber molding process), claim 1
recites additional elements (steps)—scanning and performing
measurement—that integrate the mathematical concepts or mental processes
into a practical application directed to an improved surface shape measuring
method that overcomes problems in prior art techniques. As explained in the
Specification (Spec. ¶ 6), measuring according to conventional triangulation
optical displacement techniques “is problematically unstable at a slant
portion of [a] groove due to a shortage of a received light amount,” which
causes secondary light reflection and misrecognition of the shape at the slant
portion of the groove. This problem is illustrated in Figures 2A and 2B
(partially annotated) reproduced from the Drawings, as follows:
Appeal 2018-008174
Application 14/397,495

11

Figures 2A and 2B above are described as schematic diagrams illustrating
reflection of laser light 25 applied to a slant portion of a groove formed on a
steel sheet S (id. ¶ 37). In particular, Figure 2B “illustrates the mechanism
in which the optical position sensor 23 misrecognizes the depth of the
groove [11 as P5] due to the reflection light 26 resulting from the multiple
reflection[s]” (id. ¶¶ 37 (bolding added), 39).
Appeal 2018-008174
Application 14/397,495

12
The Inventors explain that the claimed invention eliminates the
misrecognition problem in the prior art as described above by implementing
an effective signal processing method in the signal processing device 4 (as
shown, e.g., in Fig. 1 above). Figure 11B illustrates the solution and is
reproduced from the Drawings as follows:

Figure 11B is described as a conceptual diagram illustrating the manner in
which groove depth is calculated according to the claimed method (id. ¶ 26).
The Specification states that the “groove width calculating step” calculates
the distance between the groove start point Xms and the groove terminating
point Xme (id. ¶ 76). The Specification also states that the “groove depth
calculating step” calculates the groove depth D by calculating the distance
from the surface height Ysurf in the vicinity of the groove to the
smallest value of the post-second-filtering displacement data Y2(X) in the
restricted area WR (id. ¶¶ 78, 80). The Specification further explains that the
“deepest position detecting step” calculates the smallest value of the
displacement data in the restricted range from the center position between
the groove start point and the groove terminating point to the width defined
at a predetermined ratio with respect to the groove width (id. ¶ 83).
Appeal 2018-008174
Application 14/397,495

13
Given that the claimed invention including the mathematical concepts
or mental processes provides a solution to the prior art misrecognition
problem, we determine that the claimed subject matter integrates the judicial
exceptions into a practical application that results in an overall improvement
in surface shape measuring technology. Diehr 450 U.S. at 187 (“[O]ne does
not need a ‘computer’ to cure natural or synthetic rubber, but if the computer
use incorporated in the process patent significantly lessens the possibility of
‘overcuring’ or ‘undercuring,’ the process as a whole does not thereby
become unpatentable subject matter.”) (emphasis added); but see Flook, 437
U.S. at 595–96 (merely reciting a new and presumably better method for
calculating an alarm limit as part of a catalytic conversion process with no
improvement to the catalytic process itself rendered a claim to such process
patent-ineligible).
The Examiner’s statements that “[t]he additional elements are well-
understood, routine, and conventional in the art” and that the claim is
directed to “collecting and analyzing information” (Final Act. 4) are
incorrect. Here, the claimed subject matter integrates the judicial exceptions
into a practical application that results in an overall improvement by
providing a technique that solves the misrecognition problem in the prior art,
and, therefore, amounts to more than mere collecting information, analyzing
it, and displaying certain results. Cf. Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“[M]erely selecting information,
by content or source, for collection, analysis, and display does nothing
significant to differentiate a process from ordinary mental processes.”). See
also Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018)
(explaining that improvements described in the specification, to the extent
Appeal 2018-008174
Application 14/397,495

14
they are captured in the claims, must be considered in determining whether
the invention describes well-understood, routine, and conventional
activities).
Because our analysis under Step 2A of the Revised Guidance is
dispositive, we need not consider Step 2B of the guidance. As our analysis
for claim 1 is also pertinent to the other independent claim (namely, claim
8), which contain the same or similar limitations, we do not sustain the
rejection as maintained against all claims on appeal.
IV. SUMMARY
The Examiner’s final decision to reject claims 1–12 is reversed.
REVERSED