ADVANCED TELECOMMUNICATIONS RESEARCH INSTITUTE INTERNATIONALDownload PDFPatent Trials and Appeals BoardOct 29, 20202020003709 (P.T.A.B. Oct. 29, 2020) 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. 14/232,150 01/10/2014 Mitsuo Kawato 5174-0145PUS1 5894 127226 7590 10/29/2020 BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER LANE, DANIEL E ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 10/29/2020 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MITSUO KAWATO, TAKEO WATANABE, KAZUHISA SHIBATA, and YUKA SASAKI Appeal 2020-003709 Application 14/232,150 Technology Center 3700 Before BENJAMIN D. M. WOOD, MICHELLE R. OSINSKI, and JILL D. HILL, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s July 31, 2019 Non-Final Action rejecting claims 1, 3, 5–8, 20, and 21. See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Advanced Telecommunications Research Institute International. Appeal Br. 1. Appeal 2020-003709 Application 14/232,150 2 CLAIMED SUBJECT MATTER The claims are directed to an apparatus and method for enhancing brain function. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for supporting brain function enhancement of a prescribed brain function by enabling effective learning, comprising: a brain activity detecting device for detecting a signal indicating brain activity at a prescribed area within a brain of a subject; a storage device storing information of a target class corresponding to a target activity pattern obtained beforehand with respect to brain function enhancement; and processing circuitry configured to, during a brain activity decoder configuration stage, perform the following steps present, for a predefined time period, the subject with a plurality of stimulus events, where a stimulus event is a perceptual stimulus which activates portions of the subject's brain; receive brain activity signals from the brain activity detecting device while the subject is exposed to the plurality of stimulus events, each of the plurality of stimulus events corresponding to one of a plurality of classes including the target class; and train, using a machine learning algorithm, the processing circuitry to decode cranial nerve activity patterns from brain activity signals and classify the cranial nerve activity patterns to one of the plurality of classes; the processing circuitry further configured to, during a neurofeedback stage for training the subject, repeatedly perform the following steps until a predetermined condition is satisfied, exposing the subject to a reward stimulus so that the subject tries to increase the reward while maintaining the subject in the absence of the awareness of the relation between the reward stimulus and the target class; receiving a brain activity signal inducted by the subject from the brain activity detecting device while the subject is exposed to the reward stimulus; Appeal 2020-003709 Application 14/232,150 3 deriving, from the received brain activity signal, a current cranial nerve activity pattern; calculating a value representing a degree of possibility of said current cranial nerve activity pattern belonging to the target class, computing, based on said calculated value, in accordance with degree of similarity of said current cranial nerve activity pattern to said target class, a reward value corresponding to said degree of similarity; and altering the reward stimulus to represent a magnitude of said reward value without revealing to the subject the stimulus event corresponding to the target class; and outputting said altered reward stimulus to said subject. REJECTIONS Claims 1, 3, 5–8, 20, and 21 are rejected under 35 U.S.C. 112(b) as indefinite. Claims 1, 3, 5–8, 20, and 21 are rejected under 35 U.S.C. 112(a) as failing to comply with the written-description requirement. Claims 1, 3, 5–8, 20, and 21 are rejected under 35 U.S.C. 101 as directed to patent-ineligible subject matter. OPINION Claims 1, 3, 5–8, 20, and 21: Rejected as Indefinite “processing circuitry” (claims 1 and 8) Independent claim 1 is drawn to an apparatus comprising, inter alia, “processing circuitry.” Appeal Br., Claims App. 1. Independent claim 8 is drawn to a neurofeedback method that uses, inter alia, “processing circuitry.” Claims App. at 2. The Examiner determines that “it is unclear what structure ‘processing circuitry’ is,” because “[t]he disclosure is silent regarding the term, and it is not readily apparent that ‘processing circuitry’ Appeal 2020-003709 Application 14/232,150 4 identifies a single specific structural element of the originally filed disclosure.” Non-Final Act. 3; Ans. 18. Appellant responds that “processing circuitry” refers to “processing device 102,” which “may be realized by a general purpose computer or dedicated hardware.” Appeal Br. 4. During prosecution, a claim may be rejected as indefinite “when it contains words or phrases whose meaning is unclear,” MPEP § 2173.05(e), or if it is “amenable to two or more plausible claim constructions,” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). As indefiniteness analysis involves general claim construction principles, we begin with the language of the claim. See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010); Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370, 1378 (Fed. Cir. 2017). As the Examiner notes, “processing circuitry” is not used, much less defined, in the Specification. If the “specification does not assign or suggest a particular definition [of a claim term], in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1322–23 (Fed. Cir. 2005) (en banc). “Circuitry” is defined as “[t]he complete combination of circuits used in an electrical or electronic system or piece of equipment.” MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 396 (6th ed. 2003) (“MCGRAW-HILL DICTIONARY”). Both parties apparently agree that “circuitry” refers to computer hardware as opposed to software. See Ans. 18 (“the term ‘circuitry’ connotes structure (i.e., a Appeal 2020-003709 Application 14/232,150 5 hardware element”)); Reply Br. 2–3 (“processing circuitry” refers to structure, i.e., a general purpose computer or dedicated hardware). To “process” is “[t]o assemble, compile, generate, interpret, compute, and otherwise act on information in a computer.” MCGRAW-HILL DICTIONARY at 1676. It would appear, therefore, that “processing circuitry” refers to hardware that processes, or “act[s] on,” information. The Examiner expresses concern that “processing circuitry” may not refer to “a single specific structural element of the originally filed disclosure.” Non-Final Act. 3; see Ans. 18 (stating that the indefiniteness of “processing circuitry” is evidenced, in part, by Appellant “pointing to all manners of hardware and software as being the ‘processing circuitry.’”). It is not necessary, however, for a term to refer to a single structural element for the term to be definite. The term may, instead, refer to a general class of structures, in which case it covers all types of structure within that class to the extent supported by the Specification. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (holding that if “an apparatus claim recites a general structure without limiting that structure to a specific subset of structures, we will generally construe the term to cover all known types of that structure that the patent disclosure supports”) (internal citation and quotation makes omitted). Therefore, “processing circuitry” need not refer to a single specific structure to avoid indefiniteness. “processing circuitry configured to, during a brain activity decoder configuration stage, . . . train, using a machine learning algorithm, the processing circuitry” (claim 1) Independent claim 1 recites an apparatus comprising, inter alia, “processing circuitry configured to, during a brain activity decoder configuration stage, . . . train, using a machine learning algorithm, the Appeal 2020-003709 Application 14/232,150 6 processing circuitry to decode cranial nerve activity patterns from brain activity signals and classify the cranial nerve activity patterns to one of [a] plurality of classes.” Appeal Br., Claims App. 1. Claims 1, 5–7, and 20 depend from claim 1. Id. at 1–3. According to the Examiner, “it is unclear if the first processing circuitry is training itself or another processing circuitry.” Non-Final Act. 4; Ans. 18. Appellant responds that: Paragraphs [0088]-[0091] and Fig. 10 disclose how the processing circuitry is trained using an SLR algorithm and how the trained/configured processing circuitry is thereafter used to perform the claimed process for supporting brain function enhancement of a prescribed brain function by enabling effective learning. Therefore, one skilled in the art would know the metes and bounds of the claimed invention when read in view of the disclosure. Appeal Br. 5. While Appellant’s response is not entirely clear on the point, we understand Appellant to be responding that the processing circuitry is training itself rather than some other processing circuitry. We agree with Appellant. When the term is read in the context of the rest of the claim and in light of the Specification, it is reasonably clear that the processing circuitry is training itself. The limitation requires the processing circuitry to “train . . . the processing circuitry to decode cranial nerve activity patterns from brain activity signals.” Claims App. 1 (emphasis added). “Decoding” means determining what stimuli a subject has been exposed to based on detected cranial nerve activity. Spec. ¶ 13. Decoding is performed by “decoding unit 116,” which is part of processing device 102 (or processing device 302 in a slightly modified embodiment). Id. ¶¶ 39, 42, Fig. 1. The Appeal 2020-003709 Application 14/232,150 7 Specification explains that decoding unit 116 is “trained” by exposing the subject to a known stimulus, detecting the subject’s resulting brain “activity pattern,” and associating that activity pattern with the known stimulus. Id. ¶ 54. Because decoding unit 116—which is part of processing device 102— is being trained, and processing device 102 corresponds to the claimed processing circuitry, it is evident that processing circuitry is, essentially, training itself. “said processing circuitry is trained based on a sparse logistic regression” (claims 20, 21) Claims 20 and 21 depend from claims 1 and 8, respectively, and additionally recite, inter alia, “said processing circuitry is trained based on a sparse logistic regression.” Appeal Br., Claims App. 3–4. The Examiner determines that “said processing circuitry is trained based on a sparse logistic regression” is unclear. Non-Final Act. 4. According to the Examiner, “the disclosure provides no description of what basing the training of the processing circuitry . . . on a sparse logistic regression entails.” Non-Final 4. Appellant refers to paragraphs 88–91 and Figure 10 of the Specification to address the Examiner’s rejection. Appeal Br. 4–5. These excerpts discuss the use of sparse logistic regression (SLR) in some detail. The Specification also refers to other sources of information on SLR. Spec. ¶ 86. The Examiner does not explain why these resources would be insufficient to clarify the invention’s use of SLR to one of ordinary skill in the art. Because we are not persuaded that the above claim terms are indefinite, we do not sustain this rejection. Appeal 2020-003709 Application 14/232,150 8 Claims 1, 3, 5–8, 20, and 21: Rejected as Failing to Comply with the Written-Description Requirement Appellant does not separately argue the patentability of the claims subject to this rejection. Appeal Br. 5–7. Accordingly, we select claim 1 as representative, and decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines that the Specification fails to provide sufficient written-description support for the following limitations in claim 1: (1) “train, using a machine learning algorithm, the processing circuitry to decode cranial nerve activity patterns from activity signals and classify the cranial nerve activity patterns to one of the plurality of classes”; (2) the claimed “classes,” and “any description, algorithms, or calculations for classifying the cranial nerve activity patterns to one of the plurality of classes”; (3) “deriving from the received brain activity signal a current cranial nerve activity pattern,”; (4) “calculating a value representing a degree of possibility of said current cranial nerve pattern belonging to the target class”; (5) “computing, based on said calculated value, in accordance with degree of similarity of said current cranial nerve activity pattern to said target class, a reward value corresponding to said degree of similarity,” and (6) “altering the reward stimulus to represent a magnitude of said reward value without revealing to the subject the stimulus event corresponding to the target class.” Non-Final Act. 5–6. The Examiner also finds that “processing circuitry” is “considered new matter as the original disclosure is silent regarding this term.” Id. at 6. Appellant first argues that the Examiner erred in concluding that “processing circuitry” is new matter. Appeal Br. 6. Appellant relies on the Appeal 2020-003709 Application 14/232,150 9 Specification’s disclosure of processing device 102 in paragraph 35 and Figure 1, and notes that processing device 102 “may be realized by a general purpose computer and/or that ‘dedicated hardware may be used.’” Id. (quoting Spec. ¶ 38). The Examiner responds that “‘processing circuitry’ is new matter as the term ‘circuitry’ imports structure into the claims that was not disclosed in the original disclosure.” Ans. 19. We disagree with the Examiner that the Specification does not disclose processing circuitry. As discussed above, there is no dispute that “circuitry” refers to hardware. The Specification discloses processing device 102 that may be a general purpose computer or application-specific hardware. Spec. ¶ 38. Both of these options constitute hardware. While we agree with Appellant that “processing circuitry” is adequately described, we nonetheless sustain the Examiner’s rejection, because Appellant has not shown error in the Examiner’s determinations with respect to the other limitations listed above. Appellant asserts that the Specification discloses: (1) what processing device 102 includes; (2) that “decoding unit 116 is trained to decode nerve activity patterns using machine learning”; (3) “the functionality performed by the determining unit 118, reward calculating unit 120, and presentation information generating unit 112;” and (4) “the results of using the claimed invention.” Appeal Br. 4, 6. Appellant does not, however, associate these disclosures with the specific limitations that the Examiner determined to be inadequately described. For example, Appellant does not address the Examiner’s determination that the Specification does not define “classes” and “is silent regarding any description, algorithms, or calculations for classifying the cranial nerve activity patterns to one of the plurality of classes.” Non-Final Appeal 2020-003709 Application 14/232,150 10 Act. 5. Therefore, we are not persuaded of Examiner error, and sustain this rejection. Claims 1, 3, 5–8, 20, and 21: Rejected as Directed to Ineligible Subject Matter Principles of Law To determine whether a claim falls within a judicially recognized exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and reaffirmed in Alice Corporation v. CLS Bank International, 573 U.S. 208 (2014). For the first Alice step (Step 2A of the USPTO’s Patent Subject Matter Eligibility guidance, MPEP § 2106), we determine whether the claims at issue are directed to a patent- ineligible concept such as an abstract idea, law of nature, or natural phenomenon. Alice, 573 U.S. 208 (citing Mayo, 566 U.S. at 78–79). If so, we advance to the second Alice step (Step 2B of the USPTO’s Patent Subject Matter Eligibility guidance) where “we 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” of the otherwise patent-ineligible concept. Id. (quoting Mayo, 566 U.S. 78–79). We also follow the USPTO’s additional guidance on applying Step 2A. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 The Revised Guidance establishes a “two-prong inquiry” for determining whether a claim is 2 Available at https://www.govinfo.gov/content/pkg/FR-2019-01- 07/pdf/2018-28282.pdf. Appeal 2020-003709 Application 14/232,150 11 directed to a judicial exception. Id. at 54. In prong one, we determine whether the claim recites a judicial exception, such as a law of nature, natural phenomenon, or abstract idea. Id. If so, we look to whether the claim recites additional elements that integrate the judicial exception into a practical application. Id. at 50. Thus, a claim is directed to a judicial exception only if the claim recites a judicial exception and does not integrate that exception into a practical application. Id. Relevant to this case, the Revised Guidance instructs that an additional limitation that, inter alia, “applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition” may integrate the judicial exception into a practical application. Id. at 55. If we determine that the judicial exception is not integrated into a practical application, we proceed to Step 2B and determine whether the claim adds a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional activity in the field, or, alternatively, whether the claim simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Id. at 56. Analysis Appellant does not appear to dispute the Examiner’s determination that the claims recite a judicial exception. Appeal Br. 7–9. Rather, Appellant disputes that the claims are directed to a judicial exception (abstract idea), because they are instead “directed to supporting brain function enhancement of a prescribed brain function by enabling effective learning.” Id. at 8 (emphasis omitted). Appeal 2020-003709 Application 14/232,150 12 As noted above, the Revised Guidance recognizes that an additional limitation that “applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition” integrates the judicial exception into a practical application. Revised Guidance, 84 Fed. Reg. at 55. The Revised Guidance relies in this regard on Vanda Pharms. Inc. v. West-Ward Pharms. Int’l Ltd., 887 F.3d 1117, 1135 (Fed. Cir. 2018). Id. at 55 n.26. In Vanda, the claims at issue involved a method of treating persons with schizophrenia, where the method first required performing a genetic test to determine the person’s ability to metabolize iloperidone and other drugs (i.e., the patient’s “CYP2D6 metabolizer genotype”), and then administering a particular dose of iloperidone based on the results of the test; a lower dose of iloperidone is administered to patients with lower CYP2D6 activity comparing with those with normal CYP2D6 activity to avoid a potentially harmful side effect of the drug. Vanda, 887 F.3d at 1121, 1134. The court determined that the claims “are not directed to patent-ineligible subject matter” because they included specific steps to treat a particular disease. Id. at 1134. The court contrasted Vanda’s claims with those at issue in Mayo, which, even though they recited administering a drug to a patient, they did so only as a diagnostic method “based on the ‘relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of [the] drug will prove ineffective or cause harm.’” Id. (quoting Mayo, 566 U.S. at 77). The court characterizes Mayo’s claims as directed to the “entirely natural process” of the body’s metabolizing of the drug. Id. (citing Mayo, 566 U.S. at 77). In Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC, 918 F.3d 1338 (Fed. Cir. 2019), a case similar to Vanda, the patents at issue Appeal 2020-003709 Application 14/232,150 13 claimed a method of using a dietary supplement to “increase[] the anaerobic working capacity of muscle and other tissue.” Id. at 1341 (internal citation and alterations omitted). The court found that the claims require the administration of a specific dosage of beta-alanine, a naturally occurring substance, to a human subject, which causes the subject’s body to produce greater levels of creatine than it would have otherwise, resulting in specific physiological benefits for the subject when engaged in certain intensive exercise. Id. at 1344. Thus, according to the court, the claims “require specific steps be taken in order to bring about a change in a subject, altering the subject’s natural state.” Id. at 1345. The court concluded that the claims at issue were “treatment claims,” and therefore “not directed to ineligible subject matter.” Id. at 1346–47. The same is true in this case. Here, claim 1 requires, during a brain activity decoder configuration stage, a subject to be presented with “a plurality of stimulus events,” defined as “a perceptual stimulus which activates portions of the subject’s brain.” Appeal Br., Claims App. 1. Claim 1 further requires, during a neurofeedback stage for training the subject, repeatedly exposing the subject to a reward stimulus that also induces brain activity, until “a predetermined condition is satisfied.” Id. Claim 8 contains similar limitations. Id. at 2–3. Thus, the claims require specific steps (exposing the subject to various stimuli) to alter the subject’s natural state (activation of portions of the subject’s brain), to bring about a change in the subject (brain function enhancement of a prescribed brain function). For example, the Specification discloses that the claimed method can be used for relaxation training and treatment for brain damage. Spec. Appeal 2020-003709 Application 14/232,150 14 ¶¶ 135–142. We conclude, therefore, that the claims are treatment claims and not directed to patent ineligible subject matter. CONCLUSION In summary: DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5–8, 20, 21 112(b) Indefiniteness 1, 3, 5–8, 20, 21 1, 3, 5–8, 20, 21 112(a) Written Description 1, 3, 5–8, 20, 21 1, 3, 5–8, 20, 21 101 Eligibility 1, 3, 5–8, 20, 21 Overall Outcome: 1, 3, 5–8, 20, 21 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation