Brunner, Josef et al.

Patent Trials and Appeals Board

May 29, 2020

12162778 - (R) (P.T.A.B. May. 29, 2020)

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. 12/162,778 07/30/2008 Josef Brunner 107952.000014 4692 145584 7590 05/29/2020 Prince Lobel Tye LLP One International Place Suite 3700 Boston, MA 02110 EXAMINER MARMOR II, CHARLES ALAN ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 05/29/2020 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): docketing@princelobel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSEF BRUNNER, MARC WYSOCKI, and IVO METTIER ____________ Appeal 2017-006946 Application 12/162,7781 Technology Center 3700 ____________ Before STEFAN STAICOVICI, BRANDON J. WARNER, and ALYSSA A. FINAMORE, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant timely filed a Request for Rehearing (“Req. Reh’g”) under 37 C.F.R. § 41.52 on March 11, 2020, requesting that we reconsider a portion of our decision of January 15, 2020 (“Dec.”), affirming the rejection under 35 U.S.C. § 101 of claims 44, 46, and 48-93 as being directed to patent-ineligible subject matter. Rehearing generally is limited to matters overlooked or misapprehended by the Board in rendering the initial decision. 37 C.F.R. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Hamilton Medical Ag in Appellant’s Appeal Brief (filed Sept. 7, 2016, hereinafter “Appeal Br.”). Appeal Br. 2. Appeal 2017-006946 Application 12/162,778 2 § 41.52(a)(1); see also id. at (a)(2)-(4) (identifying other matters rehearing may encompass, none of which is relevant here). Appellant argues that, because “[t]he Board overlooked or misapprehended that the limitations of the claims cannot practically be performed in the human mind,” “[t]he claims . . . are not directed to a mental process.” Req. Reh’g 2-3 (emphasis added). Appellant contends that “the claims require a ventilator and at least one sensor to obtain . . . at least three changing values,” which cannot “be acquired by manual inspection of a patient,” and “[n]ot even with pencil and paper and all the time in the world could a person animate the human lung in a practical way according to the claim[].” Id. at 3-4 (emphasis added). In particular, Appellant contends that the Board overlooked or misapprehended that the ventilator, at least one sensor, and monitor screen are inextricably tied together in the claimed invention. Id. at 5. Appellant explains that the data acquired by the sensor, i.e., “at least three changing values,” is displayed on the monitoring screen as a “graphic element,” i.e., an “animation” of a lung of a patient, ventilated by a ventilator and a respiratory tube, “increasing and decreasing in size within each breath.” Id. at 3, 5. Thus, according to Appellant, “[t]he practical application of the claims as a whole, is a ventilator monitor that animates the patients human lung, in near real-time, changing the animation with each breath, based on at least three changing values measured by sensor(s) connected to the ventilator/patient.” Id. at 6 (emphasis added). We found in the Decision that the method of claim 44 can be performed mentally with pencil and paper. Dec. 8 (“[S]teps [i] through [iv] . . . describe processes that people can perform mentally or by hand.”). Appeal 2017-006946 Application 12/162,778 3 Absent the use of a sensor, step [i] of claim 44 is broad enough to read on an individual merely acquiring (gathering) data “in the human mind . . . in the form of noting an observation.” Dec. 7 (citing 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 55 n. 14 (Jan. 7, 2019) (hereinafter “2019 Guidance”)). Furthermore, merely gathering data constitutes insignificant extra-solution activity, which is insufficient to transform the claimed abstract idea into patent-eligible subject matter because it fails to impose meaningful limitations on the application of the abstract idea recited in the claims. See 2019 Guidance, 84 Fed. Reg. at 55 n.31 (citing MPEP § 2106.05(g)). We also found in the Decision that the “displaying” steps [ii] through [iv] “recite three distinct steps of displaying information in a particular format, i.e., an animation superimposed on a static image,” which “can be performed by a human with pencil and paper.” Dec. 8. “Displaying” the “pictorial animation” in claim 44 is sufficiently broad as to read on an individual performing the claimed “displaying” steps [ii] through [iv] with pencil and paper. See USPTO, October 2019 Update: Subject Matter Eligibility (“October 2019 Update”) at 7, https://www.uspto.gov/sites/ default/files/documents/peg_oct_2019_update.pdf (explaining that displaying results of data collection and analysis, where the analysis is recited at a high level of generality, falls within the “mental processes” category of abstract ideas). In particular, claim 44 does not recite any analysis of the data acquired from the at least one sensor. Moreover, the claimed “displaying” steps [ii] through [iv] of claim 44 are not recited as being performed in “near real-time,” as Appellant contests, and are not Appeal 2017-006946 Application 12/162,778 4 referenced with respect to a specified time frame outside of a patient’s breath. Therefore, “displaying” a “pictorial animation” of a ventilated lung, as per claim 44, could be performed with pencil and paper within the context of a few breaths, which is within the scope of the claim. For example, as per Appellant’s Figures 6 and 7, a skilled artisan using pencil and paper could practically observe and note “compliance” over a few breaths, i.e., 20 and 60 ml/cmH2O, draw images of a lung shape based on the “compliance,” and manually animate said images to generate a display of a lung shape increasing and decreasing in size. Hence, we do not agree with Appellant that “[n]o person could practically perform” steps [i] through [iv] of claim 44 using pencil and paper. See Req. Reh’g 4 (emphasis added). Furthermore, although we appreciate that the claims require a ventilator, at least one sensor, and a monitoring screen, the claims do not recite how they are “inextricably tied” to “display” the claimed “animation.” Rather, “apart from being used to perform the abstract idea itself,” these conventional components “are described only by the respective function that each element performs” and “only serve to perform well-understood functions (e.g., gathering and displaying data) without any technological improvement.” Dec. 13-14. For example, the claimed invention is not limited by a particular “monitoring screen” to perform “display” steps [ii] through [iv] of claim 44. Accordingly, as stated in the Decision, “Appellant’s animation of an increasing and decreasing lung superimposed on a static image of a normal lung” is directed to the abstract idea of “display[ing] . . . acquired values from a mechanically ventilated patient.” Dec. 10; see also Univ. of Fla. Appeal 2017-006946 Application 12/162,778 5 Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366-68 (Fed. Cir. 2019) (noting that standardizing data to be conveyed to a bedside device for graphical display was directed to the abstract idea of “collecting, analyzing, manipulating, and displaying data”). Appellant’s claim 44 merely “adds particularity as to how information (data) about a patient’s ventilated lung is displayed” and does not “impart[] a specific functionality” to a ventilator system just because it “‘simplif[ies] a diagnostic assessment of a patient undergoing ventilation.’” Dec. 10 (citing Spec. 3). Lastly, we do not agree with Appellant that “the Board incorrectly ignored the evidence of record,” as set forth in the Laubscher Declaration, “that the combination of limitations were not well-understood, routine, conventional activity in the field.” Req. Reh’g 6. We specifically stated that the limitations “referred in paragraph 8 of the Laubscher Declaration,” which discusses the Section 101 rejection, “are what has been determined to be the abstract idea.” Dec. 12. We also stated that, because “the Laubscher Declaration mirrors Appellant’s arguments, the Examiner’s response to such arguments constitutes a sufficient rebuttal of the Laubscher Declaration.” Id. at 20 (citing Ans. 9-10). Accordingly, we do not agree with Appellant that “[t]he Laubscher declaration . . . was not rebutted and should have required reversal of the rejection under the Berkheimer/Aatrix line of cases.” Req. Reh’g 6 (emphasis omitted). In conclusion, for the foregoing reasons, Appellant’s Request does not persuade us that the Decision misapprehended or overlooked any matter, or that we erred in affirming the Examiner’s rejection of claims 44, 46, and 48- 93 under 35 U.S.C. § 101. As the Request does not argue the Examiner’s Appeal 2017-006946 Application 12/162,778 6 rejections under 35 U.S.C. §§ 112, second paragraph, 102(b), and 103(a), we also maintain our affirmance of these rejections. CONCLUSION We have granted Appellant’s Request to the extent that we have considered our Decision in light of the points raised therein, but have denied the Request with respect to any modification to the Decision. Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 44, 46, 48-93 101 Eligibility 44, 46, 48-93 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 44, 46, 48-93 101 Eligibility 44, 46, 48-93 73-93 112, second paragraph Indefiniteness 73-93 73-93 102(b) Banner 73-93 44, 46, 48-57, 73-82 103(a) Banner, Lanpher, Levine 44, 46, 48-57, 73-82 58-64, 72, 83-86 103(a) Banner, Lanpher, Levine, Hellige 58-64, 72, 83-86 65-71, 77-79, 87-93 103(a) Banner, Lanpher, Levine, Wachter 65-71, 77-79, 87-93 Overall Outcome 44, 46, 48-93 DENIED