Brunner, Josef et al.

Patent Trials and Appeals Board

May 29, 2020

2017006946 (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.
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§ 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.”).
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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
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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.
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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
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Application 12/162,778

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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