Ex Parte Addison et al

Patent Trial and Appeal Board

Oct 25, 2017

13841235 (P.T.A.B. Oct. 25, 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.
13/841,235 03/15/2013 Paul S. Addison H-RM-03071 5653
CO VC:0402/FLE
52144 7590
Covidien LP
ATTN: IP Legal
6135 Gunbarrel Avenue
Boulder, CO 80301
EXAMINER
LU, SHIRLEY
ART UNIT PAPER NUMBER
2686
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
ip.legal@covidien.com
medtronic_mitg-pmr_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL S. ADDISON and JAMES N. WATSON
Appeal 2017-003780
Application 13/841,235
Technology Center 2600
Before JAMES R. HUGHES, CATHERINE SHIANG, and
JOYCE CRAIG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—5, 7—11, and 13—23, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-003780
Application 13/841,235
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
medical devices. See generally Spec. 1. Claim 1 is exemplary:
1. A system for facilitating the monitoring of physiologic
conditions, comprising:
a medical sensor configured to obtain a physiological
signal from a patient; a processor configured to:
generate a wavelet transform scalogram of the
physiological signal;
compare a characteristic of the wavelet transform
scalogram to a stored characteristic to identify the patient
associated with the physiological signal from among multiple
patients; and
generate an alert in response to one or more
characteristics of the wavelet transform scalogram not matching
the stored characteristic, wherein the alert indicates that the
patient is not properly identified.
References and Rejections
Claims 18—21 are rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement.
Claims 1—5, 7—11, and 13—23 are rejected under 35 U.S.C. §101
because they are directed to patent ineligible subject matter.
Claims 1—5, 7—11, and 13—23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Baker (2013/0146056 Al, June 13, 2013),
McKenna (2011/0071376 Al, Mar. 24, 2011), and Johnson (2013/0325508
Al, Dec. 5,2013).
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ANALYSIS
35 U.S.C. § 112, First Paragraph
The Examiner rejects claim 18—21 for failing to comply with the
written description requirement with respect to the limitation “monitoring
the patient for physiological conditions in response to identifying the patient
or confirming the identity of the patient associated with the first
physiological signal.” See Final Act. 4; Ans. 2—3.
We disagree. To satisfy the written description requirement, the
disclosure must reasonably convey to skilled artisans that Appellant
possessed the claimed invention as of the filing date. See Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc).
Specifically, the description must “clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed” and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id. (alteration in original) (internal quotations and citations omitted).
We agree with Appellants that one skilled in art would understand
excerpts from pages 19, 22, and 23 of the Specification describe the
limitation “monitoring the patient for physiological conditions in response to
identifying the patient or confirming the identity of the patient associated
with the first physiological signal.” See App. Br. 8—9. The Examiner does
not discuss those excerpts, and does not explain why Appellants’ arguments
are incorrect.
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Application 13/841,235
Because the Examiner fails to provide adequate basis for the
rejection, we reverse the Examiner’s rejection of claims 18—21 under
35 U.S.C. § 112, first paragraph.
35 U.S.C. § 101
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 3^4.
Appellants argue the Examiner erred. See App. Br. 9—20.
Appellants have not persuaded us of error. In response to Appellants’
arguments, the Examiner provides further findings showing the claims are
directed to patent ineligible subject matter. See Ans. 5—8. Appellants fail to
persuasively respond to such findings and therefore, fail to show error in the
Examiner’s findings.
Further, Appellants have not shown the claims are patent eligible.
Section 101 of the Patent Act provides “[wjhoever 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.
That provision ‘“contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 133S. Ct. 2107,2116
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(2013)). According to the Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. ... If so, we then ask,
“[w]hat else is there in the claims before us?” ... To answer
that question, 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. . . . We have
described step two of this analysis as a search for an “‘inventive
concept’” —i.e., an element or combination of elements that is
“sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself.”
Alice Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding the Alice step one inquiry, the Federal Circuit has “treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas.” Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet
Patents, 790 F.3d at 1348-49; OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC
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Application 13/841,235
v. Wells Fargo Bank, Natl Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014). “In
a similar vein, we have treated analyzing information [including
manipulating information] by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.” Elec. Power, 830 F.3d at 1354 (emphasis
added); see also In re TLI Commc ’ns. LLC Patent Litig., 823 F.3d 607, 613
(Fed. Cir. 2016). “And we have recognized that merely presenting the
results of abstract processes of collecting and analyzing information,
without more (such as identifying a particular tool for presentation), is
abstract as an ancillary part of such collection and analysis.” Elec. Power,
830 F.3d at 1354 (emphasis added); see also Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 714—15 (Fed. Cir. 2014).
The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellants’ arguments (App. Br. 9—17), the claims are similar to the claims
of Electric Power, and are focused on the combination of abstract-idea
processes or functions. See Elec. Power, 830 F.3d at 1354. For example,
claim 1 is directed to receiving or collecting information (“. . . obtain a
physiological signal. . .”), and analyzing and manipulating information
(“generate a wavelet transform scalogram . . .; compare ... to identify . . .;
and generate . . . .”). Similarly, claim 11 is directed to receiving or
collecting information (“. . . obtain a physiological signal. . .”), and
analyzing and manipulating information (“compare . . . ; determine ... to
identify . . .; and generate a signal. . . .”). Claim 18 is also directed to
receiving or collecting information (“obtaining ... a first physiological
signal. . .”), and analyzing and manipulating information (“generating . . . ;
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comparing ... to identify . . .; and monitoring . . . .”). See Elec. Power, 830
F.3datl353. The dependent claims are directed to similar functions or
processes, and Appellants have not shown such claims are directed to other
non-abstract functions or processes. See claims 2—5, 7—10, 13—17, and 19—
23.
Appellants’ assertion regarding pre-emption (App. Br. 18—19) is
unpersuasive, because “[wjhile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility .... Where a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP, 788 F.3d at 1362—63 (“that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract”).
Regarding the Alice step two inquiry, contrary to Appellants’ assertion
(App. Br. 17—20), Appellants have not shown the claims in this case require
an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Further, contrary to Appellants’ arguments (App. Br. 17—20), the
claims are similar to the claims of Electric Power, because they do not
require any nonconventional computer, network, or sensor components, or
even a “non-conventional and non-generic arrangement of known,
conventional pieces,” but merely call for performance of the claimed
information collection, analysis, and manipulation functions on generic
computer or sensor devices. See Elec. Power, 830 F.3d at 1355; see also
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Claims 1 and 11 (reciting “a medical sensor configured to ... a processor
configured to . . . .”) (emphases added). Claim 18 similarly recites “a
medical senor” and “a first [or a second] processor.” The dependent claims
call for similar generic components and devices, and Appellants have not
shown such claims require any non-conventional components or devices.
See claims 2—5, 7—10, 13—17, and 19—23.
Appellants’ arguments about the technical field of monitoring systems
(App. Br. 19) is unpersuasive, because “limiting the claims to the particular
technological environment of [a certain field] is, without more, insufficient
to transform them into patent-eligible applications of the abstract idea at
their core.” Elec. Power, 830 F.3d at 1354; see also Alice, 134 S.Ct. at
2358; Bilski v. Kappos, 130 S.Ct. 3218, 3230 (2010); Diamond v. Diehr, 450
U.S. 175, 191-92 (1981).
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer and sensor
technology for collecting, analyzing, and presenting the desired information.
See Elec. Power, 830 F.3d at 1354. Such invocations of computers and
sensors are “insufficient to pass the test of an inventive concept in the
application” of an abstract idea. See Elec. Power, 830 F.3d at 1355.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1—5, 7—11, and 13—23 under
35U.S.C. § 101.
35U.S.C. § 103
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
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contention that the Examiner erred in finding the cited portions of Baker,
McKenna, and Johnson collectively teach “compare a characteristic of the
wavelet transform scalogram to a stored characteristic to identify the patient
associated with the physiological signal from among multiple patients,” as
recited in independent claim 1. See App. Br. 20-26.
The Examiner does not specifically map the above limitation. While
acknowledging Baker does not teach the above limitation, the Examiner
cites 31 paragraphs and 8 figures from McKenna, and numerous figures and
paragraphs from Johnson. See Final Act. 5—6; Ans. 9. The Examiner also
cites a list of words from McKenna’s paragraphs, but does not explain how
the disputed limitation is mapped to that list. See Final Act. 6; Ans. 9. For
example, that list includes “artificial neural network; external computer
system coupled to monitor,” but the Examiner does not explain how they
teach the disputed limitation. See Final Act. 6; Ans. 9. Because the
Examiner cites a large number of paragraphs and figures from the prior art,
but does not explain how the cited prior art portions teach the disputed
limitation, it is unclear how the Examiner maps the disputed limitation to the
teachings of the references. To affirm the Examiner on this record would
require considerable speculation on our part, and we decline to engage in
such speculation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 1.
Independent claim 11 recites “compare a first wavelet transform
scalogram of the first physiological signal to a second wavelet transform
scalogram of a second physiological signal previously acquired from the
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patient or another patient, wherein the second wavelet transform scalogram
is associated with identification information for a specific patient.”
Independent claim 18 recites “comparing, via the first processor or a second
processor, the wavelet transform scalogram to one or more stored wavelet
transform scalograms of previously acquired physiological signals obtained
from multiple patients including the patient to identify the patient or confirm
an identity of the patient associated with the first physiological signal.” The
Examiner does not separately map the limitations of claims 11 and 18. See
Final Act. 9—11. Instead, the Examiner cites 31 paragraphs and 8 figures
from Baker, 31 paragraphs and 8 figures from McKenna, and states “see also
claim(s) 1 and above claim(s).” Final Act. 9—11. Similar to the discussions
above with respect to claim 1, because the Examiner cites a large number of
paragraphs and figures from the prior art, but does not explain how the cited
prior art portions teach the disputed limitation, it is unclear how the
Examiner maps the disputed limitation to the teachings of the references. To
affirm the Examiner on this record would require considerable speculation
on our part, and we decline to engage in such speculation. Therefore, we
reverse the Examiner’s rejection of independent claims 11 and 18.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2—5, 7—10, 13—17, and 19—23.
DECISION
We affirm the Examiner’s decision rejecting claims 1—5, 7—11, and
13-23.1
1 Because we affirm at least one ground of rejection with respect to each
claim on appeal, we affirm the Examiner’s decision rejecting claims 1—5, 7—
11. See 37 C.F.R. § 41.50(a)(1).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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