Ex Parte Bradley

Patent Trial and Appeal Board

Jan 8, 2018

14619848 (P.T.A.B. Jan. 8, 2018)

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.
14/619,848 02/11/2015 Donald Carmon BRADLEY PAT 6848AW-2 1863
26123 7590 01/10/2018
BORDEN LADNER GERVAIS LLP (Ottawa)
Shin Hung
WORLD EXCHANGE PLAZA
100 QUEEN STREET SUITE 1300
OTTAWA, ON KIP 1J9
CANADA
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/10/2018 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):
ipinfo@blg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD CARMON BRADLEY
(Applicant: BRAEBON MEDICAL CORPORATION)
Appeal 2018-000690
Application 14/619,848
Technology Center 3600
Before BRADLEY W. BAUMEISTER, AMBER L. HAGY, and
JOYCE CRAIG, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 3, 4, 9—12, 14, and 17—19, which are all of the
pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 References herein to “Appellant” are to the applicant Braebon Medical
Corporation, who is also identified in the Appeal Brief as the real party in
interest. (App. Br. 3.)
2 Claims 5—8 were canceled in an Amendment dated October 30, 2015;
claim 13 was canceled in an Amendment dated January 8, 2016; and
claims 1,2, 15, and 16 were canceled in an Amendment dated May 13,
2016. (See also App. Br. 20—23 (Claims App’x).)
Appeal 2018-000690
Application 14/619,848
STATEMENT OF THE CASE
Introduction
According to Appellant, the claims are directed to a method and
apparatus for “verifying compliance with dental appliance therapy.”
(Spec. 12.) In particular, Appellant’s Specification describes use of certain
types of dental appliances for treatment of “sleep apnea” {id. H 3, 4), and
notes that individuals in certain professions (where “lack of alertness is a
danger to public safety”) may be required to use such appliances if they
suffer from sleep apnea (id. 1 5). The Specification further notes some
individuals, however, may abandon treatment due to discomfort with these
appliances, so verifying compliance with mandated treatment is necessary.
(Id. ) The Specification also notes that one problem with verifying
compliance by, for example, taking temperature measurements, is that some
individuals will attempt to circumvent compliance measures by placing the
appliances in an environment that mimics a human mouth—such as a warm
water bath. (Id. H 9, 14.)
Towards addressing the problem of verifying compliance, the
Specification notes that measurements of certain parameters of a dental
appliance over time, such as temperature and movement, have different
“spectral properties” when measured in a human mouth versus when
measured in an artificial mechanical environment of a water bath. (Id. 148;
see also id. 161.) The claimed invention, therefore, takes a series of
measurements of temperature and/or spatial orientation of a dental appliance
that were taken over time, transforms those measurements from the time
domain to a frequency domain, calculates power ratios according to
particular frequency bands, and then compares the results to pre-selected
2
Appeal 2018-000690
Application 14/619,848
tolerances to determine whether the appliance was in a human mouth (e.g.,
whether the measurements are within the tolerances). {Id. ]Hf 59, 64, Figs. 1,
2, 7, and 8.)
Exemplary Claim
Claims 3 and 18 are independent. Claim 3, reproduced below, is
exemplary of the claimed subject matter:
3. A method for verifying compliance with a dental
appliance therapy for a human patient by determining whether a
dental appliance was in a human mouth during a time period or
was in a water bath during the time period, the method
comprising:
receiving at a processor a time-domain series of
measurements, recorded during the time period, of at least one
parameter from the dental appliance, wherein the at least one
parameter comprises temperature of the dental appliance and
the time-domain series of measurements comprises a time-
domain series of temperature measurements;
transforming by the processor at least a portion of the
time-domain series of temperature measurements to a
frequency-domain series of temperature measurements, wherein
a component of the frequency-domain series of temperature
measurements is power;
determining by the processor a temperature power ratio
of a total power in each of two frequency bands in the
frequency-domain series of temperature measurements, the two
frequency bands including a first frequency band indicative of a
physiological temperature frequency characteristic of a human
mouth and a second frequency band indicative of a mechanical
temperature frequency characteristic of a water bath;
determining by the processor that the dental appliance
was in the human mouth during the time period when the
temperature power ratio is within pre-selected temperature
3
Appeal 2018-000690
Application 14/619,848
power ratio tolerances, and otherwise determining that the
dental appliance was in the water bath;
and,
transmitting via a communication link or storing data
related to the determined compliance.
Rejection
Claims 3, 4, 9—12, 14, and 17—19 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. (Final Act. 2—12.)
Issue on Appeal
Did the Examiner err in rejecting claims 3, 4, 9—12, 14, and 17—19
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter?
CONTENTIONS AND ANALYSIS
We have considered all of Appellant’s arguments presented and do not
find them to be persuasive of Examiner error. We concur with the findings
and conclusions reached by the Examiner. (Final Act. 2—12; Ans. 4—10.)
We highlight and address specific findings and arguments for emphasis in
our analysis below.
Patent eligibility is a question of law. Dealertrack, Inc. v. Huber,
61A F.3d 1315, 1333 (Fed. Cir. 2012). The Supreme Court has set forth an
analytical “framework for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice Corp. v. CLS Bank Int’l, 134 S. Ct.
2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 71—73 (2012)). In the first step of the analysis, we
4
Appeal 2018-000690
Application 14/619,848
determine whether the claims at issue are “directed to” a judicial exception,
such as an abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends.
Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims
are determined to be directed to an abstract idea, then we consider under step
two whether the claims contain an “inventive concept” sufficient to
“transform the nature of the claim into a patent-eligible application.” Alice,
134 S. Ct. at 2355 (quotations and citation omitted).
Noting that the two stages involve “overlapping scrutiny of the
content of the claims,” the Federal Circuit has described “the first-stage
inquiry” as “looking at the ‘focus’ of the claims, their ‘character as a
whole,’” and “the second-stage inquiry (where reached)” as “looking more
precisely at what the claim elements add—specifically, whether, in the
Supreme Court’s terms, they identify an ‘inventive concept’ in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed.” Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that “all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look
to: (1) whether the claims focus on a specific means or method that
improves the relevant technology, or (2) are directed to a result or effect that
itself is the abstract idea, in which the claims merely invoke generic
processes and machinery. See Enfish, 822 F.3d at 1336.
5
Appeal 2018-000690
Application 14/619,848
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner finds that the claims recite an abstract idea of:
receiving a time-domain series of temperature measurements,
transforming the time-domain measurements of temperature
measurements to a frequency domain having a power
component, determining the power ratio of two frequency
bands, determining that the dental appliance was in the human
mouth during the time period when the temperature power ratio
is within preselected tolerances and otherwise determining that
the dental appliance was in the water bath, and transmitting the
results.
(Final Act. 5.)
The Examiner further finds the claimed concept “is similar in scope to
those found to be abstract ideas by the Courts.” {Id. at 5.) In particular, the
Examiner cites the Federal Circuit’s decision in Electric Power Group,
noting that, therein, “the Court found that collecting and analyzing data
and displaying the results is abstract, and is performed using conventional
computer and network technology.” {Id. at 6.) The Examiner finds that
here, as in Electric Power Group, the focus of the claims “is on collecting,
analyzing and displaying results, and not on any particular asserted inventive
technology for performing those functions.” {Id. at 6—7.) The Examiner
further finds, in particular:
The recited transforming of time-domain to frequency
domain uses known techniques such as [Fast-Fourier
Transformation] or [Discrete Fourier Transformation], and the
comparison of power ratios in frequency bands is a simple
comparison. The focus of the claims is not on an improvement
in computers as tools, as in Enfish, but on abstract ideas that use
computers as tools. The claims do not require an inventive set
of components or methods such as measuring devices or
techniques that would generate new data. The claims’
6
Appeal 2018-000690
Application 14/619,848
invocation of a processor, data communication or issuing alerts
merely call for performance of the claimed invention on a set of
generic computer components and data collection devices. . . .
The claims here do not require any nonconventional computer,
network or display components, or even a “non-conventional
and non-generic arrangement of known, conventional pieces[.]”
(Id. at 7.) We agree with the Examiner’s analysis.
Appellant challenges the Examiner’s findings, arguing “[t]he claimed
subject matter is not ‘directed to’ an abstract idea inasmuch as it includes a
set of rules that improve computer-related technology by allowing computer
performance of a function not previously performable by a computer.”
(App. Br. 9.) Appellant cites, in particular, the Federal Circuit’s decision in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1314
(Fed. Cir. 2016), and argues the claimed subject matter, as in McRO,
constitutes “a set of ‘rules’ (mathematical relationships) that improve
computer-related function by allowing computer performance of a function
not previously performable by a computer.” (Id. at 10.) That function,
according to Appellant, is “verifying compliance with a dental appliance
therapy for a human patient by determining whether a dental appliance was
in a human mouth during a time period or was in a water bath during the
time period.” (Id.)
We disagree. Appellant’s claims recite receiving data by a generic
“processor,” transforming that data from a “time-domain” to a “frequency-
domain” according to conventional mathematical algorithms (see Spec. 1 50,
disclosing use of Fourier transforms), and then comparing the transformed
data to a set of tolerances to answer a binary yes or no question—whether
the data is within the tolerances. As such, Appellant’s claims recite only one
“rule”—according to the claims, data “within pre-selected temperature
7
Appeal 2018-000690
Application 14/619,848
power ratio tolerances” indicates the appliance was in a human mouth;
otherwise, the determination is that the appliance was in a water bath.
The claimed “if-this, else-that” rule is a fundamental step of any
comparative analysis—not limited to computer functionality, but certainly
very common to any computer-based environment. We, therefore, disagree
that Appellant’s claims are analogous to the computer-animation claims
considered in McRO, which the Federal Circuit determined applied “limited
rules in a process specifically designed to achieve an improved technological
result.” McRO, 837 F.3d at 1316. Rather, we conclude, as did the
Examiner, that Appellant’s claims are analogous to the method claim
considered by the Federal Circuit in Electric Power Group, 830 F.3d 1350,
which the court determined was directed to the abstract idea of “collecting
information, analyzing it, and displaying certain results of the collection and
analysis.” Id. at 1353—54. (See Ans. 8—9.)
The recitation in Appellant’s claims of “transforming data” does not
render them less abstract. As the Supreme Court has stated, “if a claim is
directed essentially to a method of calculating, using a mathematical
formula, even if the solution is for a specific purpose, the claimed method is
nonstatutory.” Parker v. Flook, 437 U.S. 584, 595 (1978) (quoting In re
Richman, 563 F.2d 1026, 1030 (CCPA 1977)). Such is the case here with
regard to the “transforming” step, in which time-domain measurements are
converted to frequency-domain measurements, for which the Specification
discloses the well-known mathematical technique of a Fourier transform.
(Spec. 150; see Ans. 9-10.)
In addition, the fact that Appellant’s claims recite a particular kind of
data that is received, transformed, and compared also does not render the
8
Appeal 2018-000690
Application 14/619,848
claims less abstract. As the Supreme Court and the Federal Circuit have
repeatedly made clear, “merely limiting the field of use of the abstract idea
to a particular existing technological environment does not render the claims
any less abstract.” Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d
1253, 1259 (Fed. Cir. 2016). Indeed, but for the recitation of a generic
“processor,” we conclude the recited steps or functions (e.g., receiving
measurements, transforming them from a time domain to a frequency
domain, and comparing them to tolerance ranges) could be performed as
mental steps, or with the aid of pen and paper. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson’’ ).
(See also Final Act. 6—7.) Our reviewing court further guides “[t]he abstract
idea exception prevents patenting a result where ‘it matters not by what
process or machinery the result is accomplished.’” McRO, 837 F.3d at 1312
(quoting O Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added).
In short, on this record, we are not persuaded of error regarding the
Examiner’s conclusion that all claims on appeal are directed to an abstract
idea. (Final Act. 5—7; see also Ans. 5—10.)
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Having found that the claims are directed to an abstract idea, the
Examiner also finds that the additional elements or combinations of
elements beyond the abstract idea do not amount to “significantly more”
than the abstract idea itself. (Final Act. 7—8.) Rather, the Examiner finds
“[t]he additional structural elements or combination of elements in the
claims, other than the abstract idea per se, amount to no more than a
9
Appeal 2018-000690
Application 14/619,848
recitation of generic computer structure (i.e. a processor).” (Id. at 8 (bold
emphasis omitted).)
Appellant challenges this finding by arguing that “in the instant case,
the computer is employed to perform a distinct process to automate a task
previously performable only by humans, but in a manner that would not be
performed by humans.” (App. Br. 11.) Appellant, thus, concedes that the
claims are directed to automating calculations that could be performed by
humans. As the Supreme Court has explained, however, “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice Corp., 134 S. Ct. at 2358. Thus,
automating the claimed data transformation and analysis with the use of a
generic computer (“processor”) does not transform Appellant’s claims into
patent-eligible subject matter. For similar reasons, we are not persuaded by
Appellant’s argument that use of a computer indicates that the claims “solve
a technology-based problem.” (App. Br. 19; see also Ans. 10.)
Appellant also argues that the claims’ recitation of particular data
manipulation and comparison steps would “prevent preemption of all
processes for determining that the dental appliance was in the human mouth
during the time period, and otherwise determining that the dental appliance
was in the water bath.” (App. Br. 13.) We are not persuaded of error.
There is no dispute that the Supreme Court has described “the concern
that drives this exclusionary principle [i.e., the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption.” See Alice Corp.,
134 S. Ct. at 2354. However, characterizing preemption as a driving
concern for patent eligibility is not the same as characterizing preemption as
the sole test for patent eligibility. As our reviewing court has explained:
10
Appeal 2018-000690
Application 14/619,848
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). Although “preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Id. (See also Ans. 7—
8.)
For at least the aforementioned reasons, and on this record, Appellant
has not persuaded us the Examiner erred. Accordingly, we sustain the
Examiner’s rejection of claims 3, 4, 9-12, 14, and 17—19 under 35 U.S.C.
§101.3
DECISION
For the above reasons, the Examiner’s rejection of claims 3, 4, 9—12,
14, and 17—19 is affirmed.
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
3 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See 37
C.F.R. §41.37(c)(l)(iv).
11