Ex Parte Gerber

Board of Patent Appeals and Interferences

Jul 26, 2011

11255533 (B.P.A.I. Jul. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARTIN T. GERBER
____________

Appeal 2009-013917
Application 11/255,533
Technology Center 3700
____________

Before WILLIAM F. PATE III, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

Concurring opinion filed by HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Martin T. Gerber (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 5, 6, 8-16, 18, 19, 22, 23, 25-33, 36,
37, and 39-47 under 35 U.S.C. § 103(a) as being unpatentable over
Whitehurst ’479 (US 6,862,479 B1, iss. Mar. 1, 2005), Miller (US
4,612,937, iss. Sep. 23, 1986), and Clark (US 3,455,301, iss. Jul. 15, 1969),
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claims 3, 4, 20, 21, 34, and 38 under 35 U.S.C. § 103(a) as being
unpatentable over Whitehurst ’479, Miller, Clark, and Doten (US 6,063,034,
iss. May 16, 2000), claim 35 under 35 U.S.C. § 103(a) as being unpatentable
over Whitehurst ’479, Miller, Clark, Doten, and Hogen Esch (US 5,372,133,
iss. Dec. 13, 1994), and claims 7 and 24 under 35 U.S.C. § 103(a) as being
unpatentable over Whitehurst ’479, Miller, Clark, and Whitehurst ’943 (US
6,650,943 B1, iss. Nov. 18, 2003).1 Claims 2 and 17 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER A
NEW GROUND OF REJECTION UNDER 35 U.S.C. § 101 FOR CLAIMS
1, 3, 4, and 11-14.
The Invention
The claims on appeal relate to the treatment of sexual dysfunction.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method comprising:
detecting an arterial blood flow to an erectile
tissue with a first sensor;
detecting a venous blood flow away from
the erectile tissue with a second sensor; and
generating tumescence information that
reflects the degree of tumescence of the erectile

1 The Examiner’s subsequent statements for the grounds of rejection on child
claims omit references that were previous utilized in rejecting parent claims.
We determine that such is an oversight on the part of the Examiner and that
there was no intention to omit those teachings when making the rejections
for the child claims. We determine Appellant acknowledges such an
oversight by properly listing the grounds of rejection to be reviewed in the
Appeal Brief on page 6. We find Appellant has properly stated the grounds
of rejection for review on page 6 of the Appeal, also note footnote 1. As
such, we will review the grounds of rejections as stated by the Appellant on
page 6 of the Appeal Brief.
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tissue based on the detected arterial and venous
blood flows,
wherein generating tumescence information
comprises comparing the arterial and venous
flows.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments presented by Appellant and the Examiner. Based on this review,
we conclude that the combined teachings of the prior art fail to render
obvious the claimed subject matter. Our reasoning follows.
A basic premise of an obviousness analysis is that combined teachings
of the prior art must collectively show, teach, or suggest the limitations
recited in the claims, i.e., the prior art collectively teaches the elements of
the claims. Additionally, some articulated reason with some rational
underpinning must be present to support the legal conclusion of obviousness.
In this case, the collective teachings of Whitehurst ’479, Miller, and Clark
fail to collectively teach all of the elements of independent claims 1, 16, and
37, and there is an insufficient rational underpinning for the articulated
reasoning to combine elements in the fashion claimed.
While the portion of Whitehurst ’479 relied on by the Examiner
generally mentions recordation of penile blood flow in response to electrical
and/or drug stimulation, there are no further details regarding what this
penile blood flow represents: arterial flow, venous flow, or a parameter
derived from arterial and venous flow. As such, the portion of Whitehurst
’479 relied on by the Examiner does not describe that recording penile blood
flow includes separately detecting arterial blood flow and venous blood flow
as recited in claims 1, 16, and 37. Further, the recognition of Whitehurst
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’479 that the physiological mechanism of an erection involves arterial and
venous blood flows does not lead to a teaching or suggestion that the penile
blood flow measurement disclosed in Whitehurst ’479 includes detection of
both arterial blood flow to erectile tissue and venous blood flow away from
the erectile tissue, as set forth by the independent claims.
Miller discloses an ultrasound diagnostic apparatus for displaying
two-dimensional blood flow information. The blood flow information is
measured and displayed with respect to the direction of blood flow relative
to the ultrasonic probe that transmits ultrasonic bursts, not with respect to
whether the blood flow is arterial blood flow or venous blood flow. As
such, Miller does not teach or suggest distinguishing between arterial and
venous blood flow, and thus does not teach or suggest detecting arterial
blood to an erectile tissue with a first sensor and detecting venous blood
flow away for the erectile tissue with a second sensor, as called for in the
claims. The Examiner incorrectly assumes that blood flow toward the
transducer is arterial blood flow and blood flow away from the transducer is
venous blood flow. Ans. 4. Assuming that Miller’s transducer were placed
in proximity to the penis as suggested by the Examiner based on Whitehurst
’479’s motivation, Ans. 7, the blood flow toward the transducer would not
necessarily be arterial blood flow and the blood flow away from the
transducer would not necessarily be venous blood flow. For example,
orienting Miller’s transducer adjacent a body structure containing blood
flow, the transducer detects whether the returning ultrasound waves are of a
lower frequency or a higher frequency and only indicates whether the blood
flow is moving away or toward the transducer. Such blood flow could be
either arterial or venous. Miller, col. 3, l. 53 to col. 4, l. 26. As such,
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Miller’s recognition of blood flow within a body structure does not
necessarily lead to detecting arterial blood flow to an erectile tissue with a
first sensor and detecting venous blood flow away from the erectile tissue
with a second sensor, as called for in the claims.
Contrary to the Examiner’s assertion based on a particular passage in
Clark, Clark does not teach a device that compares arterial and venous blood
flows. The cited passage informs a person having ordinary skill in the art
that the diameters of the structure will determine the ratio of blood flow
through the arteries and veins within the penis. Clark is simply an elastic
collar fitted over the penis and constricts blood flow. Clark’s device does
not include a component that is capable of performing any comparison
between arterial and venous blood flow. Instead, Clark teaches that the
internal diameter of the collar establishes or sets the amount of pressure
exerted by the device on the penis, which results in a ratio of venous and
arterial blood flow that is influenced by the particular anatomy of the penis
to which the collar is applied.

CONCLUSION
For the foregoing reasons, the prior art fails to collectively teach all of
the elements within claims 1, 16, and 37 and there is insufficient rational
underpinning for the Examiner’s reason to combine the prior art elements in
the fashion claimed. As such, we are constrained to reverse the Examiner’s
rejection of claims 1, 5, 6, 8-16, 18, 19, 22, 23, 25-33, 36, 37, and 39-47
under 35 U.S.C. § 103(a) as being unpatentable over Whitehurst ’479,
Miller, and Clark.
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The Examiner does not rely on Doten, Hogen Esch, or Whitehurst
’943 to remedy the aforementioned deficiency with the collective teachings
of Whitehurst ’479, Miller, and Clark. As such, we are constrained to also
reverse the Examiner’s rejections of claims 3, 4, 20, 21, 34, and 38 under 35
U.S.C. § 103(a) as being unpatentable over Whitehurst ’479, Miller, Clark,
and Doten, claim 35 under 35 U.S.C. § 103(a) as being unpatentable over
Whitehurst ’479, Miller, Clark, Doten, and Hogen Esch, and claims 7 and 24
under 35 U.S.C. § 103(a) as being unpatentable over Whitehurst ’479,
Miller, Clark, and Whitehurst ’943.

REJECTION OF CLAIMS 1, 3, 4, AND 11-14 UNDER 35 U.S.C. § 101
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b)
Based upon our consideration of the claimed methods taken as a
whole, claims 1, 3, 4, and 11-14 are held to be directed to an abstract idea,
i.e., the fundamental principle of determining the degree of tumescence of
erectile tissue from a comparison of arterial and venous blood flows, and
therefore are patently ineligible subject matter under 35 U.S.C. § 101. Our
reasons follow.
The test for patent eligible subject matter involves weighing factors to
evaluate the claim as to whether the claim represents an abstract idea or is
tailored narrowly enough to encompass only a particular application of a
fundamental principle. While we understand that the Federal Circuit’s
“machine or transformation test” is not the sole test, the Supreme Court did
acknowledge, based on the Court’s precedent, that the test is a “useful and
important clue, an investigative tool, for determining whether some claimed
processes are processes under § 101.” Bilski v. Kappos, 130 S. Ct. 3218,
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3227 (2010). The following factors militate for a finding that claims 1, 3, 4,
and 11-14 are directed to an abstract idea.
First, we note that no machine is utilized in the methods of claims 1,
3, 4, and 11-14. While claim 1 recites detecting blood flow with sensors, we
find that this does not adequately tie the method of claim 1 to a particular
machine because these first two steps are mere data gathering steps. The
predecessor to our reviewing court held that mere data gathering steps
cannot make an otherwise nonstatutory claim statutory. In re Meyer, 688
F.2d 789, 794 (CCPA 1982).
Second, we note that nothing is transformed in claims 1, 3, 4, and 11-
14 to a different state or thing. The claims are essentially directed to blood
flow data being detected, compared, and based on the comparison,
tumescence information is generated. To the extent that any transformation
takes place from data being sent from the sensors in order to make a
comparison, and based on that comparison, other data is sent in order to
generate still other data that is reflective of the degree of tumescence of the
erectile tissue, the transformation is of one type of electronic data into
another type of electronic data. Such is not a “transformation or reduction of
an article into a different state or thing constituting patent-eligible subject
matter.” In re Bilski, 545 F.3d 943, 962; see id at 963-64 (discussing patent-
eligible data transformations). The data represented and transformed in
Appellant’s claims is not data “represent[ing] physical and tangible objects,”
or “the electronic transformation of the data itself into a visual depiction.”
Id. at 963 (discussing In re Abele, 684 F.2d 902, 90809 (CCPA 1982)).
Further, the end product of claim 1 (generating tumescence information) is
not recited as being utilized for any particular purpose within claim 1.
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Rather, the recited data and the process of comparison are similar to the data
and processes found not to be patent-eligible our reviewing court’s previous
decisions. See Bilski, 545 F.3d at 965 (discussing In re Grams, 888 F.2d
835, 839-40 (Fed. Cir. 1989; In re Meyer, 688 F.2d at 796 – e.g., “the only
potential ‘transformation’ was of the disembodied ‘factors’ from one number
to another” and “process of diagnosing ‘abnormal condition’ in person by
identifying and noticing discrepancies in results of unspecified clinical
tests”).
As noted above, the first two steps are merely data gathering or
acquisition steps and do not weigh for or against patentability. On the other
hand, the last or third step is a “general concept” involving mental activity.
Issuance of an exclusive right over this general concept would effectively
grant a monopoly over the concept. We note that this step is disembodied,
and that this step can be performed in the head or can be performed with
paper and pencil. This third or “generating” step involves both the general
concept of mental activity, i.e., forming a judgment, evaluation, or opinion,
and the general concept of mathematical processing, as it is directed to
evaluating or forming a mental picture concerning the geometry of a filled
container. The generating step appears to be related to the mathematical
algorithm of subtraction. The term “generating” is so broad that it
reasonably may include intuitive guesswork or selecting a value from a look-
up table.
All these factors taken together heavily weight the methods of claims
1, 3, 4, and 11-14 toward the side of abstraction, and as such, we hold that
the claimed methods of claims 1, 3, 4, and 11-14 to be patent ineligible
methods under 35 U.S.C. § 101.
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DECISION
The Examiner’s decision to reject claims 1, 5, 6, 8-16, 18, 19, 22, 23,
25-33, 36, 37, and 39-41 under 35 U.S.C. § 103(a) as being unpatentable
over Whitehurst ’479, Miller, and Clark, claims 3, 4, 20, 21, 34, and 38
under 35 U.S.C. § 103(a) as being unpatentable over Whitehurst ’479,
Miller, Clark, and Doten, claim 35 under 35 U.S.C. § 103(a) as being
unpatentable over Whitehurst ’479, Miller, Clark, Doten, and Hogen Esch,
and claims 7 and 24 under 35 U.S.C. § 103(a) as being unpatentable over
Whitehurst ’479, Miller, Clark, and Whitehurst ’943 is reversed.
A new rejection of claims 1, 3, 4, and 11-14 under 35 U.S.C. § 101
has been entered by the Board pursuant to our authority under 37 C.F.R.
§ 41.50(b).
This decision contains a new grounds of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to the
Examiner….
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(2) Request rehearing. Request that the proceeding be reheard under
§41.52 by the Board upon the same record….

REVERSED; 41.50(b)

Klh

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HORNER, Administrative Patent Judge, concurring.
I write separately to concur in the decision to reverse the Examiner’s
rejections claims 1, 3-16, and 18-47 but for reasons different from those
relied upon by the majority.
The Examiner’s rejections are based on the finding that “a person
having ordinary skill in the art (PHOSITA) who would necessarily
understand the mechanics of an erection, which is disclosed by Whitehurst
‘479 at Col. 2, lines 40-56, would have recognized the desirability of
measuring arterial and venous flows since it is well known that the state of
an erection, i.e. tumescence, is a function of the blood flowing into and
blood flowing out of the erectile tissue.” Ans. 11. I agree with Appellants
that “the mere recognition by Whitehurst ‘479 that the physiological
mechanism of erection involves arterial and venous blood flows does not
teach or suggest that the penile blood flow measurement disclosed in
Whitehurst ‘479 includes detection of both arterial blood flow to erectile
tissue and venous blood flow away from the erectile tissue, as required by
claim 1.” App. Br. 9. I further agree with Appellants that the passage of
Whitehurst ‘479 describing the physiological mechanism of erection would
have suggested to one having ordinary skill in the art that by measuring only
one of the arterial or venous blood flows, one may infer what is occurring to
the other blood flow. Id. Since the Examiner’s rejections are based on a
misapplication of the teaching of Whitehurst ‘479, it is on this basis alone
that I would reverse the rejections.
I join in the majority’s decision to enter a new ground of rejection of
claims 1, 3, 4, and 11-14 under 35 U.S.C. § 101.