Ex Parte Ghajar et alDownload PDFPatent Trials and Appeals BoardMay 21, 201914454662 - (D) (P.T.A.B. May. 21, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/454,662 08/07/2014 24341 7590 05/23/2019 Morgan, Lewis & Bockius LLP (PA) 1400 Page Mill Road Palo Alto, CA 94304-1124 FIRST NAMED INVENTOR Jamshid Ghajar 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 061046-5008-US 9149 EXAMINER MCCROSKY, DAVID J ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 05/23/2019 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): padocketingdepartment@morganlewis.com vskliba@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMSHID GHAJAR, JIANLIANG TONG, and JUNMARUTA 1 Appeal 2018-004885 Application 14/454,662 Technology Center 3700 Before JENNIFERD. BAHR, JAMES P. CALVE, and NATHAN A. ENGELS, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Sync-Think, Inc. (Appellant) is the applicant as provided in 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 4. Appeal 2018-004885 Application 14/454,662 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method of testing a subject for impairment, comprising: at a system having a computer system, a display, and a measurement apparatus to measure the subject's right eye positions and the subject's left eye positions, the computer system having one or more processors and memory storing one or more programs for execution by the one or more processors, performing a set of operations including: presenting to the subject, on the display, a smoothly moving object, repeatedly moving over a tracking path; while presenting to the subject the smoothly moving object on the display: measuring the subject's right eye positions, using the measurement apparatus; and measuring the subject's left eye positions, using the measurement apparatus; using the computer system: generating a disconjugacy metric for the subject based on a measure of variability of a plurality of differences between the measured right eye positions and corresponding measured left eye positions over a period of time while the object is moving; comparing the disconjugacy metric with a predetermined baseline to determine whether the disconjugacy metric is indicative of an impairment; and generating a report based on the disconjugacy metric for the subject. REJECTIONS I. Claims 1-24 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. II. Claims 1, 3---6, 8-14, 16-19, and 21-23 stand rejected under 35 U.S.C. § 103 as unpatentable over Fukushima 2 Appeal 2018-004885 Application 14/454,662 (US 2002/0099305 Al, published July 25, 2002), Ghajar (US 7,819,818 B2, issued Oct. 26, 2010), and Lane (David M. Lane, Introduction to Statistics ( online textbook), Ch. 3 Summarizing Distributions, Measures of Variability, Internet Archive Dec. 27, 2012. Retrieved from https://web-beta.archive.org/web/20121227105126/ http://onlinestatbook.com/2/summarizing_distributions/variability. htm on Mar. 28, 2017). 2 III. Claims 2, 15, and 24 stand rejected under 35 U.S.C. § 103 as unpatentable over Ghajar, Fukushima, Land, and Cronin-Golomb (Alice Cronin-Golomb, PhD et al., Visual Dysfunction in Alzheimer's Disease: Relation to Normal Aging, 29 Annals of Neurology 41-52 (1991)). PRINCIPLES OF LAW An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus 2 The Examiner withdrew the rejection of claims 7 and 20 under 35 U.S.C. § 103. Ans. 17; see Final Act. 11, 14. 3 Appeal 2018-004885 Application 14/454,662 Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 ( 1981) ); "tanning, dyeing, making waterproof-cloth, vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection 4 Appeal 2018-004885 Application 14/454,662 of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The PTO recently published revised guidance on the application of § 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance ("Memorandum"). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity, such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)). 5 Appeal 2018-004885 Application 14/454,662 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum. DISCUSSION Rejection I-Patent Eligibility In contesting the rejection under 35 U.S.C. § 101, Appellant groups claims 1-13, 23, and 24 together and claims 14--22 together. Appeal Br. 12. We decide the appeal of the patent eligibility rejection on the basis of claims 1 and 14, with claims 2-13, 23, and 24 standing or falling with claim 1, and claims 15-22 standing or falling with claim 14. See 37 C.F.R. § 4I.37(c)(l)(iv) (permitting the Board to select a single claim to decide the appeal as to a single ground of rejection of a group of claims argued together). (1) Does the claim recite a judicial exception? Claim 1 recites "generating a disconjugacy metric for the subject based on a measure of variability of a plurality of differences between the measured right eye positions and corresponding measured left eye positions over a period of time while the object is moving." Appeal Br. 29 (Claims App.). This amounts to mathematical calculations, namely, subtraction to 6 Appeal 2018-004885 Application 14/454,662 obtain the plurality of differences, and a statistical mathematical formula to obtain a variability of the differences over time. See, e.g., Spec. ,r,r 67, 69. Mathematical calculations and formulas are mathematical concepts, which is one of the groupings of abstract ideas identified in the Memorandum. See Bilski, 561 U.S. at 611 ("The concept of hedging ... reduced to a mathematical formula ... is an unpatentable abstract idea."); Diehr, 450 U.S. at 191 ("A mathematical formula as such is not accorded the protection of our patent laws.") (citing Benson, 409 U.S. 63); SAP America Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a "series of mathematical calculations based on selected information" are directed to abstract ideas). Claim 1 also recites "comparing the disconjugacy metric with a predetermined baseline to determine whether the disconjugacy metric is indicative of an impairment," which are mental processes, namely, an evaluation ( comparing) and an observation ( determining whether the metric is indicative of impairment, which is one of the groupings of abstract ideas identified in the Memorandum. Appeal Br. 29 (Claims App.). See In re BRCAJ & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (concluding that the concept of "comparing BRCA sequences and determining the existence of alterations" is an "abstract mental process"). Accordingly, the Examiner correctly found that claim 1 recites an abstract idea (mathematical concept and mental processes). See Final Act. 3. Claim 14 is substantially similar to claim 1, except that, instead of reciting a method performed at a system, like claim 1, claim 14 recites a system comprising memory storing one or more programs comprising 7 Appeal 2018-004885 Application 14/454,662 instructions to perform the method steps of claim 1, including "generate a disconjugacy metric for the subject based on a measure of variability of a plurality of differences between the measured right eye positions and corresponding measured left eye positions over a period of time while the object is moving" and "compare the disconjugacy metric with a predetermined baseline to determine whether the disconjugacy metric is indicative of an impairment." Appeal Br. 31 (Claims App.). Thus, claim 14, like claim 1, recites an abstract idea ( mathematical concept and mental processes). (2) Does the claim recite additional elements that integrate the judicial exception into a practical application? Following our Office guidance, having found that claims l and 14 recite a judicial exception, namely, a mathematical relationship and a mental process, we are instructed next to determine whether these claims recite "additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a}-(c), (e}-(h))." See Memorandum. This evaluation requires us to determine whether an additional element or a combination of additional elements in the claim apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. If the recited judicial exception is integrated into a practical application, the claim is not "directed to" the judicial exception. The additional limitations in claim 1 are a display, a measurement apparatus to measure the subject's eye positions, and a computer system having one or more processors and memory storing one or more programs 8 Appeal 2018-004885 Application 14/454,662 for execution by the processors performing the aforementioned steps of generating a disconjugacy metric and comparing the metric with a baseline to determine whether the metric is indicative of impairment, as well as presenting to the subject, on the display, a smoothly moving object repeatedly moving over a tracking path and measuring the subject's left and right eye positions using the measurement apparatus, and generating a report based on the disconjugacy metric. Appeal Br. 29 (Claims App.). The additional limitations in claim 14 are essentially the same as for claim 1, namely, a measurement apparatus to measure the subject's eye positions, a display, one or more processors, memory storing one or more programs with instructions to present to the subject, on the display, a smoothly moving object repeatedly moving over a tracking path, measuring the subject's left and right eye positions, performing the aforementioned steps of generating a disconjugacy metric and comparing the metric with a baseline to determine whether the metric is indicative of impairment, and generating a report based on the disconjugacy metric. Id. at 31-32. The computer components (processors and memory) recited in claims 1 and 14 are simply generic computer components. We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in claims 1 and 14 invoke any assertedly inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not 9 Appeal 2018-004885 Application 14/454,662 make an otherwise ineligible claim patent-eligible."). Likewise, claims 1 and 14 recite the display and the measurement device in a purely generic manner. Generating a report based on the disconjugacy metric is nothing more than insignificant post-solution activity and, thus, cannot transform the claimed abstract idea into a patent-eligible application. See Bilski, 561 U.S. at 610-11 ( explaining that the prohibition against patenting an ineligible concept, such as an abstract idea, "'cannot be circumvented by attempting to limit the use of the [abstract idea] to a particular technological environment' or adding 'insignificant post-solution activity"'). Further, we find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a "practical application," as that phrase is used in the Memorandum. Appellant argues that, in claim 1, the step of measuring the left and right eye positions, using the measurement apparatus, ties the subsequent analysis back to the measurement apparatus. Appeal Br. 13. This argument is not persuasive because the measurement apparatus is recited merely as a generic machine. As such, it is irrelevant to the claimed invention and, in particular, to the analysis involved in generating the disconjugacy metric and comparing it with a baseline how the data ( eye positions) used as input for the generating and comparing steps is generated or collected. Likewise, 10 Appeal 2018-004885 Application 14/454,662 claim 1 does not positively tie the generating or comparing steps, or even the measuring step, to the presenting step. Analogizing claim 1 to the claim in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (2016), Appellant also argues that "the analysis of measured eye positions represents a 'specific asserted improvement' to the measurement apparatus." Id. at 13. However, Appellant does not explain, nor do we discern, how the claimed generating and comparing steps of claim 1 cause the claimed generic measurement apparatus to function any differently than without these steps. Similarly, Appellant argues that "[b ]y refining what can be done with 'a system having a computer system, a display, and a measurement apparatus to measure the subject's ... eye positions,' claim 1 recites a 'specific asserted improvement in computer capabilities."' J d. at 15 ( citing Enfzsh, 822 F.3d at 1336). This argument is not persuasive. Claim 1 recites using a generic computer system to perform the generating and comparing steps, but Appellant does provide any persuasive technical explanation or evidence to show that the computer system performs in other than a generic manner in performing these steps. Any improvement in the method of claim 1 appears to reside in the abstract idea itself (the mathematical concept and mental processes), not in the additional limitations in claim 1. In addition to the arguments asserted for claim 1, which are not persuasive, for the reasons set forth above, Appellant contends that "claim 14 is not just directed to a 'specific asserted improvement in computer capabilities' but is, in fact, directed to a specific improvement in the object of the claim itself: the claimed 'system of testing a subject for impairment."' Appeal Br. 21. Aside from the particular analysis (generating a 11 Appeal 2018-004885 Application 14/454,662 disconjugacy metric based on a measure of variability of a plurality of differences between measured right and left eye positions, and comparing the metric with a baseline to determine whether the metric indicates impairment), Appellant does not direct our attention to any improvement provided by the claimed invention. See Ans. 18 (finding that Appellant's Specification does not describe any new process for measuring the right and left eye positions, but, rather, "implements an abstract mathematical algorithm on any general purpose computer with data that is conventionally gathered via the claimed measuring function/equipment"). Thus, the improvement in the system of claim 14 appears to reside in the abstract idea itself (the mathematical concept and mental processes), rather than in the additional limitations of claim 14. For the above reasons, we determine that no additional element or combination of additional elements in claim 1 or claim 14 apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. In other words, claims 1 and 14 are "directed to" an abstract idea. (3) Does the claim add any specific limitations beyond the judicial exception that are not "well-understood, routine, and conventional" in the field? Because we determine that claims 1 and 14 fail to recite additional elements that integrate the judicial exception into a practical application, in accordance with the Memorandum we next consider whether the claim adds a specific limitation beyond the judicial exception that is not "well- understood, routine, conventional" in the field or instead "simply appends well-understood, routine, conventional activities previously known to the 12 Appeal 2018-004885 Application 14/454,662 industry, specified at a high level of generality, to the judicial exception." See Memorandum. Appellant argues: [T]here is no evidence that a physician has ever "generat[ ed] a disconjugacy metric based on a measure of a variability of a plurality of differences between the measured right eye positions and corresponding measured left eye positions over a period of time while the object is moving" and "compar[ ed] the disconjugacy metric with a predetermined baseline to determine whether the disconjugacy metric is indicative of an impairment." Appeal Br. 18. This argument is unavailing because it pertains to the abstract idea itself. Addressing step two of the Mayol Alice framework in Berkheimer, the Federal Circuit held that the question of whether a claim element or combination of elements is well-understood, routine, and conventional to a skilled artisan in the relevant field is a question of fact. Berkheimer v. HP, Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). However, it could not be clearer from Alice, that under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and "as an ordered combination" to determine whether the additional elements, i.e., the elements other than the abstract idea itself, "transform the nature of the claim" into a patent-eligible application. Alice, 573 U.S. at 217. See Mayo, 566 U.S. at 72-73 (requiring that "a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an 'inventive concept,' sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself' ( emphasis added)). In other words, the inventive concept under step two of the Mayol Alice test cannot be the abstract idea itself: 13 Appeal 2018-004885 Application 14/454,662 It is clear from Mayo that the "inventive concept" cannot be the abstract idea itself, and Berkheimer . .. leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged "inventive concept" is the abstract idea. Berkheimer, 890 F.3d at 1374 (Moore, J., concurring). See also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290-91 (Fed. Cir. 2018) ("Our precedent has consistently employed this same approach. If a claim's only 'inventive concept' is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea."). Appellant argues that the combination of the steps of generating a disconjugacy metric and comparing the disconjugacy metric to a baseline to determine whether there is impairment "is entirely non-conventional and non-generic to the normal process of gathering and evaluating data performed by physicians" and that, "[ e ]ven if claim 1 is considered to be directed to gathering and evaluating data, ... this combination of limitations recites a 'specific, discrete implementation of the abstract idea."' Appeal Br. 19. Thus, Appellant contends that claim 1 does "not preempt all ways of using the abstract idea." Id. (boldface omitted). To the extent Appellant maintains that the claims are patent-eligible because there is no risk of preemption, Appellant misapprehends the controlling precedent. Although the Supreme Court has described "the concern that drives [the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption," Alice Corp., 573 U.S. at 216, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. "The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to 14 Appeal 2018-004885 Application 14/454,662 patentability" and "[ fJor 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). "[P]reemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility." Id. Turning to the claim elements in claims 1 and 14 beyond the abstract idea (the computer system (processor and memory), display, and measuring apparatus, and the steps of presenting, on the display, a smoothly moving object repeatedly moving over a tracking path, measuring the subject's left and right eye positions), and generating a report based on the disconjugacy metric, Appellant cannot reasonably contend, nor does Appellant contend, that there is a genuine issue of material fact regarding whether operation of the computer system, display, or measurement apparatus is well-understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claims 1 and 14 require any specialized hardware or inventive computer, display, or measurement components, or that the claimed invention is implemented using other than generic components in their normal, routine, and ordinary capacity. Nor can Appellant reasonably contend that the concept of having a subject follow a smoothly moving object with his or her eyes and watching the subject's eye movements to determine whether the subject has an impairment (such as a concussion or other neurological issue) is not a well-understood, routine, and conventional diagnostic practice. Merely performing these steps using a generic display and generic measurement apparatus for measuring eye positions does not constitute an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. Likewise, as 15 Appeal 2018-004885 Application 14/454,662 discussed above, generating a report based on the disconjugacy metric is nothing more than insignificant post-solution activity and, thus, cannot transform the claimed abstract idea into a patent-eligible application. For the reasons discussed above, we find no element or combination of elements recited in claim 1 or claim 14 beyond the judicial exception that is not "well-understood, routine, conventional" in the field or that contains any "inventive concept" or adds anything "significantly more" to transform the abstract concept into a patent-eligible application. Alice, 573 U.S. at 221. Accordingly, we sustain the rejection of claims 1 and 14, as well as claims 2-13, 23, and 24, which fall with claim 1, and claims 15-22, which fall with claim 14, under 35 U.S.C. § 101 as being directed to patent- ineligible subject matter. See Appeal Br. 12. Rejection II-Obviousness Independent claim 1 recites, in pertinent part, a step of "generating a disconjugacy metric for the subject based on a measure of variability of a plurality of differences between the measured right eye positions and corresponding measured left eye positions over a period of time while the object is moving" and a step of "comparing the disconjugacy metric with a predetermined baseline to determine whether the disconjugacy metric is indicative of an impairment." Appeal Br. 29 (Claims App.). Independent claims 14 and 23 recite, in pertinent part, memory storing one or more programs comprising instructions to perform, inter alia, the aforementioned steps of claim 1. Id. at 31-33. As explained in the Specification, "[i]n some embodiments, the disconjugacy metric corresponds ... to a standard deviation of differences between the subject's right eye position and the 16 Appeal 2018-004885 Application 14/454,662 subject's left eye position over a duration of the presentation." Spec. ,r 79. Thus, standard deviation is one example of a measure of variability. The Examiner found that Ghajar does not teach the aforementioned steps of claims 1, 14, and 23. Final Act. 9. The Examiner found that Fukushima teaches using a computer system to perform these steps. Id. (citing Fukushima ,r,r 127-129; Figs. llA, 1 lB). The Examiner determined it would have been obvious to incorporate these steps into Ghajar "to examine brain functions and determine dementia and senescence of the brain more accurately." Id. ( citing Fukushima ,r 129). The Examiner found that the combination of Ghajar and Fukushima lacks a teaching of "a measure of variability of a plurality of differences," but that "Lane teaches that finding a variability is a well-known statistical function for analyzing data." Id. In view of this teaching, the Examiner determined it would have been obvious to provide such a variability assessment in the method of Ghajar, as modified in view of Fukushima, "to determine how spread out the data points are, thereby generating a parameter indicating an abnormal condition." Id. Appellant argues that "nothing in the combination of references would suggest to a person of skill in the art that 'a disconjugacy metric based on a measure of variability of a plurality of differences between [ eye positions]' would provide an indication of an impairment." Appeal Br. 24. Appellant submits that the cited references do not provide an answer to the question of why a person of skill in the art would "look to variability of the differences between right and left eye positions to test a subject for impairment." Id. For the reasons set forth below, Appellant's arguments are persuasive. 17 Appeal 2018-004885 Application 14/454,662 Ghajar discloses measuring left and right eye vertical and horizontal positions as the subject follows a moving object through two sets of clockwise circular orbits. Ghajar 9:5-30. Ghajar then calculates at least one of eye position error or accuracy index (the difference between the subject's measured eye position and the target position) and gain (the ratio between the subject's eye velocity and the target velocity). Id. 10:34--43, 49-50. Although the Examiner does not direct our attention to this disclosure, Ghajar also calculates at least one of the variability ( e.g., standard deviation) of the position error, also called the subject's attention index, and the variability of gain, and then compares this with the derived measurements for other individuals or with the derived measurements for the same subject at an earlier time. Id. 10:44--49, 59-63. Ghajar does not teach calculating the differences between the measured right eye positions and corresponding measured left eye positions over the period of time while the object is moving, much less generate a disconjugacy metric based on a measure of variability of such differences. The portions of Fukushima relied on by the Examiner teach evaluating the eye movements of a subject as an image is moved back and forth in the depth direction. Fukushima ,r 127; see id. ,r 126. Figure 1 lA illustrates the rotating angle of each eye when the right and left eyeballs are making convergence movements so that the images are fused on both eyes, thereby achieving stereoscopic vision. Id. ,r 127. Figure 1 lB, on the other hand, illustrates right and left eyeballs not making convergence movements, but, rather, conjugate eyeball movements in which the right eye follows the left eye movements, thereby failing to fuse the images on both eyes and achieve stereoscopic vision. Id. In particular, an imaging unit measures the 18 Appeal 2018-004885 Application 14/454,662 pupillary centers of both eyes of the subject, and an index calculating unit determines indexes concerning stereoscopic vision capacity. Id. ,r 128. Fukushima does not teach taking differences between the measured right eye positions and corresponding measured left eye positions over a period of time while the object is moving to calculate any of these indexes. Id. Fukushima further teaches comparing the index data for the subject to the index data of a plurality of subjects measured in advance and stored in the database. Id.,I 129. According to Fukushima, "the statistical significant level value between the healthy normal elderly group and the dementia elderly group is further decreased, the identification rate or sensitivity rate or sensitivity of dementia cases can be improved, and furthermore, the degree of senescence of brain can be determined more accurately" using Fukushima's method. Id. Lane, an online textbook on statistics, teaches that variability, which is synonymous with spread and dispersion, "refer[ s] to how spread out a distribution is" and defines "four frequently used measures of variability: the range, interquartile range, variance, and standard deviation." Lane passim. Even assuming that Fukushima does teach calculating one or more of the indexes by taking a plurality of differences between the measured right eye positions and corresponding measured left eye positions over a period of time while the object is moving to calculate any of these indexes, which we do not find in the portions of Fukushima that the Examiner cites, Fukushima does not teach calculating variability of such differences over time, and the Examiner does not adequately explain why a person having ordinary skill in the art would have been prompted to do so. Merely that variability is a well- known statistical tool for analyzing data, as evidenced by Lane, is not 19 Appeal 2018-004885 Application 14/454,662 sufficient to provide an apparent reason to perform such a statistical analysis on the eye rotation angle measurements taken by Fukushima. In sum, the Examiner does not articulate a reason, with rational factual underpinnings, to explain why a person of ordinary skill in the art would have been prompted, by the combined teachings of Ghajar, Fukushima, and Lane cited by the Examiner, to generate "a disconjugacy metric for the subject based on a measure of variability of a plurality of differences between the measured right eye positions and corresponding measured left eye positions over a period of time while the object is moving," as called for in Appellant's independent claims 1, 14, and 23. Accordingly, we do not sustain the rejection of claims 1, 14, and 23, or dependent claims 3-13 and 16-22, as unpatentable over Ghajar, Fukushima, and Lane. Rejection III-Obviousness Claims 2, 15, and 24 depend from claims 1, 14, and 23, respectively, and further specify that the variability is standard deviation. Appeal Br. 29, 32, 34 (Claims App.). The Examiner found that Cronin-Golomb teaches a disconjugacy metric corresponding "to a standard deviation of the plurality of differences between the measured right eye positions and the corresponding measured left eye positions over the period of time (assessment of stereoacuity would include a disconjugacy metric; 'Stereoacuity' and 'SD' in Table 3; 'standard deviations' in caption below Table 3)." Final Act. 16. The Examiner determined it would have been obvious "to provide the standard deviation of [a] plurality of differences, as taught by Cronin-Golomb, in the method of Ghajar, Fukushima[,] and Lane 20 Appeal 2018-004885 Application 14/454,662 to quantify the difference between measured and baseline for analysis between patients or populations or analysis of the same patient over time." Id. at 16-17. Appellant argues, persuasively, that Cronin-Golomb "does not teach the missing limitations of the independent claims." Appeal Br. 28. Table 3 of Cronin-Golomb tabulates, for each of the color, stereoacuity, contrast sensitivity, and backward masking tests, the number of patients tested who fell a given number of standard deviations below the mean for elderly subjects, not a standard deviation of a plurality of differences between measured right eye positions and corresponding left eye positions of any particular patient. Thus, the teachings of Cronin-Golomb cited by the Examiner do not make up for the aforementioned deficiency in the combination of Ghajar, Fukushima, and Lane. Accordingly, we do not sustain the rejection of claims 2, 15, and 24 as unpatentable over Ghajar, Fukushima, Lane, and Cronin-Golomb. DECISION The Examiner's decision rejecting claims 1-24 under 35 U.S.C. § 101 is AFFIRMED. The Examiner's decision rejecting claims 1---6, 8-19, and 22-24 under 35 U.S.C. § 103 is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 21 Copy with citationCopy as parenthetical citation