Ex Parte Greenwald

Patent Trial and Appeal Board

Jan 16, 2018

14020740 (P.T.A.B. Jan. 16, 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.
14/020,740 09/06/2013 Scott D. Greenwald H-RM-01979-02/1215-129US0 6937
127558 7590 01/18/2018
Covidien LP/Shumaker & Sieffert P.A.
Attn: IP Legal Department
6135 Gunbarrel Avenue
Boulder, CO 80301
EXAMINER
BORIN, MICHAEL L
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
pairdocketing @ ssiplaw.com
medtronic_mitg-pmr_docketing@cardinal-ip.com
ip.legal@covidien.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT D. GREENWALD1
Appeal 2017-001720
Application 14/020,740
Technology Center 1600
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
JOHN G. NEW, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
appellant states that the real parties-in-interest are Covidien LP and its
parent company, Medtronic PLC. App. Br. 3.
Appeal 2017-001720
Application 14/020,740
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—9 and 11—20 as unpatentable under
35 U.S.C. § 101 as being directed to nonstatutory subject matter.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CFAIMED INVENTION
Appellant’s invention is directed to a system and method for
predicting and measuring a subject’s analgesic state and analgesic adequacy
by measuring biopotential signals obtained from a subject through
electrodes. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A method for assessing a subject’s analgesic state and
adequacy using an electroencephalograph (EEG) processor and
a monitoring system, the method comprising:
obtaining, using the EEG processor, biopotential signals
from a plurality of electrical leads connected to the subject at
intervals over a period of time;
computing, using the EEG processor, from the
biopotential signals a first measure representative of the subject’s
sedative state;
2 The Examiner also rejected claims 1—9 and 11—20 as unpatentable under
35 U.S.C. § 112, first paragraph, as lacking written descriptive support in the
Specification. Final Act. 2. This rejection has been withdrawn by the
Examiner. See Advisory Act. 1 (January 20, 2016).
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calculating, using the monitoring system, a first metric
representative of variability of the first measure;
computing, using the EEG processor, from the
biopotential signals a second measure representative of the
subject’s muscle activity;
calculating, using the monitoring system, a second metric
representative of variability of the second measure;
calculating, using the monitoring system, from the first
and second metrics an index value representative of the subject’s
analgesic state and analgesic adequacy; and
displaying, using a display, the index value.
App. Br. 18.
ISSUES AND ANALYSIS
We agree with, and adopt, the Examiner’s findings of fact and
conclusions that the appealed claims are directed to nonstatutory subject
matter. We address the arguments raised by Appellant below.
Issue
Appellant argues the Examiner erred in finding that the claims are
directed to a judicial exception to 35 U.S.C. § 101 because the claims are not
directed to an abstract idea, or, alternatively, add significantly more to the
abstract idea so as to quality as patentable subject matter. App. Br. 10-16.3
3 Appellant also argues that the claims recites “meaningful limitations” that
“sufficiently limit” the practical application and therefore do not preempt a
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Analysis
The Examiner finds Appellant’s claims are directed to a process that
is a computational method of calculating metrics based on the variability of
biopotential signals and calculating from these metrics an index representing
subject’s analgesic state and analgesic adequacy. Final Act. 3^4. The
Examiner finds the claims are therefore directed to processing information
and converting one form of numerical representation into another, i.e.,
gathering and combining data by organizing information via mathematical
relationships. Id. at 4. The Examiner finds that such gathering and
combining of mathematical relationships to manipulate existing information
to generate additional information are directed to an abstract idea, which is a
judicial exception to Section 101. Id.
The Examiner further finds that the claimed method is limited by the
steps of obtaining biopotential signals from a subject. Final Act. 4. The
Examiner finds that the adding of extra-solution activity to the judicial
exception, viz., data gathering in conjunction with the abstract idea, is not
enough to qualify as “significantly more,” as required by the Supreme
Court’s analysis in Mayo (566 U.S. at 77 ).
The Examiner also finds that the claims require that the method steps
are carried out using an “EEG monitor,” and that no such device is disclosed
in Appellant’s Specification. Final Act. 4. As such, the Examiner finds that
judicially-created exception to 35 U.S.C. § 101. App. Br. 8—9. This is not a
part of the test that the Supreme Court has set forth in Mayo Collaborative
Servs. v. Prometheus Labs., Inc., for determining subject matter eligibility
under 35 U.S.C. § 101. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66 (2012). We consequently do not reach Appellant’s
argument in this respect.
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the “EEG monitor” does not require any particular type or specified
particular arrangement of means for computing or calculating and that,
therefore, the method’s recitation of “using the EEG monitor” invokes only
generic computational implementation. Id. at 4—5.
Appellant argues that claims are directed to solving the technical
problem of determining subject’s analgesic state and analgesic adequacy in
the field of electroencephalographic monitoring. App. Br. 10. As such,
Appellant argues, the Examiner’s conclusion that the claims are directed to
an abstract idea is insufficient, as a matter of law, to establish that subject
matter of claim 1 is directed to ineligible subject matter. Id.
Appellant contends that the Examiner has made no finding of fact that
supports the conclusion that the claims are directed to a judicial exception to
Section 101. App. Br. 11. Nor, Appellant asserts, has the Examiner
adduced any objective evidence that the claimed method is a "‘building
block[]’ of human ingenuity” or any type of “fundamental economic
practice.” Id. at 11—12 (quoting Alice Corp. v. CLS Bank Inti, 134 S.Ct.
2347, 2354, 2356 (2014). Furthermore, argues Appellant, there is no
evidence that Appellant is seeking to wholly preempt “‘methods of
organizing human activities, an idea of itself, or a mathematical relationship
or formula.’” Id. at 12 (quoting Ex parte Anderson, Appeal No. 2016-
002310, 2017 WL 5037099, at *3 (PTAB October 25, 2017)). According to
Appellant, the claims do not threaten to create problems relating to
preemption but, rather, are directed to specific techniques carried out by
machines comprising an EEG processor and a monitoring system for
calculating a value representative of the subject’s analgesic state and
analgesic adequacy. Id.
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Appellant next argues that, assuming, arguendo, that the claims are
directed to a judicially-created exception to Section 101, Step 2 A, the
combination of elements recited in claim 1 is more than sufficient to amount
to significantly more than just an abstract idea. App. Br. 12. Specifically,
Appellant argues that: (1) the claim is directed to a technological solution
that is necessarily rooted in the realm EEG technology, and (2) the claim is
directed to methods that improve the functionality of an EEG processor and
a monitoring system. Id.
With respect to (1), Appellant points to our reviewing court’s holding
in DDR Holdings, LLC v. Hotels. Com, L.P., that claims that are directed to
problems that are ‘“necessarily rooted in computer technology’” and
“‘overcome a problem specifically arising in the realm of computer
networks’” are patent eligible in view of Alice. App. Br. 12 (citing DDR
Holdings, LLCv. Hotels.Com, L.P., 773 F.3d 1245, 1265 (Fed. Cir. 2014)).
According to Appellant, the claims on appeal are directed to a specific
technological problem arising in the realm of EEG monitoring. Id.
Specifically, Appellant contends that the claims are directed to a method that
uses an EEG processor and a monitoring system to determine and display an
index value representative of the subject’s analgesic state and analgesic
adequacy, which, Appellant asserts, are important diagnostic parameters that
could not be determined by known EEG systems prior to the present
invention. Id. Furthermore, Appellant contends the ability to determine
these parameters using EEG equipment was highly desirable for purposes of
monitoring and diagnosing a patient. Id. at 12—13. Consequently, argues
Appellant, the method recited in the claims for determining analgesic state
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and analgesic adequacy using EEG equipment is a technique rooted the
realm of EEG monitoring technology. Id. at 13.
With respect to argument (2), Appellant argues that the Specification
describes an acute need for a system that can measure and display an
indication of analgesic state of a subject. App. Br. 13 (citing Spec. 13).
Specifically, Appellant asserts that the Specification explains that anesthetic
pharmacological agents can have separate effects on the patient undergoing
a surgical procedure, including ‘“sedation or hypnosis (the lack of
consciousness or awareness of the surrounding world), analgesia (the
blunting or absence of pain) and paralysis (lack of movement).’” Id.
According to Appellant: “anesthesiologist will benefit from being able to
monitor analgesia separately from other effects, since a mixture of drugs
may be required to achieve acceptable levels for all there [sic] of sedation,
analgesia, and paralysis at the same time, while overdose of any of these
drugs may have adverse effects.” Id. at 13—14 (citing Spec. ^fl[ 4—5).
Consequently, Appellant argues that the claimed invention, provides
an improvement to the field of EEG monitoring by calculating and
displaying an index measuring a parameter that could not be measured by
EEG equipment prior to the claimed invention and therefore recite
something significantly more than an abstract idea. App. Br. 14.
Finally, Appellant points to our reviewing court’s holding in SiRF
Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010). App. Br.
15. Appellant argues that the Federal Circuit’s holding in SiRF supports
Appellant’s argument that claims directed to mathematical manipulation of a
signal are patent eligible under Section 101 if the claims are tied to particular
technological area. Id. According to Appellant, the Federal Circuit held that
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a method capable of computing the position of the satellite signal receiver
based on signals from a plurality of satellites is patent-eligible under
35 U.S.C. § 101 because the presence of a satellite signal receiver was
integral to the claims and provided a ‘“meaningful limit on the scope of the
claims’” because it ‘“play[[ed]] a significant part in permitting the claimed
method to be performed.’” Id. (quoting SiRF, 601 F.3d at 1332—33).
Similarly, asserts Appellant, the combination of elements recited in claim 1
imposes meaningful limits on the scope of the claim because the claim
recites, inter alia, an EEG processor and a monitoring system operating on a
biopotential obtained from a plurality of electrical leads connected to the
subject, similarly to how the claims in SiRF require a satellite signal receiver
and use signals from a plurality of satellites. Id. at 16. Furthermore,
Appellant argues, processing a biopotential signal generated from a plurality
of electrical leads plays a significant part in permitting the claimed invention
to function. Id.
The Examiner responds that, in the method recited in the claims,
parameters are calculated by an “EEG processor,” i.e., by a processor
located in EEG equipment. Ans. 3 (citing App. Br. 14). The Examiner finds
that there are no limitations or disclosures in the Specification demonstrating
any difference between the claimed processor and a generic computer
processor. Id. The Examiner finds the claimed method requires merely
generic computer implementation and thus fails to transform the abstract
idea into a patent-eligible invention. Id.
In response to the Appellant’s reliance upon SiRF, the Examiner notes
that, whereas the court acknowledged that, whereas limiting performance of
the mathematical calculation to a general purpose CPU, absent more, is not
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sufficient to transform the recited judicial exception into a patent-eligible
invention, in SiRF the claimed programmed CPU acted in concert with the
recited features of the mobile device to enable the mobile device to
determine and display its absolute position through interaction with a remote
server and multiple remote satellites. Id. (see SiRF, 601 F.3d at 1332—33).
The Examiner finds that the court in SiRF held that these meaningful
limitations placed upon the application of the claimed mathematical
operations showed that the claim is not directed to performing mathematical
operations on a computer alone. Id.
The Examiner finds, however, that in the appeal before us, there is no
demonstration that displaying a particular numeric value, or index value, on
a monitor improves an existing technology. Ans. 4. The Examiner finds
that, although Appellant asserts that previous systems known in the art were
not capable of displaying an index value, inability to display a value not
previously addressed in the art is not a demonstrated improvement of
technology. Id.
We are not persuaded by Appellant’s arguments. In Mayo, the
Supreme Court 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. For review, see Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015).
First, we determine whether the claims at issue are directed to a patent-
ineligible concept. Id. (citing Mayo, 566 U.S. at 77). If the answer is yes,
then we next consider the elements of each claim both individually and ‘“as
an ordered combination’” to determine whether additional elements
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‘“transform the nature of the claim’” into a patent-eligible application. Id.
(citing Mayo, 566 U.S. at 79).
We agree with the Examiner that the limitations of claim 1 reciting:
computing, using the EEG processor, from the
biopotential signals a first measure representative of the subject’s
sedative state;
calculating, using the monitoring system, a first metric
representative of variability of the first measure;
computing, using the EEG processor, from the
biopotential signals a second measure representative of the
subject’s muscle activity;
calculating, using the monitoring system, a second metric
representative of variability of the second measure;
calculating, using the monitoring system, from the first
and second metrics an index value representative of the subject’s
analgesic state and analgesic adequacy;
and displaying, using a display, the index value
represent no more than the manipulation of data obtained in the form of an
electrical signal, i.e., the transformation of one set of numbers (the values of
the obtained signals) into another via certain algorithms and then displaying
those values. See Spec. ]Hf 38—39, 46, 50-51 for the various algorithms. As
such, we agree with the Examiner that these limitations are directed to a
patent-ineligible judicially-created exception to Section 101. See Parker v.
Flook, 437 U.S. 584, 590 (1978) (“[A] process is not unpatentable simply
because it contains a law of nature or a mathematical algorithm”).
Proceeding to the second step of the Mayo analysis, Appellant argues
that the limitations add significantly more to the claim than just the abstract
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idea. Specifically, Appellant argues that the claimed invention, “provides an
improvement to the field of EEG monitoring by calculating and displaying
an index measuring a parameter that could not be measured by EEG
equipment prior to the claimed invention” and therefore recite something
significantly more than an abstract idea.” See App. Br. 14. We are not
persuaded. Appellant’s Specification does not disclose the claim term “EEG
processor.” The Specification employs the term “processor” six times. See
Spec. 21, 35, 37. However, in each of those recitations, the Specification
discloses no more than generic processing by the processor or its position in
the flow of information through Appellant’s claimed invention.
For example, the Specification discloses at paragraph [0021]: “A
processor will compute a measure that is representative of the subject’s
sedative state and/or muscle activity.” Paragraph [0035] discloses:
“Turning now to the method of the invention as implemented by the
processor 20, the first and second output signals 50, 60 received by
processor 20 are preferably digital, composed of consecutive regularly-
spaced discrete samples.” And paragraph [0037] discloses: “For each epoch
of data, the processor 20 derives a measure of variability from the time
series CerebralActivityi and EMGi. In the preferred embodiment, the
standard deviation is utilized as the measure of variability. However, it
should be realized that other variability metrics may be used....” None of
these passages in the Specification disclose anything more than routine
processes that could not be performed on a generic computer or processor
via methods of EEG collection that are well-known and routine in the art.
As such, we find that they do not add “significantly more” to the claim
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sufficient to rise it above the judicial exception to Section 101 barring
abstract ideas.
Nor are we persuaded by Appellant’s reliance upon SiRF. In SiRF,
the Federal Circuit held that “the claims at issue are properly directed to
patentable subject matter as they explicitly require the use of a particular
machine (a GPS receiver) and could not be performed without the use of
such a receiver.” SiRF, 601 F.3d at 1333. In this instance, Appellant’s
claims and Specification recite no more than generic processes (i.e.,
receiving digital input, calculating a measure of variability) that could be
performed on any generic computer. We are therefore not persuaded by
Appellant’s contention that the claims are patentable because the “claims are
tied to particular technological area.” See App. Br. 15.
Finally, we find that the limitation of claim 1 reciting: “obtaining,
using the EEG processor, biopotential signals from a plurality of electrical
leads connected to the subject at intervals over a period of time,” is also
directed to a judicially-created exception to Section 101: a phenomenon of
nature. Measuring EEGs is simply the obtaining of, by methods that are
routine and well-known in the art, the massed, integrated electrical activity
of the brain, which exist whether they are measured or not. The mere
measurement of a phenomenon of nature is not patent-eligible. See Mayo,
566 U.S. 97 (“If a law of nature is not patentable, then neither is a process
reciting a law of nature, unless that process has additional features that
provide practical assurance that the process is more than a drafting effort
designed to monopolize the law of nature itself’). In this instance, the
phenomenon of nature, an EEG, measured by well-understood and
thoroughly conventional means, is the subjected to a series of manipulations
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via an abstraction, i.e., certain algorithms, performed on a generic processor.
We agree with the Examiner that none of these steps adds significantly more
to the judicial exceptions recited in the claims. We consequently affirm the
Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 1—9 and 11—20 as unpatentable
under 35U.S.C. § 101 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)(1).
AFFIRMED
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