Ex Parte Hamilton

Patent Trial and Appeal Board

Dec 19, 2016

11416281 (P.T.A.B. Dec. 19, 2016)

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.
11/416,281 05/01/2006 Emily Hamilton 18949 7925
293 7590 12/21/2016
DOWELL & DOWELL, P.C.
2560 HUNTINGTON AVE, SUITE 203
ALEXANDRIA, VA 22303
EXAMINER
HUNTER, SEAN KRISTOPHER
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
DOWELL@DOWELLPC.COM
SDARRENKAMP@DOWELLPC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMILY HAMILTON
Appeal 2015-0021661
Application 11/416,2812
Technology Center 3600
Before HUBERT C. LORIN, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
non-final rejection of claims 53—83. We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b).
We AFFIRM.
1 Our decision refers to the Appellant’s Appeal Brief (“Appeal Br.,” filed
May 27, 2014) and Reply Brief (“Reply Br.,” filed Nov. 24, 2014), and the
Examiner’s Final Office Action (“Final Act.,” mailed Dec. 24, 2013) and
Answer (“Ans.,” mailed Sept. 25, 2014).
2 According to Appellant, the real party in interest is Perigen Inc. (Appeal
Br. 3).
Appeal 2015-002166
Application 11/416,281
Introduction
Appellant’s disclosure relates “to the field of obstetrics, and more
specifically to a method and apparatus for monitoring labor progression and
for providing a user interface to display data conveying maternal and fetal
information during labor.” (Spec. 1,11. 7—9).
Claims 53, 68, and 83 are the independent claims on appeal. Claim
53, reproduced below, is illustrative of the subject matter on appeal:
53. A non-transitory computer readable storage medium
storing a program element suitable for execution by a
CPU, said program element displaying labour related
information, said program element when executing on
said CPU being adapted for:
a) receiving signals conveying labour progression
information associated with an obstetrics patient;
b) processing the signals at least in part to derive
measurements over time of a plurality of features related
to labour progression, a given feature in the plurality of
features being associated with a corresponding safety
limit;
c) processing measurements of the given feature to
determine if they exceed the corresponding safety limit;
d) displaying on a display module a first viewing
window conveying measurements over time of a first
feature related to labour progression;
e) displaying on the display module at least one
control allowing a user to provide an input to select an
additional viewing window from a set of possible
additional viewing windows, the set of possible
additional viewing windows including at least some
windows associated with features related to labour
progression, one viewing window in the set of possible
additional viewing windows conveying:
(i) measurements associated with the given
feature; and
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(ii) the corresponding safety limit associated
with the given feature;
f) receiving selection information conveying the
additional viewing window selected by the user using the
at least one control and using said selection information
to cause the display module to display the selected
additional viewing window concurrently with the first
viewing window so that labour related information being
displayed on the display module is customized at least in
part based on the input provided by the user, wherein the
selected additional viewing window:
i) conveys measurements over time of a
second feature related to labour progression; and
ii) is displayed in a substantially time aligned
manner with the first viewing window to allow the user
to view measurements of the first feature and
measurements of the second feature over concurrent time
periods;
g) in response to measurements of the given feature
exceeding the corresponding safety limit, displaying on
the display module information to attract the attention of
the user to the one viewing window in the set of possible
viewing windows conveying measurements of the given
feature.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and Appellant appeals, the following
rejections:
I. Claims 53—83 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.3
3 This rejection is set forth in the Answer pursuant to the procedures for a
new ground of rejection in the Answer.
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Application 11/416,281
II. Claims 53, 54, 68, 69, and 83 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Garfield
(US 2002/0193670 Al, pub. Dec. 19, 2002) and
Brummel (US 2002/0083075 Al, pub. June 27, 2002).
III. Claims 55—58, 62—64, 70-73, and 77—79 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over
Garfield, Brummel, and Marossero (US 2005/0267376
Al, pub. Dec. 1, 2005).
IV. Claims 59-61, 65—67, 74—76, and 80-82 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over
Garfield, Brummel, Marossero, and Hamilton (US
2004/0254430 Al, pub. Dec. 16, 2004).
ANALYSIS
Rejection I (Unpatentable subject matter)
In analyzing whether claimed subject matter is patent eligible, the
Court in Alice articulated the use of a two-step framework set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289
(2012):
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[wjhat else is there in the claims before us?” To answer that
question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application.
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Application 11/416,281
See Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014). See
also USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74,618, 74,621 (Dec. 16, 2014).
The Examiner determines that
The claims are drawn to an abstract idea, that abstract idea
being a basic concept of providing healthcare. The claims do
not amount to significantly more than the abstract idea itself
such as not being an improvement to the functioning of a
computer itself. Also, the computer related claims require no
more than a generic computer to perform generic computer
functions that are well-understood, routine and conventional
activities previously known to the industry
(Ans. 2-3).
Appellant argues that the Examiner has not stated the idea to which
the claims are directed with sufficient specificity and that the claims
are directed to specific solutions for alleviating the problem of
information overload during labour monitoring by processing
labour progression signals and inputs provided through a
displayed user control to limit the amount of information
presented to a user in a very specific way based on processing
results obtained.
(Reply Br. 4—5). We are unpersuaded by this argument. Even
characterizing the idea of the invention as argued by Appellant, i.e., limiting
the amount of information for display for monitoring labor, we conclude that
the idea of selecting what information to display is something that can be
performed with mental steps, and as such, is abstract. Appellant further
argues that the programming is complex so as to transform a computer into a
new machine, i.e.,
Contrary to what is being alleged by the Examiner, the
Appellant submits that the CPU (referred to in claims 53 to 67),
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Application 11/416,281
computing apparatus (referred to in claim 67 to 82) and
processing unit (referred to in claim 83) are programmed with
specific instructions that, when executed, create what is in
effect a new machine.
(Reply Br. 8). However, the Specification states that the fetal heart rate
sensors and uterine sensors are “well known in the art” (Spec. 8), that the
display of signals is according to “suitable known methods” (Spec. 31), and
that “[tjhose skilled in the art should further appreciate that the program
instructions may be written in a number of programming languages for use
with many computer architectures or operating systems” (Spec. 33). As
such, the Examiner’s finding that the claimed invention uses conventional
technology is supported by the Specification. Therefore, we agree with the
Examiner that the display of selected information is an abstract idea under
step one of Alice.
Under step two of Alice, we proceed to analyze the individual
recitations, taken individually or together, to see whether they transform the
claimed invention into patentable subject matter. However, we are not
persuaded that the claim would be transformed by the additional limitations
of “receiving signals,” “processing the signals,” “processing measurements,”
“displaying” and “receiving” additional information to be displayed at the
same time, and “displaying” information when a safety limit is exceeded.
Again, to the extent that information is selected or displayed at the same
time as other information, this would be an automation of mental steps
performed by a health care professional, which is part of the same abstract
idea, using conventional technology, as indicated by the Specification.
We, therefore, sustain the Examiner’s rejection under § 101 of claims
53-83.
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Rejections II—IV (Obviousness)
Independent claim 53 and its dependent claims
We are persuaded by Appellant’s argument that the prior art relied on
by the Examiner fails to disclose limitation (f) of independent claim 53, i.e.,
“wherein the selected additional viewing window: ii) is displayed in a
substantially time aligned manner with the first viewing window to allow the
user to view measurements of the first feature and measurements of the
second feature over concurrent time periods.” The Examiner finds that
Garfield does not explicitly disclose this limitation and relies instead on
paragraph 23 of Brummel (Final Act. 5; Ans. 19-20). Paragraph 23 of
Brummel discloses that the user may switch between opened activities but
does not disclose allowing the module “to display the selected additional
viewing window concurrently with the first viewing window,” as recited. In
other words, even if Brummel’s system keeps track of two sets of data
concurrently, there is insufficient disclosure of the display of the data
concurrently. To the extent that the claim recites display “in a substantially
time aligned manner,” the claim also recites “concurrent time periods,”
which requires more perfect overlap in the timeframe for display than
merely “substantially time aligned.”
The Examiner further relies on the disclosure in paragraph 23 of
Brummel that the viewing is customizable (see Ans. 20), but even construing
this limitation as a functional limitation, it is unclear at best whether the
display module of Brummel possesses the capability of concurrent display.
As such, we do not sustain the Examiner’s rejection of independent claim 53
and of claim 54, which depends therefrom.
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Claims 55—67 stands rejected under § 103 over Garfield, Brummel,
and Marossero, alone or further in view of Hamilton. However, the
Examiner does not rely on Marossero or Hamilton to remedy the deficiency
in the rejection of claim 53 over Garfield and Brummel. Therefore, we do
not sustain the Examiner’s rejection of claims 55—67 under § 103 over
Garfield, Brummel, and Marossero, alone or further in view of Hamilton.
Independent claims 68 and 83 and their dependent claims
Independent claims 68 and 83 contain similar language and
requirements as independent claim 53. Therefore, we do not sustain the
Examiner’s rejection under § 103 of independent claims 68 and 83, and their
dependent claims, for similar reasons as for independent claim 53.
DECISION
The Examiner’s decision to reject claims 53—83 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
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