Ex Parte Kelly

Board of Patent Appeals and Interferences

Mar 25, 2010

10687230 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CRAIG A. KELLY
____________________

Appeal 2009-007489
Application 10/687,230
Technology Center 3700
____________________

Decided: March 25, 2010
____________________

Before LINDA E. HORNER, JENNIFER D. BAHR and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant appeals under 35 U.S.C. § 134 (2002) from the 1
Examiner’s decision finally rejecting claims 1-47 under 35 U.S.C. § 103(a) 2
as being unpatentable over Meyer (US 6,308,098 B1, issued Oct. 23, 2001) 3
and Sun (US 6,811,536 B2, issued Nov. 2, 2004). We have jurisdiction 4
under 35 U.S.C. § 6(b) (2002). 5
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Dismissal of the Appeal as to Claims 24-47 1
The Examiner has entered a new ground of rejection in the 2
Examiner’s Answer against claims 24-47 under § 101 as being directed to 3
nonstatutory subject matter. (Ans. 3.) The Examiner properly gave notice 4
of the new ground of rejection. (Id.; Ans. 9-10.) The Technology Center 5
Director approved the new ground of rejection. (Ans. 10.) As the Answer 6
indicates (Ans. 9-10), the Appellant was required to respond to the new 7
ground within two months in either of two ways: 1) reopen prosecution, see 8
37 CFR § 41.39(b)(1); or 2) maintain the appeal by filing a reply brief as set 9
forth in 37 CFR 41.41, see 37 CFR § 41.39(b)(2), “to avoid sua sponte 10
dismissal of the appeal as to the claims subject to the new ground of 11
rejection.” (Ans. 9.) See also 37 CFR § 41.39(b). According to the record 12
before us, the Appellant does not appear to have exercised either option. 13
Accordingly, we DISMISS the appeal as to the claims subject to the 14
new ground of rejection under § 101, namely, claims 24-47. Given that the 15
appeal stands dismissed as to claims 24-47, the sole ground of rejection 16
before us for review is the rejection of claims 1-23 under § 103(a) as being 17
unpatentable over Meyer and Sun. 18
We do not sustain the rejection of claims 1-23. Pursuant to 37 C.F.R. 19
§ 41.50(b), we enter a NEW GROUND OF REJECTION against claims 1 20
and 23 under 35 U.S.C. § 101 as being directed to non-statutory subject 21
matter. 22
23
Reversal of Rejections of Claims 1-23 under § 103(a) 24
Claims 1, 2, 12, 13 and 23 are independent. 25
Claim 1 recites: 26
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1. A non-invasive health monitor device comprising: 1
a processor; 2
a processor readable storage medium; 3
code recorded in the processor readable 4
storage medium to create a first array of data based 5
on discretely recorded time events in which each 6
element of the first array is representative of a time 7
when an event took place; 8
code recorded in the processor readable 9
storage medium to create a second array of data in 10
which each element of the second array is an 11
interval representative of the difference between 12
successive elements of the first array; 13
code recorded in the processor readable 14
storage medium to create a third array of data in 15
which each element of the third array is a delta 16
interval representative of the difference between 17
successive elements of the second array; 18
code recorded in the processor readable 19
storage medium to perform a fast fourier transform 20
(FFT) to obtain power spectrum data 21
representative of the third array; and 22
23
code recorded in the processor readable 24
storage medium to integrate the power spectrum 25
data over frequency ranges of interest to obtain 26
discrete power values for said frequency ranges of 27
interest. 28
29
Claim 23 differs from claim 1 only in that each element of the third 30
array of data is a delta interval representative of the difference between non-31
successive rather than successive elements of the second array. 32
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Claims 2, 12 and 13 each claim non-invasive health monitor devices. 1
The device of claim 2 includes “code recorded in the processor readable 2
storage medium to create a delta heart period interval array in which each 3
element is a delta heart period interval representative of the difference 4
between successive elements of [a] heart period interval array.” The device 5
of claim 12 includes “code recorded in the processor readable storage 6
medium to create a delta respiration period interval array in which each 7
element is a delta respiration period interval representative of the difference 8
between successive elements of [a] respiration period interval array.” The 9
device of claim 13 includes “code recorded in the processor readable storage 10
medium to create a delta ventricular systole interval array in which each 11
element is a delta ventricular systole interval representative of the difference 12
between successive elements of [a] ventricular systole interval array.” 13
The Examiner provides no clear statement of findings as to the 14
differences between the claimed subject matter and the prior art, namely, the 15
disclosure of the primary reference Meyer. (See Ans. 4-5; Final Office 16
Action mailed Sep. 18, 2007 at 3-5; see also Ans. 8.) The Examiner fails to 17
articulate any reasoning to explain how the combined teachings of Meyer 18
and Sun would have provided one of ordinary skill in the art reason to 19
modify the disclosure of Meyer to provide code to create a “third array of 20
data” as recited in claims 1 and 23; a “delta heart period interval array” of 21
claim 2; a “delta respiration period interval array” as recited in claim 12; or a 22
“delta ventricular systole interval array” as recited in claim 13. (See id.) 23
This omission implies that the Examiner finds that Meyer discloses these 24
limitations. 25
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The Appellant argues that the “differential analysis step is not an 1
established process or recognized as valuable in analysis of heart rate 2
variability in the prior art . . . Applicant submits that the differential analysis 3
processing step, as recited in all independent claims, is novel and a 4
significant contribution to the measurement and interpretation of heart rate 5
variability.” (Br. 10.) The thrust of this argument is that the combined 6
teachings of Meyer and Sun would have provided one of ordinary skill in the 7
art no reason to program a processor to create the “third array of data” of 8
claims 1 and 23; the “delta heart period interval array” of claim 2; the “delta 9
respiration period interval array” of claim 12; or the “delta ventricular 10
systole array” of claim 13. 11
The Examiner does not identify where Meyer discloses code to create 12
any of these arrays. No such disclosure is evident. 13
Meyer discloses a cardiac pacemaker 100 with the capacity to detect 14
whether a patient is standing or reclining using the morphology of an 15
intracardial physiological sensor signal such as a signal representative of 16
intracardial impedance. (Meyer, col. 2, ll. 6-14.) More specifically, 17
Meyer’s pacemaker 100 includes an impedance signal input stage 101, an 18
analog-to-digital converter 105, an impedance signal memory unit 106, a 19
calibration unit 107 and an arithmetic stage 108. The elements cooperate to 20
calculate discrete values representing the slopes of an intracardial impedance 21
curve at various time intervals. (Meyer, col. 3, ll. 38-63.) Meyer discloses 22
that: 23
A long-term slope memory 118, in which 24
(again according to the [“first in-first out”] 25
principle) the slope values from a large number of 26
impedance measurements are stored, is also 27
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connected to the output of the arithmetic stage 108. 1
A fluctuation curve determination stage 119, in 2
which the curve of the time variability of their 3
fluctuations is determined for all currently stored 4
slope signals, is connected to this. A frequency 5
analyzer 120 for determination of the spectral 6
power density of the fluctuation curve using a 7
linear model of the so-called autoregressive 8
spectral analysis (ARSA) stored in a frequency 9
analysis program memory 121 is connected 10
downstream from this. An integrator stage 122 for 11
integration of the frequency components within the 12
two permanently programmed ranges of 0.05 to 13
0.15 Hz (“LF”) and 0.15 to 0.4 Hz (“HF”) is 14
connected to the output of the frequency analyzer 15
120. 16
(Meyer, col. 4, ll. 28-43.) 17
Although the Examiner paraphrases this passage from Meyer in the 18
statement of the grounds of rejection, the Examiner fails to identify how this 19
passage discloses code to create a “third array of data” as recited in claims 1 20
and 23; a “delta heart period interval array” as recited in claim 2; a “delta 21
respiration period interval array” as recited in claim 12; or a “delta 22
ventricular systole interval array” as recited in claim 13. (See Ans. 4-5; 23
Final Office Action mailed Sep. 18, 2007 at 3-5; see also Ans. 8.) In 24
particular, the Examiner fails to provide reasoning to explain why Meyer’s 25
description of “a fluctuation curve determination stage 119, in which the 26
curve of the time variability of their fluctuations is determined for all 27
currently stored slope signals, is connected to” the long-term slope memory 28
118 necessarily discloses these limitations. (See id.) 29
Meyer’s statement of the “Objects and Summary of the Invention” 30
describes a process for determining whether a patient is standing or reclining 31
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which does not include a differential analysis or the creation of a delta 1
interval array analogous to the “third array of data” of claims 1 and 23; the 2
“delta heart period interval array” of claim 2; the “delta respiration period 3
interval array” of claim 12; or the “delta ventricular systole interval array” of 4
claim 13. (See Meyer, col. 2, ll. 35-58.) Meyer’s failure to disclose either a 5
differential analysis or the creation of a delta interval array in the “Objects 6
and Summary of the Invention” indicates that no such disclosure was 7
intended in Meyer’s “Detailed Description of the Invention.” 8
Sun does not remedy the deficiencies of Meyer. Sun teaches 9
determining a heart rate representative of the reciprocals of the time intervals 10
between the peaks of signals of measured blood pressure or 11
electrocardiography. (Sun, col. 3, ll. 61-64.) Sun further teaches converting 12
the heart rate to a power spectrum by use of a fourier transform method; 13
separating the power spectrum into high frequency, low frequency and very 14
low frequency variability ranges; and integrating the portion of the power 15
spectrum within each frequency range. (Sun, col. 3, l. 64 – col. 4, l. 4.) Sun 16
fails to disclose creating any array which might correspond to the “third 17
array of data” of claims 1 and 23; the “delta heart period interval array” of 18
claim 2; the “delta respiration period interval array” of claim 12; or the 19
“delta ventricular systole interval array” of claim 13. 20
The Examiner has not shown code to create an array corresponding to 21
the “third array of data” of claims 1 and 23; the “delta heart period interval 22
array” of claim 2; the “delta respiration period interval array” of claim 12; or 23
the “delta ventricular systole interval array” of claim 13. The Examiner has 24
not articulated any reasoning which might suggest why one of ordinary skill 25
in the art familiar with the combined teachings of Meyer and Sun might have 26
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reason to modify Meyer’s pacemaker 100 to include these limitations of 1
claims 1, 2, 12, 13 and 23. We do not sustain the rejections of claims 1, 2, 2
12, 13 and 23 under § 103(a) as being unpatentable over Meyer and Sun. 3
Neither do we sustain the rejections of dependent claims 3-11 and 14-22 4
under § 103(a). 5
6
New Ground of Rejection of Claims 1 and 23 under § 101 7
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection 8
of claims 1 and 23 under § 101 as being directed to non-statutory subject 9
matter. 10
Subsequent to the mailing of the Examiner’s Answer, the Board 11
clarified the scope of statutory subject matter relating to claims reciting 12
machines. A claim to a machine reciting a mathematical algorithm fails to 13
recite statutory subject matter if the claim is not limited to a tangible 14
practical application, in which the mathematical algorithm is applied, that 15
results in a real-world use and not a mere field-of-use label having no 16
significance. Ex Parte Gutta, 93 USPQ2d 1025, 1028 (BPAI 2009). 17
Claims 1 and 23 recite machines. Each recites a “non-invasive health 18
monitor device” including at least a processor and a processor readable 19
storage medium. 20
Claims 1 and 23 each recite a mathematical algorithm. Indeed, claims 21
1 and 23 recite no more than the processor, the processor readable storage 22
medium and code for instructing the processor how to perform a 23
mathematical algorithm. 24
Claims 1 and 23 are not limited to tangible practical applications. 25
Each recites code to create a first array of data based on discretely recorded 26
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time events. Neither claim 1 nor claim 23 limits the manner in which the 1
“data” is obtained. Although both claims require that the “time events” be 2
“discretely record[ed],” neither limits the nature of the “time events” or 3
requires that the time events represent physical events. Each claim also 4
recites code for carrying out four other steps based solely on the first array 5
of data. Nothing recited in claim 1 or claim 23 limits the use of the 6
algorithm to data representing physical objects or real-world process 7
parameters. 8
Claims 1 and 23 do not require that the performance of the algorithm 9
result in a real-world use. The sole result of the algorithm which the code 10
instructs the processor to perform is “discrete power values for . . . 11
frequency ranges of interest.” The discrete power values are not limited to 12
representations of physical objects or real-world process parameters because 13
the power values are derived from “discretely recorded time events” which 14
themselves need not represent physical objects or real-world process 15
parameters. Neither claim requires that any process step be performed in 16
dependence on the magnitude of the discrete power values. 17
Although the preambles of claims 1 and 23 each recite a “non-18
invasive health monitor device,” this recitation merely identifies an intended 19
use of the claimed device rather than a structural limitation. Neither the 20
body of claim 1 nor the body of claim 23 recites any structure specific to 21
non-invasive health monitoring. Neither claim recites a limitation in the 22
body which relies on the preamble for antecedent basis. Considering the 23
claim language as a whole, the recitation of a “non-invasive health monitor 24
device” in the preamble of each claim merely states a purpose or intended 25
use for the claim and does not positively limit either claim. See Pitney 26
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Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1
1999)(discussing circumstances in which preamble recitation do, or do not, 2
limit a claim). Hence, the preamble recitations of claims 1 and 23 are mere 3
field-of-use labels having no significance in limiting claims 1 and 23 to 4
statutory subject matter. 5
Considering the scope of claim 1 and of claim 23 as a whole, neither 6
claim is directed to statutory subject matter. 7
8
DECISION 9
We DISMISS the appeal as to the claims subject to the Examiner’s 10
new ground of rejection under § 101, namely, claims 24-47. 11
Upon return of the application to the Examiner, the Examiner should: 12
(1) cancel claims 24-47; and 13
(2) notify the Appellant that the appeal as to the claims 14
subject to the new ground of rejection under § 101 is dismissed 15
and that claims 24-47 are cancelled. 16
See MANUAL OF PATENT EXAMINING PROCEDURE § 1207.03, 8th ed., Rev. 7, 17
Jul. 2008. 18
We REVERSE the decision of the Examiner rejecting claims 1-23. 19
Pursuant to 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF 20
REJECTION of claims 1 and 23 under 35 U.S.C. § 101 as being directed to 21
non-statutory subject matter. 22
Under 37 C.F.R. § 41.50(b) a new ground of rejection has been 23
entered. 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection 24
pursuant to this paragraph shall not be considered final for judicial review.” 25
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Regarding the new ground of rejection, Appellant must, WITHIN 1
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of the 2
following options with respect to the new ground of rejection, in order to 3
avoid termination of the appeal as to the rejected claims: 4
(1) Reopen prosecution. Submit an appropriate 5
amendment of the claims so rejected or new 6
evidence relating to the claims so rejected, or both, 7
and have the matter reconsidered by the examiner, 8
in which event the proceeding will be remanded to 9
the examiner . . . 10
11
(2) Request rehearing. Request that the 12
proceeding be reheard under § 41.52 by the Board 13
upon the same record . . . 14
15
No time period for taking any subsequent action in connection with 16
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 17
18
REVERSED; 37 C.F.R. § 41.50(b) 19
20
Klh 21
22
FRANCIS A. COOCH, OFFICE OF 23
PATENT COUNSEL 24
THE JOHN HOPKINS UNIVERSITY 25
APPLIED PHYSICS LABORATORY 26
11100 JOHN HOPKINS ROAD 27
LAUREL, MD 20723-6099 28