Ex Parte Milne et al

Patent Trial and Appeal Board

Feb 28, 2019

13544462 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/544,462 07/09/2012
94654 7590 03/04/2019
Covidien LP / Merchant Gould
ATTN: IP Legal
6135 Gunbarrel Avenue
BOULDER, CO 80301
FIRST NAMED INVENTOR
Gary Milne
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.
H-RM-02634US/0191US01 1453
EXAMINER
AGAHI,PUYA
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
rs. patents.one@medtronic.com
JBorrego@MerchantGould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY MILNE and DAVID HYDE
Appeal 2018-003471
Application 13/544,462
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gary Milne and David Hyde ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-18. See Appeal
Br. 1. Claims 19-22 have been withdrawn. See id. at 65---66 (Claims App.).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
According to Appellants, "[ t ]he real party in interest is ... the
assignee of record, which is a subsidiary of Covidien LP." Appeal Br. 2.
USPTO records indicate that Covidien LP is the assignee of record, and thus
is the real party in interest.
Appeal2018-003471
Application 13/544,462
CLAIMED SUBJECT MATTER
Appellants' disclosed invention relates generally to ventilator systems,
and, more particularly, to "systems and methods for determining and
displaying ineffective patient inspiratory or expiratory efforts or missed
breaths in a manner easily deciphered by a clinician." Spec., p. 2, 11. 15-17.
Claims 1, 8, 13, 17, and 18 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method implemented by a ventilator for determining
missed breaths, the method comprising:
ventilating a patient with the ventilator, wherein the
ventilator includes a pneumatic system and at least one sensor;
monitoring respiratory data of the patient with the at least
one sensor;
analyzing the respiratory data with a background trigger
detection application and an active trigger detection application,
wherein the background trigger detection application and the
active trigger detection application are different and running at
the same time;
detecting a first patient inspiratory effort with the active
trigger application;
detecting a second patient inspiratory effort with the
background trigger application;
comparing a first timing of the first patient inspiratory
effort to a second timing of the second patient inspiratory
effort;
determining a timing difference between the first patient
inspiratory effort and the second inspiratory effort;
comparing the timing difference to a time delay
threshold;
determining that the timing difference does not meet the
time delay threshold to form a missed breath determination;
2
Appeal2018-003471
Application 13/544,462
calculating a missed breaths metric based on the missed
breath determination;
displaying a missed breath indicator based on the missed
breaths metric; and
delivering inspiratory gas to the patient with the
ventilator based on patient inspiratory efforts detected by the
active trigger detection application and not based on the patient
inspiratory efforts detected by the background trigger detection
application.
REJECTION
The following rejection is before us for review: Claims 1-18 stand
rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter. Final Act. 2--4.
PRINCIPLES OF LAW
The Supreme Court has 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." Alice
Corp. v. CLS Bankint'l, 573 U.S. 208,217 (2014) (emphasis added) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72
(2012)). Under that framework, we first "determine whether the claims at
issue are directed to one of those patent-ineligible concepts"-i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. ( citing Mayo, 566
U.S. at 77).
The Federal Circuit has instructed that "[t]he 'directed to' inquiry ...
[does not] simply ask whether the claims involve [or encompass] a patent-
ineligible concept, because essentially every routinely patent-eligible claim
3
Appeal2018-003471
Application 13/544,462
involving physical products and actions involves a law of nature and/or
natural phenomenon." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). Rather, "the 'directed to' inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether 'their
character as a whole is directed to excluded subject matter."' Id. (citing
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015)).
It is only after the claims have been determined to be "directed to" a
patent-ineligible concept that we secondly "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." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 77).
The USPTO recently published revised guidance on the application of
§ 101. See USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (the
"2019 Revised Guidance"). Under the 2019 Revised Guidance, we first look
to whether the claim recites:
(1) any judicial exception, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
See 2019 Revised Guidance.
4
Appeal2018-003471
Application 13/544,462
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:
See id.
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional activity" in the field (see
MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activity
previously known to the industry, specified at a high level of
generality, to the judicial exception.
ANALYSIS
The Examiner rejected independent claims 1, 8, 13, 17, and 18 under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more, asserting that the claims "describe the concept of
applying mathematical operations, which corresponds to concepts identified
as abstract ideas by the courts." Final Act. 3 (underlining omitted).
According to the Examiner, the claims recite limitations that
pertain to performing mathematical calculations in which the
result is "displaying a missed breath indicator based on the
missed breaths metric", i.e.[,] the inventive concept. ... [T]he
claimed invention recites an abstract idea without significantly
more for the same reasons set forth in Electric Power Group[,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)], which held
that collecting information, analyzing it, and displaying certain
results of the collection and analysis is an abstract idea without
significantly more.
Ans. 3 (boldface omitted).
5
Appeal2018-003471
Application 13/544,462
Appellants argue that "[ c ]laim 1 is not an abstract idea and is
significantly more than the application of mathematical operations." Appeal
Br. 34. In particular, Appellants assert that
claim 1 requires that a ventilator with a pneumatic system and at
least one sensor monitor respiratory data and based on this data
detect patient inspiratory efforts, deliver ventilation, determine
that a missed breath occurred, and display the detected missed
breath. While some addition or subtraction and a numerical
comparison may be utilized to determine if a missed breath
occurred, the claim does not prevent others from using these
mathematical calculations. In contrast, claim 1 applies these
mathematical calculations in a very specific way to solve a
unique problem that occurs in mechanical ventilator. As such,
claim 1 is not merely directed to a mathematical relationship and
is not an abstract idea.
Id. at 3 5. Appellants present similar arguments with respect to independent
claims 8, 13, 17, and 18. See id. at 39--58.
Upon review of the record before us, the independent claims recite
monitoring and analyzing patient respiratory data with active and
background trigger detection applications to detect first and second patient
inspiratory efforts. See Appeal Br. 59, 61---65 (Claims App.). A missed
breath determination is made using a calculated timing difference between
the first and second patient inspiratory efforts, and a missed breath indicator
is displayed. See id. We agree with the Examiner that such limitations
pertain to mathematical calculations. See Final Act. 3; Ans. 3. Our
reviewing court has identified such mathematical concepts as representing
abstract ideas. See 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);
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350
6
Appeal2018-003471
Application 13/544,462
(Fed. Cir. 2014) (holding that claims to a "process of organizing information
through mathematical correlations" are directed to an abstract idea). We
also appreciate that the claims recite limitations that involve data gathering,
mathematical analysis, and the display of results, which our reviewing court
has identified as an abstract idea. See Ans. 3; Elec. Power Grp., LLC, 830
F.3d at 1353-54 (discussing how "collecting information" and "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more" are abstract ideas).
Nevertheless, the present claims also expressly recite ventilating a
patient by a ventilator having a pneumatic system and a sensor, and the
ventilator delivering inspiratory gas to a patient based on detected
inspiratory efforts. See Appeal Br. 59, 61---65 (Claims App.). This is not
merely an abstraction; rather, as Appellants explain, the present claims
"recite[] a mechanical device (a ventilator for delivering ventilation) that
utilizes some mathematical calculations to determine if a missed breath
occurred." Id. at 35. In other words, although the claims recite limitations
involving abstract concepts of data collection, analysis using mathematical
operations, and the display of results, the claims also specifically recite a
concrete implementation of these concepts with a ventilator system to
deliver inspiratory gas to a patient. In this regard, Appellants persuasively
assert that the implementation of the recited concepts provides a specific
technical improvement over prior art ventilator systems. See id.; Reply
Br. 4--5.
As to the initial abstract idea determination here, and critical to our
resolution of the issue before us for review, we agree with Appellants'
argument that the claims are "not merely directed to a mathematical
7
Appeal2018-003471
Application 13/544,462
relationship and [are] not an abstract idea." Appeal Br. 35. Thus, even
though the claims may involve concepts representing abstract ideas, the
rejection presented fails the initial threshold step of explaining why the
claims, as a whole, are "directed to" nothing more than an abstract idea
itself. In other words, looking to the language set forth in the 2019 Revised
Guidance, although the claims recite a judicial exception (here, an abstract
idea), the claims as a whole recite additional elements that integrate the
recited abstract idea into a practical application, such that the claims are not
simply "directed to" the recited judicial exception itself. See 2019 Revised
Guidance.
In light of the above, we do not sustain the Examiner's rejection of
independent claims 1, 8, 13, 17, and 18, or their dependent claims 2-7, 9-12,
and 14--16, under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-18 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
REVERSED
8