Ex Parte Muesch et al

Patent Trial and Appeal Board

Oct 16, 2018

13876251 (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/876,251 03/27/2013 Guido Muesch
24737 7590 10/18/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
201 OP00858WOUS 8379
EXAMINER
WESTON, TIFFANYC
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
10/18/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUIDO MUESCH, ROBERT PINTER,
and LENA GOURMELON
Appeal2017-007834
Application 13/876,251 1
Technology Center 3700
Before MICHAEL J. FITZPATRICK, ULRIKE W. JENKS,
and ELIZABETH A. LA VIER, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1-3, 5, 7-12, and 14--25. We have
jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth below, we
AFFIRM.
BACKGROUND
The Specification relates to a method and apparatus for collecting
information from an awake patient, for use in diagnosing obstructive sleep
apnea. Spec. 1 :3--4.
1 Appellants state the real party in interest is Koninklijke Philips Electronics
N.V. Appeal Br. 2.
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Application 13/876,251
Claim 1 is illustrative, and recites:
1. An apparatus for determining one or more parameters for
use in diagnosing the presence of obstructive sleep apnea in a
patient while the patient is awake, the apparatus comprising:
a processor configured to: (i) receive signals representing
measurements of a patient's breathing obtained during a
plurality of breathing cycles by the patient, (ii) convert the
signals into the frequency domain to generate frequency-
domain converted signals, and (iii) determine a value for at
least one parameter based on an analysis of the frequency-
domain converted signals in one or more frequency bands
covering frequencies below 100 Hz,
wherein the processor is configured to do at least one of (i)
determine a value for a first parameter by comparing the
frequency-domain converted signals in a first frequency band
during exhalation to the frequency-domain converted signals in
a second frequency band during exhalation, (ii) determine a
value for a second parameter by comparing the frequency-
domain converted signals in a third frequency band during
inhalation to the frequency-domain converted signals in the
third frequency band during exhalation, and (iii) determine a
value for a third parameter by comparing the frequency-domain
converted signals in a fourth frequency band during an
inhalation or exhalation to a noise level above a frequency
threshold during the inhalation or exhalation, wherein the first
frequency band, the second frequency band, and the third
frequency band all cover only frequencies below 100 Hz.
Appeal Br. 14 (Claims Appendix).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1-3, 5, 7-12, and 14--25 stand rejected under 35 U.S.C.
§ 101. Ans. 2.
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Application 13/876,251
2. Claims 1-3, 5, 7-12, and 14--25 stand rejected under 35 U.S.C.
§ 112(a), as failing to comply with the enablement requirement.
Ans. 2.
DISCUSSION
A. Rejection 1: § 101
"Laws of nature, natural phenomena, and abstract ideas are not
patentable." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1293 (2012) (citation omitted). The Supreme Court articulated a
two-step test for patent eligibility under § 101 that "distinguish[ es] patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice Corp. Pty.
Ltd. v. CLS Bank Int'!, 134 S.Ct. 2347, 2355 (2014) (citing Mayo, 132 S.Ct.
at 1296-97). "First," Alice instructs a tribunal to "determine whether the
claims at issue are directed to one of those patent-ineligible concepts." Id.
( citation and quotations omitted). If the claims are directed to a patent
ineligible concept then the court must proceed to the second step of the
test-the "search for an inventive concept-i.e., an element or combination
of elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the ineligible concept itself." Id.
( quotations and alterations omitted).
1. Step One
Beginning with Step 1 of the Alice inquiry, the Examiner finds that
the appealed claims "are directed to determining one or more parameters
related to respiratory signals, similar to the abstract idea of organization of
information through mathematical correlations." Final Action 5.
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Appellants contend that the claims are not mere abstractions, insofar
as they "are directed to a newly developed, novel and tangible system and
method for diagnosing the presence of obstructive sleep apnea in a patient."
Appeal Br. 7. We are not persuaded. Novelty2 "does not avoid the problem
of abstractness." Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016); see also Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) ("Eligibility
and novelty are separate inquiries."). The apparatus of claim 1 comprises a
generic processor, configured to receive, convert, and analyze signals. See
Appeal Br. 14 (Claims Appendix). Claims reciting general-purpose
computer components do not confer patent eligibility on an abstract idea.
See Alice, 134 S. Ct. at 2360 ("Because petitioner's system and media claims
add nothing of substance to the underlying abstract idea, we hold that they
too are patent ineligible under § 101. "). The method of claim 12 does not
recite a processor, but similarly pertains to the abstract ideas of obtaining,
converting, and analyzing signals. See Appeal Br. 16-17 (Claims
Appendix); see also Appeal Br. 8 (noting that claim 12 includes "similar
limitations" as claim 1 ).
2. Step Two
The Step 2 inquiry of Alice considers whether there is something
"significantly more" than the abstract idea, or in other words, an "inventive
concept" embodied by the claim. The Examiner finds that "[ t ]he claims do
2 The Examiner acknowledges that "claims 1-3, 5, 7-12, and 14--25 include
subject matter that is not taught by the prior art. The prior art of record does
not teach use of only frequency ranges below 100 Hz in the determination of
sleep apnea." Final Action 7.
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Application 13/876,251
not include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional element of a
processor is no more than a generic processor performing generic computer
functions, such as receiving signals and performing comparisons, which are
well-understood, routine and conventional in the art." Final Action 5.
Appellants' arguments (see Appeal Br. 8-10; see also Reply Br. 2--4)
do not persuade us otherwise. The "example" Appellants give to show that
claims 1 and 12 are directed to something significantly more than an abstract
idea is simply to quote almost the entirety of claim 1. Appeal Br. 8; see also
Reply Br. 2-3 (same). More specifically, Appellants maintain that they are
"not trying to preempt any implementation of the abstract idea" but rather
are "trying to protect a particular implementation" that features comparison
that were "not well-understood, routine, or conventional in the art." Id. at 8-
9. Appellants also assert that the preambles of claims 1 and 12, as well as
the additional limitations of claims 2 and 3, demonstrate that the claims are
directed to practical applications, i.e., to the diagnosis of obstructive sleep
apnea. See Reply Br. 3--4.
We agree with the Examiner that whatever improvement3 to which the
claims are directed "is purely in the abstract idea itself and not the practical
application of that idea" (Ans. 4). This does not confer patentability to the
claims. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332
3 The Examiner further notes that it is not clear the claimed invention is an
improvement over the prior art so much as an alternative means for diagnosis.
See Ans. 4. Appellants insist otherwise (see Reply Br. 4), but do not explain
why the exclusive use of frequency ranges below 100 Hz to generate
comparisons used to diagnose obstructive sleep apnea is better than prior art
methods.
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(Fed. Cir. 2015) ("[T]he prohibition on patenting an ineligible concept
cannot be circumvented by limiting the use of an ineligible concept to a
particular technological environment."); see also Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015) ("For process claims
that encompass natural phenomenon, the process steps are the additional
features that must be new and useful." (citing Parker v. Flook, 437 U.S. 584,
591 (1978) ("The process itself, not merely the mathematical algorithm,
must be new and useful."))). Further, even if it were the case that the claims
would not preempt all applications of the abstract idea, "the absence of
complete preemption does not demonstrate patent eligibility" of a claim.
Ariosa, 788 F.3d at 1379.
Appellants point out that certain dependent claims (9, 10, 21, and 22),
which recite the use of flow rate and/or sound sensors, are patent eligible by
virtue of being tied to a particular machine or apparatus under the machine-
or-transformation test. 4 See Appeal Br. 9. But as with generic computer
components, "recited physical components [that] behave exactly as expected
according to their ordinary use" cannot confer patent eligibility on an
otherwise ineligible claim. In re TL! Commc 'ns LLC Patent Litig., 823 F.3d
607, 615 (Fed. Cir. 2016). Put differently, such physical components
4 As Appellants acknowledge (see Appeal Br. 9), the machine-or-
transformation test is simply a "useful clue" in the second part of the Alice
analysis, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014).
It is not a safe harbor. See DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d
1245, 1255-56 (Fed. Cir. 2014) ("[S]atisfying the machine-or-transformation
test, by itself, is not sufficient to render a claim patent-eligible, as not all
transformations or machine implementations infuse an otherwise ineligible
claim with an "inventive concept.").
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"simply provide[] the environment in which the abstract idea ... is carried
out." Id. at 614. Here, we discern no indication in the Specification that the
sensors themselves are used in an unconventional way (for example, there is
no suggestion that the sensors must be modified or arranged
unconventionally to detect signals below 100 Hz), and Appellants make no
such argument. 5 Accordingly, the claims "are not tied to any particular
novel machine or apparatus," Ultramercial, 772 F .3d at 716, that might
rescue these dependent claims ( or any others) from the realm of abstraction.
For these reasons and those already of record, we affirm the
Examiner's rejection of claims 1-3, 5, 7-12, and 14--25 under§ 101.
5 For further discussion of sensors and abstract ideas (albeit applied to Alice
step one), consider the Federal Circuit's discussion in Thales Visionics:
The claims specify a particular configuration of inertial sensors
and a particular method of using the raw data from the sensors
in order to more accurately calculate the position and
orientation of an object on a moving platform. The
mathematical equations are a consequence of the arrangement
of the sensors and the unconventional choice of reference frame
in order to calculate position and orientation. Far from
claiming the equations themselves, the claims seek to protect
only the application of physics to the unconventional
configuration of sensors as disclosed. As such, these claims are
not directed to an abstract idea and thus the claims survive Alice
step one.
Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017).
In contrast to Thales Visionics, the present claims employ sensors for their
ordinary purpose, in ordinary way. See Ans. 4 ("[T]he improvement is purely
in the abstract idea itself and not the practical application of that idea.").
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B. Rejection 2: § l l 2(a)
As discussed above, independent claims 1 and 12 recite the
determination of parameters based on signals from bands of "frequencies
below 100 Hz" in the diagnosis of obstructive sleep apnea. Appeal Br. 14
(Claims Appendix) (claim 1); id. at 16-17 (claim 12). The Examiner finds
that, "[ a ]t most, the specification may provide enablement for the use of the
exhalation frequency ranges of 30-40 Hz and 18-22 Hz," but not the
broader claimed range. Final Action 3--4. According to the Examiner, the
Specification lacks sufficient detail to allow the ordinarily skilled artisan to
make and use the invention (see id. at 3), in part because the data in the
Specification relate only to an exhalation frequency spectrum signal; no data
are given "related to inhalation and its ranges" (id. at 4 ( discussing Figures
5A and 5B)).
"[W]hen a range is claimed, there must be reasonable enablement of
the scope of the range." AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234,
1244 (Fed. Cir. 2003). We are satisfied that the Specification meets this
standard in regard to the use of frequencies below 100 Hz. We need not
decide whether the data presented in Figures 5A and 5B are sufficient to
enable the entire claimed range, because the disclosure at pages 10-12 of the
Specification gives further direction regarding the selection of frequency
bands. While the 18-22 Hz and 30-40 Hz frequency bands are noted as
particular examples, the Specification generally discusses obstructive sleep
apnea-related changes in "certain frequency ranges or bands below lOOHz"
(Spec. 10: 17), and 100 Hz is suggested as a threshold frequency for
separating useful signals from noise, for signals derived from inhalation or
exhalation (see id. at 12:3-5). The Specification also teaches that the
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difference between mean exhalation frequency amplitude in a given
frequency band, and the mean inhalation frequency amplitude in the same or
a similar band, can be a useful parameter in diagnosing obstructive sleep
apnea. See id. at 11: 18-28. While the examples given for use in
determining the exhalation-inhalation difference set the frequencies no
higher than 20 Hz (see id.), the general teachings regarding the changes in
frequency bands below 100 Hz seen in patients with obstructive sleep apnea
(see id. at 10: 16-17) provide sufficient additional guidance to allow one of
ordinary skill in the art to make and use the claimed invention, without
undue experimentation, using frequencies below 100 Hz.
Accordingly, we reverse the rejection of claims 1-3, 5, 7-12, and 14--
25 under§ 112(a).
Rejection 1 is affirmed.
Rejection 2 is reversed.
CONCLUSION
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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