Ex Parte Osorio

Patent Trial and Appeal Board

Aug 9, 2018

13333235 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/333,235 12/21/2011
106328 7590
Stephen Eisenmann
230 Shores Drive
Vero Beach, FL 32963
08/09/2018
FIRST NAMED INVENTOR
Ivan Osorio
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.
1000.211CIP
(2113.012400)
CONFIRMATION NO.
2147
EXAMINER
CATINA, MICHAEL ANTHONY
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
08/09/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IV AN OSORIO
Appeal2017-007576
Application 13/333,235
Technology Center 3700
Before MICHAEL J. FITZPATRICK, ULRIKE W. JENKS, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Ivan Osorio ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision finally rejecting claims 1-9, 11-13, and 22-27. 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
According to Appellant, the claimed invention "relates generally to
medical device systems and, more particularly, to medical device systems
and methods capable of assessing and managing extreme events related to
1 The real party in interest is Flint Hills Scientific, LLC. See App. Br. 2.
2 Appellant canceled claim 10 and withdrew claims 14--21 from
consideration. Final Act. 1 (Office Action Summary); App. Br. 32-35.
Appeal2017-007576
Application 13/333,235
seizures, e.g., seizures resulting from epilepsy." Spec. 1:8-10. An
embodiment of the invention is described as follows:
a non-transitive, computer readable program
storage device encoded with instructions that,
when executed by a computer, performs a method
for identifying an extreme seizure event in a
patient, is provided. The method includes
identifying at least two seizure events; determining
at least one inter-seizure interval (ISI) value
related to the at least two seizure events;
comparing the determined at least one ISI value to
at least one reference value; and identifying an
occurrence of an extreme seizure event, based
upon the comparison of the determined ISI value
to the at least one reference value.
Spec. 4: 13-20.
Of the pending and finally rejected claims, claims 1 and 22, are
independent. App. Br. 28, 35-36. 3 Claim 1 is representative and reads as
follows:
1. A non-transitive computer readable program
storage device encoded with instructions that, when executed
by a computer performs a method for identifying an extreme
seizure event in a patient, comprising:
collecting body data from the patient using at least one of
an electrical sensor, a chemical sensor, an optical sensor, a
biophotonic sensor, an acoustic sensor, a thermal sensor, a
pressure sensor, a bioassay device, an imaging device, or a
motion sensor;
identifying at least two seizure events from said collected
body data;
3 The Appeal Brief is not paginated. Therefore, all references to page
numbers of the Appeal Brief refer to page numbers as if the Appeal Brief
was numbered consecutively beginning with the first page.
2
Appeal2017-007576
Application 13/333,235
determining at least one inter-seizure interval (ISI) value
related to said at least two seizure events;
comparing said determined at least one ISI value to at
least one reference value selected from: a value at least one
standard deviation below a mean ISI value with respect to a
normal or a normalized distribution of ISI values for the patient
or a population of patients; or the twentieth percentile of ISI
values for the patient or a population of patients; and
identifying an occurrence of an extreme seizure event,
based upon said determined at least one ISI value being less
than said at least one reference value.
Id. at 28.
The following rejections are before us for review:
(1) Claims 1-9, 11-13, and 22-27 under the judicial exception to
35 U.S.C. § 101 (Final Act. 34);
(2) Claims 1-7, 11, 13, and 22-27 under 35 U.S.C. § 103(a) as
obvious over Osorio 5 and Sackellares6 (Final Act. 47); and
(3) Claims 8, 9, and 12 under 35 U.S.C. § 103(a) as obvious over
Osorio, Sackellares and Drew8 (Final Act. 8).
4 Page 3 of the Final Action states "[c]laims 1-27 are rejected;" however,
page 1 of the Final Action acknowledges that claim 10 was cancelled and
claims 14--21 were withdrawn from consideration. Compare Final Act. 3,
with id. at 1.
5 US 2004/0133119 Al (published July 8, 2004) ("Osorio").
6 US 2009/0124923 Al (published May 14, 2009) ("Sackellares").
7 Page 4 of the Final Action includes claim 10 in the rejection; however,
page 1 of the Final Action acknowledges that claim 10 was cancelled.
Compare Final Act. 4, with id. at 1.
8 US 2006/0094972 Al (published May 4, 2006) ("Drew").
3
Appeal2017-007576
Application 13/333,235
DISCUSSION
Rejection 1
The Examiner rejected all pending claims under the judicial exception
to 35 U.S.C. § 101. Final Act. 3; see, e.g., Alice Corp. Pty. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2354 (2014) ("We have long held that this provision
[35 U.S.C. § 101] contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.").
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, we "first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice Corp. Pty. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2355 (2014). This is sometimes referred to as step 2a. 9 If
the claims are determined to be directed to an ineligible concept in step2a,
then, in step 2b, 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." Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78-79 (2012)).
Pursuant to step 2a, the Examiner determined that the rejected claims
are "directed to the abstract idea of identifying an occurrence of an extreme
seizure event based on the ISI of a sensor signal," explaining "it is
essentially just the mathematical relationship of the signal to the extreme
9 Step 1 of Alice is determining whether the claims are directed to a
"process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' as recited in 35 U.S.C. § 101. Whether the
rejected claims pass step 1, which they do, is not at issue here.
4
Appeal2017-007576
Application 13/333,235
seizure and at most claims mathematical formulae." Final Act. 3. In the
Examiner's Answer, the Examiner elaborates as follows:
Answer 2.
[T]he abstract idea is the signal processing itself.
It is simply a comparison that is being made and
that indicates a determination. Specifically, the
physio[lo ]gical signal is analyzed for ISI and based
on the ISI a determination about an extreme
seizure event is made. This data comparison itself
is the abstract idea. See, for example, PerkinElmer
v. Intema [496 Fed. Appx. 65 (Fed Cir. 2012)
(non-precedential)] and CyberSource Corp. v.
Retail Decisions, Inc. [654 F.3d 1366 (Fed. Cir.
2011) ], which hold that the mental process of
comparing data is ineligible, and that merely
claiming a software implementation of a purely
mental process that could otherwise be performed
without the use of a computer does, alone, not
satisfy the machine prong of the machine-or-
transformation test or elevate the claimed subject
matter to significantly more than [the] abstract idea
itself.
In its Appeal Brief, Appellant does not identify any error in the
Examiner's determination that the claims are directed to an abstract idea.
App. Br. 8-9. Instead, Appellant merely complains that the Examiner
altered his articulation of the abstract idea during prosecution. Id. at 9. 10
10 The Federal Circuit has "recognize[d] that defining the precise abstract
idea of patent claims in many cases is far from a 'straightforward' exercise."
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150 (Fed. Cir.
2016) (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014)). However, "we continue to 'treat[] analyzing
information by steps people [ could] go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
5
Appeal2017-007576
Application 13/333,235
Then, and without attempting to rebutting the Examiner's determination that
the claims are directed to an abstract idea, Appellant states:
Id.
Appellant[] consider[ s] hereinafter, strictly for the sake of
argument, that the answer to the second inquiry [ step 2a] may
be considered to be maybe or yes, bearing in mind, as the
Interim Guidance and the CAFC have made clear, a claim that
recites an exception is not automatically ineligible and will be
patent eligible if it passes step 2B.
Ultimately, in its Reply Brief, Appellant argues that "the
determination of an extreme seizure event is not an abstract idea. This
determination can save a patient's life and is not an abstract idea." Reply
Br. 2.
Appellant's step2a argument is not persuasive. Regardless of whether
the determination of an extreme seizure event can save a patient's life,
saving a patient's life is not part of Appellant's claimed invention. For
example, claim 1 is directed to "[a] non-transitive computer readable
program storage device encoded with instructions that, when executed by a
computer perform[ s] a method." 11 The recited method is "for identifying an
within the abstract-idea category."' Synopsys, 839 F.3d at 1146-47
( emphasis added) ( quoting Electric Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (citations omitted)); see also Electric
Power Grp., 830 F.3d at 1353 ("collecting information, analyzing it, and
displaying certain results of the collection and analysis" "fall[ s] into a
familiar class of claims 'directed to' a patent-ineligible concept," that of the
abstract idea). The Federal Circuit has recognized that "a claim for a new
abstract idea is still an abstract idea." Synopsys, 83 9 F .3 d at 1151.
11 Appellant argues claims 1-9, 11-13, and 22-27 as a group in response to
their rejection as patent ineligible. See App. Br. 7-23. Accordingly, we
6
Appeal2017-007576
Application 13/333,235
extreme seizure event in a patient," not for treating a patient, let alone saving
his life. The recited method lacks any steps involving treating or saving a
patient. The same is true of independent claim 22.
Thus, we tum to step 2b. Pursuant to that step, the Examiner stated
the following:
The claim( s) does/ do not include additional
elements that are sufficient to amount to
significantly more than the judicial exception
because the additional sensors is/are merely for
data input, are well-known, routine, and
conventional in the art, and are used in extra-
solution activity. Similarly, the recitation
identifying, determining and comparing merely
links the abstract idea to well-understood, routine,
and conventional activities, previously known to
the industry, and specified at a high level of
generality. Furthermore, the subject matter's
ineligibility is confirmed by the machine-or-
transformation test, under which the claims are not
tied to any specific machine and do not transform
the nature of the subject matter into something
more than the abstract mathematics behind it. At
its core, the application is seeking protection for
the mathematical formulae used in determining the
extreme seizures from body data. If a claim is
directed essentially to a method of calculating,
using a mathematical formula, even if the solution
is for a specific purpose, the claimed method is
nonstatutory.
Final Act. 3 (citing Parker v. Flook, 437 U.S. 584 (1978); Digitech
Image v. Electronics for Imaging, 758 F.3d 1344 (Fed. Cir. 2014)).
select claim 1 as representative, the remainder of the claims standing or
falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
7
Appeal2017-007576
Application 13/333,235
Appellant argues extensively in response (see App. Br. 9--23 and
Reply Br. 2--4) but does not apprise of us of any error in the Examiner's
determination that the elements of the claims, whether considered
individually or as an ordered combination, fail to transform the nature of the
claims into patent-eligible applications of the abstract idea. See Ans. 2-7;
Alice, 134 S. Ct. at 2355.
For example, the only tangible component of the "non-transitive
computer readable program storage device" of claim 1 is "an electrical
sensor." The Examiner rightfully found this limitation to include well-
known, routine, and conventional sensors. Final Act. 3. Appellant does not
dispute this. See App. Br. 10-12. In fact, in a section of the Appeal Brief
titled "The additional sensors allegedly is/are merely for data input, are
well-known, routine, and conventional in the art, and are used in extra-
solution activity" (App. Br. 10), Appellant concedes that such sensors are
conventional. Id. at 10-12. Appellant attempts to take advantage of that
fact arguing that claim 1 is not preempted because it "could just as easily be
performed if it had a database of the signals collected separately by some
other system or method. The data gathering is just an additional step not
directly needed in the identification of the extreme seizure events which
Appellant contends is the novelty in the claims." Id. at 11. But, lack
of preemption is not equivalent to patent eligibility. See, e.g., Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.").
Appellant also argues that the claims before us are analogous to those
in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). App.
8
Appeal2017-007576
Application 13/333,235
Br. 18. In Enfish, the Federal Circuit held that claims directed to "a data
storage and retrieval system for a computer memory" were "not directed to
an abstract idea within the meaning of Alice. Enfzsh, 822 F3.d at 1336.
"Rather [(the Federal Circuit held)], they are directed to a specific
improvement to the way computers operate, embodied in the self-referential
table." Id. There is no aspect of the claims before us that corresponds to the
self-referential table in Enfzsh or that otherwise improves the way a
computer functions. Appellant's reliance on Enfish is misplaced.
We have considered all of Appellant's arguments, but none of them
persuades us the Examiner erred in rejecting the claims as patent ineligible.
We see no error in the Examiner's rejection of claims 1-9, 11-13, and
22-27 under the judicial exception to 35 U.S.C. § 101. Accordingly, that
rejection is affirmed.
Rejection 2
The Examiner rejected claims 1-7, 10, 11, 13, and 22-2 7 under
35 U.S.C. § 103(a) as obvious over Osorio and Sackellares. Final Act. 4.
Osorio "relates to the detection and the treatment of nervous system
disorders and more particularly to a method and a medical device system for
scoring and ranking the relative severity of sensed neurological signals."
Osorio i-f2. Osorio "desir[ ed] to score and/or rank the relative severity of
sensed neurological signals for purposes of detecting, treating and/or
reducing the occurrence of the clinical seizures." Id. ,I7. Osorio discloses
the following:
[T]he medical device system comprises one or
more monitoring elements that generate
neurological signals having at least one event to be
scored. . . . The system thereby identifies one or
9
Appeal2017-007576
Application 13/333,235
Id. ,I8.
more features of the event, computes a score of
relative severity of the event using the identified
feature, and then ranks the event by severity
relative to at least one other scored event. Features
for any event may include, for example, a
maximum ratio, a duration of a seizure detection,
and a spread, number of clusters per unit time,
number of detections within a cluster, duration of
an event cluster, duration of a detection, and an
inter-seizure interval. This process of the present
invention may be performed by computer modules
or applications within an external device and/or an
implanted device.
The Examiner mapped specific teachings of Osorio to claim 1. 12 See
Final Act. 4. Indeed, the Examiner found that Osorio discloses the entire
subject matter of claim 1 except for "identifying an occurrence of an
extreme seizure event, based upon said determined at least one ISI value
being less than said at least one reference value" where the reference value is
either "a value at least one standard deviation below a mean ISI value with
respect to a normal or a normalized distribution of ISI values for the patient
or a population of patients; or the twentieth percentile of ISI values for the
patient or a population of patients." Final Act. 5. The Examiner found that
"Sackellares however teaches comparisons of STD [ standard deviation] for
determining seizure." Id.; see, e.g., Sackellares ,I14, ,I53. The Examiner
concluded that, "[a]s Osorio already determines the severity of the seizure
12 Appellant argues claims 1-7, 10, 11, 13, and 22-27 as a group in response
to their rejection as obvious. See App. Br. 23-24. Accordingly, we select
claim 1 as representative, the remainder of the claims standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
10
Appeal2017-007576
Application 13/333,235
events and ranks them it would have been obvious to one of ordinary skill in
the art to incorporate the teachings of Sackellares as comparisons of STD are
common in the art as by definition changes in the STD would indicate
abnormality." Final Act. 5.
Appellant argues that "Sackellares' teachings are related to
identifying a seizure event from the standard deviation of the signal
amplitude of collected EEG data," and, thus, "modifying how Osorio
identifies a seizure would not lead the person of ordinary skill in the art to
modify Osorio to identify extreme seizure events." App. Br. 24. Appellant
argues that "[ t ]he person of ordinary skill in the art would lack any
motivation to modify Osorio to determine an occurrence of an extreme
seizure event based on the interval between two identified seizures being at
least one standard deviation below the mean of a distribution of ISI values,
as recited by claims 1, 22, and all claims dependent thereon." Id. We are
not persuaded by Appellant's arguments, which attack the references
individually.
"[T]he test for obviousness is not whether ... the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art." In re Keller, 642 F.2d 413,425 (CCPA
1981)). "Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) ( citing Keller, 642 F .2d at 425). In determining obviousness, a
reference "must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole." Id.
11
Appeal2017-007576
Application 13/333,235
Implicitly relying on this law, the Examiner responds to Appellant's
arguments as follows:
Sackellares does teach determining the standard
deviation in the EEG signal amplitude to
determine seizures but not specifically determining
the STD of the ISI as claims (i1[53, 57] where the
device uses the STD to look for outliers in the
EEG signal collected) STD is a common statistical
measure of data dispersion and incorporating this
well understood concept into Osorio, which
discloses determining ISI and extreme seizures
(i"f [201-204]) would result in a combined device
that would determine the STD of the ISL It would
have been obvious to for one of ordinary skill in
the art to try such a combination and it would
require no more than due experimentation on the
part of said person skilled in the art.
Ans. 7. We agree with the Examiner's findings of fact regarding what
Osorio and Sackellares teach as well as his legal conclusion of obvious
based on those teachings.
The Examiner made a prima facie showing that claims 1-7, 10, 11,
13, and 22-27 would have been obvious over Osorio and Sackellares.
Appellant does not persuade us of any error in that rejection. Accordingly,
the rejection is affirmed.
Rejection 3
The Examiner rejected claims 8, 9, and 12 under 35 U.S.C. § 103(a)
as obvious over Osorio, Sackellares, and Drew. Final Act. 8.
The only purported error identified by Applicant in this rejection is
that the Examiner erred in rejecting the claims from which claims 8, 9, and
12 depend. App. Br. 25-27.
12
Appeal2017-007576
Application 13/333,235
We disagree in that respect, as discussed above with respect to
Rejection 2. Accordingly, the Examiner's rejection of claims 8, 9, and 12 is
also affirmed.
SUMMARY
For the reasons discussed, we affirm the Examiner's rejection of all
claims on appeal.
TIME PERIOD
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
13