Ex Parte Perez-Velazquez et al

Patent Trial and Appeal Board

Nov 15, 2017

13667317 (P.T.A.B. Nov. 15, 2017)

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.
13/667,317 11/02/2012 Jose Luis Perez-Velazquez K8000592US2 7199
34236 7590 11/17/2017
Cowling WLG (Canada) LLP
50 QUEEN STREET NORTH, STE. 1020
P.O. BOX 2248
KITCHENER, ON N2H6M2
CANADA
EXAMINER
RAMACHANDRAN, VASUDA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
VAL.COTTRILL@GOWLINGWLG.COM
Waterloo.IP@gowlingwlg.com
JEFF.WONG@GOWLINGWLG.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE LUIS PEREZ-VELAZQUEZ, VERA NENADOVIC, and
LUIS GARCIA DOMINGUEZ
Appeal 2015-008135
Application 13/667,317
Technology Center 3700
Before MICHAEL C. ASTORINO, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—12. We note that the Appellants present the
following as additional evidence: Declaration of Jose Luis Perez Velazquez
under 37 C.F.R. § 1.132 (“Perez Velazquez Declaration”); Davies Brian and
Martin Brian, Numerical Inversion of the Laplace Transform: a Survey and
Comparison of Methods, Journal of Computational Physics, Vol. 33, 1—32
(1979); Jose C. Principe and Jack R. Smith, Design and implementation of
linear phase FIR fdters for biological signal processing, IEEE Trans
Biomed Eng., Vol. BME-33, 6, 550-9 (1986); and Tcheslavski et al., Phase
synchrony and coherence analyses of EEC as tools to discriminate between
Appeal 2015-008135
Application 13/667,317
children with and without attention deficit disorder, ScienceDirect,
Biomedical Signal Processing and Control, 1, 151—161 (2006). See Appeal
Br. 28, Evidence App. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellants’ “invention relates generally to methods of diagnosis
and prognosis with respect to conditions of the pediatric brain, including
brain injury and coma, based on fluctuations in cortical synchronization.”
Spec. 12.
Claims 1,11, and 12 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A computer-implemented method of prognosis in a pediatric
patient in a coma comprising the steps of:
a) evaluating, in a processing device, phase
synchronization patterns in a first electroencephalogram
signal, or a portion thereof, obtained on a patient subsequent
to the onset of coma;
b) evaluating, in a processing device, phase
synchronization patterns in a second electro[en]cephalogram
signal, or portion thereof, obtained on the patient at a time
subsequent to obtaining the first signal;
c) calculating, in a processing device, the temporal
variability of the synchronized patterns of the first
electroencephalogram signal and of the second
electroencephalogram signal and comparing the temporal
variability within the synchronized pattern of the first
electroencephalogram signal with the temporal variability
within synchronized pattern of the second
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electroencephalogram signal, wherein an increase in the
temporal variability within the synchronized pattern of the
second signal in comparison to the temporal variability within
the synchronized pattern of the first signal is indicative of an
improvement in the patient.
Rejections
I. Claims 1—12 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
II. Claims 1—12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nenadovic et al., Fluctuations in Cortical Synchronization
in Pediatric Traumatic Brain Injury, (Journal of Neurotrauma, Vol. 25, 615—
627, (2008)) (“Nenadovic”), as evidenced by Miyata et al. (US 4,254,779,
iss. Mar. 10, 1981) (“Miyata”).1
ANALYSIS
Rejection I
The Appellants argued claims 1—12 as a group. See Appeal Br. 5—12.
We select claim 1 as the representative claim for this group. Claims 2—12
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
1 Although the Examiner does not include claim 5 in the statement of the
ground of rejection (Non-Final Act. 5), the Examiner does reject claim 5
under this ground of rejection (id. at 8). The Examiner’s failure to include
claim 5 in the statement of the ground of rejection is merely a minor
oversight.
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to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” See, e.g., Alice Corp. Pty. Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), “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., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts” (e.g., to an
abstract idea). Id. If the claims are not directed to a patent-ineligible
concept, the inquiry ends. Otherwise, the inquiry proceeds to the second
step where the elements of the claims are considered “individually and ‘as
an ordered combination”’ to determine whether there are additional elements
that “‘transform the nature of the claim’ into a patent-eligible application.”
Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297). This is a
search for an “inventive concept”—an element or combination of elements
sufficient to ensure that the claim amounts to “significantly more” than the
abstract idea itself. Id.
The Court acknowledged in Mayo that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. Therefore, the Federal Circuit
has instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed.
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Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)).
Turning to the first step of the Alice framework, we find supported
and agree with the Examiner that claim 1 “merely amount[s] to the concept
of providing a prognosis of a pediatric patient in coma as performed by a
generic computer,” (Ans. 11), which includes “evaluating and calculating
steps which technically can be performed either mentally or by hand,” i.e.,
mental steps (Final Act. 3). Indeed, the preamble of claim 1 provides that
the claim is for “[a] method of prognosis in a pediatric patient in a coma.”
Appeal Br. 23, Claims App. As stated in the Specification, “[t]he present
invention relates generally to methods of diagnosis and prognosis with
respect to conditions of the pediatric brain, including brain injury and coma,
based on fluctuations in cortical synchronization.” Spec. 12. For example,
the Specification describes a patient’s “emergence from coma” as a “good
prognosis.” Id. at 137. The abstract idea here is similar to certain steps that
can be performed in the mind of a designer or by a designer using pen and
paper, and therefore the claim is directed to an abstract mathematical
algorithm that represents mental processes. See In re Meyer, 688 F.2d 789,
794—95 (CCPA 1982); see also In re Grams, 888 F.2d 835, 840-41 (Fed.
Cir. 1989).
The Appellants argue, “after taking all of the claim recitations into
consideration, the Appellants’ invention presents functional and palpable
applications in the field of computer technology in which a computer
performs steps in memory by a processor to achieve results outside of the
ordinary function of a computer under comparable circumstances.” Appeal
Br. 10. The Appellants assert that the Specification at paragraph 36 shows
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that “the inventors have, for the first time, transformed phase synchronized
EEG signals into ‘temporal variability’ defined as 'the variance of a
temporal sequence of synchrony values[,f and have determined that
temporal variability is related to prognosis of pediatric coma patients.”2 Id.
at 10—11. The Appellants’ argument is not persuasive of Examiner error.
The Specification at paragraph 36 is not directed to applications in the
field of computer technology, rather it is directed to the use of a
mathematical algorithm to evaluate patient’s condition. See Ans. 11. A case
that offers a close comparison is In re Grams, 888 F.2d 835 (Fed. Cir. 1989),
where the claims found patent ineligible were directed to a process that
involved (1) performing a clinical test on individuals and (2) based on the
data from that test, determining if an abnormality existed and determining
possible causes of any abnormality by using an algorithm. The Federal
Circuit found the process was not drawn to patent-eligible subject matter
because the essence of the claimed process was the mathematical algorithm
(an abstract idea), as it is here. In re Grams, 888 F.2d at 839-41.
The Appellants argue that claim 1 “does not merely define an abstract
idea;” rather “claim 1 includes physical process steps of ‘evaluating’,
‘calculating’, [and] ‘comparing’ . . . that transform electroencephalogram
signals into temporal variability that is used in a determination of coma
patient prognosis.”3 Appeal Br. 11 (emphasis added). The Appellants’
argument suggests that the steps of “evaluating,” “calculating,” and
2 Although the Appellants cite to the Specification at 34 for the definition of
the term “temporal variability,” the quotation is taken from paragraph 36.
3 The Appellants assert that claim 1 includes a step of determining. Appeal
Br. 11. However, claim 1 does not include a step of determining. See id.
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“comparing” are “physical” because of “a specific way of ‘doing something
with a computer.’” See id. at 11—12. The Appellants assert that “[t]he
structure of Appellants’ claims require complex programming to enable the
transformation of phase synchronized EEG signals into ‘temporal
variability.’” Id. at 12. Similarly, the Appellants contend that “determining
a prognosis for a coma patient of Appellants’ claims are achieved first by a
special purpose computing system that includes a processing device coupled
to a an EEG device or sensor or that is configured to read EEG signals from
a storage medium or network.” Reply Br. 7—8 (citing Spec. 33—39). The
Appellants’ argument is not persuasive of Examiner error.
The Appellants fail to point out language in claim 1 that requires a
specific way of doing something with a computer. To the extent that claim 1
recites the performance of the evaluating and calculating steps “in a
processing device,” the Specification instructs us that the processing device
is a generic computer. See Non-Final Act. 3^4; Ans. 12. Indeed, the
Specification describes, among other things, “[t]he methods described herein
may be implemented using any suitable processing device, including any
suitable computer or microprocessor-based system, such as a desktop or
laptop computer or a mobile wireless telecommunication computing device,
such as a smartphone or tablet computer, which may receive the
electroencephalogram signals.” Spec. 139; see also id. 140, 43^44,
Figs. 7 A—B. As the Federal Circuit has made clear “the basic character of a
process claim drawn to an abstract idea is not changed by claiming only its
performance by computers, or by claiming the process embodied in program
instructions on a computer readable medium.” See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d, 1366, 1375—76 (Fed. Cir. 2011) (citing In
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reAbele, 684 F.2d 902 (CCPA 1982)); see also Alice, 134 S. Ct. at 2357—60
(applying an abstract idea, such as an algorithm, on a general purpose
computer is not enough to transform a patent-ineligible abstract idea into a
patent-eligible invention); EON Corp. IP Holdings LLC v. AT & TMobility
LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general
purpose computer lends sufficient structure only to basic functions of a
microprocessor. All other computer-implemented functions require
disclosure of an algorithm.”).
Furthermore, under the second part of the Alice analysis, we find
supported and agree with the Examiner’s determination that, considering the
claim elements individually as an ordered combination, claim 1 does not
amount to “significantly more” than the abstract idea itself. Final Act. 3—4,
Ans. 11. The Appellants do not provide adequate evidence or technical
reasoning that claim 1 — when considered individually and as an ordered
combination — improves some existing technological process or solves
some technological problem in conventional industry practice. Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (finding
that the “claims recit[ed] a commonplace business method aimed at
processing business information despite being applied on a general purpose
computer.”), cert, denied, 136 S. Ct. 2510 (2016). In other words, claim 1
does not amount to “significantly more” than the mathematical algorithm
that represents mental processes, the abstract idea itself.
Thus, we sustain the Examiner’s rejection of claims 1—12 as directed
to non-statutory subject matter under 35 U.S.C. § 101.
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Rejection II
The Appellants argue claims 1—12 as a group. See Appeal Br. 12—22.
We select claim 1 as the representative claim for this group. Claims 2—12
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Appellants argue that the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Nenadovie, as evidenced by Miyata,
is legally flawed because Nenadovic is not prior art under 35 U.S.C. § 102.
Appeal Br. 13. The Appellants argue that Nenadovic, which was published
in June 2008, post-dates the present application’s effective filing date of
May 14, 2008.4,5 Appeal Br. 13.
The Examiner determines that claim 1 is not entitled to an earlier
filing date because it “recite[s] ‘a processing device,”’ which is not
supported by the earlier non-provisional application 12/453,528 and the
earlier provisional application 61/071,721 (hereinafter, “earlier
applications”), to which the Appellants claim priority.4 5 6 See Non-Final
Act. 3; Ans. 15. Accordingly, the Examiner determines that claim 1 is only
entitled the filing date of the present application, which is November 2,
2012. See Non-Final Act. 3.
4 The present application “is a continuation-in-part to U.S. Application
Serial No. 12/453,528 filed on May 14, 2009, which claims priority to U.S.
Provisional Application No. 61/071,721 filed on May 14, 2008.” Spec. 11.
5 The Appellants assert that “the present application is entitled to at least the
filing date of U.S. Patent Application S/N 61/071,721 and U.S. Patent
Application S/N 12/453,528 as set forth in 35 U.S.C. § 120.” Appeal Br. 13.
6 The published parent application of the earlier non-provisional application
12/453,528 is Perez-Velazquez et al. (US 2010/0022907 Al, pub. Jan. 28,
2010) (“Perez-Velazquez”).
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The Appellants argue that “the claims of Appellants’ patent
application are supported by the underlying patent application so as to
satisfy the written description requirement of 35 U.S.C. § 112, first
paragraph,” and thus be entitled to an earlier date than the filing date of the
present application. Reply Br. 9; see Appeal Br. 13—14. Indeed, claim 1
would be entitled to the benefit of an earlier filing date if the subject matter
of the claims is disclosed in the earlier applications in the manner provided
by 35 U.S.C. § 112, first paragraph. See 35 U.S.C. § 120.
To satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted); see also MPEP § 2163 (3)(b) (“When an explicit
limitation in a claim ‘is not present in the written description whose benefit
is sought it must be shown that a person of ordinary skill would have
understood, at the time the patent application was filed, that the description
requires that limitation.’ Hyatt v. Boone, 146 F.3d 1348, 1353, . . . (Fed. Cir.
1998).”). “And[,] while the description requirement does not demand any
particular form of disclosure, or that the specification recite the claimed
invention in haec verba, a description that merely renders the invention
obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352
(citations omitted).
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After carefully considering the arguments presented in the Appeal
Brief at pages 12—22 and the Reply Brief at pages 8—11, we agree with the
Examiner that claim 1 is not entitled to an earlier filing date because the
claim recites the phrase, “in a processing device” with regard to the
evaluating and calculating steps. In this case, we determine that the
disclosure of the earlier applications do not reasonably convey to those
skilled in the art that the Appellants had possession of the claimed subject
matter as of the filing date. We make this determination for reasons
expressed by the Examiner in the Answer at pages 12—15, and adopt them as
our own. For example, in the Answer the Examiner explains, “it is well-
known to calculate phase changes and synchronization in signals by hand,”
so “the use of a processor is not the necessary and only reasonable way of
computing variability in an EEG signal.” Ans. 13. Accordingly, we
determine that Nenadovic is a valid prior art reference under 35 U.S.C.
§102 because Nenadovic was published in June 2008, which is prior to the
filing date (i.e., November 2, 2012) of the present application.
Turning to some of the Appellants’ specific contentions, the
Appellants do not argue that the disclosure in the earlier applications
explicitly or inherently show possession of the claimed subject matter;
rather, the Appellants argue that possession of the claimed invention is
demonstrated by statements in the earlier applications that we regard as
vague and inadequate.
For example, the Appellants refer to a description concerning the state
of the art (the Background of the Invention), i.e., “[sjynchrony analysis,
specifically phase synchronization based on the analytic signal approach, has
evolved as the power and utility of computers has improved, and is now
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more sophisticated than previous analysis of coherence.” Appeal Br. 15
(quoting Perez-Velazquez | 5). Initially, we note that this description
concerns the state of the art, rather than the Appellants’ invention. And, as
the Examiner finds, “it is well-known to calculate phase changes and
synchronization in signals by hand,” so “the use of a processor is not the
necessary and only reasonable way of computing variability in an EEG
signal.” Ans. 13.
Similarly, the Appellants refer to a description in the earlier
application in the Detailed Description of the Invention, i.e., “[p]hase
synchronization of EEG signals is determined using signal transformations.
Initially, a selected region of each EEG signal is processed to provide a
reference-free signal, for example using a Laplacian transform.” Appeal
Br. 15—16 (quoting Perez-Velazquez 128); see also id. at 20-21 (citing
Perez-Velazquez || 33, 34, 46, 56, and Fig. 5). However, the term
“processed” does not provide a reference to what or who is performing the
processing. See Ans. 14. As the Examiner finds, “the term ‘processed’ is
not limited to computers and can be applied to a variety of processes. For
example, a person can process the information obtained from an EEG signal
in their head.” Id.
The Appellants include additional evidence, by way of journal articles
and the Perez Velazquez Declaration, to bolster their argument. Supra.
However, the cited disclosure in the earlier applications and the additional
evidence — when weighed together — does not support the Appellants’
argument. Rather, it supports the notion that performance of the evaluating
and calculating steps of claim 1, “in a processing device,” was obvious; and,
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“a description that merely renders the invention obvious does not satisfy the
requirement.” Ariad, 598 F.3d at 1352 (citations omitted).
Lastly, the Appellants assert that “the Examiner has not rejected any
of Appellants’ claims under 35 U.S.C. § 112, first paragraph.” Reply Br. 10
(emphasis omitted). This is of no consequence. The present application is a
continuation-in-part (Spec. 11) and adds disclosure to the Specification
which reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter, which has a filing date of
November 2, 2012. See, e.g., id. Tflf 39-40, 43^44.
Thus, we sustain the Examiner’s rejection of claims 1—12 under
35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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