Ex Parte Riback et alDownload PDFPatent Trial and Appeal BoardDec 28, 201613370680 (P.T.A.B. Dec. 28, 2016) Copy Citation 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. 13/370,680 02/10/2012 Jacob Lars Fredrik RIBACK AWDTS_21080291 5312 15027 7590 12/29/2016 Condo Roccia Koptiw LLP 1800 JFK Boulevard Suite 1700 Philadelphia, PA 19103 EXAMINER LIN, JERRY ART UNIT PAPER NUMBER 1631 MAIL DATE DELIVERY MODE 12/29/2016 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 JACOB LARS FREDRIK RIBACK, MICHAEL KIELL LJUHS, and LARS GUSTAF LILJERYD1 Appeal 2015-007424 Application 13/370,680 Technology Center 1600 Before RYAN H. FLAX, TIMOTHY G. MAJORS, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. MAJORS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to an apparatus and method for processing a glucose value, which have been rejected as directed to non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Diabetes Tools Sweden AB. (App. Br. 3.) Appeal 2015-007424 Application 13/370,680 STATEMENT OF THE CASE Appellants’ “invention relates to medical instruments and systems for monitoring, displaying, controlling and interpreting data typically extracted from bodily fluid analytes of mammalians.” (Spec. 1:10-12.) According to the Specification, [t]he research behind the invention indicates that the concentration and dynamics of blood glucose are affected by biological constraint]s, various complex interactions and non linear biological control mechanisms. Therefore, blood glucose and its measurements, generally is neither normally nor log- normally distributed. Thus, presentation, indication and statistics of glucose data are often biased and therefore impairing interpretation, treatment and potential feedback to the observer. (Id. at 3:19-23.) Claims 1—20 are on appeal. Claim 1 is illustrative: 1. Apparatus for processing a glucose value, comprising: a transformer transforming the glucose value into a transformed glucose value, wherein the transformer is configured to apply a transform rule to the glucose value, the transform rule comprising a combination of a first logarithmic term comprising a logarithm of the glucose value, and of a second linear term comprising a linear contribution of the glucose value, wherein the transform rule is such that, for each glucose value of a set of glucose values comprising more than one glucose value, the first logarithmic term and the second linear term both influence a calculation of the corresponding transformed glucose value, wherein the first logarithmic term has a higher influence on the calculation of the transformed glucose value than the second linear term for a lower glucose value, and wherein the second linear term has a higher influence on the calculation of the transformed glucose value than the first logarithmic term for a higher glucose value; and a processor processing the transformed glucose value to generate an optical, audio, tactile, electrical, magnetic or mechanical signal derived from the transformed glucose value, 2 Appeal 2015-007424 Application 13/370,680 wherein at least one of the transformer and the processor comprises a hardware implementation. (App. Br. 25 (Claims App’x).) Claims 1—20 are rejected under 35 U.S.C. § 101 for claiming non- statutory subject matter. (Ans. 2.) DISCUSSION In analyzing patent eligibility under 35 U.S.C. § 101, the Supreme Court has set forth a “framework for distinguishing patents that claim [patent-ineligible] 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 Inti, 134 S. Ct. 2347, 2355 (2014). According to that framework, first “we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. “If so, we then ask, ‘[w]hat else is there in the claims before us?’” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297 (2012).) To answer this second question, 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. [The Supreme Court has] described step two of this analysis as a 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. (internal citations and quotation marks omitted). Appellants argue the patentability of the claims as a group. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv). 3 Appeal 2015-007424 Application 13/370,680 The Examiner rejected claim 1 as directed to a patent-ineligible abstract idea. (Ans. 2.) More specifically, the Examiner finds claim 1 is directed to “a series of mathematical calculations on an apparatus or on a computer program product. . . [which] is interpreted as an abstract idea.” (Id.) According to the Examiner, “[t]he instant claims are drawn to transforming a glucose value by applying a transform rule . . . [yet this] transform rule is a mathematical calculation.” (Id. at 3—4.) The Examiner finds that the other claim limitations fail to provide a sufficient inventive concept: outputting the results from the abstract idea [i.e., the mathematical operation] is the result of a generic computer structure [e.g., processor] that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. . . . [0]utputting is considered to be extra solution activity that does not impart a practical application to the claimed invention. (Id. at 3; see also id. at 5.) According to the Examiner, “recitation of a hardware implementation and outputting is not sufficient to transform the abstract idea into patent eligible subject matter.” (Id. at 6.) We agree with and adopt the Examiner’s findings of fact and related conclusion that claim 1 is ineligible for patenting under 35 U.S.C. § 101. (Ans. 2—6; Final Act. 2—3.) Claim 1 recites a transformer transforming a glucose value into a “transformed glucose value” through “a transform rule” — a mathematical operation involving logarithmic and linear terms.2 The 2 Dependent claim 3, for example, specifies that “the first logarithmic term comprises the factor of (1-ln z(x)), and the second linear term comprises the 4 Appeal 2015-007424 Application 13/370,680 remaining limitations recite, in general, (i) a processor for processing the transformed glucose value to generate a signal derived from the transformed glucose value, and (ii) at least one of the transformer or processor comprises a hardware implementation. (App. Br. 25 (Claims App’x).) Analyzing claim 1 according to the Alice/Mayo framework, we agree with the Examiner that claim 1 is directed to an abstract idea. We are persuaded that the claimed “transform rule” is merely a mathematical calculation that manipulates a glucose value so that it is expressed as a “transformed” value. Digitech Image Techs. LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”) With respect to the claim elements individually and as an ordered combination — step two of the Alice/Mayo framework — the “processing” to generate a signal and “hardware implementation” limitations do not reflect a patent-eligible application of the patent-ineligible abstract idea. To the contrary, these limitations are recited at a high-level of generality and comprise routine techniques and post-solution activity that does not impart a sufficient inventive concept to claim 1. See Mayo, 132 S.Ct. at 1298 (“well- understood, routine, conventional activity previously engaged in by scientists who work in the field ... is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such law.”); see also Parker v. Flook, 437 U.S. 584, 590 (1978) (“The notion that post factor of ln(z(x)), wherein z(x) is a function depending on x, and where x is the glucose value.” (App. Br. 26 (Claims App’x).) 5 Appeal 2015-007424 Application 13/370,680 solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.”) Appellants have not persuasively shown otherwise. Appellants argue “[t]he Examiner overlooks the invention itself when the Examiner reduces the independent claims to an abstract statement. . . [as] [a]ny invention can be expressed abstractly.” (App. Br. 14—15.) This argument is unpersuasive. We consider the claims as drafted — informed, to the extent necessary, by the Specification. We do not, however, import unclaimed elements from the Specification that Appellants might consider to be part of “the invention.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). With specific focus on claim 1, Appellants do not persuasively explain or show that the claimed “transform rule” is anything other than a mathematical calculation that converts certain data into different data. And, as discussed above, the other limitations are insufficient to transform the claim into something “significantly more than a patent upon the [mathematical calculation] itself.” Mayo, 132 S.Ct. at 1294. Appellants argue, “by [the Examiner] withdrawing the prior art rejections, the invention is novel and unobvious.” (App. Br. 15; see also id. at 18—19.) This argument is also unpersuasive. Patentability under Sections 101, 102, and 103 involve distinct inquiries. The Examiner may well have withdrawn the prior art rejections based on Appellants’ “transform rule” argument that the claimed subject matter is new or nonobvious under Sections 102 or 103. But, the withdrawal does not also confirm that claim 1 is patentable under Section 101. Demonstrating quite the opposite, the Supreme Court in Flook “assume[d] that respondent’s [mathematical] formula [was] novel and useful and that he discovered it,” yet still held the 6 Appeal 2015-007424 Application 13/370,680 claim was drawn to a patent-ineligible abstract idea. Flook, 437 U.S. at 588-595. Appellants argue “the general applicability of the mathematical relationships implicit in the formulae are not being claimed; neither are all methods of transforming a glucose value.” (App. Br. 16.) In other words, Appellants argue that complete preemption does not apply and “all such methods are available to the public, save for the specific novel and nonobvious approach taken by the inventor here.” (Id.) Here again, Flook is instructive. In that case, the patent applicant argued that “[h]e does not seek to wholly preempt the mathematical formula, since there are uses of his formula outside the petrochemical and oil-refining industries that remain in the public domain.” Flook, 437 U.S. at 589-90 (internal quotation marks omitted). Yet the Court rejected that argument. (Id.)3 Appellants’ arguments fare no better than the similar, but rejected, argument in Flook. Claim 1 is drawn to an abstract idea, and is not salvaged by the inclusion of limitations reciting only routine or conventional post-solution activity. See Ariosa, 788 F.3d at 1379 (“[wjhere a patent’s claims are deemed only to 3 See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015), cert, denied 136 S.Ct. 2511 (2016). In Ariosa, Appellants argued “the particular application of the natural phenomena that the [] patent claims embody are narrow and specific” and, thus, did not “preclude alternative methods [of using cffDNA] in the same field.” Ariosa, 788 F.3d at 1378. The Federal Circuit nevertheless held that “the absence of complete preemption does not demonstrate patent eligibility” and noted that “[t]he Supreme Court cases [] have not distinguished among different laws of nature or natural phenomenon according to whether or not the principles they embody are sufficiently narrow.” Id. at 1379. 7 Appeal 2015-007424 Application 13/370,680 disclose patent ineligible subject matter under the Mayo framework,. . . preemption concerns are fully addressed and made moot.”). Appellants argue, citing Diehr where the “formula was a well known formula,” that it is “inconsistent and arbitrary to deny a patent to the inventor here where there is a novel and unobvious technique.” (App. Br. 16—17.) As discussed above, whether the mathematical formula was new or nonobvious is not decisive. The claims in Flook were disallowed under Section 101 despite the claims’ recitation of a “new” formula. Flook, 437 U.S. at 588. The claims in Diehr were allowed, but that was because the claims included numerous other steps in a rubber-molding process (e.g., closing the mold, constantly determining the temperature of the mold, constantly recalculating cure time, etc.) that together provided a significant and novel practical application of the abstract idea (the known equation) and transformed uncured synthetic rubber into a new state or thing. Diamond v. Diehr, 450 U.S. 175, 184-87 (1981). Appellants’ claim 1 is more like the unpatentable claims in Flook, and less like the patentable claims in Diehr. Appellants argue the invention is patent-eligible because “it is an apparatus, method, and non-transitory computer-readable medium.” (App. Br. 17.) We agree that Appellants have claimed an “apparatus” and a “method.” But Appellants’ argument is unpersuasive as the rejection is based on the recognized exception that “abstract ideas” may be unpatentable under 35 U.S.C. § 101 even if appearing in a claim labeled according to a statutory class (process, machine, etc.). See Alice, 134 S.Ct. at 2354. Finally, Appellants argue the invention provides a particular and significant solution to a problem with visualizing glucose data, improving the user’s understanding of glucose dynamics. (App. Br. 16—19; see also 8 Appeal 2015-007424 Application 13/370,680 Reply Br. 2—5.) We are unpersuaded. Instead, as noted by the Examiner, “there is nothing in [claim 1 ] to suggest this improvement. Applicants have not identified which limitation directly correlates with the improvement.” (Ans. 4.) In the Reply Brief, Appellants make a number of contentions, including that “the transformation allows for the use of effective ‘separate scales’ when plotting glucose values that are small or large, such that they can both be shown on the same plot without being obfuscated.” (Reply Br. 2.)4 Appellants’ further contend “the present invention could be advantageously applied to not only have noise-filtered values but transformed noise-filtered values which have a reduced or no skewness.” {Id. at 4.) We express no opinion on whether potential applications along these lines might be patent-eligible, but find that claim 1 lacks limitations sufficient to provide the necessary inventive concept according to an Alice!Mayo analysis. We are, thus, unpersuaded, at the level of generality recited, that claim 1 is patent-eligible. For the above reasons, we conclude the preponderance of the evidence supports the Examiner’s determination that claim 1 is unpatentable under 35 U.S.C. § 101. Claims 2—20 were not argued separately and thus fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). 4 At pages 5—10 of the Reply Brief, Appellants raise a number of issues that appear to be irrelevant, that involve improper new argument or evidence, or that are not properly before the Board as part of this appeal. See, for example, Appellants’ arguments regarding “Document Dl,” which document does not appear to be relied upon by the Examiner as part of the presently-appealed rejection. Appellants’ contentions regarding the status of allegedly related patents or applications in foreign jurisdictions is not material to this appeal. 9 Appeal 2015-007424 Application 13/370,680 SUMMARY We affirm the rejection of claims 1—20 under 35 U.S.C. § 101. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 10 Copy with citationCopy as parenthetical citation