Ex Parte Shigeto et alDownload PDFPatent Trials and Appeals BoardJul 5, 201914373770 - (D) (P.T.A.B. Jul. 5, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/373,770 07/22/2014 Kazuhide Shigeta 22204 7590 07/09/2019 NIXON PEABODY, LLP 799 Ninth Street, NW SUITE 500 WASHINGTON, DC 20001 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. 740709-666 9843 EXAMINER SHAH,JAYB ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 07/09/2019 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): nppatent@nixonpeabody.com ipairlink@nixonpeabody.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUHIDE SHIGETO, HIROKAZU KIKUCHI, and SHIGEMASA OHY A Appeal 2018-005968 Application 14/373,770 Technology Center 3700 Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge, MELISSA A. RAAP ALA, and JASON M. REPKO, Administrative Patent Judges. PERCURIAM. DECISION ON APPEAL STATEMENT OF CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 27-31. See App. Br. 1.2 Claims 1-26 were canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Toyota Jidosha Kabushiki Kaisha. App. Br. 3. 2 Throughout this opinion, we refer to the Final Office Action ("Final Act."), mailed May 24, 2017; the Advisory Action ("Adv. Act."), mailed October 30, 2017; the Supplemental Appeal Brief ("App. Br."), filed February 21, 2018, replacing the defective brief filed on January 22, 2018; the Examiner's Appeal 2018-005968 Application 14/373,770 THE INVENTION The invention relates to a method for monitoring respiration and heartbeat. Spec. 1: 8-13. The method uses a piezoelectric vibrator. Id. at 8:29-9:2. Prior-art methods of measuring heartbeat and oscillation employed devices that generated electrical signals corresponding to a piezoelectric vibrator's deformation caused by an oscillating plate. Id. at 2:29-3 :4. Such devices were placed under the monitored subject and involved a relatively large sensor or used many sensors. Id. at 3 :5-10. Yet, devices with a sufficiently high sensitivity are not small enough for a person to wear during exercise. Id. at 3 :20-24 According to the Specification, Appellants' monitoring method leads to an improved sensitivity compared to the prior art. See id. at 3 :20-24, 7:28-30. As a result, the monitoring device can be small enough to be worn by a person exercising. Id. at 3:28-32. It can also be used to monitor a dog, cat, horse, or other moving animal. Id. at 8:24-27. Independent claim 27, reproduced below, is illustrative: 27. A method for monitoring variation in either or both respiration and heartbeat of an animal which comprises the steps of: preparing a device comprising a piezoelectric vibrator, an impedance-detecting circuit electrically connected to the piezoelectric vibrator, and a computing circuit electrically connected to the impedance-detecting circuit; placing the piezoelectric vibrator directly or indirectly in contact with the surface of the body of the animal under pressure; continuously or intermittently applying to the piezoelectric vibrator an AC voltage of a frequency Answer ("Ans."), mailed March 29, 2018; and the Reply Brief ("Reply Br."), filed May 22, 2018. 2 Appeal 2018-005968 Application 14/373,770 corresponding to the natural resonance frequency of the piezoelectric vibrator by means of the impedance-detecting circuit, whereby vibrating the piezoelectric vibrator under oscillation caused by the respiration and heartbeat; detecting a varying current generated by the piezoelectric vibrator vibrating under oscillation caused by the respiration and heartbeat, by means of the impedance-detecting circuit; calculating a varying impedance of the piezoelectric vibrator from the varying current and the AC voltage applied to the piezoelectric vibrator by means of the computing circuit; and monitoring continuously or intermittently the variation of impedance with the passage of time. App. Br. 14. THE REJECTIONS The Examiner rejects claims 27-31 under 35 U.S.C. § 101 as failing to claim eligible subject matter. The Examiner rejects claims 27-31 under pre-AIA 35 U.S.C. § 112, second paragraph, as failing to point out and particularly claim the subject matter which the inventor or joint inventor regards as the invention. The Examiner rejects claim 27 under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combination of Shima (JP 2003-339652A, published Feb. 12, 2003),3 Izumi (US 2006/0169282 Al, published Aug. 3, 2006), and Rychen (WO 2010/022521 Al, published March 4, 2010). The Examiner rejects claims 28 and 30 under pre-AIA 35 U.S.C. § 103(a) as being obvious over Shima, Izumi, Rychen, and Halperin (US 2008/0275349 Al, published Nov. 6, 2008). 3 All citations to Shima are to the English-language translation. 3 Appeal 2018-005968 Application 14/373,770 The Examiner rejects claim 29 under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combination of Shima, Izumi, Rychen, and Melker (US 2008/0190430 Al, published Aug. 14, 2008). The Examiner rejects claim 31 under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combination of Shima, Izumi, Rychen, Halperin, and Andersson (US 6,064,910, published May 16, 2000). I. THE REJECTION UNDER 35 U.S.C. § 101 A. Principles of Law Section 101 defines patent-eligible subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. But courts have long held that laws of nature, natural phenomena, and abstract ideas are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70-71 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). These ineligible concepts are implicit exceptions to the statutory categories. Id. at 71. The Supreme Court articulated a two-step subject-matter eligibility test in Mayo and Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). Alice/Mayo step one asks whether a claim is "directed to" a judicial exception. Alice, 573 U.S. at 217. In Alice/Mayo step two, 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, 566 U.S. at 79, 78). Step two is described as a search for an "inventive concept." Id. 4 Appeal 2018-005968 Application 14/373,770 The USPTO recently published revised guidance on patent subject matter eligibility. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (USPTO Jan. 7, 2019) ("Guidance"). Step 1 of the USPTO's eligibility analysis asks whether the claimed subject matter falls within the four statutory categories of invention. Id. at 53-54. Under Step 2A, Prong One of the Guidance, we determine if the claim recites a judicial exception, including particular groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity, or mental processes). Id. at 52-53. If so, we then analyze the claim to determine whether the recited judicial exception is integrated into a practical application of that exception under Step 2A, Prong Two of the Guidance. Id. at 53-55; MPEP §§ 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018). Only if the claim is directed to the judicial exception, do we then look, under Step 2B, to whether the claim 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 whether the claim simply appends well-understood, routine, or conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56. B. Analysis Under Step 2A, Prong One of the Guidance, we first consider whether the claim recites an abstract idea. Guidance, 84 Fed. Reg. at 54. The Guidance has synthesized the key concepts identified by the courts as abstract ideas into three groupings: certain methods of organizing human activity, mathematical concepts, and mental processes. Id. at 52. 5 Appeal 2018-005968 Application 14/373,770 The Examiner determines that claim 27 is directed to an abstract idea because the claim recites calculating varying impedance, which is a "mathematical algorithm." Ans. 3. Appellants contend that claim 27 recites a method that analyzes the current generated by a piezoelectric vibrator, not a mathematical algorithm. App. Br. 9. According to Appellants, a mathematical algorithm is not presented, and claim 27 does not have an algorithm at its core that would render the disclosure less useful without the algorithm. Id. at 9-10. Viewing this record through the lens of the Guidance, the issue here is whether claim 27 recites a concept that falls within the Guidance's mathematical-concepts grouping. For the reasons discussed below, we determine that it does not. In the Guidance, the mathematical-concepts grouping includes mathematical relationships, calculations, equations, and formulas. See Guidance, 84 Fed. Reg. at 52. For example, the Guidance points to Supreme Court cases involving claims that recite a formula or equation. See id. at 52 n.12 (citing e.g., Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("reduced to a mathematical formula"); Diamond v. Diehr, 450 U.S. 175, 191, 179-80 n.5 (1981) ( explaining that claims 1, 2, and 11 each recited a "mathematical formula," in particular claim 1 recited "ln v=CZ+x" and claim 11 recited "ln v=cz+x"); Parker v. Flook, 437 U.S. 584, 594 (1978) (involving a claim that recited "Bl= Bo (1.0-F) + PVL(F)"); Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86 (1939) (addressing claims to antenna geometry having a particular antenna angle of 50.9 (l/A}-513)). Unlike these Supreme Court cases, claim 27 does not recite a formula or equation. We "'must be careful to avoid oversimplifying the claims' by 6 Appeal 2018-005968 Application 14/373,770 looking at them generally and failing to account for the specific requirements of the claims." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (citations omitted). Here, at most, performing claim 27' s calculating step is based upon a mathematical concept. But claim 27 does not, for example, specifically require any particular equation for calculating the varying impedance. Concluding that claim 27 recites a mathematical concept oversimplifies the claim in a way that is inconsistent with Step 2A, Prong One. Example 37 of the published example set, which are to be used with the Guidance, illustrates this point. USPTO, Subject Matter Eligibility Examples: Abstract Ideas 1 (Jan. 7, 2019), https://www.uspto.gov/sites/default/files/documents/l O l _ examples _37to42 _ 20190107. pdf. Example 3 7 applies the Guidance to hypothetical claims about relocating icons on a graphical user interface. Id. at 1-5. Claim 2 of Example 37 recites "determining the amount of use of each icon using a processor that tracks how much memory has been allocated to each application associated with each icon of a predetermined period of time." Id. at 3. Although the recited determination accumulates the total allocated memory, it "does not recite a mathematical relationship, formula or calculation" or any other abstract idea under Step 2A, Prong One. Id. at 4. To conclude otherwise would unreasonably overemphasize an ancillary calculation in a way that would oversimplify the claim and obscure the claimed invention. We determine that Appellants' claim 27 does not recite a mathematical concept under our controlling guidance and judicial precedent. Although the "calculating" step recited in claim 27 may, at some level, be 7 Appeal 2018-005968 Application 14/373,770 based on a mathematical concept, the Supreme Court has noted that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Here, the recited calculation essentially functions as a source of the varying impedance, instead of as a mathematical concept. In particular, the claimed calculation identifies the varying current and the AC voltage as the source of the data used to determine the varying impedance, but does not set forth a specific equation or formula used to calculate the varying impedance. Reducing claim 27 to some unrecited impedance-variation calculations or equations would oversimplify claim 27 in a way that is inconsistent with the claim language. Because claim 27 does not recite an abstract idea under the Guidance's Step 2A, Prong One, we do not sustain the rejection under§ 101. Because we do not sustain the rejection of claim 27, we also do not sustain the rejection of dependent claims 28-31, which further limit how to monitor varying impedance in claim 27's method. II. THE REJECTIONS UNDER 35 U.S.C. § 112 The Examiner rejects claims 27-31 under§ 112, second paragraph, as indefinite. Final Act. 2-4. In particular, the Examiner finds the scope of "preparing a device comprising a piezoelectric vibrator" (recited in claim 27) is unclear because it is "unclear if Applicant is intending to claim manufacturing/creating said device, or simply providing said device." Id. at 2-3. The Examiner finds the meaning of "whereby vibrating the piezoelectric vibrator under oscillation caused by the respiration and heartbeat" ( claim 27) and of "a variation of height of peak between the peaks 8 Appeal 2018-005968 Application 14/373,770 adjoining to each other" ( claim 29) is unclear. Id. at 3. With regard to the "the monitoring variation of respiration of the animal is made on a frequency of respiration of the animal, and the variation of the strength of respiration is monitored by" limitation recited in claim 29, the Examiner finds that it is "unclear how one is able to monitor the 'strength' of respiration if monitoring is made on a frequency of respiration." Id. at 3. For similar reasons, the Examiner finds "monitoring variation of heartbeat of the animal is made on the frequency of respiration of the animal, and the variation of strength of heartbeat is monitored by" ( claim 31) is unclear. Id. at 4. The Examiner also finds that the meaning of "a variation of height between the smaller peaks adjoining to each other" ( claim 31) is unclear. Appellants filed amendments to claims 27, 29, and 31, but the Examiner did not enter them. Adv. Act. 1. Appellants acknowledge that the amendments have not been entered. Reply Br. 2. Appellants' sole argument is that the § 112 rejection is addressed by the unentered amendments, which should be entered. App. Br. 8-9; Reply Br. 2. Yet the Examiner's refusal to enter these amendments is not appealable. Ex parte Frye, 94 USPQ2d 1072, 1078 (BP AI 2010) (precedential) ( explaining that the Examiner's decision to not enter the amendments is petitionable under 37 C.F.R. § 1.181 and thus is not within the Board's jurisdiction); see also MPEP § 1201 ("Some matters which have been determined to be petitionable and not appealable include ... non-entry of amendments .... "). Appellants have not explained why the Examiner erred in determining that the claims on appeal are indefinite. See App. Br. 8-9; Reply Br. 2. Thus, we summarily sustain the § 112 rejection. 9 Appeal 2018-005968 Application 14/373,770 III. THE REJECTIONS UNDER 35 U.S.C. § 103 Claim 27 recites "continuously or intermittently applying to the piezoelectric vibrator an AC voltage of a frequency corresponding to the natural resonance frequency of the piezoelectric vibrator by means of the impedance-detecting circuit" ( emphasis added). In the combination of Shima, Izumi, and Rychen, the Examiner finds that Shima teaches an impedance-detecting circuit. Final Act. 6-7 ( citing Shima ,i,i 6, 8). According to the Examiner, the relationship between impedance and capacitance was well known, and "it is within the skill of the art to have monitored variation in impedance instead of monitoring variation in capacitance ( or the variation of the frequency of the oscillation) as both are related." Ans. 8. Appellants contend that the applied references do not teach or suggest the recited impedance-detecting circuit. App. Br. 11-13; Reply Br. 5-6. According to Appellants, Shima's circuit detects capacitance, not impedance. App. Br. 11. For the reasons discussed below, we are persuaded by Appellants' arguments. In particular, Shima teaches or suggests a resonant circuit that uses a sensor as a capacitor to change electrostatic capacitance. Shima ,i,i 6, 8. A separate frequency-detecting circuit detects the change of the resonant circuit's oscillating frequency. Id. ,i 8. Shima teaches that the electrostatic capacitance and impedance are related to each other and to the resonant frequency. Jd.iJiJ 21, 24. But the Examiner has not shown that Shima teaches or suggests that the impedance is detected by any of the circuits. 10 Appeal 2018-005968 Application 14/373,770 The Examiner finds that it would have been obvious to modify Shima to obtain the impedance-detecting circuit. See Ans. 8. In particular, the Examiner finds that impedance is related to the capacitance and frequency variables measured in Shima. Id. The Examiner concludes that "it is within the skill of the art to have monitored variation in impedance instead of monitoring variation in capacitance ... as both are related." Id. But the obviousness inquiry concerns not only whether a skilled artisan could have made the modification, but why one of skill in the art would have made the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). The Examiner fails to provide such explanation. Thus, we agree with Appellants that the Examiner has not shown that Shima teaches or suggests the impedance-detecting circuit, or that it would have been obvious to modify Shima to obtain the recited circuit. See App. Br. 11-13; Reply Br. 5-6. Appellants further contend, and we agree, that the Examiner does not rely upon the other references to remedy Shima's deficiency. App. Br. 12- 13. Thus, we do not sustain the rejections of dependent claims 27-31. DECISION We reverse the rejections of claims 27-31 under 35 U.S.C. § 101 and under 35 U.S.C. § 103. We affirm the rejection of claims 27-31 under 35 U.S.C. § 112, second paragraph. Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner's decision rejecting claims 27-31 is affirmed. See 37 C.F.R. § 41.50(a)(l). 11 Appeal 2018-005968 Application 14/373,770 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F. R. § l .136(a). AFFIRMED 12 Copy with citationCopy as parenthetical citation