Ex Parte Shigeto et al

Patent Trials and Appeals Board

Jul 5, 2019

14373770 - (D) (P.T.A.B. Jul. 5, 2019)

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.
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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.
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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.
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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.
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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
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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
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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
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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.
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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.
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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).
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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
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