Ex Parte Watson et al

Patent Trial and Appeal Board

Apr 21, 2017

12249053 (P.T.A.B. Apr. 21, 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.
12/249,053 10/10/2008 James Watson H-RM-01191-01/COV-06-01 1005
80883 7590 04/25/2017
Covidien LP
ATTN: IP Legal
6135 Gunbarrel Avenue
Boulder, CO 80301
EXAMINER
NEGIN, RUSSELL SCOTT
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
04/25/2017 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):
ip.legal@covidien.com
medtronic_mitg-pmr_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES WATSON and PAUL STANLEY ADDISON
Appeal 2016-0074391
Application 12/249,053
Technology Center 1600
Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
DAVID COTTA, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to systems for signal processing,
a computer-readable medium, and methods for processing of a two
dimensional signal. The Examiner rejected the claims under 35 U.S.C. §
101. We have jurisdiction under 35 U.S.C. § 6(b). The rejection is
affirmed.
1 The Appeal Brief (“Appeal Br.”) 3 lists Nellcor Puritan Bennett LLC, the
Assignee of the above-referenced application, and its parent company,
Medtronic PLC, as the real-parties-in-interest.
Appeal 2016-007439
Application 12/249,053
STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejections of claims 1, 3—
13, 16—27, 29, and 30 under 35 U.S.C. § 101 as being directed to an abstract
idea which is ineligible subject matter for a patent. Final Action 3 (“Final
Act.”; Mar. 20, 2015). Obviousness rejections of the claims were withdrawn
by the Examiner in the Answer. Answer 2 (“Ans.”; June 16, 2016).
There are three independent claims on appeal, claim 1 directed to a
method for processing a two-dimensional signal, claim 13 is to a system for
signal processing, and claim 27 to a non-transitory computer readable
medium storing instructions for signal processing. Each of the claims has
substantially the same limitations in the form appropriate to its statutory
class of invention.
CLAIMS
The claims were not argued separately. Consequently, we have
selected claim 1 as representative. Claims 3—13, 16—27, 29, and 30 fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Claim 1 reads as follows (the steps
have been numbered [1]—[6] for reference):
1. A method for processing a two-dimensional signal,
comprising:
[1] receiving the two-dimensional signal comprising at
least one repetitive component, wherein the two-dimensional
signal comprises a photoplethysmograph (PPG) signal received
from a sensor comprising at least one emitter and at least one
detector;
[2] identifying, using a processor, a plurality of features
of the two-dimensional signal corresponding to the at least one
repetitive component;
[3] identifying, using a processor, a plurality of segments
of the two-dimensional signal, wherein each of the segments
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comprise starting and ending points generally adjacent to the
plurality of identified features;
[4] transposing, using a processor, the plurality of
segments to form a three-dimensional stack of the plurality of
segments, wherein the starting points of the plurality of
segments in the three-dimensional stack are adjacent to each
other along an axis;
[5] deriving, using the processor, respiration information
based at least in part from the three dimensional stack of the
plurality of segments; and
[6] displaying, using a display, the respiration
information.
Claim 1 is drawn to a “method for processing a two-dimensional
signal.” The claim has six steps which are numbered [l]-[6] herein. In the
first step, a two-dimensional signal from a photoplethysmograph (PPG) is
received. A “plethysmograph is an instrument that measures physiological
parameters, such as variations in the size of an organ or body part, through
an analysis of the blood passing through or present in the targeted body
part.” Spec. 123. The Specification defines a PPG signal as a “signal
representing light intensity versus time or a mathematical manipulation of
this signal (e.g., a scaled version thereof. . . etc.).” Id. at 125.
Steps [2]—[5] of the claim use a “processor” to “identify” components
of the signal (features, segments), to “transpose” the identified segments to
form a stack of segments, and to “derive” respiration information from the
stack of segments. In the final step [6] of the claim, the respiration
information is displayed.
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REJECTION
The Examiner found that the claim is directed to patent ineligible
subject matter under 35U.S.C. § 101 because it is directed to an abstract
idea of processing PPG signals on a processor, which constitutes a judicially
recognized exception to the statute. Final Act. 3. The Examiner found that
the additional elements recited in the claim do not “provide meaningful
limitation(s)” which transform the abstract idea into a patent-eligible
application of the idea. Id.
Appellants contend that the claims are not directed to an abstract idea,
and even if they are, the “claims comprise additional elements that amount
to significantly more than an abstract idea itself.” Appeal Br. 16.
Appellants also contend that the Examiner did not set forth adequate
evidence that the claims are directed to an abstract idea. Id.
DISCUSSION
To determine whether a claim is eligible for patent under 35 U.S.C.
§ 101, a two-step analysis is necessary. As set forth in Alice Corp. Pty. Ltd.
v. CLSBankInt 7, 134 S. Ct. 2347, 2355 (2014):
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts [e.g., a law of nature,
natural phenomenon, or abstract idea]. If so, we then ask, what
else is there in the claims before us? . . . We have 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. (alterations, citations, and quotation marks omitted).
The method of claim 1 comprises receiving a signal from a PPG and
processing the signal on a processor to derive respiration information based
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on features and segments identified by the processor. A processor is
described in the Specification as “any suitable software, firmware, and/or
hardware, and/or combinations thereof for processing signal.” Spec. 149.
As examples, the Specification states a processor “may include one or more
hardware processors (e.g., integrated circuits), one or more software
modules, computer-readable media such as memory, firmware, or any
combination thereof.” Id. In other words, the PPG signal processing can be
performed on a conventional computer.
The method claims further comprise identifying components of a
signal received from a PPG and processing the components to derive
respiration information. As explained in the Specification:
In one embodiment, transposing the plurality of segments
of the signal to form a stack of segments includes aligning each
subsequent segment next to the previous segment along a first
axis. The length of each segment extends along a second axis that
is perpendicular to the first axis. The amplitude of the each
segment is represented in a third axis that is perpendicular to the
first axis and the second axis. In one such embodiment, deriving
the information includes detecting local maxima across either the
first axis or the second axis of the stack to identify ridges. The
ridges may then be analyzed to determine differential phase
effects of respiration on a segment.
Spec. 1 5.
The recited steps [2]—[5] of signaling processing constitute an
algorithm because they provide the instructions which enable one of
ordinary skill in the art to utilize the signals from a PPG to obtain
information about respiration, such as individual breaths (recited in
dependent claim 3) and a respiration rate (recited in dependent claim 4).
The algorithm is an “abstract idea,” and a judicial exception to Section 101,
because it is not associated with a concrete object, but rather it is a
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mathematical process that operates on a signal representing light intensity
over time (Spec. 125). In our opinion, the respiration algorithm of the claim
is analogous to the mathematical formula in Parker v. Flook, 437 U.S. 584
(1978) and the algorithm in Gottschalk v. Benson, 409 U.S. 63 (1972), both
which were found to represent abstract ideas.
Appellants contend that the claimed method does not “preempt the use
of an algorithm” and “are of modest scope, and thus do not threaten to create
problems relating to preemption.” Appeal Br. 18—19.
In Alice, the Court “described the concern that drives this
exclusionary principle [of laws of nature, natural phenomena, and abstract
ideas] as one of pre-emption.” Alice, 134 S. Ct. at 2354.
In this case, the claims involve identifying features and segments of a
signal from a PPG, processing these components to form a three-
dimensional stack, and deriving respiration information from the stack. The
claimed algorithm pre-empts all uses of features, segments, and three-
dimensional stacks to determine respiration information from a PPG signal.
While the claim is drawn to the narrow use of the algorithm to analyze PPG
signals, this is the only disclosed use for the algorithm. Thus, the claim
“wholly pre-empt[s]” the algorithm’s use because the only practical
application of it is in the field of PPG technology. See Bilski v. Kappos, 130
S. Ct. 3218, 3230 (2010) (“As the Court later explained, Flook stands for the
proposition that the prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ . . .”) (“even if the solution is for a specific
purpose, the claimed method is nonstatutory.” Parker v. Flook, 437 U.S.
584, 595, 98 S. Ct. 2522 (1978)).
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The absence of total preemption, moreover, does not show that a
claim is eligible for patenting under § 101. See 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. . . . Where a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework . . . preemption concerns are fully addressed and made
moot.”).
The second step of the patent eligibility analysis requires a
determination of whether the claims do significantly more than simply
describe the abstract idea or natural law. Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1297 (2012). The claim
limitations must be scrutinized to determine whether the claims contain an
“inventive concept” to “transform” the claimed abstract idea or natural law
into patent-eligible subject matter. Alice, 134 S. Ct. at 2357 (quoting Mayo,
132 S. Ct. at 1294, 1298).
The transformation of an abstract idea into patent-eligible subject
matter “requires more than simply stat[ing] the [abstract idea]
while adding the words ‘apply it.’” Id. (quoting Mayo, 132 S.Ct.
at 1294) (alterations in original). “A claim that recites an abstract
idea must include ‘additional features’ to ensure ‘that the [claim]
is more than a drafting effort designed to monopolize the
[abstract idea].”’ Id. (quoting Mayo, 132 S.Ct. at 1297)
(alterations in original). Those “additional features” must be
more than “well-understood, routine, conventional activity.”
Mayo, 132 S. Ct. at 1298.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
In this case, the steps of [1] “receiving” the two-dimensional PPG
signal and [6] “displaying, using a display, the respiration information” are
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routine, conventional activity. It is necessary to receive the signal to
perform the recited algorithm of steps [2] through [5]. The claim does not
specify how the “receiving” is accomplished, but rather it is recited
generically and can include any way in which data is received by a
processor. The displaying step is also generic, including conventional
techniques through which processed information is displayed to a user.
We recognize that the combination of steps of the claimed algorithm
of steps [1]—[5] is not taught in the prior art of record as evidenced by the
Examiner’s withdrawal of the obviousness rejection of the claims.
However, the issue is not whether the claimed abstract idea is non-obvious,
but whether the application of the abstract idea constitutes more than just
routine activity.
Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. “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.” Parker v. Flook,
437 U.S. 584, 595, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978)
(internal quotations omitted).
Digitech Image Technologies LLC v. Electronics for Imaging Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014).
The requirement in the claims that the signal is processed using a
“processor,” which we find to include a generic computer, does not change
our conclusion that the claim reads on patent ineligible subject matter.
The introduction of a computer into the claims does not alter
the analysis at Mayo step two. In Benson, for example, we
considered a patent that claimed an algorithm implemented on
“a general-purpose digital computer.” 409 U.S., at 64, 93 S.Ct.
253. Because the algorithm was an abstract idea, see supra, at
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2355, the claim had to supply a “ ‘new and useful’ ” application
of the idea in order to be patent eligible. 409 U.S., at 67, 93
S.Ct. 253. But the computer implementation did not supply the
necessary inventive concept; the process could be “carried out
in existing computers long in use.” Ibid. We accordingly “held
that simply implementing a mathematical principle on a
physical machine, namely a computer, [i]s not a patentable
application of that principle.” Mayo, supra, at------- , 132 S. Ct.,
at 1301 (citing Benson, supra, at 64, 93 S. Ct. 253).
Alice, 134 S. Ct. at 2357-58.
Appellants contends that their claims are patent eligible under 2014
USPTO guidelines because they are an improvement to the field of PPG
respiration monitoring. Appeal Br. 20; Reply Br. 3. This argument is not
persuasive. In Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d
1288, 1300-01 (Fed. Cir. 2016), the claims were found to be patent eligible
under 35 U.S.C. § 101 because “the claim’s enhancing limitation necessarily
requires that these generic components [network devices, etc.] operate in an
unconventional manner to achieve an improvement in computer
functionality.” However, here the improvement identified by Appellants is
not to the device itself, but rather to the algorithm used to process the signal
and derive respiration information. Thus, the rejected claims are
distinguishable from the claims in Amdocs.
Appellants also cite Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016) as supporting the patent eligibility of the claims. In Enfish,
the court found that “the claims at issue ... are not directed to an abstract
idea within the meaning of Alice. Rather, they are directed to a specific
improvement to the way computers operate, embodied in the self-referential
table.” Id. at 1336. The claims in this appeal are not an improvement to
how a computer operates or how a PPG operates. As already discussed, the
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improvement is to an algorithm for processing a signal and does not improve
a computer as in Amdocs and Enfish.
Appellants contend:
[The] combination of elements in the currently pending claims
imposes meaningful limits on the scope of the claims because
each of the pending claims recites a method for or a processor
capable of receiving and processing a PPG signal from a specific
sensor that comprises at least one emitter and at least one
detector.
Appeal Br. 19.
To support this position, they cite SiRF Technology Inc. v.
International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010):
The Federal Circuit held that a device capable of receiving a GPS
signal (i.e., a GPS receiver) was integral to the claims and
provided a “meaningful limit on the scope of the claims” because
it “play[[ed]] a significant part in permitting the claimed method
to be performed.” Id. at 1332-1333.
Id.
SiRF was decided before Mayo and Alice and thus did not have the
guidance provided by those cases. It is therefore not clear that SiRF was
decided under the proper test. See, SiRF, 601 F.3d at 1332. Nonetheless, in
SiRF, the GPS receiver was considered to place a meaningful limitation on
the claim because “without a GPS receiver it would be impossible to
generate pseudoranges or to determine the position of the GPS receiver
whose position is the precise goal of the claims.” Id. The algorithm in SiRF
was used to determine the position of the GPS receiver. The claims in this
case are distinguishable because the algorithm, while receiving data from a
device, namely the PPG, has no application to the operation of the PPG.
Rather, the algorithm is used to deduce information about respiration.
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For the foregoing reasons, we affirm the Examiner’s rejection of
claim 1 as ineligible for a patent under 35 U.S.C. § 101. Claims 3—13, lb-
27, 29, and 30 were not argued separately and fall with claim 1. 37 C.F.R. §
41.37(c)(l)(iv).
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
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