Ex Parte Zhang

Patent Trials and Appeals Board

Apr 16, 2019

13215307 - (D) (P.T.A.B. Apr. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/215,307 08/23/2011
28524 7590 04/18/2019
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Hongxuan Zhang
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.
2010P25166US01 1954
EXAMINER
BLOCH, MICHAEL RYAN
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
04/18/2019 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HONGXUAN ZHANG
Appeal2018-003225
Application 13/215,307
Technology Center 3700
Before DANIELS. SONG, CHARLES N. GREENHUT, and
BRETT C. MARTIN, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a method and system for non-invasive
cardiac output determination. Claim 1, reproduced below, with emphasis
added, is illustrative of the claimed subject matter:
1. A non-invasive system, comprising:
Appeal2018-003225
Application 13/215,307
an input processor that continuously receives oximetric
signal data representing oxygen content of blood of a patient at a
particular anatomical location, a computation processor that uses
the received oximetric signal data in repetitively calculating, at
windows of cycles in the oximetric signal data, a heart stroke
volume of said patient comprising volume of blood transferred
through a blood vessel in a heart cycle, by calculating, a product
of a blood volume and multiple time-varyingfactors, wherein the
blood volume is derived in response to at least one statistical
parameter of the oximetric signal data, and wherein the multiple
time-varyingfactors represent reduction in blood flow volume in
different respective stages from a patient heart to arteries, from
the arteries to capillaries, and from the capillaries to said
particular anatomical location;
a mapping processor that determines, based on the
calculated heart stroke volume, data representing a medical
condition of said patient; and
an output processor that provides the data representing the
medical condition to a destination device when the mapping
processor determines the data representing the medical
condition.
REJECTION
Claims 1-26 are rejected as being directed to subject matter judicially
excepted from 35 U.S.C. § 101.
OPINION
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
Nonetheless, the Supreme Court has long interpreted§ 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
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Application 13/215,307
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
In Diamond v. Diehr, 450 U.S. 175 (1981), the claim at issue recited a
mathematical formula, but the Supreme Court held that "[a] claim drawn to
subject matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula." Id. at 17 6; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Gottschalkv. Benson, 409 U.S. 63 (1972), and
Parker v. Flook, 437 U.S. 584 (1978)). The Court also indicated, however,
that "an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection." Id. at 187.
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Application 13/215,307
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "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. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). 1 That Revised Guidance
instructs to first look to whether the claim recites:
(1) a judicial exception, i.e., a law of nature, a natural phenomenon, or
subject matter within the groupings of abstract ideas enumerated in the
Revised Guidance (i.e., mathematical concepts, certain methods of
organizing human activity, and mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see, e.g., MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
1 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf
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Application 13/215,307
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
Analysis
The claims are argued as a group (App. Br. 11-18) for which claim 1
is representative under 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner correctly
determined that claim 1 is directed to a mathematical concept, which is an
abstract idea. Final Act. 2-3. Read in light of the Specification, it is clear
that the only characteristic purportedly inventive is the "calculating" aspects
of the claimed invention ( emphasized above). 2 Numerous cases have held
mathematical calculations or algorithms are not patent eligible. 3
2 "calculating, at windows of cycles in the oximetric signal data, a heart
stroke volume of said patient comprising volume of blood transferred
through a blood vessel in a heart cycle, by calculating, a product of a blood
volume and multiple time-varying factors, wherein the blood volume is
derived in response to at least one statistical parameter of the oximetric
signal data, and wherein the multiple time-varying factors represent
reduction in blood flow volume in different respective stages from a patient
heart to arteries, from the arteries to capillaries, and from the capillaries to
said particular anatomical location"
3 Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of hedging ...
reduced to a mathematical formula ... is an unpatentable abstract idea[.]");
Diamond v. Diehr, 450 U.S. 175, 191 (1981) ("A mathematical formula as
such is not accorded the protection of our patent laws'') ( citing Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)); Parker v. Flook, 437 U.S. 584, 594 (1978)
("[T]he discovery of [ a mathematical formula] cannot support a patent
unless there is some other inventive concept in its application."); Benson,
409 U.S. at 71-72 (concluding that permitting a patent on the claimed
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Application 13/215,307
As the Examiner correctly points out, the alleged improvement is
recited only as, and within, a series of broad abstractions that amount to no
more than generic goals or results without any recitation of specific or
particular structures or steps to integrate the calculation into a practical
realization or application. Final Act. 6-7. A claim of this nature would
serve to preempt others from using oximetric signal data to determine heart
stroke volume based on any oximetric statistical parameter and blood flow
reduction in the recited regions of the patient. This effectively monopolizes
the calculation itself. 4 The limitations related to oximetry and the patient's
blood do no more than identify a particular technological field of use. Ans.
4, 8. 5 The claim elements pertaining to input and output do no more than add
insignificant extra-solution activity to the calculation. Ans. 8 ( citing
Flook). 6 The Examiner also correctly determined that the surrounding claim
elements do not provide an inventive concept because they are routine and
conventional, involving receiving data by an "input processor," looking up
invention "would wholly pre-empt the mathematical formula and in practical
effect would be a patent on the algorithm itself'); Mackay Radio &
Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) ("[A] scientific
truth, or the mathematical expression of it, is not patentable invention[.]");
SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a "series of mathematical calculations based on
selected information" are directed to abstract ideas); Digitech Image Techs.,
LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014)
(holding that claims to a "process of organizing information through
mathematical correlations" are directed to an abstract idea); Bancorp Servs.,
L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280 (Fed.
Cir. 2012) (identifying the concept of "managing a stable value protected
life insurance policy by performing calculations and manipulating the
results" as an abstract idea).
4 See also, e.g., MPEP 2106.05(e) and cases cited therein.
5 See also, e.g., MPEP 2106.05(h) and cases cited therein.
6 See also, e.g., MPEP 2106.05(g) and cases cited therein.
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Application 13/215,307
data by a "mapping processor," and outputting resulting data by an "output
processor." Final Act. 3--4; Ans. 8 ( correctly comparing the claims before us
to those held ineligible in Parker v. Flook, 437 U.S. at 594).
Appellant relies heavily on Thales Visionix Inc. v. United States, 850
F.3d 1343, 1349 (Fed. Cir. 2017) to argue eligibility. App. Br. 13-16. The
Examiner correctly points out that Thales is easily distinguishable because
there the court there relied heavily on the "unconventional configuration of
sensors" in order to reach a conclusion of eligibility. Here the claimed
subject matter "starts with just receiving the data and does not require the
sensors" themselves as an aspect of that subject matter. Ans. 4.
Appellant also argues the beneficial results of addressing the
challenge of accurately determining cardiac output and stroke volume by
using non-invasive signal data. App. Br. 17-18. Appellant's invention or
discovery may be extremely useful, but utility is a separate and distinct
requirement from eligibility under 35 U.S.C. § 101. See MPEP § 2104.
Discovering a particular mathematical relationship between certain data in
an otherwise conventional system does not, without more, result in an
invention satisfying the latter of these § 101 requirements.
DECISION
The Examiner's rejection is affirmed.
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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