Ex Parte ZhangDownload PDFPatent Trials and Appeals BoardApr 16, 201913215307 - (D) (P.T.A.B. Apr. 16, 2019) Copy Citation 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 2 Appeal2018-003225 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. 3 Appeal2018-003225 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 4 Appeal2018-003225 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 5 Appeal2018-003225 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. 6 Appeal2018-003225 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 7 Copy with citationCopy as parenthetical citation