HTC Corporation

Patent Trials and Appeals Board

Apr 9, 2021

2020005423 (P.T.A.B. Apr. 9, 2021)

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.
15/011,626 01/31/2016 De-Zhang Peng 60466-US-PA 6880
31561 7590 04/09/2021
JCIPRNET
8F-1, No. 100, Roosevelt Rd. Sec. 2,
Taipei, 100404
TAIWAN
EXAMINER
DEL VALLE, LILY M
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/09/2021 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):
Belinda@JCIPGROUP.COM
USA@JCIPGROUP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DE-ZHANG PENG, HUAN-HSIN LI,
and MING-TIEN LIN
____________

Appeal 2020-005423
Application 15/011,626
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Non-
Final rejection of claims 1, 3–9, 11, and 13–20 under 35 U.S.C. § 101 as
directed to a judicial exception to patent-eligible subject matter. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real parties in interest are De-Zhang Peng and HTC
Corporation. Appeal Br. 1.
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THE INVENTION
Appellant’s invention relates to locating electrocardiogram (ECG)
pads on a patient’s body. Spec. ¶¶ 1–4. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method for displaying reference locations for locating
ECG pads, adapted for an electronic apparatus having a display
and a processor, comprising:
retrieving, by the processor, a body image of a user facing
toward an image capturing device which captures the body
image;
performing, by the processor, color recognition on the body
image to detect a skin area in accordance with a skin color in
the body image;
performing, by the processor, a texture analysis using a
shape of physical nipples and a color analysis using a color of
the physical nipples on the skin area to detect two physical
nipples and obtain locations of the two physical nipples in the
body image;
retrieving, by the processor, relative locations of a plurality
of ECG pads to one or two nipples predefined according to the
locations of ECG leads defined in electrocardiography and
medical statistics of the locations of the nipples of a plurality of
people to compute reference locations of the ECG pads in the
body image according to the locations of the two physical
nipples;
determining, by the processor, a body orientation
information according to a plurality of relative location
information of the two physical nipples to an outline of the skin
area;
adjusting, by the processor, the reference locations of the
ECG pads to be indicated according to the determined body
orientation information; and
displaying, by the processor, the body image on the display
and indicating the reference locations of the ECG pads in the
displayed body image.
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OPINION
Patent Eligibility under 35 U.S.C. § 101
The controlling statute provides that “[w]hoever invents or discovers
any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.” 35 U.S.C.
§ 101. The Courts recognize certain judicial exceptions to Section 101,
namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
See Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71
(2012).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo, 566 U.S. at
72–73). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts.
Id. If so, we must secondly “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.
The PTO has published guidance on the application of Section 101.
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (the “Guidelines”). Under the Guidelines, in conducting step
one of the Alice framework, we first look to whether the claim recites:
(Prong 1) any judicial exceptions, including certain groupings of
abstract ideas; and
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(Prong 2) additional elements that integrate the judicial exception
into a practical application.
In other words, under prong 1 of an abstract idea analysis, we look to
whether the claim recites an abstract idea. Then, if it does, under prong 2,
we look at the claim, as a whole, and determine whether the claim is
“directed to” the abstract idea or, instead, is “directed to” a “practical
application” of the abstract idea.
Section 101 Analysis of
Claims 1, 3–7, 9, 11, 13–18, and 20
Appellant argues claims 1, 3–9, 11, and 13–20 as a group. Appeal
Br. 5–15. However, as we discern a distinction in the subject matter of
claims 8 and 19 as compared to the remainder of the claims, we will treat
claims 1, 3–7, 9, 11, 13–18, and 20 as a first group for which claim 1 is
representative. See 37 C.F.R. § 41.37(c)(1)(iv). We will address the subject
matter of claims 8 and 19 separately.
Prong 1
The Guidelines identify three key concepts as abstract ideas: (a)
mathematical concepts including “mathematical relationships, mathematical
formulas or equations, mathematical calculations”;  (b) certain methods of
organizing human activity, such as “fundamental economic principles or
practices,” “commercial or legal interactions,” and “managing personal
behavior or relationships or interactions between people”; and (c) mental
processes including “observation, evaluation, judgment, [and] opinion.”
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea. Non-Final Action 2. According to the
Examiner, the steps are directed to an abstract idea in the form of receiving
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and processing data (which, under appropriate circumstances, can be
considered a “mental process” under the Guidelines). Id. Additionally, the
Examiner finds that Appellant’s method is properly characterized as a
method of organizing activity under our Guidelines. Id. at 3.
Collecting and analyzing information, without more, is treated as
essentially a mental process within the abstract idea category. FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Methods which can be performed entirely in the human mind
are unpatentable not because there is anything wrong with
claiming mental method steps as part of a process containing
non-mental steps, but rather because computational methods
which can be performed entirely in the human mind are the
types of methods that embody the “basic tools of scientific and
technological work” that are free to all men and reserved
exclusively to none.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 1373 (Fed.
Cir. 2011). See also Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1147 (Fed. Cir. 2016)) (explaining that analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, are essentially mental processes within the abstract-idea
category).
Claim 1 recites:
• retrieving a body image;
• performing color recognition;
• performing texture analysis;
• retrieving locations;
• determining body orientation;
• adjusting reference locations; and
• displaying a body image with reference locations.
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Claims App. Basically, in claim 1, imaging equipment obtains image data
and feeds it into data processing means which processes the data and
displays an output. Id.
Locating objects in three-dimension space is something that humans
do on a routine basis. At a high level abstraction, the claimed subject matter
is not fundamentally different than setting up a game of checkers by
determining where to place the checkers on a checker board. A human
visualizes two objects using eyes (and/or touch) as sensors and then, after
collecting information related to the location and orientation of the two
objects, engages in mental processes to ascertain how a first object is
oriented in space vis-à-vis a second object and how the objects must be
repositioned from a first relative position to a second relative position so that
they are located and oriented in the desired arrangement. Although
Appellant’s sensors and processor may perform the ECG/body orientation
task at a higher degree of speed and/or precision than a player can set up a
checker board, the two tasks are fundamentally similar.2
The case of Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed.
Cir. 2017) is instructive here. Thales involved an inertial tracking system
for tracking the motion of an object relative to a moving reference frame.
Id. at 1344. The system in Thales used inertial sensors, such, as
accelerometers and gyroscopes, to measure forces associated with changes
in a sensor’s position and orientation relative to a known starting position.
Id. Although the Thales Court ultimately determined that the claims were

2 Merely taking advantage of the improved speed or efficiency inherent with
applying an abstract idea on a computer is not sufficient to establish
patentable subject matter under Section 101. See Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016).
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not “directed to” an abstract idea in accordance with an analysis that
parallels our prong two analysis below, Thales reconfirmed the underlying
principle that collecting and analyzing electronic information using mental
processes that could be performed by humans recites an abstract idea. Id.
at 1346–47.
In view of the foregoing discussion, we determine that the claim falls
within the ambit of essentially a mental process under the Guidelines and
thus recites an abstract idea.
Step 1, Prong 2
Under Prong 2 of Step 1 of the Guidelines, we do not assume that
such claims are directed to patent ineligible subject matter because “[a]t
some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas.’” In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) quoting Alice (quoting
Mayo). Instead, “the claims are considered in their entirety to ascertain
whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed.
Cir. 2016). If the claims are not directed to an abstract idea, the inquiry
ends. Guidelines. If the claims are “directed to” an abstract idea, then the
inquiry proceeds to the second step of the Alice framework. Id.
Consequently, we consider whether the claimed system for locating
ECG pads includes additional elements that integrate the judicial exception
into a practical application. A claim that integrates a judicial exception into
a practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
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the claim is more than a drafting effort designed to monopolize the judicial
exception. Guidelines.
Appellant argues that claim 1 is not directed to an abstract idea.
Appeal Br. 12.
[T]he method of Claim 1 is able to “compute reference
locations of the ECG pads in the body images of users of
various types (e.g. body shape, skin color, etc.) under various
postures (i.e. body deflection)” and accordingly “displaying the
body image on the display and indicating the reference
locations of the ECG pads in the displayed body image” . . . .
[T]he method of Claim 1 not only can “compute the locations
of ECG pads more accurately”, but also can help general users
without medical knowledge or medical stuff without experience
to “find out the locations of ECG pads by themselves through
photographing their own body image.”
Id. Appellant characterizes the foregoing as a “technological improvement.”
Id. at 13. Appellant argues that the claimed steps would never be undertaken
by humans. Id. (citing McRO).
In response, the Examiner remarks that enabling a user to put on ECG
pads is not recited in the claim language. Ans. 11. Otherwise, the Examiner
generally characterizes Appellant’s invention as merely collecting,
processing, and displaying data. Id. at 8–11.
In reply, Appellant argues that claim 1 is not a “mental process,”
because its processing steps are “finely organized” to achieve a “technical
effect.” Reply Br. 2. According to Appellant, the claimed method fixes the
deficiencies that ordinary people experience in accurately locating ECG
pads, which Appellant characterizes as a “practical application.” Reply
Br. 6.
Although automating tasks that humans are capable of performing
may be patent eligible if properly claimed (see McRO, 837 F.3d at 1313), we
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are not persuaded by Appellant’s effort to characterize its “technological
improvement” as analogous to McRO. Here, the method of claim 1
generally comprises eight functional steps, namely: (1) receiving
information, i.e., an image; (2) performing data processing, i.e., color
recognition, on the image; (3) performing data processing, i.e., texture
analysis, on the image; (4) retrieving stored statistical data, and (5)
determining a physical orientation in space; (7) calculating and comparing
statistical data with image processing derived data; and (8) displaying an
image graphically depicting reference locations in space. Claims App.
Although Appellant’s method collects, processes, and displays
information regarding placement of ECG pads on the body, actual manual
placement of the pads is an activity that is performed outside the scope of
the claim. Stated differently, the claimed method can be performed without
anyone placing any actual, physical ECG pads on anyone’s body and, even
if pads are placed on a body, the claimed method provides no feedback as to
whether the actual placement of the physical ECG pads correlates with the
displayed reference locations.
The prospect that Appellant’s method uses a computerized “tool”
does not render the claims less abstract. An abstract idea does not become
non-abstract by limiting the invention to a particular technological
environment. Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1366 (Fed. Cir. 2015); see also Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (Merely limiting the
field of use of the abstract idea to a particular technological environment
does not render the claims any less abstract); see also Alice, 573 U.S. at 224
(the fact a computer exists in the physical realm is beside the point). Here,
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the focus of the instant claims is not on improving a computer, but rather on
a process for which imaging equipment and computers are invoked merely
as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016).
Appellant demonstrates a fundamentally incorrect understanding of
what it means for an idea to be integrated into a “practical” application. The
notion that implementation of Appellant’s method may result in efficiently
computing and then displaying useful information does not render the claim
any less abstract. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (explaining that
performance by computer of operations that previously were performed
manually, albeit less efficiently, does not convert an abstract idea into
eligible subject matter).
To illustrate what is required for an invention to be “integrated” into a
“practical application,” we reversed an Examiner’s Section 101 rejection in
the case of Ex parte Hladio, Appeal No. 2018-003051, 2019 WL 2285538
(PTAB April 29, 2019). In that case, the inventor used sensor and computer
technology to improve a surgical procedure that entailed navigation and
alignment of a surgical tool and a patient’s bone. Id. at *5. We noted that
both the bone and the surgical tool were physical real world tangible items.
Id. We further noted that the invention was directed to improving the
performance and outcome of the surgical procedure as a result of improved
bone-tool alignment. Id. We reversed the Examiner in that case because,
although the claims recited an abstract idea, the idea was integrated into an
application that was “practical.” Id. at *6. In contrast, Appellant merely
displays the result data collection and image processing, which falls short of
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the standard of “practical application” required by the Guidelines. Claim 1,
therefore, fails to integrate the judicial exception into a practical application
and, therefore, is “directed to” an abstract idea.
Step 2
Turning to step 2 of the Alice/Mayo analysis, we look more precisely
at what the claim elements add in terms of whether they identify an
“inventive concept” in the application of the ineligible matter to which the
claim is directed to. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018). “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].”’ Alice, 573 U.S. at 221
(quoting Mayo, 566 U.S. at 77–78). Those “additional features” must be
more than well-understood, routine, conventional activity. Mayo, 566 U.S.
at 79.
Under step two of the Alice/Mayo framework, the Examiner
determines,
The claimed invention discusses a processor and a display. In
paragraph 39 the system list general purpose computer items
which are used in regards to the invention. Further paragraph 40
discusses the display being “a general type display”. Also
paragraph 42 states that the processor used in the system is a
general purpose microprocessor. Therefore, these elements are
looked at to be as generic computing elements, as disclosed by
the applicant in the specifications. . . . Therefore, claim 1, and
its dependents do not recite any additional elements or make
any improvements to the function of the computer itself, utilize
a particular machine, transform an article to a different state, or
limit the scope of the claim to a particular useful application;
therefore, the claim is not patent eligible.
Non-Final Act. 4.
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Appellant argues that the claim recites elements such as “detecting”
and “adjusting” and “displaying.” Appeal Br. 13–14. Appellant contends
that these steps are not well-understood, routine, or conventional. Id.
at 14–15. However, what Appellant points to as not well-understood,
routine, or conventional is just the abstract idea itself. It is not “something
more” than the abstract idea, which is what the law requires. Mayo, 566
U.S. at 79. We may assume that the techniques claimed are
“[g]roundbreaking, innovative, or even brilliant,” but that is not enough for
eligibility. SAP Am., 898 F.3d at 1163 (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)). Appellant’s
steps of detecting, adjusting, and displaying merely tell a computer to
“apply” the abstract idea of step 1. However, it does not matter how
innovative Appellant’s abstract idea is. Id. A claim for a new abstract idea
is still an abstract idea. Synopsys, 839 F.3d at 1151.
There is no indication in the Specification that Appellant has achieved
an advancement or improvement in computer processing technology. See
generally Spec. There is similarly no indication in the Specification that
Appellant has achieved an advancement or improvement in image
acquisition or display technology. Id. All of the imaging, processing, input-
output devices, and their interconnections, are described at a high level of
generality that presumes familiarity on the part of the reader. Id. A patent
applicant is required to submit a specification that contains a written
description of the invention in “full, clear, concise, and exact terms.” 35
U.S.C. § 112(a). For purposes of the Alice/Mayo analysis, a specification
demonstrates the well-understood, routine, conventional nature of step 2
“additional elements” when it describes them in a manner that indicates they
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are sufficiently well-known that they need not be described with
particularity to satisfy 35 U.S.C. § 112(a). That is the case here.
Essentially, all Appellant has done in claim 1 is use generic image
acquisition and processing devices to capture data, use computer processing
technology to correlate such data with statistical data regarding ECG pad
location, and display the result of its image data processing to a user. This is
quintessentially “collecting information, analyzing it, and displaying certain
results of the collection and analysis.” Elec. Power Grp., 830 F.3d at 1353.
Appellant’s method recites an “abstract idea” for which computers are
invoked merely as a tool. Enfish, 822 F.3d at 1335–36.
In short, Appellant claims an abstract idea that is implemented on a
computer in a manner that merely states the abstract idea while adding the
words “apply it.” See Alice, 573 U.S. at 223. This is not sufficient for
patent eligibility. Id. In view of the foregoing, we sustain the rejection of
claims 1, 3–7, 9, 11, 13–18, and 20.
Section 101
Analysis of Claims 8 and 19
Claim 8 depends from claim 1, and claim 19 depends from
independent claim 18. Claims App. Claim 19 is an apparatus claim that is
substantially similar in scope to claim 8, such that we deem it expedient to
discuss the two claims together.
Prong 1
Inasmuch as claims 8 and 19 each depend from a claim that already
recites an abstract idea, we determine that claims 8 and 19 recite an abstract
idea and refer the reader to our previous discussion with respect to claim 1.
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Prong 2
Claim 8 is reproduced below:
8. The method according to claim 1, further comprising:
capturing the body image including at least one physical
ECG pad;
detecting a color of each of the at least one physical ECG
pad to identify a type of the physical ECG pad; and
comparing the location of the physical ECG pad in the body
image with the computed reference location of the ECG pad
corresponding to the type of the physical ECG pad to
obtain a direction of moving the physical ECG pad to the
reference location; and
prompting the direction.
The Federal Circuit cautions us not to “overly abstract” claims when
performing the Mayo/Alice analysis. Natural Alternatives Int’l., Inc. v.
Creative Compounds, LLC, 918 F.3d 1338, 1350 (Fed. Cir. 2019). Although
Appellant’s claim 8 does collect and analyze data in the same manner as
claim 1, it would be an over-simplification of the claim to state that claim 8
is also “directed to” an abstract idea. In claim 8, the method not only
captures body image data, but also captures data with respect to at least one
physical ECG pad. Claims App. The image processing facilities of the
method then compare the location of the physical ECG pad with a desired or
“reference location” and, if there is a discrepancy between the physical
location and reference location, the method prompts the user to move the
physical ECG pad in the direction of the reference location. Id. This is done
to enhance or improve the quality of an ECG procedure. We view this as a
technological improvement in the delivery of a medical service and, as such,
the claims are directed to a specific tangible application. See Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1066–67 (Fed.
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Cir. 2011) (explaining that claims directed to a specific, tangible application
of an abstract idea recited patent-eligible subject matter); see also
Guidelines, 84 Fed. Reg. at 55.
As previously discussed, we reversed an Examiner’s Section 101
rejection in Ex parte Hladio, supra. In that case, the inventor used sensor
and computer technology to improve a surgical procedure that entailed
navigation and alignment of a surgical tool and a patient’s bone. Id. We
noted that both the bone and the surgical tool were physical real world
tangible items. Id. We further noted that the invention was directed to
improving the performance and outcome of the surgical procedure as a result
of improved bone-tool alignment. Id. We reversed the Examiner in that
case because, although the claims recited an abstract idea, the idea was
integrated into an application that was “practical.” Id.
Similarly, Appellant’s claim 8 invention accomplishes a real world,
tangible result of achieving a more accurate ECG procedure by using a
physical diagnostic device (ECG pad) that connects to a real, live human
patient. Thus, claim 8 of the instant application integrates the judicial
exception into a practical application and, therefore, is not “directed to” an
abstract idea. Guidelines. This ends our inquiry in Appellant’s favor. See
McRO, 837 F.3d at 1312 (explaining that if the claims are not “directed to”
an abstract idea, the inquiry ends).
Consequently, we do not sustain the Examiner’s Section 101 rejection
of claims 8 and 19.
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CONCLUSION
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3-9, 11
13-20
101 Eligibility 1, 3-7, 9, 11,
13-18, 20
8, 19
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED IN PART