KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Sep 9, 2020

14366014 - (D) (P.T.A.B. Sep. 9, 2020)

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.
14/366,014 06/17/2014 Lara Marie Brewer 2011P01988WOUS 6447
24737 7590 09/09/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
MARMOR II, CHARLES ALAN
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
09/09/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARA MARIE BREWER
and JOSEPH ALLEN ORR

Appeal 2020-001406
Application 14/366,014
Technology Center 3700
Before DANIEL S. SONG, CHARLES N. GREENHUT, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–3, 6–8, 10–13, 15–19.1 See Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Koninklijke Philips N.V. as the real party
in interest. Appeal Br. 1.
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Application 14/366,014

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CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for monitoring and
controlling a pressure support device. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A respiration monitoring system, comprising:
one or more gas parameter sensors configured to generate
output signals conveying information related to one or more gas
parameters in a respiratory circuit, wherein the respiratory circuit
comprises a subject interface appliance configured to
communicate with the airway of a subject; and
a processor configured to execute computer program
modules, the computer program modules comprising:
a breathing parameter module configured to determine
breathing parameters of the respiration of the subject based on
the output signals, the breathing parameters comprising (i) a first
parameter related to breath length, and (ii) a second parameter
related to end tidal carbon dioxide;
a respiratory rate monitor module configured to determine,
in an ongoing manner, a respiratory rate metric based on a
comparison of the first parameter for a first set of breaths by the
subject with the first parameter for a first subset of one or more
breaths, wherein the one or more breaths in the first subset of one
or more breaths are also in the first set of breaths by the subject;
an apnea monitor module configured to determine, in an
ongoing manner based on the output signals, an apnea metric that
represents whether the subject is currently experiencing an
apnea, and, responsive to the subject currently experiencing an
apnea, a severity and/or duration of the apnea;
an end tidal carbon dioxide monitor module configured to
determine, in an ongoing manner, an end tidal carbon dioxide
metric based on a comparison of the second parameter for a
second set of breaths by the subject with the second parameter
for a second subset of one or more breaths, wherein the one or
more breaths in the second subset of one or more breaths are also
in the second set of breaths by the subject;
a ventilation index module configured to determine, in an
ongoing manner, a ventilation index for the subject by inputting
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Application 14/366,014

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inputs including the respiratory rate metric, the apnea metric, and
the end tidal carbon dioxide metric into a lookup table mapping
the inputs to a value of the ventilation index, such that the
ventilation index at a given time represents respiratory stability
and/or effectiveness for the subject at the given time; and
an alarm module configured to compare the ventilation
index with a score threshold and to generate, based on the
comparison, alarms that indicate instability in the respiration of
the subject, an interface being controlled by the processor to
generate the alarm.

Appeal Br. 18–19, Claims App.
REJECTIONS
Claims 1–3, 6–8, 10–13, and 15–19 are rejected under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply
with the written description requirement. Final Act. 3–4.
Claims 1–3, 6–8, 10–13, and 15–19 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to an abstract idea. Final
Act. 4–5.
OPINION
The claims are argued as a group, for which we will select claim 12 as
representative under 47 C.F.R. § 41.37(c)(1)(iv) for purposes of analyzing
both rejections.

2 It is noted that claim 11, by virtue of reciting “means” for accomplishing
particular functions, supported in the Specification only by “modules” for
performing those same functions, may raise additional issue under Aristocrat
Tech. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
2008). Such issues are not developed in the record presently before us.
Although the Board is authorized to reject claims under 37 C.F.R. §
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Written Description
The written description requirement serves an important role in
ensuring a patentee’s right to exclude is commensurate with the patentee’s
contribution to the art—the so called quid pro quo of the patent grant. See
MPEP § 2162.
With regard to the written description requirement, the Examiner
found:
The [S]pecification [] does not provide details on how to use [the
recited] metrics to determine an index. In paragraph 33 of the
specification filed 6/17/2014 [], the ventilation index is described
as “determined according to one or more mathematical
algorithms using numerical metrics as inputs” and “from a look-
up table that uses appropriate metrics as inputs.” The
[S]pecification provides no additional details on the
mathematical algorithm or the look-up table. For computer
implemented functional claims, the [S]pecification must disclose
the necessary hardware and algorithm to perform the claimed
function in sufficient detail (see MPEP 2161.01).[3] Without
details how the metrics are used together to determine the
ventilation index. [sic] Thus, the specification fails to comply
with the written description requirement.

Final Act. 4.
Indeed, paragraph 33 of the Specification indicates a ventilation index
is determined based on the recited metrics, but gives little guidance as to
how to actually make that determination based on those metrics other than

41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
3 See also Examining Computer-Implemented Functional Claim Limitations
for Compliance With 35 U.S.C. 112, Fed. Reg. Vol. 84, No. 4 (Jan. 7, 2019)
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indicating a type of look-up table or mathematical algorithm could be
employed. No specific lookup table or mathematical equation or algorithm
that could be used to define such a lookup table or to calculate a ventilation
index, is defined anywhere in Appellant’s Specification.
Appellant responds by arguing the purportedly missing descriptive
content relates to subject matter well-known in the art and submits evidence
purporting to demonstrate that in the form of a web page allowing a user to
calculate a ventilation index. App. Br. 9–13. Appellant is certainly allowed
to rely on common knowledge in the art for satisfaction of the written
description requirement. See, e.g., LizardTech, Inc. v. Earth Resource
Mapping, Inc. 424 F.3d 1336, 1345-47 (Fed. Cir. 2005) (“[T]he patent
specification is written for a person of skill in the art, and such a person
comes to the patent with the knowledge of what has come before. Placed in
that context, it is unnecessary to spell out every detail of the invention in the
specification; only enough must be included to convince a person of skill in
the art that the inventor possessed the invention.”) (citations omitted). Here,
however, the Examiner, after conducting a prior-art search concluded that it
was not known in the art how to derive the ventilation index based on the
recited parameters, which include: a breathing parameter, a repertory rate, an
apnea metric, and an end tidal carbon dioxide metric. Appellant is free to
disagree with this assessment by the Examiner. However, in such case,
Appellant is in the best position to provide evidence as to what was, in fact,
known in the art at the time of filing.
The web page provided by Appellant seems to take, as inputs,
ventilator respiratory rate, peak inspiratory pressure, positive end-expiatory
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pressure, and some form of CO2 pressure.4 The Examiner correctly points
out, first, these are not the same inputs as those recited by Appellant, and
second, an equation is provided which actually teaches how the ventilation
index is derived based on these inputs—something Appellant’s Specification
lacks. Ans. 3–5. With regard to the inputs, at least the apnea metric is
missing in the web page provided. Ans. 5. Appellant apparently
misunderstands the Examiner’s position with regard to the equation because
Appellant argues that, contrary to the Examiner’s determination, the web
page does specify an equation. Reply. Br. 3. That was the point the
Examiner was trying to make: the Examiner cited the equation to contrast
the web page, which actually teaches how the ventilation index is derived
based on the indicated parameters, to Appellant’s Specification, which does
not teach how to derive the ventilation index based on the recited
parameters. Appellant thus provides no meaningful response on this point.
The web page provided by Appellant clearly does not support Appellant’s
position that it was known in the art how to calculate a ventilation index
based on parameters different from those shown in the web page. The web
page is the only concrete evidence Appellant provides as to the knowledge
of one skilled in the art at the time of invention. However, because the
ventilation index calculation demonstrated by the web page is based on
different parameters than those recited in Appellant’s claims, the web page
is of little probative value.
For the foregoing reasons we sustain the Examiner’s rejection based
on the inadequacy of the written description.

4 The best available copy of the web page in the record before us is not
perfectly legible.
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Eligibility
In Gottschalk v. Benson, 409 U.S. 63, 67 (1972), the Court, (citing
O’Reilly v. Morse 56 U.S. 62 (1853)), cautioned that a claim “so abstract and
sweeping as to cover both known and unknown uses” is not directed to
patent-eligible subject matter under 35 U.S.C. § 101. Gottschalk v. Benson,
409 US at 68. In Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S.Ct. 2347
(2014) the Supreme Court reaffirmed this principle:
We have long held that this provision contains an important
implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable. We have interpreted § 101 and
its predecessors in light of this exception for more than 150 years.
We have described the concern that drives this exclusionary
principle as one of pre-emption. Laws of nature, natural
phenomena, and abstract ideas are ‘the basic tools of scientific
and technological work. [M]onopolization of those tools through
the grant of a patent might tend to impede innovation more than
it would tend to promote it, thereby thwarting the primary object
of the patent laws. We have repeatedly emphasized this concern
that patent law not inhibit further discovery by improperly tying
up the future use of these building blocks of human ingenuity.
Alice, 134 S.Ct. at 2354 (citations omitted).The Examiner considers
claim 1 to be directed to the collection and analysis of data, a mathematical
algorithm, without practical application and we agree.5 Final Act. 4–5. A

5 The Examiner’s alternate rationale, that the process can be performed in
the human mind is noted. Ans. 6. We are mindful that if a claim, under its
broadest reasonable interpretation, covers performance in the mind but for
the recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind. However, we do not find within the Examiner’s analysis sufficient
explanation as to which steps could be performed mentally and how, and for
those steps, if any that could not be performed mentally why they are
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mathematical algorithm need not recite any specific equation or formula to
be considered ineligible under 35 U.S.C. § 101. App. Br 14–15; see also,
e.g., Bancorp Servs. v. Sun Life Assurance, 687 F.3d 1266, 1280 (Fed. Cir.
2012). Here a number of abstract parameters with no definitive criteria or
limitation are recited and, as discussed above, are used in some undefined
and nonspecific way to come up with a ventilation index. For example, the
“breathing parameter module” is configured to determine by any means and
with any device “breathing parameters,” a first of which can have any
conceivable relationship to “breath length,” a second of which can have any
conceivable relationship to “end tidal carbon dioxide.” The only restriction
on the derivation of the breathing parameters is that the breathing parameter
determination must be “based on output signals [from the gas sensors].”
Spec ¶ 32. However, those “output signals” themselves need only convey
information related in any conceivable way to any conceivable “gas
parameter” in a “respiratory circuit.” Id. The rest of the claim limitations
follow essentially the same pattern. There is nothing practical about merely
reciting results that can be achieved by any known or unknown devices in
any known or unknown way. The abstractness of this claim and its potential
preemptive effect are clear and unmistakable.
We agree with the Examiner that the sensors for acquiring and
transmitting some nonspecific data and the alarm generated according to
some nonspecific criteria mount to pre- and post-solution activity,
respectively. Ans. 7; see also MPEP 2106.05(g) and cases cited therein.

conventional. Accordingly, we rely only on the Examiner’s determination
that the claim is directed to a mathematical algorithm. Final Act. 4; see also
Ans. 6.
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Appellant argues that the Examiner improperly considered the
conventionality of the sensor and alarm arrangements in concluding they do
not integrate the claimed subject matter into a practical application. Reply.
Br. 4. According to page 54 of the cited guidance Examiners are instructed:
if an examiner had previously concluded under revised Step 2A
that, e.g., an additional element was insignificant extra-solution
activity, they should reevaluate that conclusion in Step 2B. If
such reevaluation indicates that the element is unconventional or
otherwise more than what is well-understood, routine,
conventional activity in the field, this finding may indicate that
an inventive concept is present and that the claim is thus eligible.
Fed. Reg. Vol. 84, No. 4, 54.
Under this guidance, there is nothing improper about the Examiner
considering both the practicality and conventionality of subject matter
characterized as insignificant extra-solution activity. However, Appellant
correctly points out that a determination of conventionality does not
necessarily support the conclusion of the absence of practicality as the
Examiner’s wording appears to suggest; they are separate inquiries.
Although the Examiner’s wording could have been clearer and more
consistent with the aforementioned guidance, Appellant’s argument
essentially attacks the precise wording chosen by the Examiner as opposed
to the substance of the Examiner’s determination. To the extent
conventionality was not a factor that should have been considered by the
Examiner in determining the absence of a practical application, we do not
think it impacted the Examiner’s ultimate conclusion because the Examiner
cited the correct and relevant section of the MPEP, § 2106.05(b) (as opposed
to § 2106.05 (d)) with regard to generic data gathering means and steps not
causing claimed subject matter to be integrated in to a practical
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application—this was the crux of the Examiner’s point.6 We do not see how
that changes, or how Appellant was harmed by, the Examiner’s statement
seemingly inconsistent with the guidance and the MPEP. We recognize that
the MPEP sets forth Office policy upon which applicants are entitled to rely.
See In re Kaghan, 387 F.2d 398, 401 (1967). However, the MPEP “does not
have the force of law or the force of the rules of Title 37 of the Code of
Federal Regulations.” MPEP Foreword. Appellant does not cite, and we are
unaware of, any precedent that Examiner error warranting reversal on the
grounds specified by the Examiner is demonstrated simply by showing the
Examiner made a statement that did not strictly adhere to the specific
language used in the MPEP or PTO guidance.
DECISION
For the foregoing reasons we sustain the Examiner’s rejection under
§ 101. The Examiner’s rejections are affirmed.
CONCLUSION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6–8,
10–13, 15–
19
112 Written
Description
1–3, 6–8,
10–13, 15–
19

1–3, 6–8,
10–13, 15–
19
101 Eligibility 1–3, 6–8,
10–13, 15–
19

Overall
Outcome
1–3, 6–8,
10–13, 15–
19

6 This is also discussed at MPEP § 2106.05(g)
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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. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED