NIHON KOHDEN CORPORATION

Patent Trials and Appeals Board

May 6, 2020

2019004793 (P.T.A.B. May. 6, 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.
14/793,869 07/08/2015 Jun MOTOGI Q219680 9863
65565 7590 05/06/2020
SUGHRUE-265550
2000 PENNSYLVANIA AVE. NW
SUITE 900
WASHINGTON, DC 20006
EXAMINER
KREMER, MATTHEW
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
05/06/2020 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):
PPROCESSING@SUGHRUE.COM
SUGHRUE265550@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUN MOTOGI, YOSHINOBU ONO, RYOSUKE USHIJIMA,
and TAKESHI KOJIMA

Appeal 2019-004793
Application 14/793,869
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 5–7, (i.e., all the claims on
appeal). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “NIHON
KOHDEN CORPORATION.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a sympathetic skin response
measuring apparatus which can adequately perform a sympathetic skin
response (SSR) measurement.” Spec. 1:11–13. Method claims 1 and 5 are
independent. Claims 1 and 5 are illustrative of the claims on appeal and are
both reproduced below.
1. A sympathetic skin response measuring method
comprising:
supplying to only C fibers in a living body, electrical
stimulus via a stimulation electrode applied to the living body;
measuring information of a sympathetic skin response
(SSR) based on a signal obtained from a measurement electrode
applied to the living body, wherein the information of the SSR
measured in the measuring step is SSR onset latency;
obtaining a conduction velocity of a pain sensation
through the C fibers based on the SSR onset latency; and
performing an evaluation of a state of a sympathetic
nerve of the living body based on whether the conduction
velocity of the pain sensation, that was obtained from the SSR
onset latency, is within a given range from a predetermined
conduction velocity of pain sensation through the C fibers.

5. A method of evaluating functionality of C fibers of a
patient, the method comprising:
measuring a first sympathetic skin response (SSR) onset
latency of the patient to electrical stimulation at a first location
on a body of the patient and a second SSR onset latency of the
patient to electrical stimulation at a second location on the body
of the patient;
calculating a conduction velocity, of a pain sensation,
through the C fibers of the patient based on the first SSR onset
latency, the second SSR onset latency, the first location, and the
second location; and
determining a state of the functionality of the C fibers of
the patient based on a comparison of the calculated conduction
velocity to an expected conduction velocity of the C fibers.
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REFERENCE(S)
Name Reference Date
Inui et al. (“Inui”) US 2010/0094378 A1 Apr. 15, 2010
Kosierkiewicz US 2011/0009768 A1 Jan. 13, 2011
B. Shahani, (Sympathetic skin response– a method of assessing
unmyelinated axon dysfunction in peripheral neuropathies). Hereinafter
“Shahani.”
N. Kohden, (Neuropack X1 EP/EMG/NCV Measuring System MEB-
2300 Desktop System) Dec. 7, 2010. Hereinafter “N. Kohden I.”
N. Kohden, (Surface Stimulation Electrode NM-980W). M. Oishi et
al., (Current Perception Threshold and Sympathetic Skin Response in
Diabetic and Alcoholic Polyneuropathies). Hereinafter “N. Kohden II.”
REJECTIONS2
Claims 5–7 are rejected under 35 U.S.C. § 101 on the basis that the
claimed invention is directed to a velocity relationship “which is a law of
nature or natural phenomenon.” Final Act. 8. Referred to below as
“Rejection 1.”
Claims 5–7 are rejected under 35 U.S.C. § 101 on the basis that the
claimed invention is directed to a method of using a computational
algorithm, “which is an abstract idea.” See Final Act. 5. Referred to below
as “Rejection 2.”

2 The Examiner withdrew the rejections of: (a) claims 1 and 5–7 under pre-
AIA 35 U.S.C. 103(a) as unpatentable over Oishi, Inui, N. Kohden I, and
Kosierkiewicz; and, (b) claims 2 and 3 under pre-AIA 35 U.S.C. 103(a) as
unpatentable over Oishi, Inui, N. Kohden I, Kosierkiewicz, and N. Kohden
II. Ans. 20.
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Claims 1 and 5–7 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Shahani, Inui, N. Kohden I, and Kosierkiewicz. See Final
Act. 10–11. The Examiner also provides an alternative rejection under
§ 103(a) employing the same references. See Final Act. 16.
Claims 2 and 3 are rejected under pre-AIA 35 U.S.C. 103(a) as
unpatentable over Shahani, Inui, N. Kohden I, Kosierkiewicz, and N.
Kohden II. See Final Act. 20.

THE REJECTIONS OF CLAIMS 5–7 UNDER 35 U.S.C. § 101
Background
In issues involving subject matter eligibility under 35 U.S.C. § 101,
our inquiry focuses on whether the claim satisfies the two-step test set forth
by the Supreme Court in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).
The Supreme Court instructs us to “first determine whether the claims at
issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 217. If
the initial threshold is met, we then move to the second step, in which we
“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.” Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 79, 78 (2012)). The Supreme Court describes the second step 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.’” Alice, 573 U.S. at
217-218 (quoting Mayo, 566 U.S. at 72– 73).
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On January 7, 2019, the U.S. Patent and Trademark Office published
revised guidance on the application of § 101 particularly addressing the
second step discussed in Alice. See 2019 Revised Patent Subject Matter
Eligibility Guidance (“Revised Guidance”), 84 Fed. Reg. 50–57; see also
Reply Br. 5. Per the Revised Guidance, we look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic
practice, or mental processes) which is identified as “Prong
One” of “Step 2A.” (Revised Guidance, 84 Fed. Reg. at 54,
Section III.A.1.); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h))
which is identified as “Prong Two” of “Step 2A.” (Revised
Guidance, 84 Fed. Reg. at 54, Section III.A.2.).
Only if a claim recites a judicial exception (see (1) above) and does
not integrate that exception into a practical application (see (2) above), do
we then look to whether the claim:
(3) adds a specific limitation or combination of limitations
beyond the judicial exception that are 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, and which are
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identified as “Step 2B.” Revised Guidance, 84 Fed. Reg. at 56,
Section III.B.
Analysis
Appellant argues claims 5–7 together. See Appeal Br. 6–23. We
select claim 5 for review, with remaining claims 6 and 7 standing or falling
with claim 5. See 37 C.F.R. § 41.37(c)(1)(iv). As indicated, the Examiner
posits two separate rejections of claim 5 under Section 101; one based on
claim 5 being directed to “a law of nature or natural phenomenon”
(“Rejection 1”) (Final Act. 8), and the other based on claim 5 being directed
to “an abstract idea” (“Rejection 2”) (Final Act. 5).3 We address each such
rejection separately where needed and together where possible.
Step One:
Does Claim 5 fall within a Statutory Category of § 101?
Step One of the Subject Matter Eligibility Test considers whether a
claim recites one of the enumerated statutory classes of subject matter that is
eligible under 35 U.S.C. § 101, namely, a process, machine, manufacture, or
composition of matter. We agree with the Examiner that claim 5 is drawn to
a process (method), which is a statutory category under § 101. See Final
Act. 5 (replicating 35 U.S.C. § 101).
Step 2A, Prong One, Rejection 1:
Does Claim 5 Recite a Law of Nature or Natural Phenomenon?
The Examiner references remarks made by Appellant “on page 9 of
the response filed on 7/10/2017.” Final Act. 8. In that response, Appellant
states, “the claims of the present application are directed to (e.g., claim 5)

3 “The Examiner respectfully submits that both rationales are valid and they
are alternative grounds of rejection under 35 U.S.C. 101.” Ans. 24–25.
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the relationship (i.e., law of nature, natural phenomena) between
‘sympathetic skin response (SSR)’ and ‘C fibers of a patient.’” Appellant’s
Amendment dated July 10, 2017, page 9. The Examiner agrees, stating
“Claims 5–7 are directed to the relationship among the SSR, conduction
velocity, and C fibers of a patient, which is a law of nature or natural
phenomenon.” Final Act. 8. As such, the Examiner states that claim 5 is
“rejected under 35 U.S.C. [§] 101 because the claimed invention is directed
to a judicial exception.”4 Final Act. 7.
This characterization of claim 5 by both Appellant and the Examiner
is consistent with the actual limitations of claim 5. For example, claim 5
recites (a) “measuring [“a first” and “a second”] sympathetic skin response
(SSR) onset latency of the patient to electrical stimulation” at first and
second locations on a patient’s body; (b) “calculating a conduction velocity
. . . through the C fibers of the patient” based on step (a); and, (c)
determining the functional state of the C fibers “based on a comparison of
the calculated conduction velocity to an expected conduction velocity of the
C fibers.” Claims App., Appeal Br. 39. In other words, we agree with the
characterizations above that claim 5 recites steps that elicit and measure a
sympathetic skin response onset latency in a patient, which is a natural
phenomenon that occurs in response to stimulation of, inter alia, “C fibers of
a patient.” Claim 5 then recites that the measurements of this natural
phenomenon are used to calculate a conduction velocity of a pain sensation
through the C fibers of the patient. See supra.

4 It is well-known that Section 101 “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice, 573 U.S. at 216 (citation omitted).
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Appellant seeks to clarify the above stating, “the inventors have
discovered a principle–the correlation between the generation of sweat and
the transmission of pain through nerves of the human body.”5 Appeal Br.
17. Appellant explains that “both signals for causing sweat and the
transmission of pain are carried by the same nerve.” 6 Appeal Br. 17.
Therefore, Appellant essentially admits/agrees that claim 5 recites the
natural phenomenon identified above, namely, the use of electrical
stimulation to elicit the natural phenomenon of a SSR in a patient and the
use of measurements of that SSR natural phenomenon to calculate a
conduction velocity of a pain sensation using another natural phenomenon,
i.e., that signals for causing pain and sweat are carried by the same nerve so
that the measurement of the onset of one (sweat) can be used to
measure/calculate the velocity of the other (pain).7
Appellant also contends that “the claims do not recite only a natural
phenomenon.” Appeal Br. 21. Appellant argues that they “seek to claim an
application of that knowledge–a new technique (namely, a practical

5 The Examiner appears to concur stating, “Appellant seems to argue that
their invention is a correlation” but that “[t]his correlation is an abstract idea
or law of nature as discussed above.” Ans. 24; see also id. at 25, 26.
6 Appellant states that although they have discovered “the correlation
between the generation of sweat and the transmission of pain through nerves
of the human body . . . that is not what they claimed.” Reply Br. 8; see also
id. at 9.
7 Additionally, our reviewing court has repeatedly held that features that are
not claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice analysis.
See Alice, 573 U.S. at 221 (“[W]e must examine the elements of the claim to
determine whether it contains an ‘inventive concept.’”); Synopsis, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (“The § 101
inquiry must focus on the language of the Asserted Claims themselves.”).
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application of the principle) that permits a more accurate and objective
evaluation of the functionality of C fibers.” Appeal Br. 22. However, this
step merely employs another aspect of the natural phenomenon, namely, the
fact that C fibers transmit sweat and pain signals as natural phenomena such
that measurement of SSR onset in C fibers can be used to calculate velocity
of pain signals through the same C fibers. This is a matter to be discussed
elsewhere in the analysis as the question here is whether or not claim 5
recites a law of nature or natural phenomenon, which Appellant, again,
appears to acknowledge.
Thus, we determine that claim 5 recites a law of nature or natural
phenomenon.
Step 2A, Prong One, Rejection 2:
Does Claim 5 Recite an Abstract Idea?
We now address the other Section 101 rejection in which the
Examiner finds claim 5 to be a method of “using a computational algorithm,
which is an abstract idea.” Final Act. 5; see also Ans. 20–22, 27, 32. We
are instructed to ascertain whether claim 5 recites any judicial exceptions,
including certain groupings of abstract ideas, i.e., mathematical concepts,
certain methods of organizing human activity such as a fundamental
economic practice, or mental processes. Appellant contends that claim 5
does not recite a “1) mathematical concept,” “2) certain methods of
organizing human activity,” or “3) mental processes” because claim 5
does not recite “subject matter that falls within any of the enumerated
groupings shown above.” Reply Br. 6–7.
As already expressed above, claim 5 recites (a) “measuring [“a first”
and “a second”] sympathetic skin response (SSR) onset latency” via
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“electrical stimulation” at first and second locations on a patient’s body; (b)
“calculating a conduction velocity . . . through the C fibers of the patient”
based on step (a); and, (c) determining the functional state of the C fibers
“based on a comparison of the calculated conduction velocity to an expected
conduction velocity of the C fibers.” Claims App., Appeal Br. 39. Similar
to the above, Appellant describes these limitations as “a new technique”
directed to a “correlation between the generation of sweat and the
transmission of pain through nerves.” Appeal Br. 7. However, as also
expressed above, claim 5 is silent as to any correlation between sweat and
pain, and instead only addresses a velocity comparison, which is a
mathematical concept. Thus, we agree with the Examiner that the steps of
“calculating a conduction velocity . . .; and determining a state of the
functionality of the C fibers of the patient based on a comparison of the
calculated conduction velocity to an expected conduction velocity of the C
fibers” pertain to the use of a “computational algorithm.” Final Act. 5–6.
Appellant’s Specification describes this process as using a time difference.
Spec. 10:4–17. Because the above enumerated judicial exceptions
encompass mathematical concepts (see Revised Guidance, 84 Fed. Reg. at
54, Section III.A.1), we conclude that Appellant’s claim 5 reasonably recites
an abstract idea.

Step 2A, Prong Two:
Does Claim 5 Recite Additional Elements that Integrate the Judicial
Exceptions into a Practical Application?
Following Office guidance, we are next instructed to determine
whether claim 5 recites “additional elements that integrate the exception into
a practical application.” See MPEP §§ 2106.05(a)–(c), (e)–(h); Revised
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Guidance, 84 Fed. Reg. at 54, Section III.A.2. Appellant contends, “the
claims are nonetheless patent eligible under prong two of the revised step 2A
of the Alice test” because “[c]laim 5 recites a new process that utilizes a
previously unrecognized correlation between the generation of sweat and the
transmission of pain.” Reply Br. 7. Appellant is relying on “a more
accurate and objective evaluation” of the human fiber, but the only
“evaluation” recited in claim 5 is a comparison of velocities to determine
fiber functionality. Reply Br. 8.
In one respect, claim 5 contains no additional elements because the
measuring and calculating steps recite the natural phenomenon identified
above and the calculating and determining steps recite mathematical
concepts identified above. However, even if we consider that the
“additional elements” recited consist of a patients’ body, electrically
stimulating portions thereof, calculating a velocity of the applied stimulation
through the body, and then comparing the measured velocity to an expected
velocity, it is not explained how these operations are anything other than
generic process steps one skilled in the art would ordinarily undertake when
attempting to ascertain information about the electrical conductivity of a
human body. This understanding is supported by Appellant’s Specification
explaining that “[a]n SSR measurement is widely used as a method of non-
invasively testing an autonomic nervous system in various fields such as
neurology and psychosomatic medicine.” Spec. 1:17–19. Thus, in contrast
to Appellant’s contentions (e.g., “the claims recite significantly more than
only a mere patent-ineligible concept because the claims recite a
particularized application of a principle” (Appeal Br. 8)), the above
described “additional elements” are instead employed as generic steps which
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one skilled in the art is likely to perform in gathering nerve stimulation data.
See Ans. 33 (“the present claims are analogous to: performing a plurality of
clinical laboratory tests on the individual to measure values”); see also id. at
34 (addressing the data collection steps recited in Electric Power Group v.
Alstom, 830 F.3d 1350 (Fed. Cir. 2016)).
Further, we agree with the Examiner’s statement that claim 5 “only
results [in] an abstract determination and, not a physical product that is
produced, not a method of treatment that is carried out, and not a
performance of a treatment.”8, 9 Ans. 28; see also id. at 35. In other words,
no subsequent action is recited as a result of such comparison.
Appellant recognized the natural law that C fibers carry signals both
for causing sweat and transmitting pain such that measurement of a patient’s
SSR in response to stimulation (a natural phenomenon) can be used as a
proxy to measure the velocity with which pain signals are carried along the
C fibers. Appeal Br. 7. However we have been instructed that “[i]f a law of
nature is not patentable, then neither is a process reciting a law of nature,
unless that process has additional features that provide practical assurance

8 The Examiner continues, “the calculation of the conduction velocity and its
comparison to the expected conduction velocity are drawn to an abstract idea
since they are capable of being mentally performed without any physicality
associated with such calculations.” Ans. 28, 29.
9 Appellant references Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1050–51 (Fed. Cir. 2016). See Appeal Br. 22. As noted by Appellant,
our reviewing court, in Rapid Litig., stated “[t]he claimed method is patent
eligible because it applies the discovery that hepatocytes can be twice frozen
to achieve a new and useful preservation process.” Appeal Br. 22. Here, no
application is enunciated because claim 5 merely determines “a state of the
functionality of the C fibers of the patient.” See also Ans. 31.

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that the process is more than a drafting effort designed to monopolize the
law of nature itself.” Mayo, 566 U.S. at 77; see also Cleveland Clinic
foundation v. True Health Diagnostics LLC, 760 F. App’x 1013, 1018 (Fed.
Cir. 2019) (holding “the claims are directed to the natural law that blood
MPO levels correlate with atherosclerotic CVD. . . . The claims are not
directed to new techniques for performing an immunoassay to detect a
patient’s blood MPO levels. . . . Nor is the fact that blood MPO levels
correlate with atherosclerotic CVD any less a natural law because it can only
be observed by use of certain techniques.”). Thus, these “additional
elements” are not used in a manner that imposes a meaningful limit on this
judicial exception. Instead, it is more likely that claim 5 is a drafting effort
designed to monopolize the use of certain velocity comparisons.
Additionally, Appellant argues that they “seek to claim a practical
application of their discovered knowledge–a new technique . . . that permits
a more accurate and objective evaluation” of the human body. Reply Br. 8;
see also id. at 9. To the extent Appellant is arguing that the claimed
invention is not directed to an abstract idea because it is novel and
nonobvious, we are not persuaded because a novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013) (“Groundbreaking, innovative, or
even brilliant discovery does not by itself satisfy the § 101 inquiry.”) and
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)
(“[U]nder the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
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eligibility.”).
Notwithstanding Appellant’s arguments that the claimed method is a
new technique, Appellant’s Specification describes SSR measurement as
widely used to test and measure an autonomic nervous system including
through the use of electrical stimulation. See Spec. 1:17–25. Furthermore,
the Background of the Invention provides the following guidance:
In the case where the sympathetic nerve is to be evaluated,
particularly, it is said that analysis of C fibers among nerve
fibers for skin sensation is important. Namely, it is requested
that C fibers are stimulated distinctively from the other nerve
fibers.

Id. at 3:1–5.
Thus, in the case of measuring sympathetic skin and nerve response, it
is known and preferred to stimulate C fibers among all nerve fibers in order
to measure sympathetic nerve response. See also id. at 10:4–11:6 (indicating
it is known to stimulate C fibers of all nerve fibers to evaluate sympathetic
nerve response); Appeal Br. 22–23 (citing id.).
In short, we agree with the Examiner that the “additional elements” do
not add meaningful limits to the steps recited in claim 5. See Ans. 22. For
example, these “additional elements:” (1) do not improve the functioning of
a computer or other technology; (2) are not applied with any particular
machine; (3) do not effect a transformation of a particular article to a
different state; and, (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. See MPEP §§ 2106.05(a)–(c), (e)–(h). Indeed,
the final recited step of determining a state of functionality of the C fibers by
comparing a calculated conduction velocity to an expected conduction
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velocity recounts insignificant extra-solution activity. See Revised
Guidance, 84 Fed. Reg. at 55 n.31. For these reasons, we are in agreement
that the “additional elements” of claim 5 do not integrate the judicial
exception into a practical application.
In summation, claim 5 remains directed to a judicial exception to
patent eligible subject matter under 35 U.S.C. § 101, namely to abstract
ideas, laws of nature, or natural phenomenon, as discussed above.
Step 2B:
Does Claim 5 Recite an Inventive Concept?
We are next instructed to consider whether claim 5 recites any
element(s), individually or as an ordered combination, that transforms the
abstract idea and law of nature into a patent-eligible application, e.g., by
providing an inventive concept.10 See Alice, 573 U.S. at 217–18. Further, in
Mayo, the Court stated (addressing the claims at issue in Mayo), “the claims
inform a relevant audience about certain laws of nature; any additional steps
consist of well-understood, routine, conventional activity already engaged in
by the scientific community; and those steps, when viewed as a whole, add
nothing significant beyond the sum of their parts taken separately.” Mayo,
566 U.S. at 79–80. As noted above, the only additional element recited,
other than what is commonly found in a human body, is a reference “to
electrical stimulation” of locations on the body, and the measurement of
their velocities therethrough. These additional elements do not provide
(whether considered individually or as an ordered combination)

10 The Examiner states that claim 5 does “not include additional elements
that are sufficient to amount to significantly more than the judicial
exception.” Final Act. 8; see also Ans. 23.
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improvements to a technical field or the functioning of the human body
itself. See Revised Guidance, 84 Fed. Reg. at 56; see also BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”).
Claim 5 recites “electrical stimulation” generically, without limiting
the claim to any particular type of electrical stimulation. Further, nothing in
Appellant’s Specification or in the record before us suggests that Appellant’s
disclosed invention uses anything other than well-known and conventional
electrical stimulation means. For example, Appellant’s Specification
describes “electrical stimulation,” using a “three-pole electrode (surface
stimulation electrode NM-980W manufactured by NIHON KOHDEN
CORPORATION)” with the “electromyogram/evoked potential testing
device [being a] MEB-2300 series Neuropack X1.” Spec. 8:16–24; see also
Ans. 42, 43. Appellant does not explain how this reference to these devices
in Appellant’s Specification is anything other than a reference to generic off-
the-shelf devices which are described as being employable in a number of
different ways.11, 12 See N. Kohden I. In other words, these devices are
described as conventional tools.

11 After replicating portions of Appellant’s Specification, the Examiner
states, “[t]he above passage does not explicitly mention that the Neuropack
X1 was modified from what was commercially available or not.” Ans. 43.
12 We understand that a Declaration was submitted by co-inventor Mr. Jun
Motogi on June 14, 2018. Mr. Motogi states therein, “I configured the X1
device by using external stimulator which can stimulate C fibers selectively”
and that “the X1 device was used in an actual measurement after I
configured the X1 device to perform the current capabilities.” See ¶¶ 9, 10
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Appellant does not explain how the additional steps of providing
electrical stimulation to a body, and measuring its conduction through the
body, are not routine or conventional for those who work in the field.
Merely claiming a step of measuring a SSR response, which is a natural
phenomenon (see Spec. 117–25, 8:16–9:25), and using the values in some
unclaimed manner to determine a conduction velocity, which is a natural
phenomenon, without reciting any unconventional techniques to do so is not
sufficient to make the claims patent-eligible. In Mayo, the Court concluded
that the claimed method used only conventional activity already in use in the
scientific community to measure metabolite levels in blood (a natural
phenomenon) and therefore, “[f]or these reasons we believe that the steps
are not sufficient to transform unpatentable natural correlations into
patentable applications of those regularities.” Mayo, 566 U.S. at 79–80. If
nonconventional electrodes are used to practice the method or conventional
electrodes are arranged or utilized in a nonconventional manner, such usage
is not recited in the claim. Accordingly, consistent with these instructions
from the Supreme Court and based on the record presented, we do not fault
the Examiner for finding that claim 5 is directed to measuring a velocity
“relationship” among SSR, conduction velocity, and C fibers of a patient,

thereof. No further information is provided as to the extent of the
configuration that occurred. See Ans. 44. We thus decline to speculate as to
whether or not the asserted configuration amounted to more than the mere
selection and use of an end tool suitable for the task at hand. See Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir.
1985) (“Lack of factual support for expert opinion going to factual
determinations, however, may render the testimony of little probative value
in a validity determination.”).
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“which is a law of nature or natural phenomenon” or “abstract idea.” Final
Act. 5, 8; Ans. 20–21.
In view of the above, claim 5 fails to add a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field but, instead, “simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception.” Revised Guidance, 84 Fed.
Reg. at 56. Furthermore, we are instructed that “[r]elying on the
specification alone may be appropriate where, as in Mayo, the specification
admits as much.” Berkheimer v. HP Inc., 890 F.3d 1369, 1371 (Fed. Cir.
2018).
Consequently, we are not persuaded that claim 5 is directed to a
specific application designed to achieve an improved technological result.
Instead, claim 5 is directed to the ordinary use of the above-recited
additional elements to apply the recited steps of measuring a skin response
and calculating its velocity. For the reasons discussed above, we find no
element or combination of elements recited in claim 5 that contains any
“inventive concept” or adds anything “significantly more” to transform
claim 5 into a patent-eligible application. See Alice, 573 U.S. at 221.
Accordingly, we agree with the Examiner’s analysis and conclusion
that claim 5 is “directed to a method of . . . using a computational
algorithm.” Final Act. 5. We thus sustain the Examiner’s rejection of
claims 5–7 as being “directed to . . . an abstract idea.” Final Act. 5. We also
sustain the Examiner’s rejection of claims 5–7 as being directed to “a law of
nature or natural phenomenon” (Final Act. 8), which is not patent eligible
subject matter.
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THE REJECTIONS OF CLAIMS 1 AND 5–7
UNDER 35 U.S.C. § 103
As expressed above, the Examiner presented a primary rejection of
claims 1 and 5–7 in view of Shahani, Inui, N. Kohden I, and Kosierkiewicz,
and also presented an alternative rejection of these same claims in view of
the same references. See Final Act. 10–11, 16. In responding to each
rejection, Appellant addressed these claims as a group. See Appeal Br. 31.
We select claim 1 for review, with the remaining claims (i.e., claims 5–7)
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
In the Final Office Action, the Examiner relies on and combines the
above prior art, and provides a reason for their combination in rejecting
claim 1. See Final Act. 10–13, 16–18. Appellant addresses these rejections
stating that the above references “taken alone or in combination, fails to
disclose or suggest” the limitations of claim 1. Appeal Br. 24.
“Fundamentally, this is because the references all fail to recognize the
correlation between the generation of sweat and the transmission of pain
through nerves of the human body.” Appeal Br. 24; see also id. at 30–33,
Reply Br. 10. Hence, “because the references do not contemplate this
underlying fundamental tenet, the references cannot suggest its application,
as recited in the claim.” Appeal Br. 24; see also id. at 31, Reply Br. 10.
However, claim 1 is directed to stimulating certain human fibers,
measuring the skin response based on the stimulation signal, obtaining a
velocity of this “pain sensation” through the fiber, and then evaluating
whether this measured velocity is “within a given range” of other
predetermined velocities through the fiber. Although claim 1 mentions
“pain sensation,” claim 1 is silent as to any “correlation between the
generation of sweat and the transmission of pain” that underlies Appellant’s
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argument. Appeal Br. 24; see also Reply Br. 10–11. Instead, as noted, claim
1 only evaluates the measured velocity in contrast to other velocities.
Our reviewing court has addressed such issues and has provided
instructions that we cannot read unclaimed features from the Specification
into the claims or limit the claims to particular embodiments if the claim
language is broader. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993); SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875
(Fed. Cir. 2004). More succinctly, and as stated by our reviewing court, “the
name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998). Hence, unclaimed features cannot impart patentability. In
such situations, we are informed that “[A]ppellant’s arguments fail from the
outset because…they are not based on limitations appearing in the claims.”
In re Self, 671 F.2d 1344, 1348 (CCPA 1982). This is the same situation
before us, i.e., Appellant is premising their argument on features which are
not recited in claim 1. Such arguments are not persuasive of Examiner error.
Further, Appellant’s focus on the above discussed Declaration is not
persuasive for similar reasons (i.e., no indication as to what the asserted
configuration of the X1 device entailed). See Appeal Br. 26–28. The
Declaration regarding alleged benefits of particular electrode configurations
are not commensurate with the scope of claim 1 and therefore unpersuasive.
Thus, based on the record presented, Appellant’s arguments are not
persuasive the Examiner erred in rejecting claim 1, or claims 5–7, as being
obvious in view of Shahani, Inui, N. Kohden I, and Kosierkiewicz. We
sustain their rejections.
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THE REJECTION OF CLAIMS 2 AND 3
UNDER 35 U.S.C. § 103
The Examiner relies on the additional recitation to N. Kohden II in
rejecting dependent claims 2 and 3. See Final Act. 20. Appellant does not
separately address the additional limitations of dependent claims 2 and 3, but
instead contends, “Nihon Kohden II fails to recognize the correlation
between the generation of sweat and the transmission of pain through nerves
of the human body.” Appeal Br. 33. Appellant remains consistent with the
argument presented above, which we do not find persuasive. Accordingly,
we likewise sustain the Examiner’s rejection of claims 2 and 3 as being
obvious over Shahani, Inui, N. Kohden I, Kosierkiewicz, and N. Kohden II.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5–7 101 Non-statutory
subject matter
5–7
1, 5–7 103(a) Shahani, Inui, N.
Kohden I,
Kosierkiewicz
1, 5–7
2, 3 103(a) Shahani, Inui, N.
Kohden I,
Kosierkiewicz, N.
Kohden II
2, 3
Overall
Outcome
1–3, 5–7
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).

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AFFIRMED