Oridion Medical 1987 Ltd.

Patent Trials and Appeals Board

Apr 1, 2020

14171128 - (D) (P.T.A.B. Apr. 1, 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.
14/171,128 02/03/2014 Joshua Lewis Colman H-RM-03186
(MD40007US)
5991
161758 7590 04/01/2020
CANTOR COLBURN LLP - Medtronic (RGI/MD4)
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
MARMOR II, CHARLES ALAN
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
rs.patents.one@medtronic.com
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSHUA LEWIS COLMAN and MICHAL RONEN

Appeal 2019-003643
Application 14/171,128
Technology Center 3700
____________

Before EDWARD A. BROWN, JAMES P. CALVE, and
BRANDON J. WARNER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9, and 21–25, and 27–30, which
are all the pending claims. 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 Oridion
Medical 1987 Ltd. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below with reference letters added in brackets, is
representative of the claimed subject matter.
1. A medical monitoring system for identifying a
trend of one or more waveform related features, the system
comprising:
a capnograph configured to [A] measure a first medical
parameter of a patient and to produce a train of waveforms of
the first medical parameter over a time period;
a processor configured to:
[B] produce a representative waveform of the train
of waveforms, wherein the representative waveform is a single
waveform representative of one breath and produced from
analysis of a set of the train of waveforms;
[C] identify and extract two or more features from
the representative waveform, wherein the two or more features
relate to the set of the train of waveforms produced by the
capnograph from a time range within the time period;
[D] generate a first trend and a second trend of the
two or more features based on the representative waveform,
wherein the first trend is associated with a first feature of the
two or more features and the second trend is associated with a
second feature of the two or more features that is different from
the first feature; and
a display configured to [E] display the first trend and the
second trend by displaying a shape corresponding to both the
first trend and the second trend, wherein a first shape feature of
the shape is selected based on the first trend and a second shape
feature of the shape is selected based on the second trend.
Appeal Br. 28 (Claims App.).

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REJECTIONS2
Claims 1–7, 9, and 21–25, and 27–30 are rejected under 35 U.S.C.
§ 112(a), as failing to comply with the written description requirement.
Final Act. 3.
Claims 1–7, 9, and 21–25, and 27–30 are rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. Final Act. 6.

ANALYSIS
Claims 1–7, 9, and 21–25, and 27–30 — Written Description
The Examiner finds that Appellant’s original disclosure does not
provide adequate written description support for the limitation “produce a
representative waveform of the train of waveforms” recited in claim 1. Final
Act. 3. The Examiner acknowledges that the Specification defines the term
“representative waveform” as “a calculated single waveform that is
produced by analyzing a set of waveforms and factors thereof, and defining
a single waveform that is representative of the waveforms.” Id. (citing Spec.
8). The Examiner states, however, that “[t]he issue . . . is not what the
waveform is” (Ans. 4), and finds that the Specification does not “provide
additional details on how the waveform is calculated from a set of
waveforms and factors” (Final Act. 3) (emphasis added).
The Examiner notes that Figure 1 shows a representative waveform
10, but finds that the description of Figure 1 “does not provide information
on how the waveform is determined.” Final Act. 3–4 (citing Spec. 16).

2 The rejection of claims 1–7, 9, and 21–25, and 27–30 under 35 U.S.C.
§ 112(a), as failing to comply with the enablement requirement, has been
withdrawn. Ans. 3; Final Act. 4.
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Similarly, the Examiner finds that Figure 3, which shows representative
waveform 32A, “merely shows the result of the production of the
representative waveform and not how to achieve the waveform.” Ans. 4.
The Examiner finds that the Specification does not, as required, “provide an
algorithm for generating (calculating; producing) a representative
waveform.” Final Act. 4 (citing MPEP § 2161.01). The Examiner submits
that “the [S]pecification must include sufficient details on how the function
is performed or the result is achieved to comply with the written description
requirement.” Ans. 3–4 (citing MPEP § 2161.01; Fed. Reg. 84, no. 4, Jan. 7,
2019, regarding computer-implemented functional claim limitations).
The test for sufficiency under the written description requirement of
35 U.S.C. § 112 “is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). To have “possession,” “the specification must . . . show that the
inventor actually invented the invention claimed.” Id.
Appellant contends that the Specification provides sufficient written
description support to convey to one of ordinary skill in the art that
Appellant had possession of the claimed subject matter. Appeal Br. 5–9. In
support, Appellant quotes the definition of a “representative waveform”
described at page 8 of the Specification. Id. at 6. Appellant asserts that the
Specification describes that the representative waveform is determined from
the measurement of CO2 in exhaled breath of a patient, and Figures 1–4
illustrate a representative waveform, where Figure 3 illustrates a
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representative waveform 32A determined from such measurement. Id.
According to Appellant:
one skilled in the art would reasonably construe the disclosed
representative waveform, as discussed in the specification, as
involving a single waveform that is representative of a set of
recurring waveforms of a physiological parameter (e.g.,
concentration of CO2 in breath, flow rate of breath,
electrocardiogram (ECG)) over time which is calculated by
analyzing the set of recurring waveforms and factors (e.g.,
scaling factors, shape factors, rate factors).
Appeal Br. 7 (citing Spec. 8, 11) (emphasis added). According to Appellant,
“[i]n addition to analyzing the waveforms, factors of the waveforms (e.g.,
scale factors, shape factors) are also analyzed.” Reply Br. 2. Appellant
contends that based on this analysis of waveforms and waveform factors, “a
single waveform is defined that is representative (e.g., similar) to each of the
waveforms analyzed.” Id. (citing Spec. 8).
We note, however, that claim 1 recites that the representative
waveform is “produced from analysis of a set of the train of waveforms,” but
does not expressly recite that this analysis also includes analysis of any
“factors.” We further note that claim 27, which depends from claim 1,
recites that “the processor is configured to produce the representative
waveform from analysis of one or more shape or scale factors of sequential
waveforms in the set of the train of waveforms.” Appeal Br. 30 (Claims
App.) (emphasis added). We construe base claim 1 as being sufficiently
broad in scope to encompass the further limitation of dependent claim 27.
However, we do not construe claim 1 to require this further limitation
because this would result in dependent claim 27 not further limiting claim 1,
and thus, failing to satisfy the requirements of 35 U.S.C. § 112(d). See, e.g.,
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AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003)
(“Under the doctrine of claim differentiation, dependent claims are
presumed to be of narrower scope than the independent claims from which
they depend.”). Accordingly, we construe claim 1 to not require the “shape
of scale factors,” as recited in claim 27.
Appellant also contends “the manner in which a representative
waveform is produced is known in the art,” as evidenced by “Colman”.3
Appeal Br. 9. However, Appellant does not identify any specific disclosure
in Colman that supports this contention. Furthermore, even assuming that
Colman discloses production of a representative waveform, Appellant does
not show that Colman discloses that the representative waveform “is a single
waveform representative of one breath and produced from analysis of a set
of the train of waveforms,” as claimed. Thus, we are not persuaded by
Appellant’s position that Colman “is [sufficient] to demonstrate that the
production of the representative waveform [as claimed] is well-known in the
art [or] that a person having ordinary skill in the art would not know how to
produce a representative waveform [as claimed].” See Reply Br. 3.
Appellant does not dispute the Examiner’s position that the
Specification needs to provide “sufficient details in the form of an algorithm
to show how to produce a representative waveform.” Reply Br. 3; Ans. 4.
In regard to an algorithm, Appellant contends that the Specification provides
sufficient “steps” for producing a representative waveform as recited in
claim 1. Reply Br. 3. According to Appellant, “[t]he capnograph analyzes
the waveforms and factors over time to produce a single calculated

3 US 2012/0105485 A1, published May 3, 2012.
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waveform that is representative of a set of calculated waveforms obtained
from the collected samples.” Id. (citing Spec. 8, first and second paras).
However, claim 1 recites that the processor is configured to analyze a set of
a train of waveforms, not that the capnograph performs this analysis.
Further, claim 1 does not recite that the processor (or capnograph) analyzes
any “factors.”
Furthermore, the definition of the term “representative waveform”
states that the term “is directed to a calculated single waveform.” Spec. 8
(emphasis added). Appellant does not direct us to any explicit description of
any calculations that are used to produce the representative waveform.
Accordingly, we are not persuaded that “the [S]pecification provides
an algorithm (e.g., steps) for producing the representative waveform using a
monitoring system that includes a capnograph,” as Appellant contends.
Reply Br. 3.
We sustain the rejection of claims 1–7, 9, and 21–25, and 27–30 under
35 U.S.C. § 112(a) as lacking adequate written description.

Claims 1–7, 9, and 21–25, and 27–30 — Patent Eligibility
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
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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.
Concepts that have been determined to be abstract ideas, and thus
patent-ineligible, include certain methods of organizing human activity
(Alice, 573 U.S. at 219–20; Bilski v. Kappos, 561 U.S. 593 (2010));
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
If the claim is “directed to” an abstract idea, we turn 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. (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.
On January 7, 2019, the PTO issued revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (hereinafter “Guidance”). Under Step 2A,
Prong 1, of the Guidance, we first look to whether the claim recites any
judicial exceptions, including certain groupings of abstract ideas (i.e.,
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mathematical concepts, certain methods of organizing human activities, or
mental processes). See id. at 52.
If a claim recites a judicial exception, we proceed to Step 2A, Prong 2,
of the Guidance and determine whether the claim recites additional elements
that integrate the judicial exception into a practical application. See id.; see
also MPEP § 2106.05(a)–(c), (e)–(h).
Only if a claim both recites a judicial exception and fails to integrate
the judicial exception into a practical application, do we proceed to Step 2B
of the Guidance. At step 2B, we determine whether the claim adds a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See 84 Fed. Reg. 56.

Claim Grouping
Appellant argues the patent eligibility of claims 1–7, 9, and 21–25,
and 27–30 as a group. Appeal Br. 15–27. We select claim 1 as
representative, and claims 2–7, 9, 21–25, and 27–30 stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(1)(iv).

Step One – Statutory Category
Claims 1–7, 9, and 21–25, and 27–30 are directed to a medical
monitoring system, that is, an apparatus, and thus, are directed to one of the
statutory classes of subject matter eligible for patenting under 35 U.S.C.
§ 101.
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Step 2A, Prong 1 – Recitation of Judicial Exception
In Prong 1, it is determined whether claim 1 recites any judicial
exception, including certain groupings of abstract ideas, namely,
mathematical concepts, certain methods of organizing human activities such
as a fundamental economic practice, or mental processes. See 84 Fed. Reg.
52.
The Examiner determines that claim 1 recites a judicial exception.
Ans. 5. More specifically, the Examiner determines that at least two
limitations recited in claim 1 may be performed by the human mind, namely,
“identify and extract two or more features” and “generate a first trend and a
second trend of the two or more features.” Id. The Examiner submits that,
other than the claim reciting a processor configured to perform the functions,
nothing in the claim elements precludes the steps (functions) from
practically being performed in the mind. Id. The Examiner reasons that
each of the “identifying,” “extracting,” and “generating” steps (functions)
“merely requires a user to look at a waveform, point to features, and create a
trend based on those features.” Id. The Examiner appears to determine that
each of these limitations, under its broadest reasonable interpretation, covers
performance of the limitation in the mind but for the recitation of generic
computer components, and thus, falls within the mental processes grouping
of abstract ideas.
Appellant contends that “the subject matter of claim 1 directed to a
system operating in conjunction with a capnograph cannot reasonably be
interpreted as . . . mental processes.” Appeal Br. 19.
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We agree with the Examiner that claim 1 recites mental processes.
Claim 1 is directed to “[a] medical monitoring system for identifying a trend
of one or more waveform related features,” comprising “a capnograph
configured to” perform function “A,” “a processor configured to” perform
functions “B,” “C,” and “D,” and “a display configured to” perform function
“E.” Appeal Br. 28 (Claims App.). Function B is “produce a representative
waveform of the train of waveforms, wherein the representative waveform is
a single waveform representative of one breath produced from analysis of a
set of the train of waveforms.” Id. (emphasis added). The Specification
describes, “the term ‘waveform’ is directed to a recurring graphic shape
which may be realized by measuring a physiological parameter of a subject
over time,” and a “waveform set[] relate[s] to a sequential set of at least two
waveforms.” Spec. 8. Producing a representative waveform as recited in
function B involves making or forming an observation, evaluation,
judgment, or opinion of, or about, the set of a train of waveforms (i.e.,
graphic shapes). Under the broadest reasonable interpretation, this concept
encompasses performance in the human mind. Accordingly, producing a
representative waveform is a mental process, and thus, function B recites an
abstract idea. 84 Fed. Reg. 52.
Function C is “identify and extract two or more features from the
representative waveform, wherein the two or more features relate to the set
of the train of waveforms produced . . . from a time range within the time
period.” Appeal Br. 28 (Claims App.) (emphasis added). According to the
Specification, waveform-related “features” may be “shape factors” or
“scale” or “scaling” factors. Spec. 4, 8. As described, the term “shape
factor” “relate[s] to measures or characteristics related to the shape of the
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waveform (for example, slopes, curvatures, area under curve, and the like),”
and the term “scaling factor” “relate[s] to measures of a waveform
dimensions (such as, amplitude, width, time between sections of waveform
and the like).” Id. at 8. Accordingly, identifying and extracting two or more
features from the representative waveform as recited in function C can
involve making or forming an observation, evaluation, judgment, or opinion
of, or about, the representative waveform, such as its shape or amplitude.
Under the broadest reasonable interpretation, this concept encompasses
performance in the human mind. Accordingly, identifying and extracting
two or more features from the representative waveform is a mental process,
and thus, function C also recites an abstract idea. 84 Fed. Reg. 52.
Function D is “generate a first trend and a second trend of the two or
more features based on the representative waveform, wherein the first trend
is associated with a first feature of the two or more features and the second
trend is associated with a second feature of the two or more features that is
different from the first feature.” Appeal Br. 28 (Claims App.) (emphasis
added). The Specification describes “detecting the change of the one or
more features over time to create a trend of the one or more features.” Spec.
9 (emphasis added). Accordingly, generating first and second trends of the
two or more features based on the representative waveform as recited in
function D involves making or forming an observation, evaluation,
judgment, or opinion of, or about, the change over time of the first and
second features. Under the broadest reasonable interpretation, this concept
encompasses performance in the human mind. Accordingly, generating first
and second trends of the two or more features based on the representative
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waveform is a mental process, and thus, function D also recites an abstract
idea. 84 Fed. Reg. 52.
Appellant argues that functions C and D are not mental processes.
Reply Br. 6–7. According to Appellant, a capnograph provides a “moving
waveform” on a display, and “the dynamics of the moving waveform on the
display would not appear to provide sufficient time for a user to merely look
at the moving waveform, identify and extract multiple features of the
moving waveform, and produce a trend in real time based on those identified
and extracted multiple features.” Id. at 7. However, claim 1 does not recite
any limitation that requires the representative waveform to be “moving,” or
that functions C and D require any analysis of a “moving waveform.” For
example, functions C and D do not recite any limitation that precludes “the
set of the train of waveforms produced by the capnograph” from being in
printed form. Accordingly, Appellant’s contention is not commensurate
with the actual claim language, and thus, is unpersuasive.
Additionally, we note that producing a representative waveform by
performing function B, identifying and extracting of two or more features
from the representative waveform by performing function C, and generating
first and second trends by performing function D involves evaluating
information or data. A claim to “collecting information, analyzing it, and
displaying certain results of the collection and analysis,” where the data
analysis is recited at a high level of generality such that it could practically
be performed in the human mind, recites a mental process. Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016); BRCA1 &
BRCA2-Based Heredity Cancer Test Patent Litig., 774 F.3d 755, 763 (Fed.
Cir. 2014). In claim 1, functions B, C, and D involve analyzing the
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measured (collected) information and representative waveform. Apart from
reciting a processor, the data analysis is recited at a high level of generality,
such that it could be performed in the human mind or with a pen and paper.
That claim 1 is directed to an apparatus (or machine) does not change
our determination that it recites mental processes. See Bancorp Servs.,
L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1277
(Fed. Cir. 2012) (“Thus, under CyberSource and CLS, a machine, system,
medium, or the like may in some cases be equivalent to an abstract mental
process for purposes of patent ineligibility.”). Functions B–D are similar to
processes that courts have determined are mental processes. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (determining that a claim whose “steps can all be performed in the
human mind” is directed to an unpatentable mental process). Although
functions B–D are performed by a processor, the recitation of a processor
does not, by itself, establish that a claim does not recite mental steps. See,
e.g., Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir.
2015) (“Courts have examined claims that required the use of a computer
and still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.”). It does not appear
that function B, C, or D could not be performed in the human mind or with
pen and paper. That is, claim 1 recites mental processes despite it reciting
the use of electronic elements.
Furthermore, “performance of a claim limitation using generic
computer components does not necessarily preclude the claim limitation
from being in the . . . certain methods of organizing human activity
grouping, Alice, 573 U.S. at 219–20.” See 84 Fed. Reg. 52 n. 14 (emphasis
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omitted). Appellant’s Specification indicates that the processor is “a
computing unit,” which suggests that the processor can be a generic
component. See, e.g., Spec. 11. Accordingly, we construe functions B–D as
encompassing the performance of the respective performance using a
generic computer component. The recitation of a generic component in
claim 1 does not preclude functions B–D from being in the mental processes
grouping. Rather, we construe claim 1 as merely using the processor as a
tool to perform these concepts.
For the foregoing reasons, we determine that claim 1 recites the
abstract idea of mental processes, which is a judicial exception to patent-
eligible subject matter.

Step 2A, Prong 2 – Practical Application of Judicial Exception
For Prong 2, We next determine whether claim 1, as a whole,
integrates the recited judicial exception into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. See 84 Fed.
Reg. 54–55.
Claim 1 recites “a processor configured to” perform functions B–D.
We construe the limitation “a processor configured to” as an additional
element of claim 1. But, the Specification suggests that the recited processor
is a generic component.
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Claim 1 also recites the additional element of a capnograph
configured to perform function A, that is, “measure a first medical parameter
of a patient and to produce a train of waveforms of the first medical
parameter over a time period.” Appeal Br. 28 (Claims App.). Accordingly,
the capnograph performs the function of data gathering, that is, measuring a
medical parameter of a patient and producing a train of waveforms from the
measured data. The Specification appears to suggest that the recited
capnograph is a generic component. See Spec. 10–11.
Claim 1 further calls for the additional element of a display
configured to perform function E, that is, “display the first trend and the
second trend by displaying a shape corresponding to both the first trend and
the second trend, wherein a first shape feature of the shape is selected based
on the first trend and a second shape feature of the shape is selected based on
the second trend.” Id. The Specification describes “a display unit (such as a
monitor).” Spec. 14. This description suggests that the display can be a
generic component. Accordingly, we construe function E as encompassing
its performance using a generic component.
The Specification describes that the shape may be, “for example,
columns, circles, dots, and the like.” Spec. 15. The shape feature can be, for
example, a dimension (height or width) or a color of the shape. Id. at 17.
The recitation of “a first shape feature of the shape is selected based on the
first trend and a second shape feature of the shape is selected based on the
second trend” in the display limitation does not, however, impose any
limitation that the recited display (or the processor) actually perform these
selections. Appeal Br. 3. Rather, we construe the display limitation as
merely involving displaying information that represents the first and second
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trends, with claim 1 not specifying how or with what element the selections
of the first and second shape features are performed.
The Examiner determines that the additional claim elements do not
integrate the judicial exception into a practical application. Ans. 5–6.
In contrast, Appellant contends that claim 1 is directed to an
improvement in computer related technology. Appeal Br. 20. An additional
element or elements that reflect(s) an improvement in the functioning of a
computer, or an improvement to other technology or technical field, is
indicative that the additional element(s) may have integrated the judicial
exception into a practical application. See 84 Fed. Reg. 55. According to
Appellant, “the medical monitoring system of claim 1 improves computer
functionality by enabling a computer to operate in an unconventional
manner.” Appeal Br. 21. More particularly, Appellant contends, the
claimed medical monitoring system “enable[s] a computer to produce a
single waveform that is representative of a train of waveforms, extract and
identify multiple features of the single representative waveform, and
generate trends associated with each respective feature based on the
representative waveform, resulting in a more accurate assessment of the
medical status of a patient.” Id. at 22 (quoting Spec. 3) (emphasis omitted).
It is not apparent, however, how this data analysis performed by the
processor improves its functionality. Even if the computer may perform
some new data analysis of waveforms produced from measuring a medical
parameter of a patient, Appellant does not contend that this results in the
processor operating faster or more efficiently, for example. Nor does
Appellant establish that the claims represent an improvement in processor
functionality to be able to produce a single waveform, particularly when
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Appellant has represented that producing such a waveform already is known
in the art as evidenced by Colman. See Appeal Br. 9.
Appellant further contends that the claimed medical monitoring
system “also enable[s] a computer to display a shape that corresponds to
multiple trends in a manner that allows a clinician to easily and clearly
identify the trends in the waveforms, and that provide the health care
provider with information associated with the patient’s status that would not
be detected or identified otherwise.” Appeal Br. 23 (quoting Spec. 3–4).
Appellant contends that “the Examiner has failed to provide a
reference that teaches or fairly suggests ‘displaying a shape . . . wherein a
first shape feature of the shape is selected based on the first trend and a
second shape feature is selected based on the second trend,’” as claimed.
Appeal Br. 23. However, the patent eligibility analysis is not an evaluation
of novelty or non-obviousness. “A claim for a new abstract idea is still an
abstract idea.” Synopsys, Inc. v. Mentor Graphics, Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016). Even assuming that the claimed method may be
novel, “[t]he ‘novelty’ of . . . the . . . [claim] itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” See Diamond v. Diehr,
450 U.S. 175, 188–189 (1981). A novel and non-obvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at
90–91. “An abstract idea can generally be described at different levels of
abstraction” but such detail does not alter its character as an abstract idea.
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–41 (Fed. Cir. 2016).
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Appellant contends that, as held in Core Wireless, 4 “claims reciting an
improved way of displaying a limited set of information to a user, in a
manner that ‘allows the user to see the most relevant data’ are not directed to
an abstract idea because they provide an improvement in computer
functionality.”
In Core Wireless, the court stated that “[t]he disclosed invention
improves the efficiency of using the electronic devices.” Core Wireless, 880
F.3d at 1363. The court explained that “[w]e also ask whether the claims are
directed to a specific improvement in the capabilities of computing devices”
(id. at 1361), and then determined that “the claims are directed to an
improvement in the functioning of computers” (id. at 1363). Thus, in Core
Wireless, the improved efficiency of using the electronic devices was related
to an identified improvement in the functioning of computers. Specifically,
it provided an improved user interface that functioned differently than other
interfaces to allow users to access applications and data directly from a main
menu without having to drill down through many layers to get to the desired
data or functionality. Id. at 1363.
In Trading Technologies International, Inc. v. IBG LLC, 921 F.3d
1378 (Fed. Cir. 2019), the court addressed the patent eligibility of a method
of displaying market information on a graphical user interface. The court
determined that “the claims considered in light of the specification make
clear that ‘the focus of the claimed advance over the prior art’ is providing a
trader with additional financial information to facilitate market trades, an

4 Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356
(Fed. Cir. 2018).
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abstract idea.” Id. at 1384 (emphasis added). Further, the court stated,
“Information, whether displayed in the form of price values or P&L values,
is abstract. SAP, 898 F.3d at 1167.” Id. The court explained that “[t]he
claims are focused on providing information to traders in a way that helps
them process information more quickly . . . not on improving computers or
technology” and “the claims here fail because arranging information along
an axis does not improve the functioning of the computer, make it operate
more efficiently, or solve any technological problem.” Id. (emphasis added).
Likening the claims to those in Electric Power, the court stated, “the
purported advance ‘is a process of gathering and analyzing information of a
specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.’” Id.
(emphasis added). Accordingly, Trading Techs. indicates that Appellant
needs to show that its display provides an improvement in the functioning of
a computer, or, in some other technology, to support its patent eligibility
position.
Appellant asserts, “the recited display is an improvement over
conventional displays in that the manner in which information (e.g., trends)
is displayed allows a health care provider to readily view information that is
buried in patient data ( e.g., a waveform shape).” Appeal Br. 24. Even
assuming, however, that the recited display presents trend-related patient
information that would be useful to a health care provider viewing the
information, we are not persuaded that the recited display provides an
improvement in the functioning of a computer, or, in some other technology.
For example, Appellant does not contend that the display itself operates
faster or more efficiently. Rather, Appellant’s contention is premised on the
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particular content of the information that is displayed, rather than the manner
of displaying it. In other words, it simply displays results of the abstract
processes discussed above in a generic manner, for example, it displays a
first trend and second trend by displaying a shape corresponding to the first
trend and the second trend with a “first shape feature of the shape selected
based on the first trend.” See Spec. 14–20.
We agree with the Examiner that the capnograph and display perform
a pre-solution activity (function A) and a post-solution activity (function E),
respectively. Ans. 6. Accordingly, the recitation of these additional
elements that perform insignificant extra-solution activities does not
integrate the judicial exception into a practical application. See 84 Fed. Reg.
55 n.31.
Here, absent persuasive evidence to the contrary, we determine that
claim 1 merely uses a capnograph, processor, and display as tools to perform
the abstract idea. See MPEP § 2106.05(f). We are not persuaded that the
claimed medical monitoring system, as a whole, provides either an
improvement in the functioning of a computer or to any other technology or
technical field. The claimed medical monitoring system generates trends
based on a representative waveform and displays shape features of the trends
on a display. Appellant contends that the claimed medical monitoring
system improves patient monitoring. Reply Br. 8–9. Appellant contends
that “a healthcare provider may be better able to determine a patient’s
condition based on dominance or patterns of shape/scale factors in a
waveform, which improves patient monitoring.” Reply Br. 9 (quoting Spec.
11, third para.–12, third para.). However, claim 1 does not recite a
waveform having shape or scale factors, much less recite any limitation
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regarding “dominance or patterns” of such factors. Further, claim 1 does not
recite any limitation that even requires the displayed first shape feature and
the second shape feature of the “shape” to be different from each other.
Appellant also contends that “a technical problem in patient
monitoring using capnography is that waveforms of both asthmatic and non-
asthmatic patients may be similar.” Reply Br. 9–10. Appellant states, “[a]
solution to this technical problem is identifying waveform features (e.g.,
shape factors such as a slope of the waveform) and their dominance/pattern
to determine a trend of those identified waveform features and display the
trend.” Id. at 10. Appellant asserts that the medical monitoring system
recited in claim 1 “provides an improvement in patient monitoring
techniques by identifying trends in a waveform that may appear both
‘normal’ and ‘sloped.’” Id. Again, even though claim 1 recites that the
display displays the first trend and the second trend, claim 1 does not recite
any limitation that requires the corresponding first shape feature and second
shape feature to be different from each other.
For these reasons, we are not persuaded that claim 1 recites an
additional element, or a combination of additional elements, apart from the
limitations reciting an abstract idea that applies, relies on, or uses the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the exception. Thus, the judicial exception is not integrated into
a practical application, and the claim is “directed to” the judicial exception.
See 84 Fed. Reg. 54–55.
We next determine whether claim 1 recites an “inventive concept.”

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Step 2B – Inventive Concept
We next determine whether claim 1 adds a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field. See 84 Fed. Reg. 56.
The Examiner concludes that claim 1 does not include any additional
elements that are sufficient to amount to significantly more than the abstract
idea itself. Final Act. 6. The Examiner determines that “the capnograph is
linked to the data gathering step, which has been recognized as an
insignificant extrasolution activity,” and that “[t]he processor and display are
generic computing devices performing generic computer functions.” Id. at
6–7. The Examiner further determines that the claim limitations when
considered individually, or in combination, “appear to merely be tools for
implementing the abstract idea.” Id. at 7.
Appellant contends that “the combination of elements in the claims
does not preempt a generic idea or mathematical relationship.” Reply Br.
10. Even accepting this contention, “‘[w]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.’” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). Accordingly, this contention is
unpersuasive.
Appellant also contends that “there are no prior art rejections.” Reply
Br. 10–11. As discussed above, however, the patent eligibility analysis is
not an evaluation of novelty or non-obviousness of the claimed subject
matter.
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Appellant contends that “the claimed systems do not employ
processes that are simply routine or conventional,” but rather, the claims
recite unique systems. Reply Br. 11. Claim 1 recites “mental steps” or
mental processes (i.e., functions B–E) that can be performed in the human
mind. Apart from the recited judicial exception, claim 1 recites generic or
conventional components, namely, a capnograph, a processor, and a display
as additional elements. The capnograph and display limitations recite
functions or steps A and E that are insignificant extra-solution activity to the
judicial exception. Appellant does not persuasively argue that the claim
elements in addition to those that recite an abstract idea are sufficient to
amount to significantly more than the abstract idea itself. To the extent
Appellant is relying on the claim limitations that recite the abstract idea as
providing significantly more, “[i]t 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.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018); Synopsys, 839 F.3d at 1151 (“[A] claim for a new
abstract idea is still an abstract idea.”).
“If a claim’s only ‘inventive concept’ is the application of an abstract
idea using conventional and well-understood techniques, the claim has not
been transformed into a patent-eligible application of an abstract idea.” BSG
Tech LLC, 899 F.3d. at 1290–91. We agree with the Examiner that the
claimed system merely uses generic or conventional components as a tool to
perform the abstract idea, which does not transform the claim into a patent-
eligible application of the abstract idea. Alice, 573 U.S. at 212. Indeed, as
discussed above, the Specification’s cursory, generic description of these
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components indicates that they are sufficiently well-known that it is not
necessary to describe them in more detail to satisfy 35 U.S.C. § 112(a).
Thus, we sustain the rejection of claim 1 under 35 U.S.C. § 101.
Claims 2–7, 9, 21–25, and 27–30 fall with claim 1.

DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9, 21–25,
27–30
112(a) Written
Description
1–7, 9, 21–
25, 27–30

1–7, 9, 21–25,
27–30
101 Eligibility 1–7, 9, 21–
25, 27–30

Overall
Outcome
1–7, 9, 21–
25, 27–30

TIME PERIOD FOR RESPONSE

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