Sync-Think, Inc.

Patent Trials and Appeals Board

Sep 1, 2021

2021000937 (P.T.A.B. Sep. 1, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/454,662 08/07/2014 Jamshid Ghajar 061046-5008-US 9149
24341 7590 09/01/2021
Morgan, Lewis & Bockius LLP (PA)
1400 Page Mill Road
Palo Alto, CA 94304-1124
EXAMINER
MCCROSKY, DAVID J
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
09/01/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
padocketingdepartment@morganlewis.com
vskliba@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMSHID GHAJAR,
JIANLIANG TONG, and JUN MARUTA
Appeal 2021-000937
Application 14/454,662
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and
NATHAN A. ENGELS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 14–22, 25, and 26.2 This is a second
appeal in the present application. The Board issued a first Decision on
Appeal (hereinafter “Decision” or “Dec.”) on May 23, 2019, in Appeal
2018-004885. 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(a). Appellant identifies the real party in interest as Sync-Think, Inc.
Appeal Br. 4.
2 Claims 1–13, 23, and 24 have been canceled. Appeal Br. 6.
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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relate[s] generally to systems and
methods of testing a person’s ability to track and anticipate stimuli” and,
“[m]ore specifically, to a method and system for cognition and oculomotor
impairment diagnosis using binocular coordination analysis.” Spec. ¶ 3.
Claim 14, reproduced below, is the only independent claim and is illustrative
of the claimed subject matter.
14. A system, comprising:
a measurement apparatus to measure a subject’s right eye
positions and the subject’s left eye positions;
a display; and
a computer control system coupled with the measurement
apparatus and the display, the computer control system
including one or more processors and memory, the memory
storing one or more programs, the one or more programs
comprising instructions to:
present to the subject, on the display, a smoothly
moving object, repeatedly moving over a tracking path;
measure, while presenting to the subject the
smoothly moving object on the display, using the
measurement apparatus:
the subject’s right eye positions; and
the subject’s left eye positions;
generate a disconjugacy metric for the subject
based on a measure of variability of a plurality of
differences between the measured right eye positions and
corresponding measured left eye positions over a period
of time while the object is moving;
compare the disconjugacy metric with a
predetermined baseline to determine whether the
disconjugacy metric is indicative of an impairment; and
generate a report based on the disconjugacy metric
for the subject.
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REJECTION
Claims 14–22, 25, and 26 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter—a judicial exception (i.e.,
an abstract idea)—without significantly more. Non-Final Act. 2.
OPINION
Background
The first appeal in the present application involved both method
claims (claims 1–13, 23, and 24) and system claims (claims 14–22). The
Board affirmed a rejection under 35 U.S.C. § 101 of claims 1–24, but
reversed the Examiner’s rejections under 35 U.S.C. § 103. Subsequent to
the Board’s Decision, in an Amendment submitted July 22, 2019
(hereinafter “Amendment” or “Amdt.”), Appellant canceled method claims
1–13, 23, and 24, amended system claims 14–22 (via amendments to claims
14 and 17), and added system claims 25 and 26, which depend from claim
14. See Amdt. 3–5. More specifically, Appellant amended independent
claim 14 to positively recite a computer control system coupled with the
measurement apparatus and display that were already recited in the claim
and to positively recite that the operation of measuring the subject’s eye
positions is performed using the measurement apparatus. See Amdt. 3.
Appellant also made a minor amendment to claim 17, which depends from
claim 14. See Amdt. 4.
Claim Grouping
Appellant presents arguments for claim 14, and groups dependent
claims 15–22 with claim 14. Appeal Br. 11–17. Appellant presents
additional arguments for claim 25 and for claim 26. Appeal Br. 17–18.
Thus, we decide the appeal of the rejection of claims 14–22 on the basis of
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claim 14, with claims 15–22 standing or falling with claim 14. See 37
C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a single claim to
decide the appeal as to a single ground of rejection of a group of claims
argued together). We address separately the arguments presented for claims
25 and 26.
Principles of Law Pertaining to Patent Eligibility
An invention is patent-eligible if it is 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).
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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, one first determines what concept the claim is “directed to.”
See id. at 219 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding of rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191
(“view[ing] respondents’ claims as nothing more than a process for molding
rubber products and not as an attempt to patent a mathematical formula”).
Having said that, the Supreme Court also indicated that a claim “seeking
patent protection for that formula in the abstract . . . is not accorded the
protection of our patent laws, and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, one turns to the second
step of the Alice and Mayo framework, where “[one] 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
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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 (Jan. 7, 2019) (hereinafter “2019 Eligibility
Guidance”). The 2019 Eligibility Guidance includes steps 2A and 2B.
Under Step 2A, Prong One, of the guidance, one first looks to whether the
claim recites 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).
See id. at 54.
Pursuant to the 2019 Eligibility Guidance, if a claim recites a judicial
exception, one proceeds to Step 2A, Prong Two, and determines whether the
claim recites additional elements that integrate the judicial exception into a
practical application. See 2019 Eligibility Guidance, 84 Fed. Reg. at 54; see
also MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 10.2019, rev. June 2020).
Only if a claim both recites a judicial exception and fails to integrate
the judicial exception into a practical application, does one proceed to Step
2B of the guidance. At this step, one determines 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
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generality, to the judicial exception. See 2019 Eligibility Guidance, 84 Fed.
Reg. at 56. In doing so, one considers the elements of the claim both
individually and as “an ordered combination.” See Alice, 573 U.S. at 217
(stating that “[one] consider[s] 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 . . . 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’”); see also BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349–50 (Fed. Cir. 2016)
(explaining that, even in claims reciting only “generic computer, network
and Internet components, none of which is inventive by itself,” “an inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces” under step two of the Alice framework).
Analysis
Following the 2019 Eligibility Guidance, the Examiner determines, in
Step 2A, Prong One, that claim 14 recites “generate a disconjugacy metric
for the subject based on a measure of variability of a plurality of differences
between the measured right eye positions and corresponding measured left
eye positions over a period of time while the object is moving,” which is “a
mathematical concept (i.e., mathematical relationships, mathematical
formulas or equations, or mathematical calculations),” one of the
enumerated groupings of abstract ideas. Non-Final Act. 2–3; see 2019
Eligibility Guidance, 84 Fed. Reg. at 52. The Examiner also determines that
claim 14 recites “compare the disconjugacy metric with a predetermined
baseline to determine whether the disconjugacy metric is indicative of an
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impairment,” and that these claimed operations of generating a disconjugacy
metric and comparing it with a baseline “can be practically performed in the
human mind using mental steps or basic critical thinking, which are types of
activities that have been found by the courts to represent abstract ideas.”
Non-Final Act. 2–3; see 2019 Eligibility Guidance, 84 Fed. Reg. at 52
(identifying “[m]ental processes—concepts performed in human mind
(including an observation, evaluation, judgment, opinion)” as one of the
groupings of abstract ideas).
The Examiner’s position is sound. Our reviewing court has “treated
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353–54 (Fed. Cir. 2016). In that regard, we note that the
recitation of computer components does not, by itself, establish that the
claim does not recite mental steps. See, e.g., Versata Dev. Grp., Inc. 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.”). If the broadest reasonable interpretation of a claim
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. See Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”); CyberSource Corp. v. Retail Decisions,
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Inc., 654 F.3d 1366, 1375, 1372–73 (Fed. Cir. 2011) (holding that the
incidental use of “computer” or “computer readable medium” does not make
a claim otherwise directed to a process that “can be performed in the human
mind, or by a human using a pen and paper” patent eligible); Synopsys, Inc.
v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 1148 (Fed. Cir. 2016)
(holding that claims to the mental process of “translating a functional
description of a logic circuit into a hardware component description of the
logic circuit” are directed to an abstract idea, because the claims “can be . . .
performed mentally or with pencil and paper”).
Appellant contends that the operations of measuring the subject’s
right eye positions and left eye positions and generating a disconjugacy
metric could not be performed in the human mind because a doctor would
need to be able to measure eye positions at a frequency (on the order of
200–1250 pictures of each eye per orbit), and with enough precision and
accuracy, to generate a metric indicative of an impairment. Appeal
Br. 15–16 (citing Spec. ¶ 63). Appellant asserts that, as in CardioNet, LLC
v. InfoBionic, Inc., 955 F.3d 1358, 1370–71 (Fed. Cir. 2020), “it is difficult
to fathom how a doctor would perform the operations performed by the
system of claim 14,” which “does not ask a doctor to perform the claimed
operations, but rather expressly recites ‘a measurement apparatus to measure
a subject’s right eye positions and the subject’s left eye positions,’ and ‘a
computer control system coupled with the measurement apparatus.’” Id.
at 14.
This line of argument, as it pertains to the measurement apparatus and
the operation of measuring eye positions, and not to the operations of
generating a disconjugacy metric and comparing the metric to a baseline, is
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unavailing. The Examiner’s rejection is not predicated on a determination
that the operation of measuring eye positions is a mental process (i.e.,
capable of being performed in the human mind). Further, the fact that claim
14 is directed to a system, comprising a measurement apparatus and a
computer control system, rather than a method, is not material to the patent
eligibility analysis where, as here, the apparatus is recited so generically as
to simply implement the abstract idea. See Alice, 573 U.S. at 226 (“Put
another way, the system claims are no different from the method claims in
substance.”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.),
687 F.3d 1266, 1276–77 (Fed. Cir. 2012) (holding that the form of various
method, system, and media claims did not change the patent eligibility
analysis under § 101).
The Examiner correctly identifies the claimed operation of measuring
the subject’s right and left eye positions as a data gathering step, which is
insignificant extra-solution activity. See, e.g., CyberSource, 654 F.3d at
1370 (“We have held that mere ‘[data-gathering] step[s] cannot make an
otherwise nonstatutory claim statutory.”’ (alterations in original) (quoting In
re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989))); see also 2019 Eligibility
Guidance (identifying “add[ing] insignificant extra-solution activity to the”
abstract idea as an example of when an abstract idea has not been integrated
into a practical application). Claim 14 recites only nominally a generic
“measurement apparatus” to measure the subject’s right and left eye
positions (i.e., a tool to carry out the data gathering step).
Likewise, the operation of “generat[ing] a report based on the
disconjugacy metric for the subject” constitutes insignificant post-solution
activity. See Elec. Power Grp., 830 F.3d at 1353–54 (determining that
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claims reciting the combination of the abstract-idea processes of gathering
and analyzing information of a specified content and then displaying the
results, without any particular assertedly inventive technology for
performing those functions, are directed to an abstract idea); id. at 1354
(recognizing “that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis”).
Moreover, Appellant’s argument is not commensurate with the scope
of claim 14, which does not specify the type of impairment to be determined,
any particular degree of accuracy or precision of determining impairment, or
a frequency at which eye measurements are taken.3 Further, Appellant’s
suggestion that the eye positions must be measured as frequently as
200–1250 times per orbit amounts to unsupported attorney argument and,
thus, is entitled to no weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997). Paragraph 63 of Appellant’s Specification discloses that, in
some embodiments, video cameras take between 200 and 1250 pictures of
each eye during each orbit of the displayed object, but does not disclose that
this is necessary to provide sufficient data to generate a disconjugacy metric
indicative of impairment. Nor does Appellant proffer any objective
evidence to show that this is the case.

3 Notably, Appellant’s reference to a required sampling frequency on the
order of 200–1250 per orbit, even if recited or implied in claim 14, does not
equate to the actual frequency at which eye measurements are taken because
claim 14 does not specify a speed or frequency at which the object in the
display moves repeated over a tracking path and, thus, does not define an
“orbit.”
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In short, Appellant does not persuade us that either the operation of
generating a disconjugacy metric or the operation of comparing the
disconjugacy metric to a baseline to determine whether the metric is
indicative of impairment cannot be performed in the human mind.
Appellant’s Specification discloses that, in some implementations, the
disconjugacy metric corresponds to a standard deviation of differences
between the right and left eye positions over a duration of the presentation.
Spec. ¶ 9. A standard deviation is a mathematical concept or calculation,
and comparing the calculated standard deviation value to a baseline value is
a simple evaluation that can be performed in the human mind. See, e.g., In
re BRCA1 & BRCA2-Based Hereditary Cancer Test Pat. Litig., 774 F.3d
755, 763 (Fed. Cir. 2014) (concluding that the concept of “comparing BRCA
sequences and determining the existence of alterations” is an “abstract
mental process”).
For the above reasons, Appellant fails to apprise us of error in the
Examiner’s determination that claim 14 recites a judicial exception, namely,
an abstract idea (a mathematical concept and/or mental processes). Claims
25 and 26 depend from claim 14, thereby incorporating the claim limitations
discussed above, and, thus, likewise recite an abstract idea.
Turning now to Step 2A, Prong Two of the framework set forth in the
2019 Eligibility Guidance, the Examiner determines that claims 14, 25, and
26 do not recite additional elements that integrate the judicial exception into
a practical application. Non-Final Act. 4–5. According to the Examiner, the
additional limitations are a measurement apparatus, a display, and a
computer control system including one or more processors and a memory.
Id. at 5. The Examiner determines that the claims merely invoke the
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computer control system as a tool to perform the abstract idea (i.e., the data
collecting (presenting and measuring operations), generating a disconjugacy
metric, comparing it to a baseline, and outputting the results (generating a
report)). Id. at 4. The Examiner correctly determines that the data gathering
(presenting and measuring) and data output (generating a report) do not add
a meaningful limitation because they are extra-solution activity. Id.
Indeed, much like the claims in Elec. Power Grp., which were held to
be patent ineligible as directed to an abstract idea, Appellant’s claims 14, 25,
and 26 recite gathering and analyzing information of a specified content,
then displaying those results, without reciting any particular assertedly
inventive technology for performing those functions. See Elec. Power Grp.,
830 F.3d at 1354. Claim 14 recites generically a measurement apparatus to
measure the subject’s right eye positions and left eye positions, a display,
and a computer control system including, generically, one or more
processors and memory. Claim 14 invokes these elements, without
specificity, merely as tools for carrying out the abstract idea. Claim 25
simply recites that the operation of generating a report4 includes providing
feedback to the subject. As already discussed above, generating a report
providing feedback (i.e., displaying the results) is insignificant extra-solution
activity and, thus, does not integrate the claim into a practical application as
described in the 2019 Eligibility Guidance.

4 Claim 25 refers to “providing the corresponding report,” which lacks
antecedent basis in the claim. For purposes of this appeal, we interpret claim
25 as referring to the operation of “generate a report” in claim 14, from
which claim 25 depends.
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Claim 26 additionally recites “a cognitive training system that
includes one or more feedback devices to provide real-time performance
information to the subject.” Appeal Br. 22 (Claims App.). This requires
nothing more than a generic means, such as a display or other output, for
outputting the results of the abstract idea, which is insignificant post-solution
activity, and, thus, does not integrate the claim into a practical application.
Appellant argues that, like the claims in CardioNet, claim 14 “is
patent eligible because it is directed to a system that is ‘designed to solve a
technological problem,’ Alice, 134 S.Ct. at 2358, namely how to ‘evaluate
improvements or deterioration in the person’s ability to anticipate events.’”
Appeal Br. 13 (citing Spec. ¶ 72). According to Appellant, “claim 14 solves
the problem of how to evaluate deterioration in the person’s ability to
anticipate events by reciting a ‘specific means or method’ through the use of
‘variability of a plurality of differences between the measured right eye
positions and corresponding measured left eye positions’ as indicative of
impairment.” Id. (citing Spec. ¶ 33).
Appellant asserts that, as far as patent eligibility under
35 U.S.C. § 101, there is no meaningful difference between Appellant’s
eye-tracking apparatus that uses “variability of a plurality of
differences between the measured right eye positions and
corresponding measured left eye positions” for “testing a
subject for impairment” and an improved cardiac monitoring
device [as claimed in CardioNet] that uses “variability in the
beat-to-beat timing of a collection of beats” to “generate an
event when the variability in the beat-to-beat timing is
identified as relevant to the at least one of atrial fibrillation and
atrial flutter.”
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Appeal Br. 13. According to Appellant, claim 14 (as well as claims 15–22
depending therefrom) “are patent-eligible because they are directed to a
system that is ‘designed to solve a technological problem,’ recite a specific
means or method for testing a subject for impairment, and belong to the
class of claims that focus on ‘an improvement in computers [and other
technologies] as tools.’” Appeal Br. 16.
Appellant’s reliance on CardioNet is misplaced. An important factor
in our reviewing court’s determination that the CardioNet claims were
patent eligible was the fact that the patent’s written description identified a
number of advantages gained by the elements recited in the claimed cardiac
monitoring device—namely, “analyzing the ‘variability in the beat-to-beat
timing’ for ‘atrial fibrillation and atrial flutter in light of the variability in the
beat-to-beat timing caused by ventricular beats identified by the ventricular
beat detector,’” which more accurately distinguishes atrial fibrillation and
atrial flutter from V-TACH and other arrhythmias. CardioNet, 955 F.3d
at 1369–70. Another significant factor in CardioNet was that the lower
court’s determination that the claims were directed to an abstract idea was
predicated on an unsupported assumption that the claims merely
computerized pre-existing techniques for diagnosing atrial fibrillation and
atrial flutter, i.e., “that the claims [were] directed to automating known
techniques.” Id. at 1370.
In the present case, Appellant’s Specification explains that because
anticipatory timing and movement timing are controlled by essentially the
same brain circuits, motor reaction times and accuracy can be used to
diagnose anticipatory timing difficulties in both the motor and cognitive
domains. Spec. ¶¶ 32–33. Further, variability or a deficit in anticipatory
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timing produces imprecise movements and disrupted thinking and leads to
longer periods of time to successfully complete tasks and more inaccuracy in
performing such tasks. Id. ¶ 33. Thus, Appellant’s invention measures such
variability to determine whether a person suffers impaired anticipatory
timing. Id. The prior art references discussed in the first appeal (e.g.,
Fukushima (US 2002/0099305 Al, published July 25, 2002) and Ghajar
(US 7,819,818 B2, issued Oct. 26, 2010)) appear to make use of this known
correlation between cognitive impairment and motor skill impairment,
particularly with respect to eye movement, and a subject’s ability to closely
follow a moving focal point with both eyes, to assess cognitive impairment.
See Dec. 16–19.
Appellant’s Specification discloses generating a disconjugacy metric
by comparing measured right eye positions and left eye positions, and
comparing the disconjugacy metric with a baseline to determine whether it is
indicative of an impairment, and, in some implementations, the disconjugacy
metric is a standard deviation of differences between the right eye and left
eye positions. Spec. ¶¶ 9–10. Appellant’s Specification additionally
discloses mathematical formulas for calculating such a disconjugacy metric.
Id. ¶¶ 67–70. The Specification then discloses comparing the disconjugacy
measurements, and related measurements, to a baseline of either
measurements for other individuals or measurements for the same subject.
Id. ¶¶ 71–72.
Although the particular mathematical concepts (the disconjugacy
metric for the subject based on a measure of variability of a plurality of
differences between the measured right eye positions and corresponding
measured left eye positions over a period of time while the object is moving)
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disclosed in the Specification, and recited in claim 14, may indeed be
different from those used previously in the field to analyze eye movement
data to evaluate for impairment, Appellant’s Specification does not assert,
much less present comparative data to demonstrate, that use of a
disconjugacy metric as claimed provides any improvement over techniques
used previously to evaluate a subject for impairment based on observation of
eye movement in response to a display or stimuli. Thus, the significant
factor that weighed so heavily in CardioNet—that the patent’s written
description identified a number of advantages gained by the elements recited
in the claims—is not present in the appeal before us.
As for the other significant factor mentioned in CardioNet (the
erroneous analysis in the Alice Step One determination that the claims were
directed simply to automating known techniques), the Examiner’s
determination that the claims involved in the appeal before us are directed to
an abstract idea is not predicated on a finding that the claims are directed
simply to automating or computerizing known techniques. See Ans. 3–4
(stating that “CardioNet is inapplicable because the pending claims are not
directed to automating a known human activity” and that the Examiner
makes no such assumption). Rather, as discussed above, the Examiner’s
rejection is grounded on a determination that the claims “fall under the
mathematical concepts group and/or mental processes group.” Id. at 4.
To the extent that Appellant urges us to reverse the rejection on the
basis that the claims recite a technique that was not known in the prior art,
such an argument is not consistent with legal precedent on patent eligibility.
As the Supreme Court has stated, “[t]he ‘novelty’ of any element or steps in
a process, or even of the process itself, is of no relevance in determining
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whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diehr, 450 U.S. at 188–89. In other
words, 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 eligibility.”).
Appellant contends that the computer control system and
measurement apparatus of claim 14 “do not perform ‘insignificant extra-
solution activity.’” Reply Br. 8. According to Appellant, “[t]here is nothing
incidental, nominal, or tangential about the measurement apparatus and
computer control system, because the operation of claim 14 cannot be
feasibly performed without them,” and, “[t]hus, the measurement apparatus
and computer control system are ‘integral’ to the claim.” Id.
These arguments are not persuasive for reasons discussed above. As
we point out above, claim 14 recites only nominally a generic “measurement
apparatus” to measure the eye positions. Likewise, claim 14 recites the
computer control apparatus only nominally, as comprising generic computer
components of a processor and memory, used as a tool for carrying out the
abstract idea (i.e., the measuring, generating, and comparing steps). We find
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no indication in the Specification, nor does Appellant direct us to any
indication, that the operations recited in claim 14 invoke any assertedly
inventive programming, require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
For the above reasons, Appellant fails to apprise us of error in the
Examiner’s determination that claim 14 does not recite additional elements
that integrate the abstract idea into a practical application as set forth in the
2019 Eligibility Guidance (Non-Final Act. 4–5).
Claim 25 depends from claim 14 and recites that generating the report
“includes providing feedback to the subject in order to improve the subject’s
anticipatory timing.”5 Appeal Br. 22 (Claims App.). Appellant argues that
“the system of claim 25 effects a particular treatment or prophylaxis for a
disease or medical condition, and is patent-eligible under step 2A, prong 2.”
Appeal Br. 18. According to Appellant, “providing feedback to the user
based on a disconjugacy metric is a particular treatment for impairment.”
Reply Br. 9. Appellant makes a similar argument with respect to claim 26,

5 Appellant argues that claim 25 recites that the system “includes one or
more programs storing instructions for ‘providing a .. [sic] report
categorizing cognitive performance of the subject,’ including ‘providing
feedback to the subject to improve the subject’s anticipatory timing.’”
Appeal Br. 18. However, this is not correct; claim 25 does not mention
categorizing cognitive performance.
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which recites that “the system comprises a cognitive training system that
includes one or more feedback devices to provide real-time performance
information to the subject.” Appeal Br. 18–19; see id. at 22 (Claims App.).
Appellant’s arguments are not persuasive. The additional limitation in
claim 25 that the operation of generating the report “includes providing
feedback to the subject in order to improve the subject’s anticipatory timing”
does not distinguish materially from the operation of generating a report.
This limitation encompasses merely displaying the result of the abstract idea
(the mathematical concept and/or mental processes of generating a
disconjugacy metric from the measurement data and comparing the metric to
a baseline), which, as discussed above, is insignificant extra-solution activity
and, thus, does not integrate the abstract idea into a practical application.
See 2019 Eligibility Guidance, 84 Fed. Reg. at 55. Similarly, the recitation
of generic “feedback devices” to provide real-time performance data in
claim 26 encompasses merely displaying the result of the abstract idea and,
likewise, is insignificant extra-solution activity See Spec. ¶ 38 (disclosing
that feedback devices “provide real time performance information to the
subject corresponding to measurement results” and that “[i]n some
embodiments, the performance information provides positive feedback to the
subject when the subject’s” performance is within the normal range).
As explained in the PTO’s October 2019 Update: Subject Matter
Eligibility, (available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf), 13–14 (Oct. 17, 2019), the 2019 Eligibility
Guidance, 84 Fed. Reg. 55,
includes a “treatment/prophylaxis” consideration, under which
a claim can integrate a judicial exception into a practical
application by applying or using the judicial exception to effect
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a particular treatment or prophylaxis for a disease or medical
condition. . . . This consideration encompasses both treatment
and prophylaxis limitations, including, e.g., acupuncture,
administration of medication, dialysis, organ transplants,
phototherapy, physiotherapy, radiation therapy, surgery, and the
like.
Recitation of a feedback device to provide performance information to
the subject, as broadly recited, is not analogous to recitations of actions that
have been characterized as a specific treatment or prophylaxis for a disease
or medical condition. See, e.g., Vanda Pharms. Inc. v. West-Ward Pharms.
Int’l Ltd., 887 F.3d 1117, 1136 (Fed. Cir. 2018) (“At bottom, the claims here
are directed to a specific method of treatment for specific patients using a
specific compound at specific doses to achieve a specific outcome.”);
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1066–68
(Fed. Cir. 2011) (considering an immunization step that integrates an
abstract idea into a specific process of immunizing that lowers the risk that
immunized patients will later develop chronic immune-mediated diseases to
be a particular prophylaxis limitation that practically applies the abstract
idea). In contrast, Appellant’s claims 25 and 26 merely recite generic
feedback apparatus for reporting information. The fact that the provided
information is intended to help the subject improve future performance does
not make the feedback apparatus a specific or particular treatment analogous
to those determined by the courts to transform the abstract idea into a
patent-eligible practical application.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that claims 25 and 26 do not recite additional
elements that integrate the abstract idea into a practical application as set
forth in the 2019 Eligibility Guidance (Non-Final Act. 4–5).
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Turning now to Step 2B of the framework set forth in the 2019
Eligibility Guidance, the Examiner determines that those of ordinary skill in
the relevant field would recognize the aforementioned additional elements
(beyond the abstract idea) recited in the claims are “well-understood,
routine, and conventional means for data-gathering and computing, as
demonstrated by” Appellant’s Specification. Non-Final Act. 5. In
particular, the Examiner cites Figures 2 and 3 of the present application and
paragraph 39 of the Specification as disclosing that the processor and
memory comprise generic computer components configured to perform
generic computer functions “that are well-understood, routine, and
conventional activities.” Id.
Appellant does not present any arguments disputing the Examiner’s
findings in this regard. Rather, Appellant contends that “[a]n inventive
concept is found in claim 14 in the fact that errors in variability of
disconjugacy between left and right eye gaze can provide evidence of
cognitive deficit.” Appeal Br. 17. Thus, Appellant argues that “the
‘presenting’ ‘measuring’ and ‘generating’ operations recited in the claim fall
outside of the scope of any abstract idea identified by the Examiner and
should thus be considered ‘additional elements.’” Id. Appellant additionally
argues that “[t]here is no evidence that this ordered combination of claim
elements has ever been implemented by human or machine.” Id.
This line of argument is not persuasive. The limitations on which
Appellant relies are directed to the abstract idea itself (the mathematical
concept of generating a disconjugacy metric), and to the recitation of generic
apparatus for gathering data on which the abstract idea (the mathematical
concept) is performed and for displaying the results of the abstract idea
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(generating a report), which is insignificant extra-solution activity ancillary
to the abstract idea. It could not be clearer from Alice, that under step two of
the Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice,
573 U.S. at 217. See Mayo, 566 U.S. at 72–73 (requiring that “a process that
focuses upon the use of a natural law also contain other elements or a
combination of elements, sometimes referred to as an ‘inventive concept,’
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the natural law itself” (emphasis added)). In other words,
the inventive concept under step two of the Mayo/Alice test cannot be the
abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims
ineligible because the only alleged “inventive concept” is the
abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring).
Appellant’s contention regarding the lack of evidence that the ordered
combination of elements recited in claim 14 has ever been implemented by
human or machine (Appeal Br. 17) is not persuasive. As discussed above,
the novelty of the claimed invention is not relevant in determining whether
the claimed subject matter falls within the categories of possibly patentable
subject matter under 35 U.S.C. § 101; a claim directed to an abstract idea,
even if novel and nonobvious, is, nonetheless, not patent eligible.
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For the above reasons, Appellant fails to apprise us of error in the
Examiner’s determination that claims 14, 25, and 26 do not recite additional
elements that, when considered both individually and as an ordered
combination, transform the nature of the claim into an inventive concept
(i.e., an element or combination of elements that is sufficient to ensure that
the claim amounts to significantly more than an abstract idea). Accordingly,
we sustain the rejection of claims 14, 25, and 26, and of claims 15–22,
which fall with claim 14.
CONCLUSION
The Examiner’s rejection of claims 14–22, 25, and 26 is AFFIRMED.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
14–22, 25,
26
101 Eligibility 14–22, 25,
26

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED