Wei Zhang et al.

Patent Trials and Appeals Board

Mar 3, 2020

14648266 - (D) (P.T.A.B. Mar. 3, 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.
14/648,266 05/29/2015 WEI ZHANG 2012P01671WOUS 5262
24737 7590 03/03/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
MELHUS, BENJAMIN S
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
03/03/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WEI ZHANG and
WARNER RUDOLPH THEOPHILE TEN KATE

Appeal 2018-007100
Application 14/648,266
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–15. 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. The Appellant identifies the real party in interest as
“Koninklijke Philips N.V., Eindhoven, NL.” Appeal Br. 2.
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STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellant’s invention “in particular relates to a[n] . . . apparatus
that estimates the fall risk of a user based on an analysis of a sit-to-stand
[(“STS”)] transfer movement by the user.” Spec. 1:2–4; see id. at 1:13–15.
Claim 11, reproduced below, with bracketed notations and indents
added, is illustrative of the claimed subject matter.
11. A non-transitory computer program product, comprising
computer program code that, when executed on a computer or
processor, causes the computer or processor to determine a fall
risk for a user by:
[(a)] analyzing a plurality of measurements of an
acceleration of the user to determine if the user has performed a
sit-to-stand transfer;
[(b)] identifying a peak vertical acceleration of the user
during the sit-to-stand transfer from the plurality of
measurements of the acceleration of the user, wherein the
identified peak vertical acceleration is scaled using an estimate
of gravity obtained from the measurements of the acceleration
of the user thereby producing a scaled peak vertical
acceleration; and
[(c)] estimating a fall risk for the user from the scaled
peak vertical acceleration, wherein the fall risk is inversely
proportional to the scaled peak vertical acceleration.
Rejections
Claims 12–15 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Claims 11–15 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claim 11 is rejected under 35 U.S.C. § 102(b) as anticipated by
Najafi et al. (US 8,206,325 B1, issued June 26, 2012) (hereinafter “Najafi”).
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Claims 12–14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Najafi.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Najafi in view of Agnes Zijlstra et al., Sit-stand and stand-sit transitions in
older adults and patients with Parkinson’s disease: event detection based on
motion sensors versus force plates, Journal of Neuroengineering and
Rehabilitation Research Publication, 2012, 9:75 (hereinafter “Zijlstra”).

ANALYSIS
Written Description
Claim 12 recites, among other things, “a computer processor
configured to: . . . estimate a fall risk for the user by computing an inverse of
the scaled peak vertical acceleration.”
The Examiner rejects claim 12 as failing to comply with the written
description requirement because “one of ordinary skill would not recognize
applicant’s possession of a computer processor which computes an inverse
of an acceleration parameter.” Final Act. 3.
The Appellant argues that “the [S]pecification discloses a computer
processor configured to estimate a fall risk for a user by computing an
inverse of the scaled peak vertical acceleration, as recited in claim 12.”
Appeal Br. 4. The Appellant supports this argument by pointing to the
Specification beginning at page 4, line 30 and ending at page 5, line 2 (id.
at 3–4), which describes with emphasis added:
According to a second aspect of the invention, there is
provided a computer program product, comprising computer
program code that, when executed on a computer or processor,
causes the computer or processor to determine a fall risk for a
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user by analyzing measurements of the acceleration of the user
to determine if the user has performed a sit-to-stand transfer;
identifying the peak vertical acceleration of the user during the
sit-to-stand transfer from the measurements of the acceleration
of the user; and estimating a fall risk for the user from the
identified peak vertical acceleration.
Also, the Appellant points to page 8, lines 15–20 (id. at 3), which in relevant
part, describes with emphasis added:
the method proceeds to step 105 in which the peak vertical
acceleration is used to estimate a fall risk for the user. In
general, as shown in Figure 2(a), those at a higher risk of falling
produce lower peak vertical acceleration values than those at a
lower risk of falling. Thus, in some embodiments, the fall risk
can be inversely proportional to the peak vertical acceleration
value (e.g. fall_risk α 1/peak_vertical_acceleration)[.]
The Appellant explains the implication of the foregoing citations as “a
computer or processor determines fall risk from a peak vertical acceleration
(Page 4, line 30, to page 5, line 2) where, in one embodiment, fall risk is
inversely proportional to the peak vertical acceleration (Page 8, lines 15[–
]20).” Reply Br. 2. The Appellant’s argument is persuasive.
In this case, the Examiner’s analysis only appears to compare the
subject matter of each citation to the subject matter of claim 12 individually.
See Ans. 12–14. The Examiner does not appear to address what is
reasonably conveyed to one of ordinary skill upon reading the subject matter
of the two citations of the Specification together.
In view of the foregoing, we find that the Specification conveys with
reasonable clarity to those skilled in the art that the Appellant was in
possession of the invention as recited in claim 12 as of the original filing
date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
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1991). Thus, we do not sustain the Examiner’s rejection of claim 12 and
claims 13–15, which depend therefrom.

Patent Eligibility
Principles of Law
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. 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. 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 (“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
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as “molding 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 (“We
view 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, 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 (citation 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
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monopolize the [abstract idea].’” Id. (alterations in original) (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.

USPTO § 101 Guidance
After the Appellant’s briefs were filed and the Examiner’s Answer
mailed, the USPTO published revised guidance on the application of § 101.
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). That guidance revised
the USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) providing groupings of subject matter that are
considered an abstract idea; and (2) clarifying that a claim is not “directed
to” a judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50. The 2019 Revised Guidance, by its
terms, applies to all applications, and to all patents resulting from
applications, filed before, on, or after January 7, 2019. Id. Under the 2019
Revised Guidance, we first 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 activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
is 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.
See 2019 Revised Guidance, 84 Fed Reg. at 54, 56.
Step One of the Mayo/Alice Framework
Does the claim recite a judicial exception?
Under the first step of the Mayo/Alice framework and Step 2A,
Prong One, of Office Guidelines (see 2019 Revised Guidance, 84 Fed. Reg.
at 53–54), the Examiner determines that claim 11 recites “data collection
and analysis steps” (Final Act. 3) and that the analysis (i.e., calculation)
steps recited in claim 11 may be performed mentally and/or by hand. See id.
at 15.
Under the first step of the Alice framework, we “look at the ‘focus of
the claimed advance over the prior art’ to determine if the claim’s ‘character
as a whole’ is directed to excluded subject matter.” Affinity Labs of Texas,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016), cert.
denied, 137 S. Ct. 1230 (2017)).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the “directed to” inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] . . . or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Revised Guidance, 84 Fed. Reg. at 54–55.
The Specification provides evidence as to what the claimed invention
as a whole is directed to. Here, the Specification is titled “[m]ethod and
apparatus for estimating the fall risk of a user” and describes that the
“apparatus . . . estimates the fall risk of a user based on an analysis of a sit-
to-stand transfer movement by the user.” Spec. 1:2–4.
An examination of claim 11 shows that the claim recites “[a] non-
transitory computer program product, comprising computer program code
that, when executed on a computer or processor, causes the computer or
processor to determine a fall risk for a user by:” (a) analyzing acceleration
data to identify a STS transfer (i.e., “analyzing a plurality of measurements
of an acceleration of the user to determine if the user has performed a sit-to-
stand transfer”); (b) identifying a scaled peak vertical acceleration from the
acceleration data (i.e., “identifying a peak vertical acceleration of the user
during the sit-to-stand transfer from the plurality of measurements of the
acceleration of the user, wherein the identified peak vertical acceleration is
scaled using an estimate of gravity obtained from the measurements of the
acceleration of the user thereby producing a scaled peak vertical
acceleration”); and (c) estimating a fall risk for the user (i.e., “estimating a
fall risk for the user from the scaled peak vertical acceleration, wherein the
fall risk is inversely proportional to the scaled peak vertical acceleration.”).
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When considered collectively and under the broadest reasonable
interpretation, claim 11 describes steps (i.e., instructions) for determining a
fall risk for a user by (a) analyzing acceleration data to identify a STS
transfer, (b) identifying a scaled peak vertical acceleration from the
acceleration data, and (c) estimating a fall risk for the user, which is similar
to the concept of “selecting certain information, analyzing it using
mathematical techniques, and reporting or displaying the results of the
analysis” in SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed.
Cir. 2018). Accordingly, claim 11 recites a way of evaluating, which is a
concept that can be performed in the human mind, i.e., mental processes
identified in the 2019 Revised Guidance (84 Fed. Reg. at 52), as well as a
“series of mathematical calculations based on selected information” (id.
at n.12 (citing SAP Am., 898 F.3d at 1163)) —mathematical relationships,
mathematical formulas or equations, mathematical calculations, which is one
of the “[m]athematical concepts” identified in the 2019 Revised Guidance
(id. at 52), and thus recites an abstract idea.
Is the claim “directed to” the recited judicial exception?
Under Step 2A, Prong Two of the 2019 Revised Guidance, we look to
whether the claims “apply, rely on, or use 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 judicial
exception,” i.e., “integrates the . . . judicial exception into a practical
application,” such that it is not directed to the identified abstract idea. 2019
Revised Guidance, 84 Fed. Reg. at 54.
The additional elements of claim 11 are the “non-transitory computer
program product, comprising computer program code” and “computer or
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processor.” The Specification describes, “[a] computer program may be
stored/distributed on a suitable medium, such as an optical storage medium
or a solid-state medium supplied together with or as part of other hardware,
but may also be distributed in other forms, such as via the Internet or other
wired or wireless telecommunication systems.” Spec. 21:2–6; see also id.
at 4:30–5:9. Also, the Specification does not provide an indication that the
computer or processor may be something other than generic components
operating in their normal capacity. See, e.g., id. at 20:33–34 (“A single
processor or other unit may fulfill the functions of several items recited in
the claims.”). We find no indication in the Specification, nor does the
Appellant direct us to any indication, that the operations recited in claim 11
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, invoke any asserted inventive
programming, 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.”). See Spec. 21:2–6; see also id. at 4:30–5:9; 20:33–34.
Analysis of claim 11, as a whole, confirms the Examiner’s
determination that the claim is directed to an abstract idea. A review of the
Specification demonstrates that the claim elements are not improvements in
the functioning of a computer, or an improvement to other technology or
technical field. See supra. And, the claimed features, alone and in
combination, are no more than generic components operating in their
ordinary capacity. Moreover, we find no evidence that the additional
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elements, alone or in combination, implement the abstract idea with a
particular machine that is integral with the claim; effect a transformation or
reduction of a particular article to a different state or thing; apply the judicial
exception in some other meaningful way beyond generally linking the use of
the abstract idea to a particular environment; or otherwise integrate the
abstract idea into a practical application. See 2019 Revised Guidance at 55
(identifying exemplary considerations indicative that additional elements
may have integrated the exception into a practical application).
Further, we note that the level of abstraction at which the Examiner
describes the invention does not change the accuracy of the Examiner’s
determination. Apple v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016) (“An abstract idea can generally be described at different levels of
abstraction”).
Step Two of the Mayo/Alice Framework
Under step two of the Alice framework, we find supported the
Examiner’s determination that the additional elements of claim 11 fail “to
make the claim as a whole amount to significantly more than the abstract
idea.” Final Act. 5. The Examiner identifies “a non-transitory computer
program product, comprising computer program code that, when executed
on a computer or processor, causes the computer or processor to determine a
fall risk for a user” as additional elements. Id. (emphasis omitted). The
Examiner adds that the additional elements “are well-understood, routine,
and conventional in the art” and therefore, “do not meaningfully limit the
claim, taken as a whole, to a particular application of the abstract idea.” Id.
at 6.
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Taking the claims’ elements separately, the “non-transitory computer
program product, comprising computer program code” and “computer or
processor” are purely conventional. See Spec. 21:2–6; see also id. at 4:30–
5:9; 20:33–34. It is clear, from the Specification, including the claim
language, that the claim “limitations require no improved computer
resources [the Appellant] claims to have invented, just already available
computers, with their already available basic functions, to use as tools in
executing the claimed process” performed by the claimed system. SAP Am.,
898 F.3d at 1169–70. Additionally, the executable instructions, i.e., steps
(a)–(c), performed by the computer or processor by use of the program code
are purely conventional. See Elec. Power, 830 F.3d at 1355 (gathering,
sending, monitoring, analyzing, selecting, and presenting information does
not transform the abstract process into a patent-eligible invention); see also
SAP Am., 898 F.3d at 1168 (citing Elec. Power, 830 F.3d at 1353, 1355)
(“[E]ven if a process of collecting and analyzing information is ‘limited to
particular content’ or a particular ‘source,’ that limitation does not make the
collection and analysis other than abstract.”).
Considered as an ordered combination, the computer components of
Appellant’s claim 11 add nothing that is not already present when the steps
are considered separately. The executable instructions that determine fall
risk by using a sequence of calculations and estimates are conventional. See
supra; see Elec. Power, 830 F.3d at 1354–56 (holding that the functions and
sequence of receiving, detecting, analyzing, displaying, accumulating,
updating, and deriving data was abstract). Additionally, “[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
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‘significantly more’ than that ineligible concept.” BSG Tech LLC v
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
We conclude that claim 11 fails to provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
Appellant’s Arguments
The Appellant argues that the Examiner failed to address the
substance of an argument in an Advisory Action, mailed November 29,
2017. Appeal Br. 4. The Appellant “requests removal of the application
from appeal, and [issuance of] another Office Action in which the Office
addresses the substance of applicant’s argument.” Id. However, this matter
is reviewable by petition under 37 C.F.R. § 1.181 (see MPEP §§ 1002,
1002.02(c), 1201) and is not within the jurisdiction of the Board. See also
In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
The Appellant argues that claim 11 “incorporate[s] a specific, limited
mathematical rule, similar to McRo [(McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016)], to estimate fall risk from the
scaled peak vertical acceleration, and this rule improves an existing
technological process.” Appeal Br. 5. The Appellant supports this argument
by pointing to the Specification and asserting:
The background of the application states that outside of a
clinical setting an accuracy of a sit-to-stand transfer is
dependent on an accuracy of the start time, which is indicated
by a user pressing a button, which is obtrusive. (Page 2, lines
10-23). The specification at least implicitly discloses that a
computer or processor, in at least one embodiment, determines
fall risk as the inverse of peak vertical. (Page 8, lines 15-20).
The specification further states this is less sensitive to the
accuracy of the start time and thus an improvement. (Page 8,
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line 33, to page 9, line 6). An improvement is the automation of
the mathematical formula/equation described in the
specification, which was not previously performed manually in
the same manner. The McRO court indicated that the
incorporation of the particular claimed rules improved the
existing technological process, rather than merely using a
computer as a tool to automate conventional activity. (MPEP
2106).
Reply Br. 3 (emphasis added). The Appellant’s argument is not persuasive.
In McRO, the claims were directed to a specific improvement in
computer animation and used rules to automate a subjective task of humans
to create a sequence of synchronized, animated characters. See McRO,
837 F.3d at 1314–15. Unlike Flook, Bilski, and Alice, it was not the use of
the computer but the incorporation of the rules that improved an existing
technological process. Id. at 1314. Here, as discussed above, there is no
such improvement to technology or a technological process. Any
improvement in claim 11 is an improvement in the analysis of the
acceleration data to estimate a fall risk, i.e., the abstract idea. See BSG Tech,
899 F.3d at 1290. Also, the Appellant does not direct our attention to
anything in the Specification to indicate that the invention provides a
technical improvement or that claim 11 incorporates rules to automate a
subjective task of humans, as in McRO.
The Appellant argues that the Examiner fails satisfy the burden to
establish that the additional elements of claim 11 are well-understood,
routine, and conventional. Reply Br. 4 (citing “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP Inc. [, 881 F.3d 1360 (Fed. Cir.
2018)],” USPTO Memorandum, Robert W. Bahr, Deputy Commissioner for
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Patent Examination Policy, April 19, 2018 (the “Berkheimer Memo”))).
Initially, we note that the mailing date of the Examiner’s Answer, i.e.,
May 2, 2018, is in close proximity to the date of the Berkheimer Memo,
April 18, 2018. And, any lack of application of the guidance from the
Berkheimer Memo may be a result of this short time period. Additionally, it
is clear from the record that the Appellant was aware of the Examiner’s
concern over the lack of discussion of the additional elements of claim 11,
i.e., computer program, the computer, and the processor in the Specification.
See Final Act. 5–6, Ans. 12–14. Further, as discussed above, we have
determined that the additional elements of claim 11 are conventional and
have included citations to the Specification and court decisions to support
that determination. Accordingly, we determine that the Appellant’s
argument is not persuasive.
The Appellant’s other arguments, including those concerning the
Examiner’s analogizing to case law (see, e.g., Appeal Br. 5–7), have been
considered but are not persuasive of error.
Conclusion
Thus, we sustain the Examiner’s rejection of claim 11. The
Examiner’s rejection of claim 12 is based on similar reasons as claim 11.
See Final Act. 3–8. The Appellant offers the same arguments for patent
eligibility for claim 12 as claim 11. See Appeal Br. 8 (“the above discussion
regarding claim 11 applies mutatis mutandis to claims 12–15”). Thus, we
sustain the Examiner’s rejection of claim 12, and claims 13–15 which
depends therefrom, for the same reasons as claim 11. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Anticipation
The Examiner finds Najafi teaches the subject matter of claim 11.
Final Act. 9–10. Claim 11 recites, with emphasis added, “estimating a fall
risk for the user from the scaled peak vertical acceleration, wherein the fall
risk is inversely proportional to the scaled peak vertical acceleration.”
Thus, claim 11 requires that the fall risk estimate is inversely proportional to
the scaled peak vertical acceleration. Id. at 10. Accordingly, for the
Examiner’s rejection to be adequately supported, the Examiner must explain
how Najafi’s fall risk estimate is inversely proportional to the scaled peak
vertical acceleration.
In relevant part, the Examiner finds:
estimating a fall risk for the user from the scaled peak
vertical acceleration (Col. 10 l. 13-60; specific incorporation of
peak acceleration in paragraph Col. 10 1. 37-46 where postural
transitions incorporate gravity-scaled peak vertical
acceleration),
wherein the fall risk is inversely proportional to the
scaled peak vertical acceleration (Examiner notes that the fall
risk determined by Najafi is also inversely proportional to the
scaled peak acceleration as claimed as the inverse
proportionality is a necessary result of the parameter and
condition-- e.g. relationship disclosed in applicant’s drawings
Fig. 2(a), spec. p. 8 with “in general” healthy and frail
populations).
Id. at 10.
The Appellant argues that the Examiner’s finding that Najafi’s fall
risk estimate is inversely proportional to the scaled peak vertical acceleration
is inadequately supported. See Appeal Br. 8–10; Reply Br. 4–5 (citing
Najafi col. 10, ll. 13–54). The Appellant argues that Najafi’s fall risk
estimate is based on a linear combination of inputs that yields a single score
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to a threshold (infra), rather than being inversely proportional to a scaled
peak vertical acceleration. See Reply Br. 4–5. The Appellant’s argument is
persuasive.
Further, to the extent that the Examiner relies on a theory of inherency
to support the finding that Najafi’s fall risk estimate is inversely proportional
to a scaled peak vertical acceleration, the Examiner fails to sufficiently
explain on the record how the Najafi’s single score (i.e., fall risk estimate) is
inversely proportional to a scaled peak vertical acceleration. Rather, the
Examiner appears to find that Najafi’s identification of peak acceleration, by
itself, is sufficient evidence to correspond to the estimating step of claim 11.
See Ans. 18–20. Such a finding would be helpful if in the analysis the
Examiner were to explain how Najafi’s identification of peak acceleration
equates to Najafi’s fall risk estimate. However, the Examiner does not make
this additional finding on the record. Rather, the Examiner seems to rely on
the Appellant’s invention by citing to the Specification’s disclosure
concerning Figure 2(a).2 Reliance on the Appellant’s invention does not
bridge the gap in evidence because a correlation of fall risk and peak vertical
acceleration scaled for gravity does not establish that Najafi’s identification
of peak acceleration equates to Najafi’s fall risk estimate.
Thus, we do not sustain the Examiner’s rejection of claim 11.

2 The Specification discusses Figure 2(a) in the Summary of the Invention
and Detailed Description of the Preferred Embodiments sections. Spec. 3:5–
12, 8:17–20; see id. at 6:19–20. These sections of the Specification describe
the Appellant’s invention.
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Obviousness
The Examiner finds that Najafi teaches a sensing module 101 for
estimating a fall risk for a user that includes some of the features of
claim 12, but “fails to teach estimating a fall risk by computing an inverse of
the scaled peak vertical acceleration.” Final Act. 11–12. The Examiner
concludes:
[i]t would have been obvious to one of ordinary skill in the
pertinent art . . . to modify the estimation step of the processor
of Najafi to estimate a fall risk by computing an inverse of the
scaled peak vertical acceleration as a predictable rearrangement
of a parameter for mathematical convenience -- i.e. the use of a
reciprocal of a value.
Id. at 12.
The Appellant argues that the Examiner’s conclusion is inadequately
supported. See Appeal Br. 11; Reply Br. 5. The Appellant asserts:
Najafi discloses computing a risk of fall based on the
following inputs: 1) a standard deviation of lateral acceleration,
2) a standard deviation of the band-pass filtered acceleration, 3)
a mean and a standard deviation of postural positions over a
day, 4) a number of successive postural transitions for a single
task, 5) a quality of physical activity. (Column 10, lines 13-46).
Fall risk is evaluated by inputting these parameters into a
statistical model that provides a linear combination of these to
yield a single score. (Column 10, lines 47-51). A subject is
considered high risk of falling if the score exceeds a threshold.
(Column 10, lines 51-54).
Taking the inverse of any of these parameters or the
single score, depending on the magnitude of the particular
value, could cause an otherwise high risk of falling to be
reported as not high risk of falling and a not high risk of falling
to be reported as high risk of falling because small values
become large value and large values become small values when
you take the inverse, which may impact whether the single
score exceeds or does not exceed the threshold. Hence, it
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would not have been obvious to the skilled artisan at the time of
the invention to modify the fall risk estimation step of Najafi to
include computing an inverse of any of the parameters when
computing the linear combination to yield the single score.
Reply Br. 5. The Appellant’s argument persuades us that the Examiner’s
rejection is not adequately supported. In this case, we fail to understand why
one of ordinary skill in the art armed with the knowledge of Najafi’s
disclosure would have sought to estimate a fall risk by computing an inverse
of the scaled peak vertical acceleration.
Thus, we do not sustain the Examiner’s rejection of claim 12 and
claims 13 and 14, which depend therefrom.
The rejection of claim 15 based on Najafi in combination with
Zijlstra, relies on the same deficiency as discussed above. The deficiency is
not cured by the additional findings and reasoning of the rejection. Thus, we
do not sustain the rejection of claim 15 as unpatentable over Najafi in view
of Zijlstra.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
12–15 112(a) Written Description

12–15
11–15 101 Eligibility 11–15
11 102(b) Najafi 11
12–14 103(a) Najafi 12–14
15 103(a) Najafi, Zijlstra 15
Overall
Outcome
11–15

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED