Wei Zhang et al.Download PDFPatent Trials and Appeals BoardMar 3, 202014648266 - (D) (P.T.A.B. Mar. 3, 2020) Copy Citation 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. Appeal 2018-007100 Application 14/648,266 2 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”). Appeal 2018-007100 Application 14/648,266 3 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 Appeal 2018-007100 Application 14/648,266 4 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. Appeal 2018-007100 Application 14/648,266 5 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 Appeal 2018-007100 Application 14/648,266 6 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 Appeal 2018-007100 Application 14/648,266 7 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: Appeal 2018-007100 Application 14/648,266 8 (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). Appeal 2018-007100 Application 14/648,266 9 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.”). Appeal 2018-007100 Application 14/648,266 10 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 Appeal 2018-007100 Application 14/648,266 11 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 Appeal 2018-007100 Application 14/648,266 12 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. Appeal 2018-007100 Application 14/648,266 13 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 Appeal 2018-007100 Application 14/648,266 14 ‘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, Appeal 2018-007100 Application 14/648,266 15 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 Appeal 2018-007100 Application 14/648,266 16 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). Appeal 2018-007100 Application 14/648,266 17 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 Appeal 2018-007100 Application 14/648,266 18 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. Appeal 2018-007100 Application 14/648,266 19 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 Appeal 2018-007100 Application 14/648,266 20 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 Appeal 2018-007100 Application 14/648,266 21 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 Copy with citationCopy as parenthetical citation