Wei Zhang et al.

Patent Trials and Appeals Board

Jun 2, 2020

14648266 - (R) (P.T.A.B. Jun. 2, 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 06/02/2020
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
06/02/2020 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 REQUEST FOR REHEARING
The Appellant timely filed a Request for Rehearing (“Req. Reh’g”)
under 37 C.F.R. § 41.52 on April 20, 2020, requesting that we reconsider our
Decision of March 3, 2020 (“Dec.”), affirming the rejection under 35 U.S.C.
§ 101 of claims 11–15 as directed to judicial exception without significantly
more.
The Appellant submits that the Decision evaluates the 35 U.S.C. § 101
rejection under the 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”),
which “essentially amounts to an undesignated new ground of rejection”
because the Examiner did not reject the claims under the 2019 Revised
Guidance, the Appellant never had the opportunity to provide evidence
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under the 2019 Revised Guidance, and the rejection was sustained based on
the 2019 Revised Guidance. Req. Reh’g 2. Pursuant to 37 C.F.R. § 41.52,
the Appellant requests a rehearing to present new arguments to address the
35 U.S.C. § 101 rejection under the 2019 Revised Guidance and the
“October 2019 Update: Subject Matter Eligibility,” available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.
pdf (“October 2019 Update”). See id.
We disagree with the Appellant that the Decision is an undesignated
new ground of rejection. In the interest of fairness, we will address the
Appellant’s arguments presented in the Request because they may be
understood as addressing points believed to have been misapprehended or
overlooked by the Board. See 37 C.F.R. § 41.52(a)(1).
The Appellant’s arguments primarily concern the rejection of
claim 11. See Req. Reh’g 2–5. Claim 11 is reproduced below with
bracketed notations added:
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
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[(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.
Appeal Br. 13, Claims App.
The Appellant disagrees with a statement in the Decision at page 10,
which states, “[w]hen considered collectively and under the broadest
reasonable interpretation” step (b) describes “identifying a scaled peak
vertical acceleration from the acceleration data.” Req. Reh’g 2. According
to the Appellant, “[c]laim 11 recites identifying a peak vertical acceleration
. . . , and then 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.” Id.
(emphasis added).
After the statement in the Decision that step (b) describes “identifying
a scaled peak vertical acceleration from the acceleration data,” the Decision
explains its meaning by reciting the entirety of step (b). Dec. 9. More
specifically, the Decision states:
An examination of claim 11 shows that the claim recites
. . . (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”).
Id. Put simply, the Decision only uses the language “identifying a scaled
peak vertical acceleration from the acceleration data” as a concise version of
the language of step (b). To be clear, we are in agreement with the
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Appellant that “[i]dentifying a peak vertical acceleration is not the same as
scaling that identified peak vertical acceleration.” Req. Reh’g 2. Indeed,
these are two separate steps. As stated by the Appellant, “[i]dentifying a
peak vertical acceleration includes identifying ‘the largest maximum in the
portion of the vertical acceleration signal corresponding to the sit-to-stand
transfer’” (id. (citing Spec. 8:13–14)). And, the identification of peak
vertical acceleration may occur before or after the scaling of the identified
peak vertical acceleration;
in step 107, an estimate of the acceleration due to gravity is
estimated from the vertical acceleration signal, and in step 109
this estimate is used to scale the identified peak vertical
acceleration to give a scaled peak vertical acceleration. The
peak vertical acceleration is preferably scaled by subtracting
the estimate of gravity from the peak vertical acceleration.
. . . .
It will be appreciated that steps 101, 103, 107 and 109 do
not have to be performed in the order shown in Figure 5. . . .
Alternatively, the estimate of gravity can be used to scale all of
the vertical acceleration measurements, with the peak vertical
acceleration being identified from the scaled vertical
acceleration measurements.

Spec. 9:18–34 (emphasis added); id. at Fig. 5. Additionally, we note that
here the Specification makes clear that scaling the identified peak vertical
acceleration may occur by use of a computation (see Req. Reh’g 2–3); i.e.,
“[t]he peak vertical acceleration is preferably scaled by subtracting the
estimate of gravity from the peak vertical acceleration.” Spec. 9:20–23
(emphasis added).
The Appellant acknowledges the determination in the Decision that
claim 11 recites two abstract ideas; namely, mental processes and
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mathematical concepts. Req. Reh’g 2. More specifically, the Decision
states:
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.
Dec. 10.
The Appellant references the October 2019 Update with respect to
mental processes and mathematical concepts and focuses on the “wherein”
clause of step (b), i.e., “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.” Req. Reh’g 3. The Appellant argues that the “wherein”
clause “does not recite a mental process” because “it is not reasonable to
determine that a human can ‘practically’ perform, in the mind, the claimed
scaling computation.” Id. The Appellant also argues that the “wherein”
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clause “merely involves a mathematical concept and does not recite any
mathematical concept, [therefore] this limitation is not a mathematical
concept.” Id. The Appellant’s arguments are not persuasive.
As discussed above, the Specification describes, “[t]he peak vertical
acceleration is preferably scaled by subtracting the estimate of gravity from
the peak vertical acceleration.” Spec. 9:20–23 (emphasis added). We
determine that subtraction is a type of evaluation that can practically be
performed in the human mind, and therefore is a mental process. See
October 2019 Update 7. Additionally, scaling the peak vertical acceleration
by subtracting the estimate of gravity from peak vertical acceleration is a
mathematical concept, i.e., a mathematical calculation. See Spec. 9:21–23;
October 2019 Update 4 (“A mathematical calculation is a mathematical
operation (such as multiplication) or an act of calculating using
mathematical methods to determine a variable or number . . . . There is no
particular word or set of words that indicates a claim recites a mathematical
calculation.”). Moreover, we note that the Appellant fails to persuasively
explain why the evaluation described in the “wherein” clause of step (b)
cannot be practically performed in the human mind or why the “wherein”
clause lacks a mathematical concept.
The Appellant argues, “the subject limitation is ‘an additional
limitation[]’” and that “this additional limitation, in combination with the
other limitations / the claim as a whole, integrates the alleged judicial
exception into a practical application.” Req. Reh’g 4. However, it is unclear
if the Appellant’s reference to the “the subject limitation” refers to the
entirety of claim 11’s step (b) or only the “wherein” clause of step (b). In
either case, neither portion of claim 11 is an additional limitation of the
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claim. Rather, the entirety of step (b) recites the abstract idea. See Dec. 8–
12. As discussed in the Decision, “[t]he additional elements of claim 11 are
the ‘non-transitory computer program product, comprising computer
program code’ and ‘computer or processor.’” Id. at 10–11.
The Appellant argues:
claim 11, as a whole, provides, relative to existing fall risk
detection systems, a more robust and reliable computing system
that reduces processor computational effort and that mitigates
sensor calibration errors that introduce error into the peak
vertical acceleration and thus the fall risk estimation. The 2019
Update states: “. . . if the additional limitations reflect an
improvement in the functioning of a computer, or an
improvement to another technology or technical field, the claim
integrates the judicial exception into a practical application and
thus imposes a meaningful limit on the judicial exception. No
further analysis is required. The claim is eligible at Step 2A.”
Req. Reh’g 4 (quoting October 2019 Update 11); see Spec. 8:33–34, 9:1–6,
11–17. The Appellant’s argument is not persuasive. As discussed in the
Decision, “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.” Dec. 11;
see SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
For the foregoing reasons, the Appellant’s Request does not persuade
us that the rejection of claim 11 under 35 U.S.C. § 101 includes a reversible
error. The Appellant offers substantially the same arguments for patent
eligibility for claim 12 as claim 11. See Req. Reh’g 5 (“[T]he above
discussion regarding claim 11 applies mutatis mutandis to claim 12.”). The
Appellant does not separately argue the rejection of claims 13–15, which
depend from claim 12. Id. Thus, the Appellant’s Request does not
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persuade us that we erred in affirming the rejection of claims 12–15 under
35 U.S.C. § 101.
The Request does not address the Examiner’s rejections under
35 U.S.C. §§ 112(a), 102(b), and 103(a), which were reversed. We do not
modify our decision to reverse these grounds of rejection.

CONCLUSION
We have granted the Appellant’s Request to the extent that we have
considered our Decision in light of the points raised therein, but have denied
the Request.
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
11–15 101 Eligibility 11–15

Final Outcome of Appeal after Rehearing:
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

DENIED