Xerxes Battiwalla

Patent Trials and Appeals Board

Sep 18, 2019

13907058 - (D) (P.T.A.B. Sep. 18, 2019)

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.
13/907,058 05/31/2013 Xerxes Battiwalla 02033USCO1/40833.11US01 8201
106936 7590 09/18/2019
Merchant & Gould Cochlear
P.O. Box 2903
Minneapolis, MN 55402
EXAMINER
MCCROSKY, DAVID J
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
09/18/2019 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):
USPTO106936@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XERXES BATTIWALLA
____________

Appeal 2018-0090971
Application 13/907,0582
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–15 and 18–30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
June 12, 2018) and Reply Brief (“Reply Br.,” filed Sept. 25, 2018), and the
Examiner’s Answer (“Ans.,” mailed Aug. 30, 2018) and Final Office Action
(“Final Act.,” mailed Jan. 10, 2018).
2 Appellant identifies Cochlear Limited as the real party in interest. App.
Br. 3.
Appeal 2018-009097
Application 13/907,058
2
CLAIMED INVENTION
Claims 1, 11, and 24 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computer-implemented method for assisting a
clinician fitting a prosthesis to a recipient, the method
comprising:
[(a)] receiving, at a computing environment, input from at
least one input device monitoring the physiological reactions of
a recipient while a clinician fits a prosthesis to the recipient;
[(b)] analyzing, using a processor of the computing
environment, the input to identify at least one physiological
trigger of the recipient;
[(c)] determining, using the processor of the computing
environment, a feedback event based on the at least one
physiological trigger;
[(d)] generating, using the processor of the computing
environment, additional information about the feedback event,
wherein the additional information comprises clinical
instructions for how to adjust the prosthesis, wherein the clinical
instructions are based on the feedback event;
[(e)] determining, using the processor of the computing
environment, whether to generate an alert; and
[(f)] based upon the determination, displaying, using the
computing environment, the feedback event and the additional
information to the clinician for use in adjusting the prosthesis.

REJECTIONS
Claim 30 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
Claims 1–15 and 18–30 are rejected under 35 U.S.C. § 101, as
directed to a judicial exception without significantly more.
Appeal 2018-009097
Application 13/907,058
3
ANALYSIS
Written Description
The written description requirement requires that the disclosure of the
application relied upon reasonably convey that the inventor had possession
of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The
disclosure, as originally filed, need not literally describe the claimed subject
matter (i.e., using the same terms or in haec verba) in order to satisfy the
written description requirement. Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000). The written description requirement is
met when the disclosure “allow[s] one skilled in the art to visualize or
recognize the identity of the subject matter purportedly described.” Enzo
Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002).
The Examiner maintains here that there is no written description
support in the Specification for the “machine learning algorithm to update
the method of providing fitting assistance,” as recited in claim 30. Final
Act. 2. In this regard, the Examiner ostensibly interprets claim 30 as
requiring a machine learning algorithm that performs a new or modified step
in the method of providing fitting assistance to “update the method.”
Yet, claim 30 does not recite any steps performed by the machine
learning algorithm. Instead, claim 30 recites providing the stored feedback
event and the additional information to a machine learning algorithm to
update the method of providing fitting assistance. Claim 30, under a broad,
but reasonable, interpretation encompasses storing the claimed feedback
event and additional information as the claimed “update [to] the method for
providing fitting assistance.” In this regard, using more feedback events and
additional information could improve the quality of the fitting.
Appeal 2018-009097
Application 13/907,058
4
Appellant argues that various examples from the Specification
demonstrate the inventors’ possession of this limitation. App. Br. 22–26
(citing Spec. ¶¶ 18, 19, 32). We find that the portions of the Specification
identified by Appellant provide sufficient written description support to
show possession of the claimed invention. For example, Appellant’s
Specification describes that a machine learning algorithm updates the
physiological analysis module by monitoring recipients and “build[ing] a
more detailed database,” the additional data increasing functionality and
accuracy. Spec. ¶ 18.
Therefore, we do not sustain the Examiner’s rejection of claim 30
under 35 U.S.C. § 112(a).
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group. App. Br. 26–40; see
also Reply Br. 2–9. We select independent claim 1 as representative. The
remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step
in that analysis is to “determine whether the claims at issue are directed to
Appeal 2018-009097
Application 13/907,058
5
one of those patent-ineligible concepts.” Id. (citation omitted). If the claims
are not directed to a patent-ineligible concept, e.g., an abstract idea, the
inquiry ends. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered “individually and ‘as an ordered
combination’” to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 79, 78). This is “a search for 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.’” Id. at 217–18 (alteration in original).
The USPTO recently published revised guidance on the application of
§ 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).3 That guidance
revised the USPTO’s examination procedure with respect to the first step of
the Mayo/Alice framework such that a claim will generally be considered
directed to an abstract idea if (1) the claim recites subject matter falling
within one of the following groupings of abstract ideas: (a) mathematical
concepts; (b) certain methods of organizing human activity, e.g., a
fundamental economic principle or practice, a commercial or legal
interaction; and (c) mental processes (“Step 2A, Prong One”), and (2) the
claim does not integrate the abstract idea into a practical application, i.e.,
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the clam is more than a
drafting effort designed to monopolize the judicial exception (“Step 2A,

3 The Revised Guidance is effective as of January 7, 2019, and applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019.
Appeal 2018-009097
Application 13/907,058
6
Prong Two”). See Revised Guidance 54–55. The Revised Guidance
references MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”)
§§ 2106.05(a)–(c) and (e)–(h) in describing the considerations that are
indicative that an additional element or combination of elements integrates
the judicial exception, e.g., the abstract idea, into a practical application. Id.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
Only if the 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 “[a]dds a specific limitation or combination of
limitations” that is not “well-understood, routine, conventional activity in the
field” or simply “appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception” (“Step 2B”). Id. at 56.
Judicial Exception: Step One of the Mayo/Alice Framework; Step 2A,
Prong 1 of the 2019 Revised Guidance
Appellant’s Specification describes that medical prostheses are fitted
for a particular recipient to match the recipient’s needs and to ensure
comfort. Spec. ¶¶ 1, 12. However, sometimes a clinician misses
physiological cues due to inexperience or because of focusing on the
prosthesis and/or fitting tools, instead of on the recipient. Id. ¶¶ 1, 12.
Appellant’s invention seeks to address this problem by identifying and
alerting a clinician to physiological cues, thereby improving the fitting of a
medical prosthesis. Id. ¶¶ 2, 13.
Appellant’s claim 1 recites a method for assisting a clinician fitting a
prosthesis to a recipient that includes: “receiving . . . input from . . .
Appeal 2018-009097
Application 13/907,058
7
monitoring the physiological reactions of a recipient while a clinician fits a
prosthesis to the recipient . . . .” (step (a)); “analyzing . . . the input to
identify at least one physiological trigger of the recipient” (step (b));
“determining . . . a feedback event based on the at least one physiological
trigger” (step (c)); “generating . . . additional information about the feedback
event, wherein the additional information comprises clinical instructions for
how to adjust the prosthesis, wherein the clinical instructions are based on
the feedback event” (step (d)); “determining . . . whether to generate an
alert” (step (e)); and “based upon the determination . . . displaying . . . the
feedback event and the additional information to the clinician for use in
adjusting the prosthesis” (step (f)).
When given their broadest reasonable interpretation, limitations (a)–
(f) recite steps that can be performed in the human mind (including
observation, evaluation, and judgment), which are mental processes, and,
therefore, an abstract idea. See 2019 Revised Guidance 52. As such, we are
not persuaded that the Examiner failed to consider the claims as a whole in
view of the Specification. See Reply Br. 2–4.
Practical Application: Step One of the Mayo/Alice Framework; Step 2A,
Prong 2 of the 2019 Revised Guidance
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we next consider whether the claim recites additional
elements, considered individually and in combination, that integrate the
judicial exception into a practical application. See Revised Guidance 54–55.
Here, the additional elements recited in claim 1, beyond the abstract idea,
include a “computing environment,” “a processor,” and “at least one input
device.” The Examiner interprets the claimed “input device” as a means-
plus-function term and, thus, limits an input device to the corresponding
Appeal 2018-009097
Application 13/907,058
8
structures enumerated in the Specification (e.g., video camera, microphone,
heartbeat monitor). Final Act. 3 (citing Spec. ¶ 19). However, we agree
with Appellant that one of ordinary skill in the art would understand an
“input device” in view of the Specification to refer to a structure that
performs an input function, not means-plus-function terminology. See App.
Br. 21–22 (citing Spec. ¶¶ 14, 15); see also Spec. ¶ 14 (describing
exemplary input devices as video cameras, microphones, heartbeat monitors,
devices to measure block pressure, and “any other type of devices capable of
monitoring the physiological responses of recipient 102”). As such, we
interpret an input device to cover any device capable of monitoring a
physiological response.
Nonetheless, the Specification describes each of the computing
environment, processor, and input device broadly and at a high level of
generality. See, e.g., Spec. ¶¶ 14, 15, 34–38. We find no indication, nor do
Appellant directs us to any indication, that the operations recited in claim 1
require specialized computer hardware or other inventive computer
components. 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.”). At best, these elements link the abstract idea to a
particular technological environment, i.e. a computer environment, and
implement the abstract idea on a computer. See Revised Guidance at 55.
Claim 1 also additionally recites “based upon the determination,
displaying, using the computing environment, the feedback event and the
additional information to the clinician for use in adjusting the prosthesis,”
limitation (g). However, displaying the results of the collection and analysis
adds no more than insignificant extra solution activities to the abstract idea.
Appeal 2018-009097
Application 13/907,058
9
See Revised Guidance at 55; see also Bilski v. Kappos, 561 U.S. 593, 610–
11 (2010) (instructing that limiting the abstract idea to a particular
technological environment and adding insignificant post solution activity
does not circumvent the prohibition against patenting abstract ideas).
Appellant argues that the Specification identifies a technical problem
relating to fitting a prosthesis. App. Br. 28 (citing Spec. ¶¶ 1, 12); see also
Reply Br. 4–5. Specifically, Appellant contends that claim 1 improves
“medical prosthesis fitting techniques by overcoming challenges relating to
detecting and addressing physiological cues during a fitting.” Id. at 27.
According to Appellant, claim 1 improves the fitting process by “help[ing]
the clinician catch feedback events that might have been missed and
provides clinical instructions” in fitting, thereby aiding a clinician to
“‘perform[] faster and more precise fittings of medical devices.’” Id. at 29
(quoting Spec. ¶ 22); see also Reply Br. 4–5; Spec. ¶ 13; Abstract
(describing that the invention identifies physiological cues and alerts a
clinician to the cues to improve the fitting process).
Yet, we are not persuaded that a clinician’s failure to detect a
recipient’s physiological cues (due to the clinician’s inattention or
inexperience) is a technical problem, or that overcoming challenges related
to detection is an improvement to computer capabilities or another
technology. Instead, claim 1 focuses on an improvement to the abstract idea
(i.e., mental processes) by invoking a computing environment, processor,
and input device for implementation. See Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335–36 (Fed. Cir. 2016) (“the first step in the Alice inquiry
in this case asks whether the focus on the claim is on the specific asserted
improvement in computer capabilities (i.e., the self-referential table for a
Appeal 2018-009097
Application 13/907,058
10
computer database) or, instead, on a process that qualifies as an ‘abstract
idea’ for which computers are invoked merely as a tool”).
Further, although claim 1 implements the abstract idea in a particular
technical environment (i.e., a computer environment, processor, input
device) and the implementation may well result in a faster and more precise
fitting, this “improvement” is not the type of improvement that renders a
claim patent eligible. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (“relying on a computer to perform routine tasks
more quickly or accurately is insufficient to render a claim patent eligible”)
(citations omitted).
Evaluating claim 1 as a whole, we are not persuaded that the
additional elements, considered individually and as an ordered combination,
integrate the abstract idea into a practical application. We find no indication
that one or more additional elements reflects an improvement in the
functioning of a computer, or an improvement to other technology or
technical field; requires any specialized computer hardware or other
inventive computer components, i.e., a particular machine; or effects a
transformation or reduction of a particular article to a different state or thing.
We are not persuaded that the additional elements are more than generic
computer components used to implement the abstract idea, and generally
link the abstract idea to a particular technological environment or field of
use. Therefore, we are not persuaded that the Examiner erred at Step 2A,
Prong 2 in determining that the additional elements do not integrate the
recited abstract idea into a practical application (Step 2A, Prong Two of the
2019 Revised Guidance).
Appeal 2018-009097
Application 13/907,058
11
Inventive Concept: Step Two of the Mayo/Alice Framework (Step 2A,
Prong 1 of the 2019 Revised Guidance)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework
— whether claim 1 recites additional elements that provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the judicial exception itself).
Appellant asserts that the Specification “identifies an unconventional
technical solution: providing additional information, including the clinical
instructions based on the feedback event for how to adjust the prosthesis to
the clinician for use in adjusting the prosthesis.” App. Br. 31. Appellant
contends that “the use of sensors to assist in examination and providing the
additional information . . . to the clinician for use in adjusting the prosthesis
describes a specific unconventional step within the context of the claim as a
whole that confines the claim to a particular useful application that improves
the fitting process.” Id. at 36; see also id. at 39–40 (arguing that the use of
sensors to assist in examination and providing additional information is an
additional element). Appellant argues that the Berkheimer Memorandum4
instructs that “elements or combinations of elements are not conventional
unless the examiner expressly supports such a showing” and that the
Examiner did not make this showing. Id. at 32.

4 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.),” available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.pdf (hereinafter “Berkheimer Memo.”).
Appeal 2018-009097
Application 13/907,058
12
Yet, 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).
Here, as we explained above, the only additional recited elements
beyond the abstract idea are the computing environment, processor, and
input device, and the step of displaying (limitation (g)). Appellant stresses
that the providing additional information to the clinician for use in adjusting
the prosthesis, as required by limitation (g), has not been shown by
references to be well-understood, routine, and conventional. See, e.g., Reply
Br. 6; App. Br. 36. Yet, paragraph 26 of Appellant’s Specification describes
that information “can be displayed as text, an informative video, or audio
information,” and that the information can be “immediately provided to the
clinician” or “provided to the clinician at a later time,” such as “for training
purposes.” There is no indication that the displaying operation recited in
claim 1, limitation (g) requires more than generic components operating in
their routine and ordinary capacity. The Federal Circuit, in accordance with
Alice, has “repeatedly recognized the absence of a genuine dispute as to
eligibility” where claims have been defended as involving an inventive
concept based “merely on the idea of using existing computers or the
Internet to carry out conventional processes, with no alteration of computer
functionality.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir.
2018) (Moore, J., concurring) (citations omitted).
Appeal 2018-009097
Application 13/907,058
13
The remaining additional recited elements beyond the abstract idea
include the computing environment, processor, and input device. These
limitations also are described in the Specification as generic components
performing generic computer functions. See, e.g., Spec. ¶¶ 14, 15, 34–38.
Appellant cannot reasonably contend, nor does Appellant, that there is a
genuine issue of material fact regarding whether any of these additional
elements, considered alone and as an ordered combination, is well-
understood, routine, or conventional, where nothing in the Specification
indicates that the operations recited in claim 1 are implemented using
anything other than generic computer components to perform generic
computer functions, e.g., receiving and processing information, and
displaying the results.
Appellant also misapprehends the controlling precedent to the extent
Appellant maintain that claim 1 includes significantly more than an abstract
idea because the Examiner fails to identify references that describe
providing additional information, as required by claim 1’s limitation (g).
See Reply Br. 6–9; see also App. Br. 32–37. Neither a finding of novelty
nor a non-obviousness determination automatically leads to the conclusion
that the claimed subject matter is patent-eligible. Although the second step
in the Mayo/Alice framework is termed a search for an “inventive concept,”
the analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “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.’” Alice Corp., 573 U.S. at 217–18
(citation omitted). “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
Appeal 2018-009097
Application 13/907,058
14
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
We are not persuaded of error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of
claim 1, and claims 2–15 and 18–30, which fall with claim 1.

DECISION
The Examiner’s rejection of claim 30 under 35 U.S.C. § 112(a) is
reversed.
The Examiner’s rejection of claims 1–15 and 18–30 under 35 U.S.C.
§ 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED