Ex Parte AOKI et al

Patent Trial and Appeal Board

Aug 16, 2017

12749607 (P.T.A.B. Aug. 16, 2017)

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.
12/749,607 03/30/2010 Toshiki AOKI Q118299 7349
65565 7590
SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
EXAMINER
RAMACHANDRAN, VASUDA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
08/18/2017 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):
SUGHRUE265550@SUGHRUE.COM
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIKI AOKI, HIDETOSHI DAINOBU,
TEIJIUKAWA, and MASAHIRO ECHIGO
Appeal 2015-006370
Application 12/749,607
Technology Center 3700
Before ANNETTE R. REIMERS, ARTHUR M. PESLAK, and
ANTHONY KNIGHT, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Toshiki Aoki et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—13.1 An oral hearing in
accordance with 37 C.F.R. § 41.47 was held on August 9, 2017. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellants submit the real party in interest is NIHON KOHDEN
CORPORATION. Appeal Br. 2.
Appeal 2015-006370
Application 12/749,607
THE CLAIMED SUBJECT MATTER
Appellants’ invention “relates to a respiratory waveform analyzer . . .
which analyzes the respiratory waveform by detecting the concentration of a
component in a respiratory gas of the subject.” Spec. 1:5—9. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. An expiratory waveform analyzer, operable to
analyze an expiratory waveform, which is generated based on a
concentration of a component in expiratory gas of a subject
measured over a plurality of time intervals, the expiratory
waveform analyzer comprising:
an expiratory gas concentration generator which
generates a concentration signal indicating values of the
concentration of the component based on an output signal from
a sensor that measures the concentration of the component;
a flatness calculator which calculates differences between
the values of the concentration of the component indicated by
the concentration signal over the plurality of time intervals of
the expiratory waveform based on the concentration signal, and
which calculates a flatness of the expiratory waveform based on
the calculated differences; and
a reliability calculator which calculates a reliability of the
expiratory waveform based on the flatness and the values of the
concentration of the component indicated by the concentration
signal.
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Application 12/749,607
REJECTIONS2’3
1) Claims 1, 5, 6, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Carlebach (US 6,428,483 Bl, issued Aug. 6,
2002) and Ricciardelli (US 2008/0119753 Al, published May 22,
2008).
2) Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Carlebach, Ricciardelli, and White (US 5,003,985, issued April 2,
1991).
3) Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Carlebach, Ricciardelli, and Wall (US 4,651,746, issued Mar. 24,
1987).
DISCUSSION
Rejection 1
The resolution of this rejection is centered on the “reliability
calculator” recited in claim 1. The Examiner finds that Ricciardelli discloses
“a flatness calculator which calculates a flatness of the expiratory waveform
. . . and a reliability calculator which calculates reliability of the expiratory
waveform based on the flatness and the values of the concentration
component indicated by the concentration signal.” Final Act. 6 (citing
Ricciardelli | 69, Fig. 10). The Examiner explains that “the reliability of the
2 The Examiner states that claims 2—A and 7—10 “are allowable if the
rejection(s) under 35 U.S.C. § 112 and 103, set forth in this Office action are
overcome.” Final Act. 14. However, no rejections of claims 2—A and 7—10
are stated in the Final Action. See id. at 5—14.
3 In the Answer, the Examiner withdraws a rejection of claims 21—24 under
35 U.S.C. § 103(a). Ans. 8; Final Act. 9. Claims 21—24 are not before us
for review.
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Application 12/749,607
signal is the calculated K factor determined based on the slope . . . where a
significant slope indicates a signal of interest (reliable) where a flat slope
indicates possible noise (not reliable)[].” Id. The Examiner further explains
that “the K factor is calculated in order to enhance only the reliable portion
of the signal and not the noise.” Id. at 7.
Appellants contend that Ricciardelli does not disclose determining the
“reliability of the waveform.” Appeal Br. 12. Appellants argue that one of
ordinary skill in the art “would not understand the ‘constant K’ ... to be
analogous to any “reliability, ’ and much less a ‘reliability of the expiratory
waveform.’” Id. Appellants continue that the constant K “is simply a
‘constant’ to be applied to the slope for calculation of a ‘concentration
domain enhancement 256’ for an input signal 252 associated with gas
level[s].” Id. at 12—13. Appellants next contend that one of ordinary skill in
the art would not understand constant K to be calculated “based on ‘the
concentration of the component indicated by the concentration signal,’ and
much less ‘the flatness and the values of the concentration of the compound
indicated by the concentration signal’” as required by claim 1. Id. at 14. In
support of this contention, Appellants argue that “the rejection
impermissibly reads out ‘the values of the concentration of the component
indicated by the concentration signal’ from the claim” because the constant
K is “based on the slope itself’ and “even if the slope might be somehow
determined from the concentration component, the concentration component
itself is not further employed.” Id. at 15, see also Reply Br. 6.
The Examiner responds that “constant K is based on the concentration
signal slope and therefore is based on both the concentration of the signal
and the changes in the signal which includes [] whether the signal dynamics
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Application 12/749,607
is flat (not changing) or sharp (changing).” Ans. 9. The Examiner further
explains that “[t]he slope of the signal is determined from the values of the
component indicated by the concentration signals . . . the K factor is based
on both flatness and the values of the component indicted by the
concentration signal.” Id. at 9—10.
Appellants’ arguments are persuasive for the following reasons.
Ricciardelli discloses input signals “associated with the respective gas levels
in any given sample.” Ricciardelli 169. Ricciardelli calculates “[t]he slope
of the acquired data signal. . . based on the signal change over the last ten
samples.” Id. Ricciardelli also discloses determination of a constant K
based on the slope. See id. Claim 1 requires “a flatness calculator which
calculates differences between the values of the concentration of the
component” and a reliability calculator which calculates reliability based on
the “flatness” calculated by the flatness calculator and “the values of the
concentration component indicated by the concentration signal.”
Ricciardelli discloses using the concentration values to calculate slope and
constant K. However, the Examiner has not directed us to any disclosure in
Ricciardelli where reliability is calculated based on the slope and values of
the concentration signals. Therefore, we do not sustain the rejection of
claim 1. Claims 5, 6, and 11 depend directly or indirectly from claim 1.
Appeal Br. 23—24 (Claims App.). We do not sustain the rejection of claims
5, 6, and 11 for the same reasons as claim 1.
Rejections 2 and 3
Claims 12 and 13 depend directly or indirectly from claim 1. Appeal
Br. 25 (Claims App.). The Examiner does not rely on any disclosure from
White or Wall to cure the deficiencies of Ricciardelli stated above in
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connection with the rejection of claim 1. Final Act. 13—14. We, therefore,
do not sustain the rejections of claims 12 and 13 for the same reasons stated
above for claim 1.
New Ground of Rejection
Claims 1-13: 35 U.S.C. § 101
We exercise our discretion under 37 C.F.R. § 41.50(b) and enter a
NEW GROUND OF REJECTION against claims 1-13 under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter.
The Supreme Court has established a two part test (the “Alice test”)
for determining whether a claim recites patent-eligible subject matter. Alice
Corp. Pty, Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2350 (2014). First, the
claims are examined to determine whether they are directed to a patent
ineligible concept such as an abstract idea. Id. If so, the claim elements are
considered both individually and as an ordered combination to determine
whether they transform the claim into a patent-eligible application. Id.
Claim 1 is directed to performing two mathematical calculations on a
signal. We determine that claim 1 is directed to the abstract idea of
performing generic mathematical calculations on a signal. See Parker v
Flook, 437 US 584, 594—95 (1978) (holding mathematical formula for
computing alarm limits ineligible); Gottschalk v. Benson, 409 US 63, 67
(1972) (holding algorithm for converting binary-coded decimal numerals
into pure binary form ineligible).
We now analyze the elements of claim 1 to determine whether the
elements individually, or as an ordered combination, transform the claim
into patent-eligible subject matter. In this case, claim 1 recites first
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Application 12/749,607
performing a calculation on signal data to determine “a flatness of the
expiratory waveform based on the calculated differences” and then a second
calculation based in part on the result from the flatness calculation to
determine “a reliability of the expiratory waveform.” Nothing is recited
concerning any use or application of the reliability resulting from the second
calculation. We note that the “mere recitation of concrete, tangible
components is insufficient to confer patent eligibility to an otherwise
abstract idea. Rather, the components must involve more than performance
of ‘well-understood, routine conventional activities] previously known to
the industry.” In re TLI Communications LLC Patent Litigation, 823 F.3d
607, 613 (Fed. Cir. 2016). In this case, claim 1 does not recite any tangible
or concrete components, let alone tangible or concrete components
performing other than well understood routine activities, which might
convert the abstract idea of two generic mathematical calculations into
patent eligible subject matter. We, therefore, determine that the elements of
claim 1, considered both individually and as an ordered combination, do not
transform the abstract idea of claim 1 into patent-eligible subject matter.
With respect to claims 2—13, which depend directly or indirectly from
claim 1, claims 2—5 recite further details of the flatness calculator and
reliability calculator but the additional limitations, either alone or as an
ordered combination, do not transform the abstract idea underlying claim 1
into patent-eligible subject matter. Claim 6, which depends from claim 5,
recites, inter alia, “an effective concentration detector which detects a value
of the concentration signal when the reliability ... is maximum, as an
effective concentration.” Appeal Br. 23 (Claims App.). Claims 7—9 and 11,
which depend from claim 6, add additional details to the effective
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concentration detector of claim 6. The effective concentration detector in
claims 6—9 utilizes the results from the flatness calculator and reliability
calculator in claim 1 and is the type of post-solution activity, referred to in
Flook that cannot transform an unpatentable principle into patentable subject
matter. In Flook, setting an alarm limit based on a mathematical formula
was held not to constitute patentable subject matter. See Parker v. Flook,
437 U.S. at 590. Here, setting an effective concentration based on the result
of the reliability calculator from claim 1 fails to render claims 6—9 patentable
subject matter under either step 1 or step 2 of the Alice test. Claim 10,
which depends from claim 9, adds the limitation of a display that displays
the result of the effective concentration detector. Appeal Br. 24 (Claims
App.). Like the effective concentration detector itself, this limitation is
merely post-solution activity and likewise fails the first and second steps of
the Alice test. Claim 12, which depends from claim 11, adds an additional
mathematical calculation to correct the expiratory waveform signal by
multiplying it by a ratio. Id. at 25. Claim 12, thus, merely adds an
additional calculation to the abstract idea of claim 1 and fails step 1 and step
2 of the Alice test. Claim 13, which depends from claim 1, recites “an
expiratory airway adaptor . . . and a liquid detector which detects a liquid in
the expiratory airway adaptor.” Id. As noted above in connection with
claim 1, merely adding concrete or tangible components does not confer
patent eligibility on an abstract idea. Claim 13 does not recite any
improvement to the function of the recited components and does not
transform the abstract idea of claim 1 into patentable subject matter under
step 1 or step 2 of the Alice test. See In re TLI Communications LLC Patent
Litigation, 823 F.3d at 613.
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Application 12/749,607
For the foregoing reasons, we enter a new ground of rejection against
claims 1—13 under 35 U.S.C. § 101.
DECISION
The Examiner’s decision rejecting claims 1—13 under 35 U.S.C.
§ 103(a) is reversed.
We enter a NEW GROUND OF REJECTION against claims 1-13
under 35 U.S.C. § 101.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, [Appellant],
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which
event the prosecution will be remanded to the
examiner. The new ground of rejection is binding
upon the Examiner unless an amendment or new
Evidence not previously of Record is made which, in
the opinion of the examiner, overcomes the new
ground of rejection designated in this decision.
Should the examiner reject the claims, [Appellants]
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Application 12/749,607
may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address any
new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection
and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to new grounds of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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