Ex Parte Bosl

Patent Trials and Appeals Board

Apr 30, 2019

13816645 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/816,645 03/25/2013
23628 7590 05/02/2019
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC A VENUE
BOSTON, MA 02210-2206
FIRST NAMED INVENTOR
William J. Bos!
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Cl233.70013US01 4211
EXAMINER
SMITH, RUTHS
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM J. BOSL
Appeal 2018-006301
Application 13/816,645
Technology Center 3700
Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
William J. Bosl ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 1, 8-20, 22, 23, 26-29, 31-33,
and 36-38. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Children's Medical Center
Corporation. Appeal Br. 2.
Appeal 2018-006301
Application 13/816,645
STATEMENT OF THE CASE
The Specification
The Specification states:
This invention relates generally to the analysis of
electromagnetic signals to identify biomarkers for cognitive,
language and behavioral disorders, of known or unknown
etiology ( collectively referred to herein as 'developmental
disorders'), and more specifically to analyzing EEG data using
complexity and/or synchronization measures in infants to
identify characteristics associated with developmental disorders
including autism spectrum disorder (ASD).
Spec. ,-Jl.
The Rejected Claims
Claims 1, 8-20, 22, 23, 26-29, 31-33, and 36-38 stand rejected.
Final Act. 1. 2 Claims 1, 26, 2 8, and 31 are independent. Appeal Br. 17, 20-
21. Claim 1 is representative and reproduced below.
1. A method of analyzing electroencephalographic
(EEG) data including measurements recorded from multiple
scalp locations of a patient to assess the risk that the patient has
autism spectrum disorder, the method comprising:
collecting the EEG data from the patient at different
developmental time points;
applying to the EEG data collected at each of the
developmental time points, with at least one computer
processor, a multi-scale entropy analysis to the EEG data to
generate a plurality of feature sets corresponding to the
measurements at multiple scalp locations;
combining the plurality of feature sets into a combined
feature set;
2 Claims 2-7, 21, 24, 25, 30, 34, 35, and 39 are cancelled, and claim 40 is
withdrawn from consideration. Appeal Br. 17, 19-22; Final Act. 1.
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classifying, using at least one machine learning
algorithm, the combined feature set; and
determining a risk factor for the patient having autism
spectrum disorder based, at least in part, on the classified
combined feature set.
Appeal Br. 17.
The Appealed Rejection
The following rejection is before us for review: claims 1, 8-20, 22,
23, 26-29, 31-33, and 36-38 under the judicial exception to
35 U.S.C. § 101.
DISCUSSION
Section 101 of Title 35 of the U.S. Code provides that "[w]hoever
invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. However, the Supreme Court has "long held that
this provision contains an important implicit exception: [l]aws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Banklnt'l, 573 U.S. 208,216 (2014).
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, we "first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 573 U.S. at 218. If the claims
are determined to be directed to an ineligible concept, then we "consider the
elements of each claim both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
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Application 13/816,645
claim' into a patent-eligible application." Id. at 217 ( quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)).
On January 7, 2019, the Director issued "2019 Revised Patent Subject
Matter Eligibility Guidance," which explains how the Director requires that
patent-eligibility questions under the judicial exception to 35 U.S.C. § 101
be analyzed. 84 Fed. Reg. 50-57 ("Revised Guidance").
Per the Revised Guidance, the first step of Alice (i.e., Office Step 2A)
consists of two prongs. In Prong One, we must determine whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon. 84 Fed. Reg. at 54 (Section III.A. I.). If it does not, the claim
is patent eligible. Id. With respect to the abstract idea category of judicial
exceptions, an abstract idea must fall within one of the enumerated grouping
of abstract ideas in the Revised Guidance or be a "tentative abstract idea,"
with the latter situation predicted to be rare. Id. at 51-52 (Section I,
enumerating three groupings of abstract ideas), 54 (Section III.A. I.,
describing Step 2A Prong One), 56-57 (Section III.D., explaining the
identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, we proceed to Step 2A
Prong Two, in which we must determine if the "claim as a whole integrates
the recited judicial exception into a practical application of the exception."
Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception but fails to integrate it into a
practical application, we then proceed to the second step of Alice (i.e., Office
Step 2B). In that step, we then evaluate the additional limitations of the
claim, both individually and as an ordered combination, to determine
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whether they provide an inventive concept. Id. at 56 (Section III.B.). In
particular, we look to whether the claim:
Id.
• Adds a specific limitation or combination of limitations that
are not well-understood, routine, conventional in the field,
which is indicative that an inventive concept may be present;
or
• simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which 1s
indicative that an inventive concept may not be present.
The Independent Claims
Appellant argues the independent claims, namely claims 1, 26, 28, and
31, together. Appeal Br. 9-14. Accordingly, we select independent claim 1
as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
Revised Guidance Step 2a Prong One
In this part of Step 2a, we determine whether claim 1 is directed to an
abstract idea. As set forth below, we determine that claim 1 is directed to
multiple abstract ideas.
Claim 1 recites a method consisting of five steps.
The second step of the claim recites "applying to the EEG data
collected at each of the developmental time points, with at least one
computer processor, a multi-scale entropy analysis to the EEG data to
generate a plurality of feature sets corresponding to the measurements at
multiple scalp locations." This step is directed to an abstract idea in the
category of mental processes, namely an evaluation of information. It
merely requires the analyzing of data, which is a form of evaluation.
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Moreover, the analysis is recited to be a multi-scale entropy analysis, which
the Specification states is an algorithm employing a mathematical function.
Spec. ,-J26. Hence, the second step of the claim is also directed to an abstract
idea in the mathematical concepts category, namely a mathematical
calculation.
The third step of the claim recites "combining the plurality of feature
sets into a combined feature set." This step is directed to an abstract idea in
the category of mental processes, namely the arrangement and storing of
information.
The fourth step of the claim recites "classifying, using at least one
machine learning algorithm, the combined feature set." This step is directed
to an abstract idea in the category of mental processes, namely making an
evaluation or judgment regarding information or knowledge.
The fifth and final step of the claim recites "determining a risk factor
for the patient having autism spectrum disorder based, at least in part, on the
classified combined feature set." This step is directed to an abstract idea in
the category of mental processes, namely making an evaluation, judgment,
or opinion regarding information or knowledge.
Revised Guidance Step 2a Prong Two
In this prong of Step 2a, we determine whether claim 1 as a whole
integrates any of the recited judicial exceptions into a practical application of
the exception. We determine that claim 1 as a whole does not integrate any
of the recited judicial exceptions into a practical application of the
exception. This is so because claim 1 merely requires the receipt and
processing of information.
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More specifically, the only step of claim 1 that might not recite an
abstract idea is the first step, which recites "collecting the EEG data from the
patient at different developmental time points. "3 This step merely adds
insignificant extra-solution activity to the judicial exception, which is
insufficient to integrate the judicial exceptions into a practical application.
See 84 Fed. Reg. at 55, n.31; MPEP 2106.05(g).
Revised Guidance Step 2b
In Step 2b, we evaluate the additional limitations of the claim, both
individually and as an ordered combination, to determine whether they
provide an inventive concept. Id. at 56 (Section III.B.). However, claim 1
does not include any additional limitations beyond the recitations of abstract
ideas and insignificant extra-solution activity, as discussed above. The only
specific element called out in claim 1 is "at least one computer processor"
which applies an entropy analysis to collected EEG data. The Specification
broadly describes computers as including memories, processors, user input
devices, and any suitable software that may be executed by the computer to
3 In Electric Power Group, the Federal Circuit referred to "collecting and
analyzing information" as "abstract processes." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Further, the Court held
that claims to "a process of gathering and analyzing information of a
specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions [are] directed
to an abstract idea." Id. Here, claim 1 recites the gathering and analyzing of
information but does not even require displaying the result of the process
(i.e., the risk factor that was determined). Thus, Appellant's claim 1, in one
way, is even more abstract than the claims at issue in Electric Power Group.
Like Electric Power Group, claim 1 does not recite any particular
technology for performing the steps of data gathering and analysis.
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perform the described functions. Spec. iJ54. The claimed computer
processor performs in a conventional manner to execute program
instructions and operations, such as data-gathering and mathematical
calculation functions. See MPEP § 2106.05(g) (supporting that performing
repetitive calculations and storing and retrieving information in memory are
well-understood, routine and conventional computer functions). Thus, claim
1 simply appends well-understood, routine, and conventional elements,
specified at a high level of generality, to the judicial exception.
For the foregoing reasons, we affirm the rejection of claim 1 as patent
ineligible, as well as claims 26, 28, and 31, which fall therewith. See 37
C.F.R. § 41.37(c)(l)(iv).
The Dependent Claims
Appellant argues that "[ s Jeveral of the dependent claims include
additional technical limitations that further demonstrate that the claims are
directed to patent-eligible subject matter under 35 U.S.C. § 101." Appeal
Br. 14. Appellant specifically addresses only claims 8 and 13. Id.
Accordingly, we select claims 8 and 13 as representative of the dependent
claims. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 8 recites the following:
The method of claim 1, wherein applying a multi-scale
entropy analysis to the EEG data comprises:
determining a plurality of scale time series, wherein values
in each of the plurality of scale time series are determined by a
coarse-graining procedure that involves averaging N successive
values from the EEG data, where N > 1 ;
determining an entropy value for each of the plurality of
scale time series; and
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determining at least one modified multiscale entropy curve
based, at least in part, on the entropy values determined for each
of the plurality of scale time series.
Appeal Br. 17.
Claim 13 recites the following:
The method of claim 1, further comprising:
applying a synchronization analysis to the EEG data,
wherein synchronization comprises correlation and coherence,
wherein each of the feature sets in the plurality of feature
sets represents the results from applying both the multi-scale
entropy analysis and the synchronization analysis to the EEG
data.
Id.at 18.
Appellant quotes these claims and argues that "[t]he Final Office
Action does not describe how the Office is allegedly considering [these
additional limitations] to be well-understood, routine, or conventional
functions of a general purpose computer." Id. at 14. But Appellant's
argument erroneously presupposes that these limitations do not themselves
recite abstract ideas. Indeed, they do. More specifically, they recite abstract
ideas in the mental processes category, namely an evaluation of information,
and in the mathematical concepts category, namely a mathematical
calculation. Thus, claims 8 and 13 do not have any additional limitations
beyond those reciting abstract ideas to consider in Step 2B.
For the foregoing reasons, we affirm the rejection of claims 8 and 13
as patent ineligible, as well as claims 9-12, 14-20, 22, 23, 27, 29, 32, 33,
and 36-38, which fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
The Examiner's rejection of claims 1, 8-20, 22, 23, 26-29, 31-33,
and 36-38 under the judicial exception to 35 U.S.C. § 101 is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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