Ex Parte Georgopoulos

Patent Trial and Appeal Board

Aug 22, 2017

13312332 (P.T.A.B. Aug. 22, 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.
13/312,332 12/06/2011 Apostolos Georgopoulos Z09185/U639.104.102 9191
25281 7590
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
FERNANDEZ, KATHERINE L
ART UNIT PAPER NUMBER
3768
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
USPTO.PATENTS @dbclaw.com
dmorris@dbclaw.com
DBCLAW-Docket@dbclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte APOSTOLOS GEORGOPOULOS1
Appeal 2016-007620
Application 13/312,332
Technology Center 3700
Before ERIC B. GRIMES, JOHN G. NEW, and TIMOTHY G. MAJORS,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant states the real parties-in-interest are the Regents of the
University of Minnesota and the Department of Veterans Affairs. App. Br.
3.
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Application 13/312,332
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-20.2 The Appellant disputes the
Examiner’s interpretation of claim 10 under 35 U.S.C. § 112, sixth
paragraph. Specifically, claim 10 stands rejected as unpatentable under 35
U.S.C. § 112, sixth paragraph, because the claim uses a generic placeholder,
coupled with functional language, without reciting sufficient structure to
achieve the function.
Claims 1-20 stand rejected as unpatentable under 35 U.S.C. § 101 as
being directed to nonstatutory subject matter.
Claims 1-3, 6, 10, 11, 14, and 18 stand rejected as being unpatentable
under 35 U.S.C. § 103(a) as being obvious over the combination of John
(US 4,188,956, February 19, 1980) (“John”), Hay (US 7,110,582 Bl,
September 19, 2006) (“Hay”), and John (US 4,846,190, July 11, 1989)
(“John ’190”).
Claims 7, 9, 15, 17, and 20 stand rejected as unpatentable under 35
U.S.C. § 103(a) as being obvious over the combination of John, Hay, John
’190, and J.V. Selinger et al., Measuring Synchronization in Neuronal
Networks for Biosensor Applications, 19 Biosensors and Bioelectronics
675-683, 2004 (“Selinger”).
Claims 8, 16, and 19 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of John, Hay, John ’190,
2 Claims 1-20 were also rejected as unpatentable under 35 U.S.C. 112,
second paragraph, as being indefinite. Final Act. 5. The Examiner has
withdrawn this rejection. Ans. 2.
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and Georgopoulos et al. (US 2008/0091118 Al, April 17, 2008)
(“Georgopoulos”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to a computer-implemented method
for performing a functional assessment of a network. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal, and recites:
1. A computer-implemented method for performing a
functional assessment of a network, the network including a
plurality of interacting network elements, the method
comprising:
measuring a state of each of the elements at a plurality of
time instances, thereby determining a plurality of
state values associated with each of the elements;
calculating for each element an associated median value
that is a median of the state values associated with
that element;
identifying for each of the time instances a first total
number of the elements with an associated state
value at that time instance that is above its
associated median value, and a second total number
of the elements with an associated state value at that
time instance that is below its associated median
value; and
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determining whether the network has departed from an
equilibrium state based on the first total number and
the second total number for each time instance.
App. Br. 22.
ISSUES AND ANALYSES
Except where otherwise indicated, we adopt the Examiner’s findings
and conclusions that certain claims are obvious over the cited prior art. We
address Appellant’s arguments below.
A. Interpretation of claim 10 under 35 U.S.C. $ 112, sixth paragraph
Independent claim 10 recites (emphasis added):
10. A system for performing a functional assessment of a
network, the network including a plurality of interacting network
elements, the system comprising:
a network element state measurement unit to measure a
state of each of the elements at a plurality of time
instances, thereby determining a plurality of state
values associated with each of the elements; and
a controller configured to calculate for each element an
associated median value that is a median of the state
values associated with that element, identify for
each of the time instances a first total number of the
elements with an associated state value at that time
instance that is above its associated median value,
and a second total number of the elements with an
associated state value at that time instance that is
below its associated median value, and determine
whether the network has departed from an
equilibrium state based on the first total number and
the second total number for each time instance.
App. Br. 23.
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The Examiner finds claim 10 uses the generic placeholder “unit”
coupled with the functional language “configured to measure a state of each
of the elements ..without reciting sufficient structure to achieve the
function. Final Act. 2. Furthermore, the Examiner finds, the generic
placeholder is not preceded by a structural modifier: specifically, the
Examiner finds that the term “network element state measurement” is not a
structural modifier as the term does not connote structure. Id. The
Examiner concludes that because the claim limitations invoke 35 U.S.C.
§112, sixth paragraph, claim 10 has been interpreted to cover the
corresponding structure described in Appellant’s Specification that achieves
the claimed function, and equivalents thereof. Id.
The Examiner points to paragraphs [0021 ]—[0023] of Appellant’s
Specification as disclosing the structure corresponding to claim 10. Final
Act. 2-3. The Examiner interprets the “network element measurement unit”
as corresponding to a device that records neural activity, such as a multi­
electrode array (“MEA”) or a magnetoencephalography (“MEG”) device,
and equivalents thereof. Id.
Appellant argues that, as an initial matter, claim 10 does not recite a
“network element state measurement unit configured to measure ....”, as
stated by the Examiner but, rather, recites “network element state
measurement unit to measure ....” App. Br. 6. Appellant points out that the
limitations of claim 10 therefore do not recite any of the functional terms
listed by MPEP § 2181. Id. at 6-7.
Appellant also argues that the Examiner finds that the term “network
element state measurement” is considered to be a non-structural modifier,
however, Appellant contends, the Examiner has not provided any support for
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this finding. App. Br. 7. According to Appellant, the language “network
element state measurement” structurally limits the types of units that will
satisfy the claim language; Appellant argues that there are many examples of
units that would not structurally be considered a network element state
measurement unit. Id.
The Examiner finds, contrary to Appellant’s assertion, that the claim
term “network element state measurement” fails to structurally limit the
types of units. Ans. 10. The Examiner finds § 2181 (1)(C) of the MPEP
states, in relevant part:
By contrast, a generic placeholder (e.g., “mechanism,”
“element,” “member”) coupled with a function may invoke . . .
35 U.S.C. § 112, sixth paragraph when it is preceded by a non-
structural modifier that does not have any generally understood
structural meaning in the art (e.g., “colorant selection
mechanism,” “lever moving element,” or “movable link
member”)
To determine whether a word, term, or phrase coupled with a
function denotes structure, examiners should check whether: (1)
the specification provides a description sufficient to inform one
of ordinary skill in the art that the term denotes structure; (2)
general and subject matter specific dictionaries provide evidence
that the term has achieved recognition as a noun denoting
structure; and (3) the prior art provides evidence that the term has
an art-recognized structure to perform the claimed function.
Id. at 11 (citing Ex parte Rodriguez, 92 USPQ2d 1395, 1404 (BPAI 2009)
(precedential)).
With respect to these requirements of MPEP §2181, the Examiner
finds: (1) Appellant’s Specification provides no definition for the term
“network element state measurement” and, as such, does not provide a
description sufficient to inform one of ordinary skill in the art that the term
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denotes structure; (2) the term “network element state measurement” has no
dictionary definition that provides evidence that the term has achieved
recognition as a noun denoting structure; and (3) the term “network element
state measurement” has no generally understood meaning in the prior art that
provides evidence that the term has an art-recognized structure to perform
the claimed function. Ans. 11-12. Therefore, the Examiner finds, the claim
term “network element state measurement” is considered to be a non-
structural modifier of the generic placeholder “unit” because the term does
not connote sufficient structure to a person of ordinary skill in the art to
avoid the requirements of 35 U.S.C. § 112, sixth paragraph. Id. at 11.
Furthermore, the Examiner finds, the non-structural generic
placeholder “unit” is listed as one of the examples of generic placeholders
that may invoke 35 U.S.C. 112, sixth paragraph, interpretation. Ans. 12.
The Examiner also finds part B of the 3-prong analysis established by MPEP
§2181 requires that “the term ‘means’ or ‘step’ or the generic placeholder is
modified by functional language, typically, but not always linked by the
transition word ‘for’ (e.g., ‘means for’) or another linking word or phrase,
such as ‘configured to’ or ‘so that.’” Id. (emphasis omitted). The Examiner
notes that the above limitation clearly modifies the generic placeholder
“unit” with functional language (i.e., “measure a state of each of the
elements”) via the transition word “to” and further, the generic placeholder
“unit” is not modified by sufficient structure, material, or acts for performing
the claimed function, because the term “network element state
measurement” is a non-structural modifier. As such, the Examiner finds, the
limitation meets the 3-prong analysis of MPEP § 2181 (1)(C). Id.
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Appellant replies that the language “network element state
measurement” structurally limits the types of units that will satisfy the claim
language. Reply Br. 3. According to Appellant, the disclosures of
Appellant’s Specification describe these terms and provide examples (i.e.,
MEAs and MEGs), the dictionary definitions of these nouns, and the general
understanding of these terms by persons of ordinary skill in the art provide
sufficient structural limitation to the claim term “unit.” Id.
We are not persuaded by Appellant’s arguments. The sixth paragraph
of Section 112 (pre-AIA) recites:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
Section 112 will apply if the claim term fails to “recite[ ] sufficiently definite
structure” or else recites “function without reciting sufficient structure for
performing that function.” Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.
Cir. 2000). See Ex parte Rodriguez, 92 USPQ2d 1395, 1404 (BPAI2009)
(precedential) (“The standard is whether the words of the claim are
understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure”); see also Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015).
Appellant first appears to argue that the sixth paragraph of Section 112
does not apply because it does not recite a “network element state
measurement unit configured to measure ....,” as stated by the Examiner but,
rather, recites “network element state measurement unit to measure ....” See
App. Br. 6. We do not find Appellant’s argument persuasive, because claim
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10 recites: “a network element state measurement unit to measure a state of
each of the elements at a plurality of time instances.” Appellant’s
Specification provides no explicit definition of the term “network element
state measurement unit.” We also agree with the Examiner that the use of the
claim term “unit” constitutes a non-structural generic placeholder such that
“unit to measure” is essentially the equivalent of “unit for measuring” or
“unit configured to measure,” i.e., a non-structural generic placeholder that
invokes 35 U.S.C. § 112, sixth paragraph. See Mass. Inst, of Tech. v. Abacus
Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) (Generic terms such as
“mechanism,” “element,” “device,” and other “nonce” words that reflect
nothing more than verbal constructs may be used in a claim in a manner that
is tantamount to using the word “means” because they “‘typically do not
connote sufficiently definite structure’” and therefore may invoke § 112,
paragraph 6); see also generally MPEP § 2181 (1)(A). We consequently
agree with the Examiner that the claim language recites a generic placeholder
for performing the recited function of measuring (“to measure”) a state of
each of the elements at a plurality of time instances, and thus interpretation
under the sixth paragraph of Section 112 is invoked.
We next turn to the Specification for the corresponding structure for
performing the specified function. The Examiner points to paragraphs
[0021 ]—[0023 ] of Appellant’s Specification as disclosing the structure
corresponding to claim 10’s function, and Appellant does not dispute this
finding. These paragraphs disclose, in relevant part:
Figure 2 is a block diagram illustrating a system 200 for
assessing the functional status of a network according to one
embodiment. System 200 includes a measurement unit 202 and
a controller 206. Measurement unit 202 is configured to measure
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a state or property of elements in a network at a plurality of
instances in time, thereby generating a plurality (e.g., a time
series) of measured values 204 for each such element.
Measurement unit 202 provides the measured values 204 to
controller 206 for processing.
In one embodiment, measurement unit 202 includes at
least one multielectrode array (MEA) that records neural activity
of a network, such as cultured embryonic tissue from a rat brain.
The MEAs used in one embodiment have dimensions of 1.4 x 1.4
mm and contain an array of 60 electrodes on a flat surface,
surrounded by a circular wall that creates a well around the
electrodes. The electrodes are embedded in the MEA surface and
are arranged in a square grid. The electrodes are titanium nitride
disks of 30 pm in diameter, spaced at 200 pm intervals.
One application in the field of biomagnetism involves the
measurement of human brain activity, such as with a
magnetoencephalography (MEG) device. A MEG device
measures magnetic fields produced by electrical activity in the
brain. In one embodiment, measurement unit 202 includes a
MEG device with tens or hundreds of sensors, such as
“SQUIDS”. A SQUID (Superconducting Quantum Interference
Device) is a superconducting device for detecting magnetic
fields. A SQUID, along with its associated feedback electronics,
provides an output voltage proportional to the magnetic flux
applied to its detection coil.
Therefore, Appellant’s Specification provides different embodiments
of the “measurement unit 202” (i.e., MEAs and MEGs). The Specification
discloses that the measurement unit 202 “is configured to measure a state or
property of elements in a network at a plurality of instances in time, thereby
generating a plurality (e.g., a time series) of measured values 204 for each
such element.” Spec. ^ 21. We thus agree with the Examiner and conclude
that paragraphs [0021 ]—[0023] of Appellant’s Specification identify the
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structure corresponding to the function recited in claim 10 under § 112, sixth
paragraph. Claim 10 is thus interpreted to include these structures and
equivalents thereof.
B. Rejection of claims 1-20 under 35 U.S.C. $ 101
Issue
Appellant argues the Examiner erred in concluding that the claims are
directed to nonstatutory subject matter because they are impermissibly
directed to the abstract idea of performing abstract processing functions.
App. Br. 8.
Analysis
The Examiner finds that claims 1-20 are directed to the abstract idea
of performing abstract processing functions, such as “measuring,”
“calculating,” “identifying,” etc. Final Act. 6. The Examiner finds the
additional elements, or combination of elements in the claims, other than
those reciting these abstract ideas amount to no more than mere instructions
to implement the idea on a computer. Id. The Examiner finds that, when
viewed as a whole, these latter portions of the claims do not provide
meaningful limitations so as to transform the abstract idea into a patent-
eligible application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself. Id.
Appellant argues the claims are not directed to the abstract idea “of
performing abstract processing functions,” but go beyond merely reciting an
abstract idea and providing an instruction to apply the abstract idea. App. Br.
8. Appellant points, by way of example, to claim 1, which, Appellant argues,
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is directed to a computer-implemented method for performing a functional
assessment of a network that includes a plurality of interacting network
elements, and recites several detailed method steps, including: (1) measuring
a state of each of the elements at a plurality of time instances, thereby
determining a plurality of state values associated with each of the elements;
(2) calculating for each element an associated median value that is a
median of the state values associated with that element; (3) identifying for
each of the time instances a first total number of the elements with an
associated state value at that time instance that is above its associated median
value, and a second total number of the elements with an associated state
value at that time instance that is below its associated median value; and (4)
determining whether the network has departed from an equilibrium state
based on the first total number and the second total number for each time
instance. Id.
Appellant argues that the claim language thus requires several very
specific method steps, including measuring specific values, calculating
specific values, identifying specific numbers of elements, and determining
whether a network has departed from an equilibrium state based on this
information. App. Br. 8. The claims, Appellant contends, therefore do not
recite merely an abstract idea. Id.
Appellant disputes the Examiner’s finding that “measuring a state of
each of the elements at a plurality of time instances, thereby determining a
plurality of state values associated with each of the elements” or “calculating
for each element an associated median value that is a median of the state
values associated with that element” can be construed as “gathering” data.
App. Br. 9. According to Appellant, the claims do not use the term “gather,”
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and the claims do not recite gathering any arbitrary data in any arbitrary
manner. Id.
The Examiner responds that the claims are directed to a judicially-
created exception (i.e., an abstract idea) without adding significantly more.
Ans. 13. Specifically, the Examiner finds independent claims 1,10, and 18
recite the step of identifying a first total number and a second total number by
comparing the associated state value for each of the time instances to its
calculated associated median value (i.e., a threshold) and determining
whether the network has departed from an equilibrium state based on the first
total number and the second total number for each time instance (i.e., using
rules to determine a departure from an equilibrium state). Id. The Examiner
finds this abstract idea is analogous to concepts that have been identified as
abstract by the courts, such as the idea of comparing new and stored
information and using rules to identify options or the idea of collecting and
comparing known information. Id. The Examiner finds that the claimed
steps of “measuring a state of each of the elements” and “calculating for each
element an associated median value,” performed in order to collect state
values for each element and establish an associated median value for each
element, are considered to be directed to steps of mere data gathering in
conjunction with the abstract idea, which add insignificant activity to the
judicial exception and do not therefore add a meaningful limitation to the
method of determining whether the network has departed from an
equilibrium state. Id. at 13-14.
Alternatively, the Examiner finds, the sole step of measuring the
plurality of state values is directed to a step of data gathering of information
and the recited steps of “calculating ... an associated median value that is a
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median of the state values,” “identifying ... a first total number of the
elements ... and a second total number of the elements”, and “determining
whether the network has departed from an equilibrium state based on the first
total number and the second total number” is directed to the abstract idea of
manipulating the gathered information (i.e., the measured/determined
plurality of state values) using mathematical relationships. Ans. 14. The
Examiner finds these steps of calculating a median value, identifying “total
number[s]” and determining an output based on the “total number[s]” are
based on well-known mathematical formulae or relationships. Id. The
Examiner cites Parker v. Flook, 437 U.S. 584, 594-95 (1978) and Diamond
v. Diehr, 450 U.S. 175, 192 n. 14 (1981) as establishing that the idea of
manipulating gathered information using mathematical formulae is
essentially an abstract idea. Id.
Finally, the Examiner concludes that the limitations reciting use of a
computer are limited to setting forth generic computer components claimed
to perform the basic functions of retrieving and processing or comparing data
and amount to no more than instructions to implement the abstract idea on a
computer. Ans. 15.
We are not persuaded by Appellant’s arguments with respect to claims
1-9 and 18-20. Section 101 sets forth the categories of patentable subject
matter, providing: “Whoever 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.” The Federal Circuit, and the
Supreme Court, have repeatedly held that claims reciting only abstract ideas,
such as mental processes, are not directed to patentable subject matter. See,
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e.g., Bilski v. Kappos, 130 S.Ct. 3218, 3225 (2010); Gottschalkv. Benson,
409 U.S. 63, 67 (1972).
Claim 1 recites, in relevant part:
measuring a state of each of the elements at a plurality of
time instances, thereby determining a plurality of
state values associated with each of the elements;
calculating for each element an associated median value
that is a median of the state values associated with
that element;
identifying for each of the time instances a first total
number of the elements with an associated state
value at that time instance that is above its
associated median value, and a second total number
of the elements with an associated state value at that
time instance that is below its associated median
value; and
determining whether the network has departed from an
equilibrium state based on the first total number and
the second total number for each time instance.
In other words, claim 1 requires determining the median value for a
set of measured values for each network element, and determining the
number of measurements that fall above or below the determined medium as
a measure of the system’s equilibrium. We agree with the Examiner that
this limitation requires little more than a process of calculation, and one that
could be calculated by an individual mentally, with no more than a pencil
and paper. As such, we conclude that the limitation in question is directed to
nonstatutory subject matter and is unpatentable under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011).
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Nor do we find that the fact that claim 1 is directed to a “computer-
implemented method for performing a functional assessment of a network”
alters our conclusion. Appellant’s Specification describes the use of generic
personal computers and commercially available software. See, e.g., Spec. ^
87 (“Matlab R2010b, version 7.11.0.584 (64 bit) and the IMSL statistical
library in FORTRAN (Compaq Visual Fortran Professional Edition, version
6.6B) were used for all computations using personal computers”) (emphasis
added). Our reviewing court has been quite clear that the basic character of
a process claim drawn to an abstract idea is not changed by claiming only its
performance by ordinary computers. See CyberSource, 654 F.3d at 1375
(citing In reAbele, 684 F.2d 902, 908 (C.C.P.A. 1982).
However, claim 10 recites “a network element state measurement unit
to measure a state of each of the elements at a plurality of time instances.”
As we have explained supra, we find that the claim term “network element
state measurement unit to measure ...,” when read with respect to the
corresponding disclosures of Appellant’s Specification, requires specific
structural elements. We therefore conclude that claim 10, and its dependent
claims, therefore recite an additional physical structural element in addition
to the claimed purely mental steps recited in the rest of the claims, such that it
requires a specific device (e.g., an MEA or MEG) for making the
measurements. As such, we conclude that these claims are not directed
solely to nonstatutory subject matter. We consequently affirm the
Examiner’s rejection of claims 1-9 and 18-20 upon this ground and we
reverse the rejection of claims 10-17.
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C. Rejection of claims 1-20 under 35 U.S.C. $ 103(a)
Issue
Appellant argues the Examiner erred in finding that the combined
cited prior art teaches or suggests using an associated median value that is a
median of the state values. App. Br. 10.
Analysis
The Examiner finds John teaches all of the limitations of claim 1, with
the exception that, although John discloses that an associated control mean
value is calculated, wherein the control mean value is representative of a
norm value, John fails to disclose using an associated median value that is a
median of the state values. Final Act. 8. The Examiner also finds that John
does not teach that a median value that is a median of the state values
associated with that element serves as the median value. Id.
The Examiner finds Hay discloses using a control group’s median of
normal values as a set standard that is used to know how close unknown data
is to a known “normal” condition. Final Act. 8 (citing Hay col. 16,11. 47-
53).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to substitute the calculation of the associated mean
value by John with the calculation of a median value representative of a
normal/control condition, as taught by Hay. The Examiner finds that the
substitution of one known statistical value representative of a normal/control
set of values for another would yield predictable results to one of ordinary
skill in the art. Final Act. 8.
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Appellant argues that if, as the Examiner acknowledges, John does not
teach or suggest a median of the state values, it logically follows that John
also does not teach or suggest:
[Identifying for each of the time instances a first total number of
the elements with an associated state value at that time instance
that is above its associated median value, and a second total
number of the elements with an associated state value at that time
instance that is below its associated median value,
as recited by claim 1. App. Br. 10. Appellant asserts the Examiner also
does not identify any teaching or suggestion of Hay or John ’190 that
teaches or suggests this limitation. Id.
Appellant asserts that the “median values” recited in claim 1 are not
arbitrary median values but, rather, claim 1 recites “calculating for each
element an associated median value that is a median of the state values
associated with that element.” App. Br. 11. Therefore, argues Appellant,
each element of the network has an associated median value, and that
median value is a median of the state values for that particular element (i.e.,
the current element being analyzed). Id. In contrast, Appellant contends,
the mean values identified by the Examiner in John are not based on current
responses being analyzed but, rather, are previously determined values from
a separate control group. Id. Similarly, asserts Appellant, the median values
in Hay, which were cited by the Examiner, are also based on a separate
control group. Id.
Appellant acknowledges that the Examiner relies upon John ’ 190 as
teaching this latter limitation as a “self-norm.” App. Br. 11 (citing Final
Act. 9). Appellant, however, argues that John ’190 does not mention the
term “median.” Id. Furthermore, Appellant argues, John ’190 teaches that
the self-normalized data is compared with the next occurring time segment.
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Id. (citing, e.g., John ’190 col. 3,11. 36^14). Appellant contends that John
’ 190 therefore teaches comparing current data to past historical data, as
opposed to claim l’s requirement that the median value for each element is
calculated based on the measured state values of the element. Id. Appellant
therefore argues that the median values will vary based on the measured
state values. Id. According to Appellant, the median values in the
“identifying” step of claim 1 thus represent medians of the state values being
addressed in the “identifying” step (not data from a previous control group
or other past historical data). Id.
Furthermore, Appellant argues, for any given time instance, other than
the first and last time instance, the “identifying” step will use median values
that are based on measured state values that occur before, during, and after
that time instance. App. Br. 11-12. However, Appellant argues, John and
Hay disclose the use of static data from a separate control group, and John
’190 uses past historical data. Id. at 12.
Finally, argues Appellant, the Examiner allegedly impermissibly
relies upon hindsight reasoning in an attempt to combine various unrelated
teachings of the references in a manner that is not suggested by the prior art.
App. Br. 12. According to Appellant, the recited median values in the
“identifying” step represent medians of the state values being addressed in
the “identifying” step, and not data from a previous control group or other
past historical data. Id. Appellant argues that the cited references do not
teach or suggest identifying for each of the time instances a first total
number of the elements with an associated state value at that time instance
that is above its associated median value, and a second total number of the
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elements with an associated state value at that time instance that is below its
associated median value. Id. at 12-13.
The Examiner responds that John teaches using a “control mean
value” of the state values and further teaches the step of:
[Identifying for each of the time instances a first total number of
the elements with an associated state value at that time instance
that is above its associated control mean value, and a second total
number of the elements with an associated state value at that time
instance that is below its associated control mean value.
Ans. 16 (quoting John col. 4,11. 12-26; col. 8,11. 10^19; col. 8-9,11. 61-6;
Fig. 3 (depicting the identification for different series of tests (i.e. for each
time instance))). The Examiner points out that, rather than using the
“median” of the state values, John performs the above claimed limitation
using the “control mean value,” which is representative of a norm value. Id.
(citing John, col. 8,11. 31-50; cols. 7-8 11. 57-9).
The Examiner cites Hay as teaching the use of a control group’s
median of normal values as a norm value representative of a control
condition. Ans. 16. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to substitute the calculation of the
associated mean value (i.e., one known statistical norm value) of John with
the calculation of a median value representative of a control condition (i.e.,
another known statistical norm value), as taught by Hay, because the
substitution of one known statistical value representative of a control set of
values for another yields predictable results to one of ordinary skill in the
art. Id. at 16-17. The Examiner points out that the above modification of
John in view of Hay would result in the calculation of a median value in the
calculating step of John and the use of the calculated control median value in
the “identifying” step of John. Id. at 17.
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However, the Examiner finds neither John nor Hay teaches or
suggests a median value that is “a median of the state values associated with
that element” serves as the “median value” used in the calculating and
identifying steps. Ans. 17. The Examiner cites John ’190 as teaching a
known alternative norm value (i.e., a “self-norm”) which is representative of
a norm derived from samples gathered over time from a patient. Id. (citing
John ’190 Abstr., cols. 10-11,11. 13-110).
Specifically, the Examiner finds John ’190 teaches the use of the
patient’s “self-norm” is a known alternative to the use of a “population
norm” based on values obtained from a control population. Id. (citing John
’190 cols. 10-11,11. 13-11).
The Examiner therefore concludes that it would have been obvious to
one of ordinary skill in the art to have a median of the state values associated
with that element serve as the median value (i.e., “a norm value”) of the
combined references of John and Hay, because John ’190 discloses a known
alternative norm (i.e., a “self-norm”) which is representative of a norm
derived from samples gathered over time from the subject. Ans. 18.
Furthermore, the Examiner concludes, it would also have been
obvious to one of ordinary skill in the art to substitute the norm value (i.e., a
control median value calculated based on “state values” from a control
population) as disclosed by the combined references, with a norm value (i.e.,
a “self-norm”) calculated from the element’s own “state values,” as taught
by John ’190, because the substitution of one known norm value for another
yields predictable results to one of ordinary skill in the art. Id.
We agree with the Examiner’s findings and conclusions and adopt
them as our own, and thus decline to extensively repeat the Examiner’s
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reasoning. Appellant argues that John does not teach determination of a
median value in the analysis of its collected data, however, the Examiner
relies upon Hay as teaching this limitation. Hay teaches: “As a corollary, a
method of determining a plurality of standard statistical measurements such
as the mean, median, standard deviation, confidence interval and other like
statistical determinations of value parameters of the Wavefront images of
groups of persons with similar and dissimilar disease states is disclosed.”
Hay col. 1,11. 15-20. “[0]ne cannot show non-obviousness by attacking
references individually where ... the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (C.C.P.A. 1981).
Similarly, Appellant argues that neither John nor Hay teaches
analyzing data compared to previous measurements of a given element at a
plurality of time instances, however, the Examiner relies upon John ’ 190 as
teaching that data recorded (i.e., measurement taken) at a given site is:
“compared on a statistical basis against the patient’s self-norm and
population norms derived from groups of normal and abnormal groups of
patients under specified conditions.” John ’190, Abstr. Specifically, John
’190 teaches: “A self-normed reference or ‘baseline’ set of brain wave data
is comprised of a group of time segments for each derivation, for example,
24 segments, which are collected, analyzed, displayed and statistically
compared, as a group, with the next occurring time segment of brain wave
data....” John ’190 col. 3,11. 35^11.
Nor are we persuaded that the Examiner impermissibly employed
hindsight reasoning in arriving at the stated findings and conclusions. Our
reviewing court has held that:
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Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). Appellant adduces
no evidence of record, nor do we discern any, of any knowledge that could
have been gleaned only from Appellant’s disclosure.
Appellant argues claims 1,3, and 6 together, but relies upon
essentially identical arguments for the remaining claims. See App. Br. 13-
21. We consequently affirm the Examiner’s rejection of claims 1-20 upon
this ground.
DECISION
The Examiner’s rejection of claims 1-9 and 18-20 as unpatentable
under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 10-17 as unpatentable under 35
U.S.C. § 101 is reversed.
The Examiner’s rejection of claims 1-20 as unpatentable under 35
U.S.C. § 103(a) 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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