Ex Parte Giftakis et al

Patent Trial and Appeal Board

Dec 28, 2017

12359055 (P.T.A.B. Dec. 28, 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.
12/359,055 01/23/2009 Jonathon E. Giftakis 1023-811US02/P0033057.02 3683
71996 7590 01/02/2018
SHUMAKER & SIEFFERT , P.A
1625 RADIO DRIVE , SUITE 100
WOODBURY, MN 55125
EXAMINER
TOTH, KAREN E
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
01/02/2018 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):
pairdocketing @ ssiplaw.com
medtronic_neuro_docketing @ cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHON E. GIFTAKIS, NINA M. GRAVES,
JONATHAN C. WERDER, ERIC J. PANKEN, TIMOTHY J. DENISON,
KEITH A. MIESEL, and MICHELE H. HERZOG
Appeal 2016-008368
Application 12/359,055
Technology Center 3700
Before STEVEN D.A. McCARTHY, NATHAN A. ENGELS, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jonathon E. Giftakis et al. (“Appellants”)1 seek review under
35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final
Office Action dated August 7, 2015 (“Final Act.”), and as further explained
in the Advisory Action dated October 23, 2015, rejecting claims 33-79 and
86-91. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Medtronic pic of Dublin, Ireland as the real party
in interest. Appeal Br. 3.
Appeal 2016-008368
Application 12/359,055
BACKGROUND
The disclosed subject matter “relates to patient monitoring, and, more
particularly, to collecting information to evaluate a patient condition.” Spec.
^ 2. Claims 33, 38, and 47 are independent. Claim 33 is reproduced below,
with bracketed letters added to identify each clause:
33. A method comprising:
[A] receiving, by a processor, a signal from a
motion sensor, wherein the signal is indicative of
motion of a patient;
[B] detecting a seizure of the patient;
[C] after detecting the seizure, determining,
by the processor, a seizure metric comprising a
seizure type based on the signal from the motion
sensor by at least selecting the seizure type from a
plurality of predetermined seizure types based on
the signal from the motion sensor, the plurality of
predetermined seizure types comprising a tonic-
clonic seizure and a complex partial seizure; and
[D] storing, by the processor, the seizure
metric comprising the seizure type in a memory.
REJECTIONS
1. Claims 33-79 and 86-91 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
2. Claims 33-79 and 86-91 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter.2
2 The Examiner separates the discussion of this Rejection into two
groups of claims, however, both groups are rejected on the same basis. See
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DISCUSSION* * 3
Rejection 1 — The rejection of claims 33—79 and
86—91 under 35 U.S.C. § 112, first paragraph
The Examiner stated that “[t]he independent claims each call for using
a motion sensor signal to determine a seizure type, where the type is selected
from a group including complex partial seizures” and that “[t]he disclosure
does not associate identification of complex partial seizures with detected
motion.” Final Act. 2. According to the Examiner, “[t]he disclosure only
lists complex partial seizures as a type that may be detected from intracranial
pressure monitoring (paragraph [0155])” and “also lists the types of seizures
that can be detected from a motion signal in paragraph [0178]:”
In the example shown in FIG. 13, the seizure metric is a seizure
type, whereby a first seizure type is associated with convulsive
patient motion (e.g., a clonic seizure or a tonic-clonic seizure)
and a second seizure type is not associated with convulsive
patient motion (e.g., an absence seizure, atonic seizure).
Final Act. 2-3 (quoting Spec. ^ 178). The Examiner stated that “[t]here is
no blanket disclosure that extrapolates the disclosure such that all types of
signals may be used to identify any desired type of seizure” and that “[t]he
disclosure does not provide support for categorizing a complex partial
seizure in any type disclosed as being identifiable using a motion signal.”
Final Act. 3.
Final Act. 3—4 (claims 33-37, 57-66, 86, and 87), 4-5 (claims 38-56, 67-
79, and 88-91). We address both sets of claims as part of Rejection 2.
3 Appellants identify Application No. 12/359,037 as a potentially
related application. Appeal Br. 3. The Patent Trial and Appeal Board
rendered a decision on appeal in that application on June 26, 2017. We have
reviewed that decision and, to the extent relevant to the issues in the present
appeal, have taken that decision into account in the analysis below.
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For this Rejection, Appellants argue independent claim 33 and rely on
the same arguments for independent claims 38 and 47. See Appeal Br. 13-
17. We address claim 33, with claims 34-79 and 86-91 standing or falling
with claim 33. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
First, Appellants argue that the Examiner “has not met the burden of
establishing a prima facie case of lack of written description support.”
Appeal Br. 13. We disagree.
“In the context of the written description requirement, an adequate
prima facie case must. . . sufficiently explain to the applicant what, in the
examiner’s view, is missing from the written description.” Hyatt v. Dudas,
492 F.3d 1365, 1370 (Fed. Cir. 2007); see also In re Alton, 76 F.3d 1168,
1175 (Fed. Cir. 1996) (“Insofar as the written description requirement is
concerned, th[e] burden [of presenting a prima facie case] is discharged by
‘presenting evidence or reasons why persons skilled in the art would not
recognize in the disclosure a description of the invention defined by the
claims.’” (quoting In re Wertheim, 541 F.2d257, 263 (CCPA 1976)). Based
on the statement of the Rejection (Final Act. 2-3), we determine that the
Examiner provided sufficient explanation to present a prima facie case, such
that Appellants were “properly notified and able to respond.” Hyatt, 492
F.3d at 1370. We also determine that the statement of the Rejection
provides “acceptable . . . reasoning” to rebut the presumption that the
Specification as filed is adequate. In re Marzocchi, 439 F.2d 220, 224
(CCPA 1971), discussed at Manual of Patent Examining Procedure
(“MPEP”) §2163.04; see also Appeal Br. 14 (discussing In re Marzocchi).
Second, Appellants argue that the Examiner “has not shown that one
of ordinary skill in the art would not have understood a complex partial
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seizure to have fallen within either a seizure type associated with convulsive
patient motion or a second seizure type not associated with convulsive
patient motion.” Appeal Br. 15.
We are not apprised of error by this argument. For the reasons
discussed above, the Examiner has presented a prima facie case. After a
party has been notified by a prima facie case, “the burden shifts to the
[party] to rebut the prima facie case with evidence and/or argument.” Hyatt,
492 F.3d at 1370. To overcome the prima facie case here, Appellants were
required to “show that the invention as claimed is adequately described to
one skilled in the art.” Alton, 76 F.3d at 1175; see also id. (“After evidence
or argument is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of the evidence
with due consideration to persuasiveness of argument.” (quoting In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992))). The Examiner was not
required to show the absence of understanding by one of ordinary skill in the
art as to the relevant issue.
Third, Appellants contend that the Examiner’s finding that “‘[t]he
disclosure does not provide support for categorizing a complex partial
seizure in any type disclosed as being identifiable using a motion signal’ is
in error.” Appeal Br. 15 (quoting Final Act. 3). In support, Appellants
identify various disclosures of paragraphs 8, 181, 154, and 155 of the
Specification. Id. According to Appellants,
In view of at least the paragraphs of the [Specification]
discussed above, one of ordinary skill in the art would understand
that a signal indicative of motion of a patient may be used to
differentiate between a variety of seizure types and determine a
type of seizure, the types of seizures including “simple partial
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seizures, complex partial seizures, absence seizures, tonic-clonic
seizures, and the like.”
Appeal Br. 16 (quoting Spec. ^ 155).
We are not apprised of error by this argument. As noted by the
Examiner, paragraph 178 “indicates that a motion signal may be used to
distinguish between convulsive and non-convulsive seizures” (Ans. 8),
however, Appellants have not shown that one of ordinary skill in the art
would have recognized a complex partial seizure as falling into either of
these categories. In paragraph 178, “a clonic seizure or a tonic-clonic
seizure” are disclosed as examples of “a first seizure type . . . associated
with convulsive patient motion” whereas “an absence seizure, atonic
seizure” are disclosed as examples of “a second seizure type . . . not
associated with convulsive patient motion.” Spec. ^ 178. As noted by the
Examiner, paragraph 155—the only paragraph to discuss “complex partial
seizures”—does not address the use of “motion data[] for determining a type
of seizure that has been observed.” Ans. 8-9. The Examiner states that “[a]
complex partial seizure is one that can include movements, but not
necessarily convulsions, whereas a tonic-clonic seizure is a ‘classic’
convulsive seizure, and convulsion^] are explicitly disclosed as being
identifiable using motion signals.” Ans. 8 (internal citations omitted, citing
Spec. H 154).
As to paragraphs 8, 154, and 181 of the Specification (also relied on
by Appellants), we agree with the Examiner that these paragraphs contain
“no description of how a complex partial seizure can be recognized using a
motion signal, or even any recognition of any characteristic of a complex
partial seizure that is identifiable using a motion signal.” Ans. 9. Paragraph
154, for example, discloses that the system “may monitor the patient’s
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activity level and determine a type of seizure (e.g., convulsive or
nonconvulsive, or sensory seizure or motor seizure). . . based on the
patient’s activity level during the seizure,” but, as noted by the Examiner,
“[t]he disclosure does not categorize a complex partial seizure as non­
convulsive, sensory, motor, or any other type that is described as being
identifiable using a motion signal” (Ans. 9). See also Spec. ^ 181
(disclosing using a “signal from a motion sensor” to categorize a “seizure as
a first type (152) of seizure if the patient activity level exceeds the first
threshold value” and “as a second type (154) of seizure [if] the patient
activity level is not greater than or equal to the threshold value”).
Further, we agree with the Examiner that Appellants are “essentially
arguing that, because the disclosure states that complex partial seizures are a
known type of seizure [see Spec. ^ 155] and that some seizures can be
identified using motion signals [see, e.g., Spec. 8, 154, 178, 181], one of
ordinary skill in the art would be able to use the given disclosure to identify
a complex partial seizure using only a motion signal.” Ans. 9; see also
Appeal Br. 16 (second sentence in first paragraph). We also agree with the
Examiner that this argument is not persuasive. See Ans. 9 (stating that
“[m]erely being present in the same disclosure does not provide possession
of this particular correlation between a motion signal and a complex partial
seizure”).
Fourth, in the Reply Brief, Appellants argue that “[t]he Examiner
appears to be asserting that claim 33 requires using only a motion signal to
identify a complex partial seizure,” “[h]owever, claim 33 does not include
such a limitation.” Reply Br. 10. Appellants argue that “the [Specification
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describes that other factors may be used in addition to a motion signal.” Id.
(discussing Spec. 154, 155).
We disagree that the Examiner has “rel[ied] on an incorrect
interpretation” of claim 33. Reply Br. 10. In clause C, claim 33 recites
“determining, by the processor, a seizure metric comprising a seizure type
based on the signal from the motion sensor by at least selecting the seizure
type from a plurality of predetermined seizure types based on the signal
from the motion sensor.'1'’ Appeal Br. 19 (Claims App.) (emphasis added).
Under the broadest reasonable interpretation, we view claim 33 as at least
including an embodiment in which the “determining” step is performed
based only “on the signal from the motion sensor,” as opposed to that signal
and other unclaimed and unidentified factors.
Because the Examiner has found that the Specification fails to
reasonably convey to those skilled in the art that Appellants had possession
of the full scope of independent claim 33, and Appellants have not shown
error in this finding, we sustain the rejection of claim 33 for lack of written
description support. Claims 34-79 and 86-91 fall with claim 33.
Rejection 2 — The rejection of claims 33—79
and 86^91 under 35 U.S.C. § 101
The Supreme Court has established “a framework 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. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). Under the Alice framework, we first “determine whether the claims
at issue are directed to one of those patent-ineligible concepts”—i.e., a law
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of nature, a natural phenomenon, or an abstract idea. Id. If so, we secondly
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application. Id. (quoting Mayo,
132 S. Ct. at 1298, 1297). The Supreme Court has described the second step
of the analysis as “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. (alteration in original) (quoting Mayo, 132 S. Ct. at
1294).
A. Claims 33-37, 57-66, 86, and 87
As to Rejection 2, for the claims in this group, Appellants argue
independent claim 33 and do not separately argue claims 34-37, 57-66, 86,
and 87, which depend from claim 33. Appeal Br. 6-10. We address claim
33, with claims 34-37, 57-66, 86, and 87 standing or falling with claim 33.
See 37 C.F.R. § 41.37(c)(l)(iv).
In the Rejection, the Examiner stated that claim 33 is “directed to the
abstract idea of processing data” and that “[t]he additional elements or
combination of elements in the claim[] other than the abstract idea per se
amount to no more than: mere instructions to implement the idea on a
computer/processor.” Final Act. 4. According to the Examiner, when
“[vjiewed as a whole, these additional claim elements do not provide
meaningful limitations 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.
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First, Appellants argue that the Examiner “has not met the burden of
establishing that Appellants’] claims tie-up or pre-empt others from
‘processing data’ or ‘mathematically correlating a sensed signal with a type
of seizure,’ and pre-empt others from ‘data processing.’” Appeal Br. 8; see
also id. at 7 (“The present claims do not ‘seek to tie up any judicial
exception such that others cannot practice it.’” (quoting 2014 Interim
Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618, 74,625
(Dec. 16, 2014))). According to Appellants, claim 33 “recite[s] a specific
way of determining a seizure metric comprising a seizure type, which adds
meaningful limits on the use of ‘correlating a sensed signal with a type of
seizure.’” Appeal Br. 8 (quoting Final Act. 6); see also Appeal Br. 8
(highlighting certain language in claim 33).
We are not apprised of error based on this argument. The Supreme
Court has stated that “patents that. . . integrate the building blocks [of
human ingenuity] into something more, []thereby transform[ing] them into a
patent-eligible invention . . . pose no comparable risk of pre-emption, and
therefore remain eligible for the monopoly granted under our patent laws.”
Alice, 134 S. Ct. at 2354-55 (citations and quotations omitted). Although
preemption “might tend to impede innovation more than it would tend to
promote it, ‘thereby thwarting the primary object of the patent laws’” {id. at
2354 (citing Mayo, 132 S. Ct. at 1293)), “the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015)
(“[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
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abstract.”). Thus, even assuming claim 33 recites “a specific way of
determining a seizure metric” (Appeal Br. 8)—such that claim 33 does not
preempt the entirety of the identified abstract idea—that does not
demonstrate that claim 33 is directed to patent-eligible subject matter.
We are also not apprised of error based on the contention that claim
33 “recite[s] a specific type of sensed signal - a motion signal - as well as
[a] specific technique of using the signal to select a seizure type from a
plurality of predefined seizure types in a way that improves the technology
itself.'1'’ Appeal Br. 8 (emphasis added); see also id. at 9 (discussing certain
aspects of the 2014 Interim Guidance on Patent Subject Matter Eligibility
related to “Improvements”). As noted by the Examiner, Appellants have not
explained how the subject matter of claim 33 is an improvement to the
technology itself. See Ans. 7 (second paragraph).
Second, Appellants argue that the Examiner “failed to meet the
burden of demonstrating that claim 33 fails to recite additional elements that
add significantly more to the alleged abstract idea.” Appeal Br. 9.
Appellants contend that “[i]t is unclear . . . how the subject matter of claim
33, such as ‘determining ... a seizure metric . . . based on the signal from
the motion sensor,’ amounts to a ‘mere instruction^ to implement the idea
[of data processing] on a computer/processor.’” Appeal Br. 10 (quoting id.
at 19 (Claims App.) and Final Act. 4). According to Appellants, “[tjaking
all the claim elements both individually and as an ordered combination,
claim 33 as a whole amounts to significantly more than ‘processing data’
and ‘mathematically correlating a sensed signal with a type of seizure.’”
Appeal Br. 10 (footnote omitted) (quoting Final Act. 4, 6).
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We are not apprised of error by this argument. We conclude that the
Examiner’s analysis and remarks (Final Act. 3—4, 6) are sufficient to place
Appellants on notice regarding the Examiner’s positions as to step 2 of the
Alice analysis, as required under 35 U.S.C. § 132. See also In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011) (stating that “the PTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies 35 U.S.C. § 132, in ‘notifying] the applicant. . . [by] stating the
reasons for [its] rejection, or objection or requirement, together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application’” (quoting 35 U.S.C. § 132)).
Moreover, as stated by the Examiner, Appellants “state[] that it is ‘unclear’
how the claimed subject matter amounts to mere instruction to implement
the idea on a computer, but do[] not specifically address how a computer or
processor does anything more than automate the task of pattern matching.”
Ans. 7. Further, to the extent Appellants rely on the fact that the recited
“motion sensor” is physical structure, we note that our reviewing court has
affirmed rejections under § 101 when “the only physical step involves
merely gathering data for the algorithm.” See In re Grams, 888 F.2d 835,
839 (Fed. Cir. 1989).
Third, in the Reply Brief, Appellants argue that the Examiner failed to
follow a May 2016 Memorandum4, which states:
4 See Memorandum from Robert W. Bahr, Deputy Commissioner for
Patent Examination Policy to the Patent Examiner Corps (May 4, 2016),
https://www.uspto.gov/sites/default/files/documents/ieg-may-2016-
memo.pdf (last visited Dec. 20, 2017).
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when an examiner determines that a claim is directed to an
abstract idea (Step 2A), the rejection should identify the abstract
idea as it is recited (i.e., set forth or described) in the claim and
explain why it corresponds to a concept that the courts have
identified as an abstract idea.
May 2016 Memorandum at 1, discussed at Reply Br. 5. Appellants also
argue that the Examiner failed to follow a July 2016 Memorandum5
discussing the Federal Circuit’s decision in Rapid Litigation Management
Ltd. v. CellzDirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016):
First, the court emphasized that the “directed to” analysis of a
process claim requires more than “merely identifying] a patent-
ineligible concept underlying the claim” and instead requires an
analysis of whether “the end result of the process, the essence of
the whole, was a patent-ineligible concept.”
July 2016 Memorandum at 1-2, discussed at Reply Br. 5.
Relying on the May 2016 Memorandum, Appellants argue that, in
identifying the abstract idea at issue, “the Examiner relied upon the
Examiner’s own characterization of the language of claim 33 to identify the
alleged non-statutory subject matter, instead of identifying an abstract idea
in any portion of claim [33] as recited.” Reply Br. 5. Relying on the July
2016 Memorandum, Appellants argue that the Examiner “failed to provide
an analysis of whether ‘the end result of the process, the essence of the
whole, was a patent-ineligible concept.’” Id. (quoting, with emphasis added,
July 2016 Memorandum at 1-2).
5 See Memorandum from Robert W. Bahr, Deputy Commissioner for
Patent Examination Policy to the Patent Examiner Corps (July 14, 2016),
https://www.uspto.gov/sites/default/files/documents/memo_rlm-
sequenom.pdf (last visited Dec. 20, 2017).
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As an initial matter, any examiner’s failure to follow the Director’s
guidance is appealable only to the extent that the examiner has failed to
follow statute or binding case law. That is, to the extent the Director’s
guidance goes beyond binding case law and is more restrictive on the
examiner than the case law, failure of the examiner to follow those added
restrictions is a matter for petition to the Director, not for appeal. Reviewing
the argument against the statute and case law, we determine that the
Examiner’s identification of the abstract idea—“mathematically correlating
a sensed signal with a type of seizure” (Final Act. 6)—properly reflected
“the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp.
LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (quoting Enfish,
LLCv. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) and
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015)). To the extent argued by Appellants, the fact that claim 33 does
not expressly recite “processing data” does not show error in the Examiner’s
identification of the abstract idea. See Reply Br. 5 (discussing “identifying
an abstract idea in any portion of claim [33] as recited”).
Moreover, the Federal Circuit has held claims ineligible under § 101
when directed to a process of measuring parameters indicative of an
individual’s condition to determine, using an algorithm, whether the
condition is abnormal. See In re Grams, 888 F.2d at 836-37; see also Elec.
Power, 830 F.3d at 1353-54 (“collecting information” and “analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more” are abstract ideas); Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without
additional limitations, a process that employs mathematical algorithms to
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manipulate existing information to generate additional information is not
patent eligible.”). As to the discussion in Rapid Litigation Management, 827
F.3d at 1048, of whether “the end result of the process . . . was a patent-
ineligible concept” (see Reply Br. 5), in the context of claim 33 here, the
“end result of the process” is a “seizure metric” (i.e., data)—created during
the process and stored “in a memory.” See Appeal Br. 19 (Claims App.)
(claim 33, clause D).
For these reasons, we sustain the rejection of independent claim 33
under 35 U.S.C. § 101. Claims 34-37, 57-66, 86, and 87 fall with claim 33.
B. Claims 38^16, 67-79, 88, and 89
For the claims in this group, Appellants argue independent claim 38
and do not separately argue claims 39^46, 67-79, 88, and 89, which depend
from claim 38. Appeal Br. 10-13. We address claim 38, with claims 39-46,
67-79, 88, and 89 standing or falling with claim 38. See 37 C.F.R.
§ 41.37(c)(l)(iv). The Examiner stated that claim 38 is “directed to the
abstract idea of processing data by organizing information through
mathematical correlations (correlating a sensed signal with a known type of
condition), which the courts have found to be abstract.” Final Act. 4; see
also id. at 6 (stating that “the claims are, as whole, directed to the abstract
idea of mathematically correlating a sensed signal with a type of seizure”).
The Examiner also stated that claim 38 does not:
include additional elements that are sufficient to amount to
significantly more than the judicial exception because the
additional elements or combination of elements in the claims
other than the abstract idea per se amount to no more than:
recitation of generic computer structure (a processor, a memory,
a computer) that serves to perform generic computer functions
that are well-understood, routine, and conventional activities
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previously known to the pertinent industry. [Claim 38] also
make[s] reference to a motion sensor, but use of a sensor to
perform sensing is considered insignificant extrasolution activity
that would be insufficient to provide anything “significantly
more” to the claims.
Id. at 4-5. According to the Examiner, when “[vjiewed as a whole, these
additional claim elements do not provide meaningful limitations 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. at 5.
First, Appellants argue that “while the [Examiner] makes the bare
assertion that claim 38 [includes a] ‘recitation of a generic computer
structure (a processor, a memory, a computer) that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry,’ [the Examiner] has
provided no evidence of this.” Appeal Br. 11 (quoting Final Act. 4-5)
(footnote omitted). Appellants argue that the Examiner “has not even
alleged that claim 38 is unpatentable based on prior art or otherwise
attempted to show that the alleged ‘well-understood, routine, and
conventional activities’ recited in the claims were previously known.” Id.
(footnote omitted).
We are not apprised of error by this argument. We conclude that the
Examiner’s analysis and remarks (Final Act. 4-5, 6) are sufficient to place
Appellants on notice regarding the Examiner’s positions as to step 2 of the
Alice analysis, as required under 35 U.S.C. § 132. See also In re Jung, 637
F.3d at 1362. Moreover, Appellants’ more restrictive requirement—that the
Examiner identify record evidence supporting the statement at issue—is not
supported by case law. See, e.g., Alice, 134 S. Ct. at 2359 (stating how
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certain “computer functions are ‘well-understood, routine, conventional
activities] ’ previously known to the industry”). As to the argument that the
Examiner is not relying on prior art for the statement at issue, we note that
“[t]he ‘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.”
Diamond v. Diehr, 450 U.S. 175, 188-89 (1981).
Second, Appellants argue that the Examiner “has not shown that the
‘signal from a motion sensor, wherein the signal is indicative of motion of a
patient’ recited in claim 38 is ‘not central to the purpose of the method
invented by the applicant.’” Appeal Br. 11 (quoting claim 38 and MPEP
§ 2106(II)(B)).6 Appellants contend that “the use of a signal from a motion
sensor to determine a seizure metric amounts to an improvement to a
technology or technical field” because (1) “use of such a signal from a
motion sensor may provide for more specific categorization of seizure types
and, thus, more effective treatment, than previous systems” and/or (2) “use
of such a signal from a motion sensor may be used, along with one or more
signals indicating intracranial pressure, as an alternative to bioelectrical
brain signals, to determine seizure types.” Appeal Br. 12 (citing Alice, 134
S. Ct. at 2359-60, and Spec. 4, 5, 8, 154-156, 160, 178, 181).
We are not apprised of error here. As noted by the Examiner,
“[ijnclusion of a motion sensor for the purpose of obtaining a ‘motion
signal’ is insignificant extra-solution activity” because “the central propose
of the invention [in claim 38] is the interpretation of that signal, not how it is
6 Appellants appear to quote from Section 2106(II)(B) of MPEP,
Ninth Edition, Rev. 11.2013 (March 2014).
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Application 12/359,055
obtained.” Ans. 7-8; see also Grams, 888 F.2d at 839 (affirming a rejection
under § 101 when “the only physical step involves merely gathering data for
the algorithm”). As to Appellants’ reliance on (a prior version of) the
MPEP, we first note that the section quoted relates to method claims.
Second, to the extent applicable, the sentence quoted by Appellants is
followed by a statement that supports the Examiner’s position: “For
example, gathering data to use in the method when all applications of the
method would require some form of data gathering would not impose a
meaningful limit on the claim.” MPEP § 2106(II)(B) (9th ed., Rev. 11.2013,
Mar. 2014).
Moreover, the first purported improvement identified—that “use of
... a signal from a motion sensor may provide for more specific
categorization of seizures types . . . than previous systems using only
bioelectrical brain signals”—is not supported by the Specification. See
Appeal Br. 12 (emphasis added) (citing Spec. 4, 5, 8, 154, 155, 160, 178,
181). Appellants have not identified any statements in the Specification
(and we do not identify any in our review) that compare the level of
categorization provided by the use of motion sensor data with the level of
categorization provided in prior systems. As to the second purported
improvement—that “use of such a signal from a motion sensor may be used,
along with one or more signals indicating intracranial pressure, as an
alternative to bioelectrical brain signals, to determine seizure types”—we
note that claim 38 does not require the use of a signal from a motion sensor
“along with one or more signals indicating intracranial pressure.” Appeal
Br. 12 (emphasis added). As such, the second purported improvement is not
commensurate in scope with claim 38. See In re Self, 671 F.2d 1344, 1348
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(CCPA 1982) (rejecting arguments “not based on limitations appearing in
the claims”).
For these reasons, we sustain the rejection of independent claim 38
under 35 U.S.C. § 101. Claims 39^16, 67-79, 88, and 89 fall with claim 38.
C. Claims 47-56, 90, and 91
As part of Rejection 2, the Examiner addressed independent claim 47
(and claims 48-56, 90, and 91, which depend from claim 47) along with
independent claim 38 (and claims 39^16, 67-79, 88, and 89, which depend
from claim 38). See Final Act. 4-5. For claims 47-56, 90, and 91,
Appellants rely on the same arguments discussed above with regard to
claims 33 and 38 (see supra Rejection 2, §§ A, B). Appeal Br. 13. Because
we are not apprised of error based on those arguments, we sustain the
rejection of claims 47-56, 90, and 91 under 35 U.S.C. § 101.
DECISION
We affirm the decision to reject claims 33-79 and 86-91 under
35 U.S.C. § 112, first paragraph, and we affirm the decision to reject claims
33-79 and 86-91 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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