Ex Parte Hamilton et al

Patent Trial and Appeal Board

Aug 30, 2017

12747022 (P.T.A.B. Aug. 30, 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.
12/747,022 06/09/2010 Emily Hamilton 18947NP 3889
293 7590 09/01/2017
DOWELL & DOWELL, P.C.
2560 HUNTINGTON AVE, SUITE 203
ALEXANDRIA, VA 22303
EXAMINER
HUNTER, SEAN KRISTOPHER
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
DOWELL@DOWELLPC.COM
D Vej erano @ do wellpc. com
wferrebee @dowellpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMILY HAMILTON and BRIGLDE MATTAR
Appeal 2016-002806
Application 12/747,0221
Technology Center 3600
Before, JOSEPH A. FISCHETTI, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
final rejection of claims 1—13 and 19—24. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM IN PART.
1 Appellants identify Perigen Inc. as the real party in interest. App. Br. 2.
Appeal 2016-002806
Application 12/747,022
THE INVENTION
Appellants claim a method and apparatus for monitoring labor
progression and for providing a user interface to display data conveying fetal
and maternal information during labor. (Spec., 1,11. 25—28).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1) A method for monitoring labour progression in an obstetrics
patient, the method implemented by a programmable system
including at least one programmable processor and comprising:
a) receiving at the system a contraction signal conveying
occurrences of uterine contractions over time;
b) using the at least one processor, processing said contraction
signal to derive a sequence of contraction persistence indices,
the contraction persistence indices in the sequence being
associated with respective portions of the contraction signal and
conveying contraction rate patterns, the contraction persistence
indices being derived at least in part by processing said
contraction signal to determine:
i) whether there are excesses in rates of contraction in the
associated portions of the contraction signal; and
ii) if there are excesses in the rates of contraction
associated with at least some portions of the contraction
signal, whether these excesses are part of sustained
patterns of excess in the rates of contraction;
c) causing at least part of the sequence of contraction
persistence indices to be conveyed to a user on a display device
in communication with the programmable system.
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Appeal 2016-002806
Application 12/747,022
THE EVIDENCE AND REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability.
Claims 1—12 and 19—24 are rejected under 35 U.S.C. § 101.
Claims 1—13 and 19—24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hamilton (US 2004/0254430 Al, published Dec.
16, 2004), in view of Marossero et al. (US 2005/0267376 Al, published
Dec. 1,2005).
FINDINGS OF FACT
1. The Specification defines the contractility persistence index as,
at a time "n" is based on a weighted sum of the
contraction rate at time "n" and of one or more
contraction rate(s) at times preceding time "n".
Mathematically, a specific example of such a
contractility persistence index can be expressed as
follow:
(2) Wejghi&d “ !S’t- x 1 E ‘ tvwff- k. ]
0 â– < k; S ts
wJwte k; is iiss misses'
0 S fto and w, S 1
aad
CoHSmiiiUity IVrsssiertcs Iftdsx [n| â– â– â–  G (Wdglited Sum)
[Wjhere Weighted Sum[n] denotes the weighted sum of the
contractions at time "n"; contraction rate[n] denotes the rate of
contraction at time "n"; contraction rate [n-ki] for denotes the
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Appeal 2016-002806
Application 12/747,022
rate of contraction at one or more times preceding time "n"; wo
and Wi are weight values assigned to the contraction rates
measured at different times; the Contractility Persistence Index
[n] denotes the contractility persistence index at time "n" and G
() denotes a function. In a specific example, contraction rates
at times further from time n are weighted less heavily than
contraction rates at times closer to time n. In its simplest form,
the G () is the identify function, in other words the weighted
sum is itself the index. In another example, the function G ()
provides a mapping between different possible values of the
weighted sum and a set of index levels. In another example, the
function G () is an averaging function so that the contractility
persistence index is a weighted average of the contraction rates
over time
Specification 15:27-16:21.
ANALYSIS
35 U.S.C. § 103 REJECTION
Each of independent claims 12, 13, and 24 require in one form or
another:
processing said contraction signal to derive a sequence of
contraction persistence indices, the contraction persistence
indices in the sequence being associated with respective
portions of the contraction signal and conveying contraction
rate patterns, the contraction persistence indices being derived
at least in part by processing said contraction signal to
determine:
i) whether there are excesses in rates of contraction in the
associated portions of the contraction signal; and
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Appeal 2016-002806
Application 12/747,022
ii) if there are excesses in the rates of contraction
associated with at least some portions of the contraction
signal, whether these excesses are part of sustained
patterns of excess in the rates of contraction;
(Appeal Br. Claims App. 17, 19, 20, and 22).
The Examiner found concerning this limitation, that Hamilton
discloses it at:
[see at least, p. 1, f0005 (processing the signal in order to
derive data); p. 1, f0008-0009 (measurement... is indicative of
a measurement of a health characteristic of a pregnant woman;
process the signal indicative of a measurement of a health
characteristic); p. 1, 1(0010 (processing the signal to derive
data); p. 5, 1/0042 (compares measurement of the patient's
health characteristic received ...to measurements, or ranges of
measurements .. .); p. 5, 1(0043 (threshold measurement) of
Hamilton]... .
(Answer 3—4).
Appellants argue:
Hamilton’s discussion of contractions is quite limited. Now,
the Examiner does refer to various paragraphs of Hamilton
([0005], [0008], [0009], [0010], [0042], [0043]), but upon close
inspection, these paragraphs merely deal with signal processing
of health characteristics. Nothing in these paragraphs of
Hamilton, or in Hamilton generally, even remotely resembles
"contraction persistence indices", "rates of contraction" or
"sustained patterns of excess in the rates of contraction".
(Appeal Br. 14).
We agree with Appellants. Our review of Hamilton at relevant
paragraphs 42 and 43 reveals that Hamilton at best discloses,
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Application 12/747,022
[a]s shown in Table 2, the database contains a threshold
measurement, above which the associated action is "there is no
significant benefit with the additional use of cervical ripening
agents". In other words, the threshold measurement or range of
measurements separate the measurements that are not
associated with an action, from those that are associated with an
action. In the case of the cervical ripeness scores contained
above, the threshold range is over 60%. However, for cervical
ripeness scores that fall below that range, the associated action
is to provide the patient with medication for causing a change in
the measurement of the cervical ripeness score.
Hamilton para. 43.
Claim 1 defines the contraction (contractility) persistence
indices being,
associated with respective portions of the contraction signal and
conveying contraction rate patterns, the contraction persistence
indices being derived at least in part by processing said
contraction signal to determine:
i) whether there are excesses in rates of contraction in the
associated portions of the contraction signal; and
ii) if there are excesses in the rates of contraction associated
with at least some portions of the contraction signal, whether
these excesses are part of sustained patterns of excess in the
rates of contraction;
We find no connection in Hamilton between of the disclosed threshold
measurement, e.g., a cervical ripeness scores, “the threshold range is over
60%”, and the claimed contraction persistence indices. According to the
claims, the claimed contraction persistence indices determine: 1) contraction
rate patterns, 2) whether there are excesses in rates of contraction in the
associated portions of the contraction signal, and 3) if there are excesses in
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Application 12/747,022
the rates of contraction associated with at least some portions of the
contraction signal, whether these excesses are part of sustained patterns of
excess in the rates of contraction. None of these claimed characteristics are
disclosed or suggested by Hamilton.
The Examiner argues that Appellants’ arguments are singular (Answer
13—14), but the Examiner does not show and we cannot find where, in either
Hamilton or Marossero, the specific requirements identified above of the
claimed contraction persistence indices are disclosed. At best, Hamilton at
paragraph 9 only generally discloses a “signal indicative of a measurement
of a health characteristic in order to derive a data element indicative of the
likelihood of the certain outcome and for deriving data indicative of an
action for causing the health characteristic to be modified.” What the
particular health characteristic and the signal indicative of measurement are
is not disclosed and is left open by Hamilton for numerous various
applications. (See Hamilton, 19).
Therefore, we will not sustain the rejection of independent claims 1,
12, 13 and 24. Since claims 2—11, and 20—23 depend from claims 1 and 19
respectively, and since we cannot sustain the rejection of claims 1 and 19,
the rejection of the dependent claims likewise cannot be sustained.
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35 U.S.C. § 101 REJECTION
Claim 1 is representative of the independent claims before us on appeal,
which all contain similar limitations, and is a method claim of steps, viz.
processing [a] ... contraction signal to derive a sequence of
contraction persistence indices, the contraction persistence
indices in the sequence being associated with respective
portions of the contraction signal and conveying contraction
rate patterns, the contraction persistence indices being derived
at least in part by processing said contraction signal to
determine:
i) whether there are excesses in rates of contraction in the
associated portions of the contraction signal; and
ii) if there are excesses in the rates of contraction associated
with at least some portions of the contraction signal, whether
these excesses are part of sustained patterns of excess in the
rates of contraction;
c) causing at least part of the sequence of contraction
persistence indices to be conveyed to a user on a display device
in communication with the programmable system.
Appeal Br. 17.
The Supreme Court
set forth 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. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . 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
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Application 12/747,022
patent-eligible application. [The Court] described step two of
this 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.”
Alice Corp., Pty. Ltd. v CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is for monitoring “labour
progression” in an obstetrics patient. The steps in claim 1 result in causing
at least part of the sequence of contraction persistence indices to be
conveyed to a user. The Specification at paragraph 22 recites:
At present, clinical staff estimates the frequency of contractions
by feeling the mother's abdomen for a few minutes and noting
the timing of a few contractions or by examining a paper
tracing that shows a recording of contraction pressures/intensity
over time. These assessments are performed periodically and
the results recorded in the medical record.
Specification 2:25—29. The Specification defines the contraction persistence
indices as a mathematical equation (FF. 1) which, according to the excerpt
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Application 12/747,022
from the Specification above, is otherwise perceived by human intervention.
(FF. 1). Thus, all this evidence shows that claim 1 is directed to a
mathematical formula for monitoring labour progression in an obstetrics
patient. It follows from prior Supreme Court cases, and Gottschalk v.
Benson, 409 U.S. 63 (1972) in particular, that the claims at issue here are
directed to an abstract idea in the form of a mathematical equation. Like the
algorithm in Gottschalk, deriving a sequence of contraction persistence
indices based on the equation defined by the Specification (FF. 1), is a
mathematical algorithm. Mathematical formulas are patent-ineligible
subject matter. Parker v. Flook, 437 U.S. 584, 594—595 (1978). Thus,
determining contradiction persistence indices is an “abstract idea” beyond
the scope of § 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355-1257.
As in Alice Corp. Pty. Ltd., we need not delimit the precise contours of
the “abstract ideas” category in this case. It is enough to recognize that there
is no meaningful distinction in the level of abstraction between the concept
of performing a mathematical algorithm in Gottschalk and the concept of
deriving a sequence of contraction persistence indices based on the equation
defined by the Specification (FF. 1), at issue here. Both are squarely within
the realm of “abstract ideas” as the Court has used that term. See Alice
Corp. Pty. Ltd., 134 S. Ct. at 2357. That the claims do not preempt all forms
of the abstraction or may be limited to the abstract idea in the obstetrics
setting, does not make them any less abstract. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015). Perhaps more
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Application 12/747,022
to the point, claim 1 does no more than calculate a weighted average which
is the epitome of abstraction.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea ... on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute a result from a database amounts to
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Application 12/747,022
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellants’ claims, from a patent eligibility stand point, add nothing more to
the claims than when the steps are considered separately. Viewed as a
whole, Appellants’ claims simply calculate, via a mathematical formula, a
sequence of indices based on the equation defined by the Specification
(FF. 1), using a generic computer. The claims do not, for example, purport
to improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instructions to
calculate, via a mathematical formula, a sequence of indices based on the
equation defined by the Specification (FF. 1). Under our precedents, that is
not enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the computer program product and apparatus claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
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ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd., 134 S. Ct._at 2360 (alterations in original).
Thus, we disagree with the Appellants that reciting “a method that is
implemented by a programmable system including a programmable
processor, such method comprising specific steps that involve the receipt
and processing of signals to derive a sequence of contraction rates and
contraction persistence indices on a display” adds “significantly more to
“such notional abstract idea.” (Appeal Br. 9, 11). Again, viewed as a whole,
Appellants’ claims simply calculate and display, via a mathematical formula,
a sequence of indices based on the equation described by the Specification
(FF. 1), using a generic computer.
We also affirm the rejections of dependent claims since Appellants
have not challenged such with any reasonable specificity (see In re Nielson,
816 F.2d 1567, 1572 (Fed. Cir. 1987)).
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1—13 and 19—24
under 35 U.S.C. § 103.
We conclude the Examiner did not err in rejecting claims 1—12 and
19-24 under 35 U.S.C. § 101.
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DECISION
The decision of the Examiner to reject claims 1—13 and 19—24 is
affirmed in part.
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).
AFFIRMED IN PART
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