Ex Parte Jou

Patent Trials and Appeals BoardJun 13, 2019

13986447 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/986,447 05/02/2013 62993 7590 06/17/2019 BUCHALTER 18400 VON KARMAN A VE. SUITE 800 IRVINE, CA 92612 FIRST NAMED INVENTOR Emerson M.F. Jou UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. ]9005-2001 3151 EXAMINER MILLER, CHRISTOPHER E ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 06/17/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patent@buchalter.com ipdocket@buchalter.com kbames@buchalter.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EMERSON M. F. JOU Appeal2019-003305 Application 13/986,447 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the final rejection of claims 20, 24, 25, 28, and 29. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. Appeal2019-003305 Application 13/986,447 THE INVENTION Appellant's invention involves treatment for pain. Spec. ,r 2. Claim 20, reproduced below, is illustrative of the subject matter on appeal. 20. A method of treating pain of a patient due to soft tissue injury, consisting: identifying and locating soft tissue structural changes of an injured site by: testing an active range of motion or a passive range of motion of the injured site and assess a limitation on the range of motion due to pain, identifying a muscle including the injured site based at least in part on the tested active range of motion or the tested passive range of motion, testing a strength of the identified muscle and assessing whether strength is limited due to pain, palpating the identified muscle including the injured site identified from the range of motion test and muscle strength test with a fingertip for tenderness, and precisely identifying a precise locus of injury of the injured site based on the palpation of the identified muscle for tenderness in the identified muscle, but not by detection of skin restrictions in the form of knots; after precisely identifying the precise locus of injury, treating the injured site by: contacting a fingertip to a skin of the patient; holding the fingertip on a skin point over the precise locus of injury thereby applying with a constant pressure of between 0.1 and 0.5 pounds per square inch (psi) precisely to the precise locus of injury with no manipulation and stretching of the identified muscle for a treatment duration of 2 to 3 minutes while holding the fingertip still; and removing the constant pressure applied to the skin point with the fingertip by removing contact of the fingertip from the skin after the tenderness is resolved, thus reversing structural changes in the precise locus of injury from a state of injured tissue to a different state of normal tissue of a non-injured muscle 2 Appeal2019-003305 Application 13/986,447 condition, wherein the treatment duration includes an entire period that the fingertip is in contact with the patient and the constant pressure is applied for the entire treatment duration without sweeping motion to stimulate and follow movement of patterns in the identified muscle. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Austin Jones Rubenstein Jacobs US 2003/0199792 Al US 2007 /0208404 Al US 2008/0243034 Al US 2013/0096467 Al Oct. 23, 2003 Sept. 6, 2007 Oct. 2, 2008 Apr. 18, 2013 The following rejections are before us for review: 1 1. Claims 20, 24, 25, 28, and 29 are rejected under 35 U.S.C. Â§ 101 as being directed to a judicial exception to patent eligible subject matter. 2. Claim 20 is rejected under 35 U.S.C. Â§ 103(a), as being unpatentable over Austin, Jacobs, and Jones. 3. Claims 24, 25, 28, and 29 are rejected under 35 U.S.C. Â§ 103(a), as being unpatentable over Austin, Jacobs, Jones, and Rubenstein. OPINION Patent Eligibility under 35 U.S.C. Â§ 101 The controlling statute provides that "[ w ]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. 1 A rejection of all pending claims under 35 U.S.C. Â§ 112, second paragraph, for indefiniteness has been withdrawn by the Examiner. Ans. 32. 3 Appeal2019-003305 Application 13/986,447 Â§ 101. The Courts recognize certain judicial exceptions to Section 101, namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas. See Mayo Collaborative Svc. v. Prometheus Labs, Inc., 566 U.S. 66, 70-71 (2012). The Supreme Court has 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." Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208,217 (2014) (citing Mayo, 566 U.S. at 72-73). According to the Supreme Court's framework, we must first determine whether the claims at issue are directed to one of those concepts. Id. If so, we must 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, 566 U.S. at 79, 78). The PTO recently published revised guidance on the application of Section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Guidelines"). Under such guidelines, in conducting step one of the Alice framework, we first look to whether the claim recites: Prong 1 any judicial exceptions, including certain groupings of abstract ideas; and Prong 2 additional elements that integrate the judicial exception into a practical application. In other words, under prong 1 of an abstract idea analysis, we look to whether the claim recites an abstract idea. Then, if it does, under prong 2, we look at the claim, as a whole, and determine whether the claim is 4 Appeal2019-003305 Application 13/986,447 "directed to" the abstract idea or, instead, is "directed to" a "practical application" of the abstract idea. Section 101 Analysis of Claims 20, 24, 25, 28, and 29 Appellant argues claims 20, 24, 25, 28, and 29 as a group. Appeal Br. 7-9. We select claim 20 as representative. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Prong 1 The 2019 Guidelines identify three key concepts as abstract ideas: (a) mathematical concepts including "mathematical relationships, mathematical formulas or equations, mathematical calculations"; (b) certain methods of organizing human activity, such as "fundamental economic principles or practices," "commercial or legal interactions," and "managing personal behavior or relationships or interactions between people"; and ( c) mental processes including "observation, evaluation, judgment, [and] opinion." With respect to the first step of the two-step Alice analysis, the Examiner determines that the claims are directed to an abstract idea because the method relies upon mental process steps and methods of organizing human activity. Final Action 5---6. Furthermore, the Examiner finds that Appellant's method is directed to natural phenomena related to touching the human body. Id. at 6. Appellant's Appeal Brief devotes three pages to the Section 101 rejection. Appeal Br. 7-9. The first page is devoted to an overview of legal principles related to subject matter eligibility. Id. at 7-8. The next page is devoted to a summary of the Examiner's findings in the Final Office Action. Id. at 8. The final page, comprised of a single paragraph, is devoted to the 5 Appeal2019-003305 Application 13/986,447 "inventive concept" aspect of the Alice analysis. Id. at 9. Stated succinctly, the Appeal Brief is silent on whether claim 20 recites a judicial exception under Prong One of the 2019 Guidelines. Id. Claim 20 recites: 1. identifying and locating injured soft tissue ... 2. testing a range of motion ... 3. identifying a muscle .. . 4. testing muscle strength .. . 5. palpating the muscle with a fingertip ... 6. identifying a locus of injury ... ; and 7. contacting a fingertip to a patient - - including applying and removmg pressure. Claims App. All of the foregoing steps are performed by a first person (such as a therapist) and are performed on a second person (a patient). The first person touches and observes the second person. No apparatus of any kind is described or claimed. There is little question here that claim 20 recites both an abstract idea and a natural phenomenon or a law of nature. The claim relates to: (1) observing; and (2) treating pain through touching ("resolving tenderness"). Claims App. The human body, including "soft tissue," exists in nature. How soft tissue responds to exercise, stretching, and touch is a natural phenomenon. Appellant did not invent soft tissue. At most, Appellant has discovered how soft tissue responds to exercise, stretching, manual pressure, and palpation. Similarly, there is no real question that claim 20 recites an abstract idea in the form of a mental process and a certain method of organizing human activity, namely, managing personal behavior, relationships, or 6 Appeal2019-003305 Application 13/986,447 interactions between people. The claimed treatment requires two persons: ( 1) a therapist that performs the testing, identifying, locating, palpating, and contacting steps, and (2) a patient that is the subject or object of the testing, identifying, locating, palpating, and contacting steps. The claim requires the therapist to interact with the patient by performing tests on the patient's soft tissue. Claims App., claim 20. The tests are performed in a certain order. Id. "After" identifying the injury location, the therapist applies manual pressure to resolve tenderness in the patient's soft tissue. Id. The directed interaction between the therapist and the patient is properly characterized as a method of organizing human activity. The process that the therapist goes through in testing and identifying to determine the location of a soft tissue injury entails observation, evaluation, and judgment and is, thus, properly characterized as a mental process under the 2019 Guidelines. Thus, the claim recites at least two judicial exceptions under Section 101: (1) natural phenomena; and (2) abstract ideas in the form of mental processes and organizing human activity, namely, managing interactions between people. Prong 2 Under Prong 2 of step 1 of the 2019 Guidelines, we do not assume that such claims are directed to patent ineligible subject matter because "'all inventions [at some level] embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas."' In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (quoting Alice, 573 U.S. at 217). Instead, "the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. 7 Appeal2019-003305 Application 13/986,447 Cir. 2016) ( citation omitted). If the claims are not directed to a judicial exception, the inquiry ends. 2019 Guidelines. If the claims are "directed to" a judicial exception, then the inquiry proceeds to the second step of the Alice framework. Id. Consequently, we consider whether the claimed method of working with a subject's body includes additional elements that integrate the judicial exception into a practical application. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. 2019 Guidelines. Here, Appellant argues that claim 20 is directed at a specific solution for treating pain in a patient and resolves a medical condition including soft tissue injury. Reply Br. 3. Appellant argues that claim 20 recites a novel method of treating pain by holding the fingertip on a skin point over the site of a soft tissue injury and applying a constant pressure of between 0.1 and 0.5 pounds per square inch for two to three minutes. Appeal Br. 9. Appellant further argues that patients typically recoil from a constant pressure place directly on the locus of pain and concludes that claim 20 involves a counterintuitive treatment, not previously known or used, by using constant pressure at the precise locus of pain rather than near or around the pain. Id. We fail to see how one person ( a therapist) touching another person ( a patient) in a certain manner and a certain order amounts to a "practical application" of a judicial exception, whether a natural phenomenon or an abstract idea. Resolving tenderness in injured soft tissue involves a natural 8 Appeal2019-003305 Application 13/986,447 phenomenon. Discovering particular circumstances of how and when to apply manual pressure and palpation and in what order is part of that natural phenomenon. Furthermore, observing whether soft tissue is injured by testing and observation is purely a mental process. Moreover, dictating the manner and order of one person touching another is simply managing human activity, which is an abstract idea. Finally, "'[p]henomena of nature, though just discovered, ... and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.'" Mayo, 566 U.S. at 71 (quoting Benson, 409 U.S. at 67); see also Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, 915 F.3d 743, 751 (Fed. Cir. 2019) ( explaining that claimed advance is only a discovery of a natural law and that additional recited steps only apply conventional techniques to detect that natural law); see also Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352, 1361 (Fed. Cir. 2017) (finding that a method that starts and ends with naturally occurring phenomena with no meaningful non-routine steps in between are directed to a natural law). People touch each other in a wide variety of situations and social contexts and the person who is touched may respond in a wide variety of ways. Claim 20 merely entails using a fingertip to apply light pressure over injured soft tissue of another person. Claims App. We do not view such as a meaningful limitation on the judicial exception( s) under the 2019 Guidelines. Claim 20, thus, fails to integrate the judicial exception into a practical application and, therefore, is "directed to" a judicial exception. Step 2 Turning to step 2 of the Alice/Mayo analysis, we look more precisely at what the claim elements add in terms of whether they identify an 9 Appeal2019-003305 Application 13/986,447 "inventive concept" in the application of the ineligible subject matter to which the claim is directed to. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018),petitionfor cert.filed, No. 18-1199 (U.S. Mar. 14, 2019). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Alice, 573 U.S. at 221 (alterations in original) (quoting Mayo, 566 U.S. at 77-78). Those "additional features" must be more than well-understood, routine, conventional activity. Mayo, 566 U.S. at 79. Under step two of the Alice/ Mayo framework, the Examiner determines that Appellant's soft tissue tenderness resolution method, considered both individually and in combination, does not amount to significantly more than the abstract idea. Final Action 6-8. Specifically, the Examiner finds: The remaining steps of claim 20 are primarily drawn to steps which are routine tests in the art ("testing an active range of motion or a passive range of motion of the injured site and assess a limitation on the range of motion due to pain", "testing a strength of the identified muscle and assessing whether strength is limited due to pain," "palpating the muscle including the injured site ... with a fingertip for tenderness," "holding the fingertip on a skin point over the precise locus of injury thereby applying with a constant pressure", and "removing the constant pressure applied to the skin point with the fingertip after the tenderness is resolved" are all widely prevalent in the art, such as with chiropractors, physical therapists, applied kinesiology, massage therapists, etc.). These limitations regarding interpersonal activities of humans and natural human movement (i.e., methods of organizing human activity) are not sufficient to amount to significantly more than the judicial exception because these steps are routine and conventional in the field. 10 Appeal2019-003305 Application 13/986,447 Id. at 6-7. The Examiner further finds that steps of applying pressure between 0.1 and 0.5 pounds per square inch to the locus of injury for 2 to 3 minutes can be performed by using a finger and counting time. Id. at 7. Appellant argues: Claim 20 recites a novel method of treating pain by, inter alia, "holding the fingertip on a skin point over the precise locus of injury thereby applying with a constant pressure of between 0.1 and 0.5 pounds per square inch (psi) precisely to the precise locus of injury with no manipulation and stretching of the identified muscle for a treatment duration of 2 to 3 minutes while holding the fingertip still" and/or "the constant pressure is applied for the entire treatment duration without sweeping motion." The Office fails to consider these specific limitations and instead mischaracterizes Claim 20 as involving steps that are "widely prevalent in the art." To the contrary, these steps involve a counterintuitive treatment, not previously known or used, by disclosing the use of a constant pressure to the precise locus of pain rather than near or around the pain. Patients typically recoil from any constant pressure placed directly on the locus of pain, and reference to conventional chiropractic care or other types of massage therapy involve entirely different manipulation and stretching of muscles from the specific recitations in claim 20. The current disclosure provides "something more." Appeal Br. 9-10. Appellant's arguments are not persuasive. The features that Appellant points to as "inventive" are just the natural phenomenon and the abstract idea themselves. Id. Appellant's argument that the treatment method is "novel" does not confer subject matter eligibility. Id. We may assume that the techniques claimed are "' [g]roundbreaking, innovative, or even brilliant,"' but that is not enough for eligibility. SAP Am., 898 F.3d at 1163 ( quoting Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)). Appellant's steps of performing tests and applying 11 Appeal2019-003305 Application 13/986,447 manual pressure to resolve tenderness merely instructs one person to "apply" the natural phenomenon that soft tissue pain is alleviated under certain conditions. Similarly, the steps merely instruct one person to "apply" the abstract idea of touching another person in a certain manner. 2 See Alice, 573 U.S. at 223 (explaining that transformation into patent-eligible subject matter requires more than simply stating the abstract idea while adding the words "apply it"). The art cited by the Examiner in the Section 103 obviousness rejection further confirms that steps such as light touching with static pressure are routine and conventional. We have considered Appellant's remaining arguments and find them to be without merit. Accordingly, for the above reasons, the recited elements of claim 20, considered individually and as an ordered combination, do not constitute an "inventive concept" that transforms claim 20 into patent-eligible subject matter. On this record, we affirm the Examiner's Section 101 rejection of claims 20, 24, 25, 28, and 29. Unpatentability of Claim 20 over Austin, Jacobs, and Jones The Examiner finds that Austin discloses the invention substantially as claimed except for the amount, direction, and duration of fingertip pressure. Final Action 9-12. The Examiner relies on Jacobs as teaching 3-5 minutes of light, static pressure. Id. at 12. The Examiner relies on Jones as teaching 0.6 pounds per square inch of pressure. Id. at 14. The Examiner concludes that it would have been obvious to a person of ordinary skill in the 2 It does not matter how innovative Appellant's abstract idea is. SAP Am., 898 F.3d at 1163. "[A] claim for a new abstract idea is still an abstract idea." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). 12 Appeal2019-003305 Application 13/986,447 art at the time the invention was made to modify the method of Austin so as to use three to five minutes of light, static pressure in the range of 0.1 to 0.5 pounds per square inch. Id. at 13-15. According to the Examiner, a person of ordinary skill in the art would have done this to provide effective treatment and as a matter of routine optimization. Id. Appellant argues against the combinability of Austin and Jacobs. Appeal Br. 11. According to Appellant, "[t]he proposed use of Jacob's pressure technique ... is expressly taught against in Austin." Id. In response, the Examiner states that Austin does not criticize or discourage investigation into applying static pressure with a fingertip. Ans. 35-36. In reply, Appellant accuses the Examiner of relying on an overly narrow application of the doctrine of teaching away. Reply Br. 3. We agree with the Examiner that Austin does not teach away from Jacobs. "[I]n general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). However, the mere disclosure of alternatives does not teach away. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Rather, teaching away requires "clear discouragement" from implementing a technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017). Austin teaches the use of fingertip pressure. Austin ,r 133. It further teaches that the applied point of pressure does not move. Id. ,r 127. Instead, "it involves variations in pressure and direction without any substantial change in the contact area of application." Id. Jacobs teaches the use of light, static pressure. Jacobs ,r 42. 13 Appeal2019-003305 Application 13/986,447 Having reviewed both Austin and Jacobs, it is our opinion that Jacobs and Austin merely teach alternative methods, rather than teaching away from each other. We are, therefore, not apprised of error and sustain the Examiner's unpatentability rejection of claim 20. Claim 28 Unpatentability of Claims 24, 25, 28, and 29 over Austin, Jacobs, Jones, and Rubenstein Claim 28 is an independent claim that is substantially similar in scope to claim 20, except that it also has a limitation directed to stretching, for which the Examiner relies on Rubenstein. Claims App.; Final Action 17-24. Appellant does not challenge the Examiner's finding of fact with respect to Rubenstein, neither does Appellant challenge the Examiner's determination that Rubenstein is combinable with Austin, Jacobs, and Jones. Appeal Br. 14. Thus, in traversing the rejection, Appellant relies solely on arguments previously advanced with respect to the rejection of claim 20. Id. We find such arguments equally unpersuasive with respect to claim 28. Accordingly, we sustain the Examiner's unpatentability rejection of claim 28. Claims 24 and 25 Claims 24 and 25 depend, directly or indirectly, from claim 28. Claims App. Appellant does not argue for the separate patentability of claims 24 and 25 apart from arguments presented with respect to claim 28, which we have previously considered. We sustain the Examiner's rejection of claims 24 and 25. See 37 C.F.R. Â§ 4I.37(c)(l)(iv) (failure to separately argue claims). 14 Appeal2019-003305 Application 13/986,447 Claim 29 Claim 29 is an independent claim that is substantially similar in scope to claim 28, except that it contains further, narrowing, limitations directed to stretching, for which the Examiner relies on Rubenstein. Claims App., Final Action 25-34. In traversing the rejection, Appellant relies solely on arguments previously advanced with respect to the rejection of claim 20. Id. We find such arguments equally unpersuasive with respect to claim 29. Accordingly, we sustain the Examiner's unpatentability rejection of claim 29. DECISION The decision of the Examiner to reject claims 20, 24, 25, 28, and 29 as unpatentable under 35 U.S.C. Â§ 101 is affirmed. The decision of the Examiner to reject claims 20, 24, 25, 28, and 29 as unpatentable under 35 U.S.C. Â§ 103 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 15