Ex Parte Wybo et al

Patent Trials and Appeals Board

Jul 9, 2019

13965468 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/965,468 08/13/2013
159197 7590 07/11/2019
Quinn IP / J &J
21500 Haggerty Rd, Ste 300
Northville, MI 48167
FIRST NAMED INVENTOR
Christopher Wybo
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.
ISS0128PUS/MED5076USNP 8390
EXAMINER
W ARSI, YASMEEN S
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
07/11/2019 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):
patentadmin@quinniplaw.com
usdocketing@quinniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER WYBO, DARREN SCARFE, and
AASHISH SHAH
Appeal2018-007236
Application 13/965,468
Technology Center 3700
Before MICHAEL L. HOELTER, JAMES P. CAL VE, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 1-19. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal2018-007236
Application 13/965,468
CLAIMED SUBJECT MATTER
Claims 1, 7, and 13 are independent. Claims 2-6, 8-12, and 14--19
depend from claim 1, 7, or 13. Claim 1 is reproduced below:
1. A neural monitoring system for detecting an artificially-
induced mechanical response of a muscle to a stimulus
provided within an intracorporeal treatment area of a human
subject, the intracorporeal treatment area including a nerve that
innervates the muscle, the neural monitoring system
compnsmg:
a non-invasive mechanical sensor configured to be placed
in mechanical communication with the muscle and to generate a
mechanomyography output signal corresponding to a sensed
mechanical movement of the muscle; and
a processor in communication with the mechanical sensor
and configured to:
receive the mechanomyography output signal from
the mechanical sensor;
determine a frequency component of the
mechanomyography output signal, wherein the frequency
component has a peak magnitude relative to adjacent
frequencies; and
provide an indication of an artificially induced
mechanical muscle response to a user if the determined
frequency component has a frequency within the range of
greater than O Hz to about 20 Hz.
REJECTIONS
1. Claims 1-19 are rejected under 35 U.S.C. § 101, as being directed
to ineligible subject matter.
2. Claims 1, 3-7, and 9-19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Bartol (US 2011/0237974 Al, published Sept. 29,
2011) and McLeod (US 2011/0196262 Al, published Aug. 11, 2011).
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3. Claims 2 and 8 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bartol, McLeod, and Rigaux (US 6,324,432 B 1, issued
Nov. 27, 2001).
OPINION
Patent Eligibility
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101.
The Supreme Court, however, has long recognized an implicit
exception to this section: "Laws of nature, natural phenomena, and abstract
ideas are not patentable." Alice Corp. v. CLS Bank lnt'l, 573 U.S. 208,216
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is "directed to one
ofthosepatent-ineligible concepts." Alice, 573 U.S. at 217. Ifso, we then
examine "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." Alice, 573 U.S. at
217 ( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an "inventive
concept," "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, 573 U.S. at 217-18 ( alteration
in original) (quoting Mayo, 566 U.S. at 72-73).
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Application 13/965,468
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("2019 Eligibility Guidance"). Under the 2019 Eligibility
Guidance, to decide whether a claim is "directed to" an abstract idea, we
evaluate whether the claim ( 1) recites an abstract idea grouping listed in the
guidance and (2) fails to integrate the recited abstract idea into a practical
application. See 2019 Eligibility Guidance, 84 Fed. Reg. at 51. If the claim
is "directed to" an abstract idea, as noted above, we then determine whether
the claim recites an inventive concept. The guidance explains that when
making this determination, we should consider whether the additional claim
elements add "a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field" or "simply
append[] well-understood, routine, conventional activities previously known
to the industry." 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
With respect to whether a claim recites an abstract idea, the 2019
Eligibility Guidance "extracts and synthesizes key concepts identified by the
courts as abstract ideas to explain that the abstract idea exception includes
the following groupings of subject matter, when recited as such in a claim
limitation(s) (that is, when recited on their own or per se)":
(a) Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions); and
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Application 13/965,468
( c) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Id. at 52 (footnotes omitted).
The Examiner determines that the claims are directed to an abstract
idea and, more specifically, that "claims 1, 7 and 13 are an idea standing
alone that can be performed by the human mind, or by a human using a pen
and paper." Final Act. 3. Appellant disagrees. Appeal Br. 8-11.
Based on the record before us, we are persuaded that the Examiner
has failed to establish the claims recite an ineligible abstract idea. Other
than asserting, generally, that "claims 1, 7 and 13 ... can be performed by
the human mind, or by a human using a pen and paper," the Examiner offers
no explanation as to how the features of those claims can be performed in
such a manner. Because the claims do not recite a mathematical concept, an
identified method of organizing human activity, or a mental process, as set
forth in 2019 Eligibility Guidance, we conclude the claimed "neural
monitoring system" of claims 1, 7, and 13 does not recite an abstract idea.
See 2019 Eligibility Guidance, 84 Fed. Reg. at 53.
Obviousness
Claim 1 requires that the "neural monitoring system" "determine[ s] a
frequency component of the mechanomyography output signal" and
"provide[ s] an indication of an artificially induced mechanical muscle
response to a user if the determined frequency component has a frequency
within the range of greater than O Hz to about 20 Hz." Claim 7 similarly
requires that the system "determine[ s] a fundamental frequency of the
mechanomyography output signal" and "provide[ s] an indication of an
artificially-induced mechanical muscle response to a user if the determined
fundamental frequency is within the range of greater than O Hz to about 10
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Hz." Claim 13 "convert[s] the received mechanomyography output signal
from ... to a frequency domain" and "provide[ s] an indication of an
artificially induced mechanical muscle response to a user if the magnitude of
at least one of the plurality of discrete frequencies exceeds a threshold."
In the Final Action, the Examiner finds that Bartol teaches the
majority of the limitations recited in claims 1, 7, and 13, but acknowledges
that Bartol fails to teach the limitations related to the frequency of the
mechanomyography signal and the limitations related to providing an
indication of an artificially induced mechanical muscle response based on
the frequency of the mechanomyography signal. See Final Act. 7, 10, 11. In
the Answer, after repeating the rejection from the Final Action, including the
acknowledged shortcomings of Bartol noted above, the Examiner finds that
"Bartol discloses providing an indication of an artificially induced
mechanical response to a user" and explains that "McLeod is not used to
teach providing an indication of an artificially induced mechanical muscle
response." Ans. 20-21.
The Examiner finds that "McLeod teaches the use of a fast fourier
transform on a waveform and therefore, as is well-known in the art, is
capable of determining a frequency component of the mechanomyography
output signal, wherein the frequency component has a peak magnitude
relative to adjacent frequencies (paragraph 0141---0144)." Final Act. 7; see
also id. at 10, 11-12 (making similar findings with respect to claims 7 and
13). The Examiner explains that "one can see all of the frequencies of the
signal [in McLeod] and therefore can inherently determine whether a
frequency component has frequency within the range of greater than O Hz to
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about 20Hz." Id. at 8; see also id. at 10, 11-12 (providing similar
explanation as to the frequency features recited in claims 7 and 13).
As for the rationale for combining the teachings of McLeod with
those of Bartol, the Examiner reasons that "it would have been obvious to
modify at the time of the invention Bartol by McLeod for the purpose of
providing a more effective strategy for information extraction via time-
frequency analysis." Final Act 8. In the Answer, the Examiner explains that
it would have been obvious at the time of the invention to
combine Bartol which discloses a system using myographic
signals to provide an indication of artific[i]ally induced muscle
response with McLeod which uses the frequency data of
myographic signals to make determinations regarding muscle
contractions in response to an applied signal.
Ans. 21-22.
We agree with Appellant that the Examiner has failed to establish that
McLeod is analogous art (Appeal Br. 13-15) and that the Examiner's
rationale is insufficient (id. at 16-18).
"A reference qualifies as prior art for an obviousness determination
under§ 103 only when it is analogous to the claimed invention." In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC
v. MGA Entm 't., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
Two separate tests define the scope of analogous art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Klein, 647 F.3d at 1348 (quoting In re Bigio, 381 F.3d at 1325).
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"[T]he field of endeavor test ... requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention's
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention." In re Bigio, 381 F.3d at
1325. "This test does not make the assessment of the field of endeavor a
wholly subjective call for the examiner." Id. at 1326. Rather, "[t]he
examiner and the Board must have a basis in the application and its claimed
invention for limiting or expanding the scope of the field of endeavor." Id.
Appellant contends that "[t]he present disclosure relates generally to a
surgical diagnostic system for detecting the presence of one or more nerves
within an intracorporeal treatment area of a human subject." Appeal Br. 13
( citing Spec. ,r 1 ). Appellant explains that "[i]n its most general sense, this
technology falls within the field of surgical diagnostics." Id. Appellant
distinguishes this from McLeod, explaining that "[t]he technology described
in McLeod relates to a non-invasive physical therapy device for determining
peak muscle strength/effort," which "is a system for monitoring muscular
exertion during a functional exercise." Appeal Br. 13 (citing McLeod ,r,r 1-
4, 243-248). Appellant contends that "[ s ]trength training/rehabilitation is
not the same as neural detection/monitoring, nor is it the same as surgical
diagnostics." Id.
The Examiner responds that "Applicant's field of endeavor is: a
neural monitoring system capable of detecting an artificially induced
mechanical response of a muscle to an electrical stimulus that is provided
within an intracorporeal treatment area of a human subject" (Ans. 18) and
"McLeod's field of endeavor is: a real-time muscle assessment during
functional activities using vibromyography technology" (id. at 19). As
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Appellant aptly notes, "the Answer factually acknowledges that McLeod is
from a different field of endeavor than the present technology." Reply Br. 5.
The Examiner concludes, however, that "[b ]oth pieces of prior art
gather a myographic signal from a muscle and perform an analysis of
myographic signals gathered from a muscle to make determinations." Ans.
19. Initially, we note that a comparison of the prior art does not address how
McLeod is in Appellant's field of endeavor. To the extent the Examiner
meant to state "both Appellant's invention and McLeod," rather than "[b]oth
pieces of prior art," there is no explanation for this subsequent broader
generalization of the relevant field of endeavor. That is, the Examiner does
not even reference, generally, let alone provide a citation to, anything in
Appellant's Specification to support this general characterization of the
purported field of endeavor. Accordingly, the Examiner has failed to
establish sufficiently that McLeod is in Appellant's field of endeavor.
"A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem." In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992). "[T]he purposes of both the invention and the
prior art are important in determining whether the reference is reasonably
pertinent to the problem the invention attempts to solve." Id.
Appellant contends that "[t]he problem faced by the inventor was,
specifically, how to best detect an artificially-induced muscle response
during a surgical procedure." Appeal Br. 14. Appellant contends that
"McLeod relates to a system for monitoring the effort/exertion of
intentional/user-intended muscle contractions during a functional exercise,
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as may be used in a physical therapy regimen and/or athletic training
routine." Id. (citing McLeod ff 1--4, 243-248). To distinguish the problem
addressed, Appellant explains that "a surgeon is generally not concerned
with monitoring how strong his patient is ... during an invasive surgical
procedure that is typically performed under anesthesia." Id.
The Examiner responds, again, that "[b ]oth pieces of prior art gather a
myographic signal from a muscle and perform an analysis of myographic
signals gathered from a muscle to make determinations." Ans. 19.
Notwithstanding the issue noted above regarding comparing to prior art,
rather than Appellant's disclosure, the Examiner says nothing about any
particular problem addressed, either by Appellant's invention or the prior
art. Accordingly, the Examiner has failed to establish sufficiently that
McLeod is reasonably pertinent the problem addressed by the inventors of
the pending application.
As noted above, Appellant also disputes the rationale proposed by the
Examiner as insufficient. See Appeal Br. 16-18; Reply Br. 6-7. In the
Answer, the Examiner supplements the rationale provided in the Final
Action noted above, responding that
it would have been obvious at the time of the invention to
combine Bartol which discloses a system using myographic
signals to provide an indication of artific[i]ally induced muscle
response with McLeod which uses the frequency data of
myographic signals to make determinations regarding muscle
contractions in response to an applied signal.
Ans. 21-22. Appellant has the better position. The Examiner's reasoning,
both in the Final Action and in the Answer, is conclusory, at best. The
Examiner fails to offer any meaningful explanation as to why one skilled in
the art would have used McLeod's teachings regarding frequency analysis in
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Bartol's system. Instead, and as seen above, the Examiner simply concludes
that such a combination would have been obvious because it provides the
arrangement recited in the claims. Accordingly, the Examiner has failed to
establish sufficiently that one skilled in the art would have combined
McLeod's teachings with those of Bartol.
For at least these reasons, we do not sustain the Examiner's decision
to reject claims 1-19.
DECISION
We REVERSE the Examiner's decision to reject claims 1-19.
REVERSED
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