Select Comfort Retail Corporation

Patent Trials and Appeals Board

Nov 16, 2020

15391117 - (D) (P.T.A.B. Nov. 16, 2020)

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.
15/391,117 12/27/2016 Steven Jay Young 42495-0008002 4327
26191 7590 11/16/2020
FISH & RICHARDSON P.C. (TC)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
WEARE, MEREDITH H
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
11/16/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN JAY YOUNG, MARCO KENNETH DELLA TORRE,
YURI ZHOVNIROVSKY, and RICHARD VINCENT RIFREDI
____________

Appeal 2020-000419
Application 15/391,117
Technology Center 3700
____________

Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject all pending claims 22–42 in this application.
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies “the inventor” as the real
party in interest. Appeal Br. 1. However, this identification is inconsistent
with the application’s naming of four individuals as co-inventors, and Select
Comfort Retail Corporation as the applicant. See Application Data Sheet
(filed Dec. 27, 2016); Application Data Sheet (filed May 1, 2018).
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CLAIMED SUBJECT MATTER
Claims 22 and 39 are the independent claims on appeal. Claim 22
illustratively recites:
22. A system for tracking quality of sleep of a user on a bed,
comprising:
an air-pressure sensor mounted to the bed;
a processing unit comprising a processor, the processing
unit configured to receive signals from said air-pressure sensor
and configured to determine a sleep score of the user for a given
night of sleep based on the signals received from the air-pressure
sensor; and
wherein, to determine the sleep score of the user for the
given night, the processing unit is further configured to:
determine a user heart rate of the user based on the
signals;
determine a user respiration rate of the user based on
the signals;
determine a total time in bed of the user based on the
signals;
access a historical status signal that describes signals
for the user from a previous sleep session.
Appeal Br. 18 (Claims App.).
REFERENCES
The Examiner cites the following references in rejecting the claims on
appeal:
Name Reference Date
Miller US 5,796,340 August 18, 1998
Stahmann US 2005/0085738 A1 April 21, 2005
Auphan US 2005/0143617 A1 June 30, 2005
Chaffee US 2007/0227594 A1 October 4, 2007
Flocard US 2008/0109964 A1 May 15, 2008
Turner US 2009/0177327 A1 July 9, 2009
Oexman US 2011/0010014 A1 January 13, 2011
Doherty WO 2008/037020 A1 April 3, 2008
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REJECTIONS ON APPEAL
Claims 22–42 are rejected under 35 U.S.C. § 112 ¶ 12 as failing to
comply with the written description requirement. See Final Act. 5–6; Ans. 3
(withdrawing a portion of this rejection).
Claims 39–42 are rejected under 35 U.S.C. § 112 ¶ 2 as indefinite.
See Final Act. 6.
Claims 22–37 and 39–42 are rejected under 35 U.S.C. § 101 as
lacking statutory subject matter. See Final Act. 7–8; Ans. 3 (withdrawing
rejection as to claim 38); id. at 3–6 (rewriting rejection as to other claims).
Claims 22–31, 37, and 39–42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Turner, Doherty, Auphan, and Miller. See Final
Act. 9–15.
Claims 32 and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Turner, Doherty, Auphan, Miller, and Stahmann. See
Final Act. 15–16.
Claims 34 and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Turner, Doherty, Auphan, Miller, and Chaffee. See Final
Act. 16–17.
Claim 36 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Turner, Doherty, Auphan, Miller, and Flocard. See Final Act. 18–19.
Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Turner, Doherty, Auphan, Miller, and Oexman. See Final Act. 19–20.

2 The Examiner has examined this application under the pre-AIA first to
invent provisions of the patent statutes. See Final Act. 2. We, therefore, cite
to the pre-AIA versions of those statutes.
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OPINION
A. Written Description Rejection (Claims 22–42)
The Examiner determines Appellant’s Specification does not
demonstrate possession of, as is recited in independent claims 22 and 39, “to
determine the sleep score of the user for the given night, the processing unit
is further configured to . . . access a historical status signal that describes
signals for the user from a previous sleep session.” Ans. 3. In support, the
Examiner finds the Specification fails to disclose how the “historical status
signal” is utilized, in combination with heart rate, respiration rate, and time
in bed, to determine a sleep score. Final Act. 5 (citing Spec. (amended
Dec. 30, 2016) ¶ 120). The Examiner’s view is that the Specification does
not demonstrate possession of “how to program the disclosed computer to
perform the claimed function,” so there is a lack of written description under
35 U.S.C. § 112 ¶ 1. Id. at 5–6 (citing MPEP § 2161.01(I)).
Appellant contends the Specification demonstrates possession of the
claimed invention. Appeal Br. 3–4. Appellant asserts the Specification
“describes how a historical status signal is obtained and used,” and also
“states that a sleep quality is associated in part with the historical data.” Id.
at 4–8. In support, Appellant cites the Specification as originally filed on
December 27, 2016, at paragraphs 31 and 60, and Figures 1, 7, 10, and 12.
Id. Appellant also cites the Preliminary Amendment filed three days later on
December 30, 2016, which pertinently amended the Specification by adding
a new paragraph 104, as well as new Figures 6Y, 7Y, and 9Y. Id.
The Examiner answers that the Specification disclosures cited by
Appellant “concern determining a correlation between stored sleep quality
data (i.e., historical status signals representing historical vital sign data, as
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described in ¶ [00104]) and air bladder pressure when said status signals
were obtained for the purpose of customizing or optimizing air bladder
pressure for a particular user.” Ans. 7–8. According to the Examiner, the
Specification fails to “indicate how historical status signals generally impact
sleep quality for a given night or how heart rate, respiration rate, and a total
time in bed acquired during a given night may be utilized in combination
with accessed historical sleep data or status signals to derive a single sleep
quality score for the given night.” Id. at 8 (emphases added). The Examiner
concludes claims 22 and 39 “define the invention in functional language
specifying a desired result,” and the Specification “does not sufficiently
describe how the function is performed or the result is achieved,” and
instead simply restates the function recited in the claims, leading to a written
description insufficiency under 35 U.S.C. § 112 ¶ 1. Ans. 7.
Appellant replies by citing additional disclosures in the original
Specification (paragraphs 55, 56, and 73), and in the subsequent Preliminary
Amendment (paragraphs 113 and 115), that Appellant contends demonstrate
possession of the claimed subject matter. Reply Br. 1–3.
Upon review of the foregoing, we do not sustain the rejection.
Appellant’s originally-filed Specification discloses using a pressure sensor
to monitor the pressure within a fluid bladder placed underneath a sleeping
subject, such as a person. Spec. (filed Dec. 27, 2016) ¶¶ 31–32, 36, Fig. 1.
A processing unit analyzes the sensor’s pressure signals to determine
parameter data describing the subject, such as “heart rate, respiration rate,
length of sleep, [and] quality of sleep.” Id. ¶¶ 12–13 (emphasis added), 32,
36. In particular, the “processor can determine a quality correlation between
the pressure within the fluid bladder and the at least parameter based on the
data and historical data.” Id. ¶ 31 (emphases added).
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In our view, the foregoing disclosures in Appellant’s originally-filed
Specification demonstrate possession of combining current data (from the
subject’s present sleep session) with historical data (from the subject’s
previous sleep session(s)) to determine a “quality correlation.” Id. ¶ 31.
While details concerning the “quality correlation” are sparse, we conclude a
person of ordinary skill in the art would understand the “quality” to
correspond to a “quality of sleep.” Id. ¶¶ 13, 40. Thus, we conclude
Appellant’s originally-filed Specification demonstrates possession of
combining current and historical subject parameter data, including the
subject’s heart rate, respiration rate, and total time in bed, in order to
determine a sleep score, as is recited in claim 22.
The Examiner correctly observes that Appellant’s originally-filed
Specification does not provide any details concerning how this parameter
data may be combined to generate a sleep score. In this regard, we
acknowledge MPEP § 2161.01(I) provides that a claim may lack written
description when it “define[s] the invention in functional language
specifying a desired result but the specification does not sufficiently describe
how the function is performed or the result is achieved.” Further: “For
software, this can occur when the algorithm or steps/procedure for
performing the computer function are not explained at all or are not
explained in sufficient detail (simply restating the function recited in the
claim is not necessarily sufficient).” Id.
However, in the circumstances of this case, we conclude the failure of
Appellant’s originally-filed Specification to disclose a specific algorithm for
combining the claimed parameter data into a sleep score does not violate the
written description requirement. The claimed input data comprise simple
numerical values: heart rate (e.g., “x” beats per minute); respiration rate
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(e.g., “y” breaths per minute); total time in bed (e.g., “z” hours); and
historical data (e.g., heart rate, respiration rate, and/or total time in bed from
previous sleep sessions, xʹ, yʹ, and/or zʹ). Spec. (filed Dec. 27, 2016) ¶ 68
(Fig. 10), ¶ 73 (Fig. 12). The outputted sleep score, likewise, is a simple
numerical value. Id. at Fig. 10 (“Your Sleep Quotient for May 11 was 63.”).
From these disclosures, a person of ordinary skill in the art would
understand that the intervening algorithm is an algebraic equation that
combines the input values into a single number that represents the overall
quality of the subject’s sleep, giving appropriate weight to each of the input
values. We see no need for Appellant to disclose a specific algebraic
equation to demonstrate possession of the claimed invention, and thereby
satisfy the written description requirement, given these circumstances.
Thus, we conclude the Examiner errs in finding Appellant’s
originally-filed Specification fails to demonstrate possession of claims 22
and 39. We, therefore, need not address Appellant’s further reliance on
disclosures added via the Preliminary Amendment, filed three days after the
original Specification, as demonstrating possession of the claimed invention.
For the foregoing reasons, we do not sustain the written description
rejection of claims 22–42.
B. Indefiniteness Rejection (Claims 39–42)
The Examiner determines independent claim 39 is indefinite because
“there is insufficient antecedent basis for the limitation ‘the air-pressure
sensor.’” Final Act. 6. For the other rejections of claim 39, discussed
below, the Examiner understands “‘the air-pressure sensor’ is intended to
refer to . . . the means for sensing air pressure,” which is previously recited
in claim 39. Id.
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Appellant does not address the merits of this rejection. See Appeal
Br. passim. We, therefore, summarily sustain the rejection. See 37 C.F.R.
§ 41.37(c)(1)(iv); In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (2012)
(argument waived when not timely presented in briefing to the Board, absent
exceptional circumstances); MPEP § 1215.03 (“An appellant may, of course,
choose not to present arguments or rely upon particular evidence as to
certain claim rejections; however, such arguments and evidence are waived
for purposes of the appeal and the Board may summarily sustain any
grounds of rejections not argued.”).
C. Statutory Subject Matter (Claims 22–37 and 39–42)
1. Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219; Bilski v. Kappos, 561 U.S. 593, 611 (2010). If the claim is
“directed to” an abstract idea, we turn to the second step of the Alice and
Mayo framework, where “we must examine the elements of the claim to
determine whether it contains an ‘inventive concept’ sufficient to
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‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (quotation marks omitted).
In January 2019, between the Final Office Action and the Appeal
Brief in this application, the PTO published revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Guidance”). In
response to public comments, the PTO issued further guidance on
October 17, 2019, five days before the Reply Brief in this application,
clarifying the Guidance. See October 2019 Update: Subject Matter
Eligibility (“Oct. 2019 Update”) (available at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” Guidance, at 51; Oct. 2019 Update, at 1.
Under the Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).
Guidance, at 51‒55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
proceed to the second step of the Alice and Mayo framework (“Step 2B”).
Id. at 51, 56.
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2. Analysis
In rejecting claims 22–37 and 39–42 under § 101, the Examiner treats
claim 22 as representative. Ans. 3–6. We do too.
a. Step 2A, Prong One: Does Claim 22 Recite a Judicial Exception?
At Step 2A, Prong One, of the Guidance, we determine whether
claim 22 recites a judicial exception, including certain groupings of abstract
ideas, i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes.
The Examiner determines the steps of claim 22 reciting the
determination of a sleep score by determining a user heart rate, a user
respiration rate, and a total time in bed, and by accessing a historical status
signal from a previous sleep session, “are processes that, under their
broadest reasonable interpretation, cover performance of the limitations in
the mind but for the recitation of generic computer components.” Ans. 4.
Therefore, the Examiner concludes “the claims recite a mental process.” Id.
Appellant replies that claim 22 does not recite a mental process,
because it does “not contain limitations that can be practically performed in
the human mind.” Reply Br. 3–4. Appellant here relies on the claim’s
requirements for a “processing unit configured to receive signals from” a
sensor, and to make determinations “based on the signals.” Id. at 3
(emphases omitted).
We determine claim 22 recites an abstract idea, in particular a mental
process. See Guidance, at 52 & nn.14–15. Claim 22 recites the steps of
receiving signals from an air pressure sensor and determining a sleep score
of the user based on the signals. Appeal Br. 18 (Claims App.). Further, the
sleep score is determined by: determining a user heart rate, a user respiration
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rate, and a total time in bed, all based on the sensor signals; and accessing a
historical status signal describing a previous sleep session for the user. Id.
These steps recite a concept that may be performed in the human mind
because a human would be able to review the recited sensor signal data, and
make the recited determinations in the mind, or using pen and paper. In
particular, given the breadth of claim 22, any algebraic equation that
combines the input values (e.g., x and xʹ beats per minute, y and yʹ breaths
per minute, and z and zʹ hours in bed) into a single number that represents
the overall quality of the subject’s sleep will suffice. See supra Section A
(discussing written description rejection). Many such algebraic equations
can be applied in the human mind, and many more can be applied using pen
and paper. Accordingly, we conclude claim 22 recites a concept that may be
performed in the human mind, which is a mental process as identified in the
Guidance, and thus recites an abstract idea. See also CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011)
(determining that a claim whose “steps can [all] be performed in the human
mind, or by a human using a pen and paper” is directed to an unpatentable
mental process).
Claim 22 recites an abstract idea, even though it recites that the
various determinations are made, and the historical status signal is accessed,
by a processing unit. CyberSource, 654 F.3d at 1370 (holding a method for
verifying the validity of a credit card transaction over the Internet is an
abstract idea capable of being performed in the human mind or by a human
using pen and paper); see also id. at 1375 (“That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”). “Courts have
examined claims that required the use of a computer and still found that the
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underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015); see also Guidance, at 52 n.14 (“If a claim,
under its broadest reasonable interpretation, covers performance in the mind
but for the recitation of generic computer components, then it is still in the
mental processes category unless the claim cannot practically be performed
in the mind.”).
Thus, we determine claim 22 recites an abstract idea.
b. Step 2A, Prong Two: Does Claim 22 Recite Additional Elements that
Integrate the Abstract Idea into a Practical Application?
Following the Guidance, having determined claim 22 recites an
abstract idea, we proceed to Step 2A, Prong Two, and determine whether the
claim recites “additional elements that integrate the [abstract idea] into a
practical application of that exception.” Guidance, at 54; see MPEP
§§ 2106.05(a)–(c), (e)–(h).
The Examiner concludes claim 22 does not integrate the recited
abstract idea into a practical application. Ans. 5–6. This is in part because
“utilization of an air-pressure sensor and generically mounting the
air-pressure sensor to a bed are directed to data gathering elements and/or
steps therefor . . . and/or generally link the use of the judicial exception to a
particular technological environment or field of use (e.g., using an air bed or
mattress for the required data gathering).” Id. (citing MPEP § 2106.05(g)).
Further according to the Examiner, the recited “data gathering elements
and/or steps for acquiring an air pressure signal using an air-pressure sensor
mounted to a bed and the various features of an air mattress recited in the
rejected claims are recited at a high level of generality, encompassing
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well-understood, routine and conventional arrangements and/or techniques
previously known in the industry.” Id. at 6 (citing five prior art references).
Appellant contends claim 22 integrates the recited abstract idea into a
practical application, because the claim recites “an air-pressure sensor
mounted to the bed,” and a “processing unit configured to receive signals
from” the sensor and “determine a sleep score.” Appeal Br. 9; id. at 18
(Claims App.); Reply Br. 4. According to Appellant, these features “reliably
track sleep quality of the user without coming in contact with the user and
without requiring user installation, training, and changing the user’s
behavior.” Appeal Br. 9 (citing Spec. ¶¶ 30, 54); Reply Br. 4. Appellant
also relies on Diamond v. Diehr, 450 U.S. 175, 177 (1981), and Thales
Visionix, Inc. v. United States, 850 F.3d 1349 (Fed. Cir. 2017), as holding
claims that were similar to claim 22 were not directed to an abstract idea.
Appeal Br. 9–12.
The Examiner answers that determining a sleep score is the abstract
idea recited in claim 22, so this determination cannot also be a practical
application into which the abstract idea is integrated. Ans. 9. The Examiner
also concludes Thales does not control the result here, because the facts
presented there were materially different than the facts presented here.
Ans. 10–11. Further concerning the Specification’s disclosure of mounting
the air-pressure sensor on the bed providing technological improvements,
the Examiner finds “Turner also tracks sleep quality . . . without coming into
contact with a user . . . and without requiring user installation, training and
changing the user’s behavior.” Id. at 9–10 (citing Turner, Fig. 14, ¶ 38).
The Examiner concludes Appellant’s Specification does not demonstrate
that the invention of claim 22 “is any more reliable or accurate than the sleep
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quality tracking of the prior art systems/methods, such as those disclosed by
Turner.” Id. at 10.
Upon review of the foregoing, we determine claim 22 recites an
additional element that integrates the recited abstract idea into a practical
application of the abstract idea. In particular, claim 22 requires “an
air-pressure sensor mounted to the bed.” Appeal Br. 18 (Claims App.)
(emphasis added). We determine this claim element satisfies two
considerations that the Guidance indicates, if present, may integrate an
abstract idea into a practical application. See Guidance, at 55 & nn.25, 29;
Oct. 2019 Update, at 12–13. In particular, Appellant’s Specification
establishes this claim element: (1) reflects “an improvement to . . .
technology or technical field” per MPEP § 2106.05(a); and (2) applies the
recited abstract idea in a “meaningful way beyond generally linking the use
of the [abstract idea] to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
[abstract idea]” per MPEP § 2106.05(e). Guidance, at 55 & nn.25, 29.
Appellant’s Specification initially criticizes prior art sensing methods
as “requir[ing] expensive equipment,” as “too cumbersome for use outside
of medical facilities,” and as “necessitat[ing] attaching electrodes to the
bodies of users.” Spec. ¶ 3. Also, while it was previously known for the
user to lie down on “piezoelectric films or arrays of sensors,” these sensors
were “expensive.” Id. ¶ 4.
Appellant’s Specification then touts the benefits of a “touchless”
sensor, i.e., a sensor that is mounted to the bed rather than attached to the
sleeping subject. Id. ¶¶ 11, 30, 54. Further, one example of such a touchless
sensor is an air-pressure sensor that monitors the air pressure in an air
bladder placed underneath the sleeping subject. Id. Such a sensor can be
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easily transported, requires little installation, and does not require extensive
training, preparation, or change in the subject’s behavior. Id. Thus,
according to Appellant’s Specification, implementing the sleep
determination abstract idea of claim 22 with an air-pressure sensor mounted
to a bed provides a technological improvement.
Given the foregoing disclosures in Appellant’s Specification, we
disagree with the Examiner’s conclusion that requiring a sensor to be
mounted to a bed merely “adds insignificant extra-solution activity” to the
abstract idea, and “does no more than generally link the use of [the abstract
idea] to a particular technological environment or field of use.” Guidance,
at 55 & nn.31, 32; Ans. 5–6, 9. According to Appellant’s Specification,
using an air-pressure sensor mounted to the bed rather than attached to the
sleeping subject is a significant technological advance. It, also, does more
than limit the abstract idea to a particular field of use, because it excludes
using other types of sensors such as a piezoelectric sensor, as well as
attaching the sensor directly to the sleeping subject.
The Examiner additionally cites Turner and five other prior art
references, as belying the assertions of a technological improvement in
Appellant’s Specification, and demonstrating that mounting an air-pressure
sensor to a bed was a “well-understood, routine and conventional
arrangement[]” known in the art. Ans. 6, 9–10. However: “Step 2A
specifically excludes consideration of whether the additional elements
represent well-understood, routine, conventional activity,” which instead “is
done in Step 2B.” Guidance, at 55; see also Oct. 2019 Update, at 12 (“the
‘improvements’ analysis in Step 2A determines whether the claim pertains
to an improvement to the functioning of . . . technology without reference to
what is well-understood, routine, conventional activity” (emphasis added)).
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“That is, the claimed invention may integrate the judicial exception into a
practical application by demonstrating that it improves the relevant existing
technology although it may not be an improvement over well-understood,
routine, conventional activity.” Oct. 2019 Update, at 12–13. Thus, at
Step 2A, Prong 2, “the examiner should analyze the ‘improvements’
consideration by evaluating the specification and the claims to ensure that a
technical explanation of the asserted improvement is present in the
specification, and that the claim reflects the asserted improvement.” Id.
at 13. As discussed above, Appellant’s Specification provides the requisite
technical explanation, and claim 22 reflects the asserted improvement.
Finally, we agree with Appellant’s argument that claim 22 is very
similar to the claims at issue in Thales and in Diehr, which both held claims
were not directed to an abstract idea. Specifically, the claim at issue in
Thales employed “a first inertial sensor on a tracked object” and “a second
inertial sensor on [a] moving platform” to determine the “orientation of the
tracked object ‘based on’ the signals from the two inertial sensors,” which
“reduce[d] errors in measuring the relative position and orientation of a
moving object on a moving reference frame.” Thales, 850 F.3d at 1348–49
(emphases added). The claims at issue in Diehr similarly “required the
temperature measurement ‘at a location closely adjacent to the mold cavity
in the press during molding,’” which “reduced the likelihood that the rubber
molding process would result in ‘overcuring’ or ‘undercuring.’” Id. at 1348
(emphasis added) (citing Diehr, 450 U.S. at 179 n.5).
Claim 22, similarly, specifies a particular location for the sensor: it is
“mounted to the bed.” Appeal Br. 18 (Claims App.). Further, Appellant’s
Specification ascribes a functional benefit achieved by this placement of the
sensor, as discussed above. See also Thales, 850 F.3d at 1344–45
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(“changing the reference frame” permitted one to “track the position and
orientation of the object within the moving platform without input from a
vehicle attitude reference system or calculating orientation or position of the
moving platform itself,” thereby achieving “multiple advantages . . . over the
prior art”).
In sum, we conclude claim 22 integrates the mental process of
determining a sleep score into a practical application, by specifying that an
air-pressure sensor must be mounted to a bed. Therefore, we determine
claim 22 is not directed to an abstract idea. Accordingly, we need not
proceed to Step 2B of the Guidance (see Guidance, at 51, 56), and we do not
sustain the statutory subject matter rejection of claims 22–37 and 39–42.
D. Obviousness over Turner, Doherty, Auphan, and Miller
(Claims 22–31, 37, and 39–42)
In rejecting claim 22 under § 103, the Examiner cites Turner, Doherty,
and Miller as leading to the claimed invention, except for accessing a
historical status signal as part of determining a sleep score. Final Act. 9–13.
For the missing claim requirement, the Examiner turns to Auphan, which the
Examiner finds to disclose a processor that “access[es] a historic parameter
representing a measure of a user taken during a previous sleep session and
calculat[es] a sleep score as a function of the historic parameter,” wherein
the historic parameter may be “sleep debt accumulation.” Id. at 11 (citing
Auphan ¶¶ 19, 56). The Examiner determines it would have been obvious to
modify the processor of Turner, Doherty, and Miller, “to access a historic
parameter representing a measure of the user taken during a previous sleep
session . . . and to calculate the sleep score as a function of said accessed
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historic parameter as taught/suggested by Auphan in order to further
increase accuracy and/or reliability of the sleep score.” Id. at 11–12.
Appellant argues the Examiner errs in finding Auphan discloses
determining a sleep score for “a current sleep session” based in part on
accessing a historical status signal that describes user signals from “a
previous sleep session,” as is required by claim 22. Appeal Br. 14 (emphasis
by Appellant). In Appellant’s view, Auphan’s only use of historical sleep
data is “to identify trends of the sleep quality for the person.” Id. at 15–16
(emphasis added) (citing Auphan ¶¶ 9, 19, 22, 40, 69, 70). Thus, according
to Appellant: “Auphan merely teaches that a sleep quality index is calculated
from a given sleep session and thus represents a quality of sleep during that
given sleep session,” which may then be compared with sleep quality
indexes from other sleep sessions in order to recommend changes to the
user’s sleep environment to promote better sleep. Id. (emphases added).
The Examiner answers that “Auphan teaches/suggests utilizing ‘sleep
debt accumulation’ as a parameter for calculating a user’s sleep score/quality
on a given night,” with “sleep debt” being “an art-recognized term for
insufficient sleep, or the difference between the amount of sleep a person
should get and the amount of sleep said person actually gets.” Ans. 12
(citing Auphan ¶ 56). The Examiner determines a person of ordinary skill in
the art would have appreciated that determining such an accumulation
“teaches, or at the very least suggests, accessing and/or determining the
sleep debt for the previous sleep session, or cumulative sleep debt calculated
up through said previous session, in order to add any sleep debt calculated
for the given night.” Id. (emphasis added). “Alternatively stated,” Auphan
“teaches and/or suggests . . . accessing historical signals/sleep debt (e.g.,
sleep debt accumulated up through the previous sleep session), combining
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the historical signals/sleep debt and the sleep debt generated during the
given night to calculate sleep debt accumulated up through the given night,
and determining a sleep quality score for the given night.” Id. at 12–13.
Appellant replies that the Examiner’s foregoing findings concerning
Auphan’s usage of sleep debt accumulation to calculate a sleep score are
“speculative at best,” and are not supported by a preponderance of the
evidence. Reply Br. 5–6. According to Appellant, Auphan simply states
“that the sleep debt accumulation is one example factor of the objective
measures of sleep quality.” Id. at 5 (citing Auphan ¶¶ 39, 56).
We agree with Appellant. The Examiner cites Auphan’s disclosure in
paragraphs 19 and 56 to support the Examiner’s findings. Paragraph 19
pertinently discloses that a sleep system may employ numerous sensors to
“gather data” from a sleeping person, “and then process the information to
identify trends and sleep quality for the individual.” Auphan ¶ 19. In
particular: “Historical sleep data for the person is . . . used during sleep
analysis.” Id. (emphases added). However, paragraph 19 does not indicate
that the historical data (from a previous sleep session) is combined with
current data (from a present sleep session) to determine a sleep score for the
person, as is required by claim 22. Id. We, further, agree with Appellant
that other disclosures in Auphan reflect that Auphan uses the historical data
to identify “trends” in “sleep quality indices,” rather than calculating a sleep
quality index, itself, by using both historical and current data. Id. ¶ 9; id.
¶¶ 22, 40, 69.
Paragraph 56 of Auphan indicates that the sleep system may gather
“sleep data from the person,” including “sleep debt accumulation.” Id. ¶ 56.
Thus: “If the person wakes up numerous times then the time taken to fall
asleep in each instance is . . . recorded.” Id. However, paragraph 56 does
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not disclose whether the data used to calculate sleep debt accumulation is
limited to a present sleep session, or also includes data from a previous sleep
session. Id. The Examiner’s determination that a person of ordinary skill in
the art would have understood sleep debt accumulation, by definition,
necessarily includes historical data from a previous sleep session, is
unsupported by citation to other evidence of record. See Ans. 12–13. It is,
therefore, not supported by a preponderance of the evidence.
Thus, we conclude the Examiner errs in finding that Auphan discloses
accessing a historical status signal from a previous sleep session in order to
determine a sleep score for a given sleep session, as is recited in independent
claims 22 and 39. The Examiner’s analysis of dependent claims 23–31, 37,
and 40–42 do not cure this deficiency. See Final Act. 9–15. We, therefore,
do not sustain the § 103 rejection of claims 22–31, 37, and 39–42 as having
been obvious over Turner, Doherty, Auphan, and Miller.
E. Obviousness over Turner, Doherty, Auphan, Miller, and
either Stahmann, Chaffee, Flocard, or Oexman
(Claims 32–36 and 38)
Dependent claims 32–36 and 38 are each rejected under 35 U.S.C.
§ 103(a) as unpatentable over Turner, Doherty, Auphan, Miller, and either
Stahmann, Chaffee, Flocard, or Oexman. See Final Act. 15–20. The
Examiner’s additional findings and determinations do not cure the
deficiency as to Auphan in relation to the independent claims, discussed
above. See id. We, therefore, do not sustain these rejections.
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SUMMARY OF DECISION
In summary, we affirm the indefiniteness rejection of claims 39–42,
but we otherwise reverse the Examiner’s decision to reject claims 22–42, as
summarized in this table:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s) / Basis Affirmed Reversed
22–42 112 ¶ 1 Written Description 22–42
39–42 112 ¶ 2 Indefiniteness 39–42
22–37,
39–42
101 Eligibility 22–37,
39–42
22–31,
37, 39–42
103 Turner, Doherty, Auphan,
Miller
22–31,
37, 39–42
32, 33 103 Turner, Doherty, Auphan,
Miller, Stahmann
32, 33
34, 35 103 Turner, Doherty, Auphan,
Miller, Chaffee
34, 35
36 103 Turner, Doherty, Auphan,
Miller, Flocard
36
38 103 Turner, Doherty, Auphan,
Miller, Oexman
38
Overall
Outcome
39–42 22–38
TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED IN PART