Wisconsin Alumni Research Foundation

Patent Trials and Appeals Board

Dec 24, 2021

2021001076 (P.T.A.B. Dec. 24, 2021)

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.
15/354,254 11/17/2016 Kreg George Gruben (P170077US01) 1512.588 6293
72088 7590 12/24/2021
WISCONSIN ALUMNI RESEARCH FOUNDATION
C/O BOYLE FREDRICKSON S.C
840 North Plankinton Avenue
Milwaukee, WI 53203
EXAMINER
MCCROSKY, DAVID J
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
12/24/2021 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):
docketing@boylefred.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KREG GEORGE GRUBEN, WENDY LEE BOEHM, and
KIERAN MARC NICHOLS

Appeal 2021-001076
Application 15/354,254
Technology Center 3700
____________

Before BIBHU R. MOHANTY, JENNIFER MEYER CHAGNON, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1–17. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as the
Wisconsin Alumni Research Foundation. Appeal Br. 3.
Appeal 2021-001076
Application 15/354,254

2
ILLUSTRATIVE CLAIM
1. An instrument for assessing balance in an individual
comprising:
at least one platform size to receive an individual’s foot
applying a force against the platform with natural ankle
freedom;
a set of sensors communicating with the platform to
provide a set of measurements determining a center-of-pressure
of the force on the platform in a measurement plane of the foot
and corresponding angle of the force on the platform within the
measurement plane of the foot;
an analysis circuit receiving a first set of multiple values
of center-of-pressure as a function of time and a second set of
corresponding multiple values of angle of force as a function of
time from the sensors to determine at least one parameter of a
predetermined function relating a change in angle of force to
change in center-of-pressure over the multiple values;
an output device providing an assessment of individual
balance based on the parameter.
REJECTION2
Claims 1–17 are rejected under 35 U.S.C. § 101 as ineligible subject
matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.

2 In addition to the identified rejection, the Appellant (Appeal Br. 30–32)
requests review of the Examiner’s objection to the Specification, as to the
sufficiency of antecedent basis for the claim term “predetermined function.”
See Final Act. 2, 6 (citing 37 C.F.R. § 1.75(d)(1), MPEP § 608.01(o)). This
petitionable matter is not within the Board’s purview. See Ex parte Frye,
No. 2009-006013, 2010 WL 889747 at *7–*8 (BPAI Feb. 26, 2010)
(precedential).
Appeal 2021-001076
Application 15/354,254

3
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted 35 U.S.C. § 101 to exclude laws of nature, natural
phenomena, and abstract ideas, because they are regarded as the basic tools
of scientific and technological work, such that including them within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013) (“Myriad”).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (alterations in original) (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal
citation and quotation marks omitted)). The first step determines whether
the claim is directed to judicially excluded subject matter (such as a so-
called “abstract idea”); the second step determines whether there are any
“additional elements” recited in the claim that (either individually or as an
“ordered combination”) amount to “significantly more” than the identified
judicially excepted subject matter itself. Id. at 217–18.
Appeal 2021-001076
Application 15/354,254

4
In 2019, the Office published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 Under the 2019 Revised Guidance, a claim is
“directed to” an abstract idea, only if the claim recites any of
(1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes — without integrating such abstract idea
into a “practical application,” i.e., without “apply[ing], rely[ing] on, or
us[ing] 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.” Id. at 52–55. The
considerations articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon
whether a claim element (or combination of elements) integrates an abstract
idea into a practical application. Id. at 55 (referring to MPEP 9th ed. Rev.
08.2017, rev. Jan. 2018). A claim that is “directed to” an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element (or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent,” the 2019
Revised Guidance enumerates the analytical steps differently than the
Supreme Court’s Alice opinion. 2019 Revised Guidance, 84 Fed. Reg. at 52.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf). The Manual of Patent Examining
Procedure (“MPEP”) incorporates the revised guidance and subsequent
updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).
Appeal 2021-001076
Application 15/354,254

5
Step 1 of the 2019 Revised Guidance addresses whether the claimed subject
matter falls within any of the statutory categories of 35 U.S.C. § 101. Id.
at 53–54. Step 2A, Prong One, concerns whether the claim at issue recites
ineligible subject matter; if an abstract idea is recited, Step 2A, Prong Two,
addresses whether the recited abstract idea is integrated into a practical
application. Id. at 54–55. Unless such integration exists, the analysis
proceeds to Step 2B, in order to determine whether any additional element
(or combination of elements) amounts to significantly more than the
identified abstract idea, which would render a claim patent eligible, even
though it is directed to judicially excepted subject matter. Id. at 56.
This Appeal involves pending claims 1–17, claims 1 and 15 being the
independent claims.
As to Step 1 of the 2019 Revised Guidance, the Examiner regards all
claims in the Appeal as being within the statutory categories of § 101. Final
Act. 2.
With regard to Step 2A, Prong One, the Examiner maintains that the
claimed subject matter of “receiving . . . to determine at least one parameter
of a predetermined function relating a change in angle of force to change in
center-of-pressure over the multiple values” (appearing in both independent
claims 1 and 15) constitutes a judicial exception within the categories of
mathematical concepts and mental processes. See Final Act. 2–4; Answer
3–5.
As to the balance of the language of independent claims 1 and 15, the
Examiner maintains that no additional element, of the other claim
limitations, integrates the recited judicial exception into a practical
application, under Step 2A, Prong Two, such that these claims are “directed
Appeal 2021-001076
Application 15/354,254

6
to” the identified judicial exceptions (per 2019 Revised Guidance, 84 Fed.
Reg. at 53). See Final Act. 4–5, Answer 5–7.
Similarly, the Examiner’s position is that there are no additional
elements of the independent claims that amount to “significantly more” than
the identified judicial exceptions, per Step 2B — i.e., claims 1 and 15
contain no “specific limitation or combination of limitations that [is] not
well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present” (2019 Revised
Guidance, 84 Fed. Reg. at 56). See Final Act. 4–6, Answer 7–8.
Notwithstanding the propriety of the Examiner’s determination as to
whether the claims are directed to the identified abstract idea, we agree with
the Appellant’s argument that the Examiner does not sufficiently establish,
under Step 2B, that the additional elements (of the independent claims)
would not amount to significantly more than the abstract idea. See Appeal
Br. 21–22; Reply Br. 8–9.
The Examiner maintains, for example, that the claimed “platform”
and “sensors” (appearing in independent claims 1 and 15) are well-
understood, routine, and conventional, based upon “the non-patent literature
of record in the application” (Final Act. 5) — specifically, the “Bertec non-
patent literature cited October 26, 2018” (Answer 8).
As the Federal Circuit has explained, “[w]hether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018). Furthermore, “[w]hether a particular technology is
well-understood, routine, and conventional goes beyond what was simply
known in the prior art”; indeed, “[t]he mere fact that something is disclosed
Appeal 2021-001076
Application 15/354,254

7
in a piece of prior art, for example, does not mean it was well-understood,
routine, and conventional.” Id.
Accordingly, the Examiner’s citation to a single prior art reference
does not sufficiently establish that the content of the identified additional
elements, of independent claims 1 and 15, are well-understood, routine, and
conventional, pursuant to Step 2B. Consequently, we do not sustain the
rejection of independent claims 1 and 15, along with dependent claims 2–14,
16, and 17, under 35 U.S.C. § 101.
CONCLUSION
We reverse the Examiner’s rejection of claims 1–17 under 35 U.S.C.
§ 101 as ineligible subject matter.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–17 101 Eligibility 1–17

REVERSED