ADVANCED TELECOMMUNICATIONS RESEARCH INSTITUTE INTERNATIONAL

Patent Trials and Appeals Board

Oct 29, 2020

2020003709 (P.T.A.B. Oct. 29, 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.
14/232,150 01/10/2014 Mitsuo Kawato 5174-0145PUS1 5894
127226 7590 10/29/2020
BIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
LANE, DANIEL E
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUO KAWATO, TAKEO WATANABE, KAZUHISA
SHIBATA, and YUKA SASAKI
Appeal 2020-003709
Application 14/232,150
Technology Center 3700
Before BENJAMIN D. M. WOOD, MICHELLE R. OSINSKI, and
JILL D. HILL, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s July 31, 2019 Non-Final Action rejecting claims 1, 3, 5–8, 20,
and 21. See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Advanced
Telecommunications Research Institute International. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to an apparatus and method for enhancing
brain function. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An apparatus for supporting brain function enhancement
of a prescribed brain function by enabling effective learning,
comprising: a brain activity detecting device for detecting a
signal indicating brain activity at a prescribed area within a brain
of a subject;
a storage device storing information of a target class
corresponding to a target activity pattern obtained beforehand
with respect to brain function enhancement;
and processing circuitry configured to, during a brain
activity decoder configuration stage, perform the following steps
present, for a predefined time period, the subject with a
plurality of stimulus events, where a stimulus event is a
perceptual stimulus which activates portions of the subject's
brain;
receive brain activity signals from the brain activity
detecting device while the subject is exposed to the plurality of
stimulus events, each of the plurality of stimulus events
corresponding to one of a plurality of classes including the target
class; and
train, using a machine learning algorithm, the processing
circuitry to decode cranial nerve activity patterns from brain
activity signals and classify the cranial nerve activity patterns to
one of the plurality of classes;
the processing circuitry further configured to, during a
neurofeedback stage for training the subject, repeatedly perform
the following steps until a predetermined condition is satisfied,
exposing the subject to a reward stimulus so that the subject
tries to increase the reward while maintaining the subject in the
absence of the awareness of the relation between the reward
stimulus and the target class;
receiving a brain activity signal inducted by the subject from
the brain activity detecting device while the subject is exposed to
the reward stimulus;
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deriving, from the received brain activity signal, a current
cranial nerve activity pattern;
calculating a value representing a degree of possibility of
said current cranial nerve activity pattern belonging to the target
class,
computing, based on said calculated value, in accordance
with degree of similarity of said current cranial nerve activity
pattern to said target class, a reward value corresponding to said
degree of similarity; and
altering the reward stimulus to represent a magnitude of said
reward value without revealing to the subject the stimulus event
corresponding to the target class; and
outputting said altered reward stimulus to said subject.
REJECTIONS
Claims 1, 3, 5–8, 20, and 21 are rejected under 35 U.S.C. 112(b) as
indefinite.
Claims 1, 3, 5–8, 20, and 21 are rejected under 35 U.S.C. 112(a) as
failing to comply with the written-description requirement.
Claims 1, 3, 5–8, 20, and 21 are rejected under 35 U.S.C. 101 as
directed to patent-ineligible subject matter.
OPINION
Claims 1, 3, 5–8, 20, and 21: Rejected as Indefinite
“processing circuitry” (claims 1 and 8)
Independent claim 1 is drawn to an apparatus comprising, inter alia,
“processing circuitry.” Appeal Br., Claims App. 1. Independent claim 8 is
drawn to a neurofeedback method that uses, inter alia, “processing
circuitry.” Claims App. at 2. The Examiner determines that “it is unclear
what structure ‘processing circuitry’ is,” because “[t]he disclosure is silent
regarding the term, and it is not readily apparent that ‘processing circuitry’
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identifies a single specific structural element of the originally filed
disclosure.” Non-Final Act. 3; Ans. 18. Appellant responds that
“processing circuitry” refers to “processing device 102,” which “may be
realized by a general purpose computer or dedicated hardware.” Appeal
Br. 4.
During prosecution, a claim may be rejected as indefinite “when it
contains words or phrases whose meaning is unclear,” MPEP § 2173.05(e),
or if it is “amenable to two or more plausible claim constructions,” Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). As
indefiniteness analysis involves general claim construction principles, we
begin with the language of the claim. See Enzo Biochem, Inc. v. Applera
Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010); Sonix Tech. Co. v.
Publications Int’l, Ltd., 844 F.3d 1370, 1378 (Fed. Cir. 2017).
As the Examiner notes, “processing circuitry” is not used, much less
defined, in the Specification. If the “specification does not assign or suggest
a particular definition [of a claim term], in determining the ordinary and
customary meaning of the claim term as viewed by a person of ordinary skill
in the art, it is appropriate to consult a general dictionary definition of the
word for guidance.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348
(Fed. Cir. 2010) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1322–23
(Fed. Cir. 2005) (en banc). “Circuitry” is defined as “[t]he complete
combination of circuits used in an electrical or electronic system or piece of
equipment.” MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL
TERMS 396 (6th ed. 2003) (“MCGRAW-HILL DICTIONARY”). Both parties
apparently agree that “circuitry” refers to computer hardware as opposed to
software. See Ans. 18 (“the term ‘circuitry’ connotes structure (i.e., a
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hardware element”)); Reply Br. 2–3 (“processing circuitry” refers to
structure, i.e., a general purpose computer or dedicated hardware). To
“process” is “[t]o assemble, compile, generate, interpret, compute, and
otherwise act on information in a computer.” MCGRAW-HILL DICTIONARY
at 1676. It would appear, therefore, that “processing circuitry” refers to
hardware that processes, or “act[s] on,” information.
The Examiner expresses concern that “processing circuitry” may not
refer to “a single specific structural element of the originally filed
disclosure.” Non-Final Act. 3; see Ans. 18 (stating that the indefiniteness of
“processing circuitry” is evidenced, in part, by Appellant “pointing to all
manners of hardware and software as being the ‘processing circuitry.’”). It
is not necessary, however, for a term to refer to a single structural element
for the term to be definite. The term may, instead, refer to a general class of
structures, in which case it covers all types of structure within that class to
the extent supported by the Specification. See CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (holding that if “an
apparatus claim recites a general structure without limiting that structure to a
specific subset of structures, we will generally construe the term to cover all
known types of that structure that the patent disclosure supports”) (internal
citation and quotation makes omitted). Therefore, “processing circuitry”
need not refer to a single specific structure to avoid indefiniteness.
“processing circuitry configured to, during a brain activity decoder
configuration stage, . . . train, using a machine learning algorithm, the
processing circuitry” (claim 1)
Independent claim 1 recites an apparatus comprising, inter alia,
“processing circuitry configured to, during a brain activity decoder
configuration stage, . . . train, using a machine learning algorithm, the
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processing circuitry to decode cranial nerve activity patterns from brain
activity signals and classify the cranial nerve activity patterns to one of [a]
plurality of classes.” Appeal Br., Claims App. 1. Claims 1, 5–7, and 20
depend from claim 1. Id. at 1–3. According to the Examiner, “it is unclear
if the first processing circuitry is training itself or another processing
circuitry.” Non-Final Act. 4; Ans. 18.
Appellant responds that:
Paragraphs [0088]-[0091] and Fig. 10 disclose how the
processing circuitry is trained using an SLR algorithm and how
the trained/configured processing circuitry is thereafter used to
perform the claimed process for supporting brain function
enhancement of a prescribed brain function by enabling effective
learning. Therefore, one skilled in the art would know the metes
and bounds of the claimed invention when read in view of the
disclosure.
Appeal Br. 5.
While Appellant’s response is not entirely clear on the point, we
understand Appellant to be responding that the processing circuitry is
training itself rather than some other processing circuitry. We agree with
Appellant. When the term is read in the context of the rest of the claim and
in light of the Specification, it is reasonably clear that the processing
circuitry is training itself. The limitation requires the processing circuitry to
“train . . . the processing circuitry to decode cranial nerve activity patterns
from brain activity signals.” Claims App. 1 (emphasis added). “Decoding”
means determining what stimuli a subject has been exposed to based on
detected cranial nerve activity. Spec. ¶ 13. Decoding is performed by
“decoding unit 116,” which is part of processing device 102 (or processing
device 302 in a slightly modified embodiment). Id. ¶¶ 39, 42, Fig. 1. The
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Specification explains that decoding unit 116 is “trained” by exposing the
subject to a known stimulus, detecting the subject’s resulting brain “activity
pattern,” and associating that activity pattern with the known stimulus. Id.
¶ 54. Because decoding unit 116—which is part of processing device 102—
is being trained, and processing device 102 corresponds to the claimed
processing circuitry, it is evident that processing circuitry is, essentially,
training itself.
“said processing circuitry is trained based on a sparse logistic regression”
(claims 20, 21)
Claims 20 and 21 depend from claims 1 and 8, respectively, and
additionally recite, inter alia, “said processing circuitry is trained based on a
sparse logistic regression.” Appeal Br., Claims App. 3–4. The Examiner
determines that “said processing circuitry is trained based on a sparse
logistic regression” is unclear. Non-Final Act. 4. According to the
Examiner, “the disclosure provides no description of what basing the
training of the processing circuitry . . . on a sparse logistic regression
entails.” Non-Final 4.
Appellant refers to paragraphs 88–91 and Figure 10 of the
Specification to address the Examiner’s rejection. Appeal Br. 4–5. These
excerpts discuss the use of sparse logistic regression (SLR) in some detail.
The Specification also refers to other sources of information on SLR. Spec.
¶ 86. The Examiner does not explain why these resources would be
insufficient to clarify the invention’s use of SLR to one of ordinary skill in
the art.
Because we are not persuaded that the above claim terms are
indefinite, we do not sustain this rejection.
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Claims 1, 3, 5–8, 20, and 21: Rejected as
Failing to Comply with the Written-Description Requirement
Appellant does not separately argue the patentability of the claims
subject to this rejection. Appeal Br. 5–7. Accordingly, we select claim 1 as
representative, and decide the appeal of this rejection on the basis of claim 1
alone. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the Specification fails to provide
sufficient written-description support for the following limitations in
claim 1: (1) “train, using a machine learning algorithm, the processing
circuitry to decode cranial nerve activity patterns from activity signals and
classify the cranial nerve activity patterns to one of the plurality of classes”;
(2) the claimed “classes,” and “any description, algorithms, or calculations
for classifying the cranial nerve activity patterns to one of the plurality of
classes”; (3) “deriving from the received brain activity signal a current
cranial nerve activity pattern,”; (4) “calculating a value representing a degree
of possibility of said current cranial nerve pattern belonging to the target
class”; (5) “computing, based on said calculated value, in accordance with
degree of similarity of said current cranial nerve activity pattern to said
target class, a reward value corresponding to said degree of similarity,” and
(6) “altering the reward stimulus to represent a magnitude of said reward
value without revealing to the subject the stimulus event corresponding to
the target class.” Non-Final Act. 5–6. The Examiner also finds that
“processing circuitry” is “considered new matter as the original disclosure is
silent regarding this term.” Id. at 6.
Appellant first argues that the Examiner erred in concluding that
“processing circuitry” is new matter. Appeal Br. 6. Appellant relies on the
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Specification’s disclosure of processing device 102 in paragraph 35 and
Figure 1, and notes that processing device 102 “may be realized by a general
purpose computer and/or that ‘dedicated hardware may be used.’” Id.
(quoting Spec. ¶ 38). The Examiner responds that “‘processing circuitry’ is
new matter as the term ‘circuitry’ imports structure into the claims that was
not disclosed in the original disclosure.” Ans. 19.
We disagree with the Examiner that the Specification does not
disclose processing circuitry. As discussed above, there is no dispute that
“circuitry” refers to hardware. The Specification discloses processing
device 102 that may be a general purpose computer or application-specific
hardware. Spec. ¶ 38. Both of these options constitute hardware.
While we agree with Appellant that “processing circuitry” is
adequately described, we nonetheless sustain the Examiner’s rejection,
because Appellant has not shown error in the Examiner’s determinations
with respect to the other limitations listed above. Appellant asserts that the
Specification discloses: (1) what processing device 102 includes; (2) that
“decoding unit 116 is trained to decode nerve activity patterns using
machine learning”; (3) “the functionality performed by the determining unit
118, reward calculating unit 120, and presentation information generating
unit 112;” and (4) “the results of using the claimed invention.” Appeal Br.
4, 6. Appellant does not, however, associate these disclosures with the
specific limitations that the Examiner determined to be inadequately
described. For example, Appellant does not address the Examiner’s
determination that the Specification does not define “classes” and “is silent
regarding any description, algorithms, or calculations for classifying the
cranial nerve activity patterns to one of the plurality of classes.” Non-Final
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Act. 5. Therefore, we are not persuaded of Examiner error, and sustain this
rejection.
Claims 1, 3, 5–8, 20, and 21: Rejected as
Directed to Ineligible Subject Matter
Principles of Law
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), and reaffirmed in Alice Corporation
v. CLS Bank International, 573 U.S. 208 (2014). For the first Alice step
(Step 2A of the USPTO’s Patent Subject Matter Eligibility guidance, MPEP
§ 2106), we determine whether the claims at issue are directed to a patent-
ineligible concept such as an abstract idea, law of nature, or natural
phenomenon. Alice, 573 U.S. 208 (citing Mayo, 566 U.S. at 78–79). If so,
we advance to the second Alice step (Step 2B of the USPTO’s Patent Subject
Matter Eligibility guidance) where “we 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” of the otherwise patent-ineligible concept. Id. (quoting Mayo,
566 U.S. 78–79).
We also follow the USPTO’s additional guidance on applying Step
2A. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 The Revised Guidance
establishes a “two-prong inquiry” for determining whether a claim is

2 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf.
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directed to a judicial exception. Id. at 54. In prong one, we determine
whether the claim recites a judicial exception, such as a law of nature,
natural phenomenon, or abstract idea. Id. If so, we look to whether the
claim recites additional elements that integrate the judicial exception into a
practical application. Id. at 50. Thus, a claim is directed to a judicial
exception only if the claim recites a judicial exception and does not integrate
that exception into a practical application. Id. Relevant to this case, the
Revised Guidance instructs that an additional limitation that, inter alia,
“applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition” may integrate the judicial
exception into a practical application. Id. at 55.
If we determine that the judicial exception is not integrated into a
practical application, we proceed to Step 2B and determine whether the
claim adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional activity in the field, or,
alternatively, whether the claim simply appends well-understood, routine,
and conventional activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Id. at 56.
Analysis
Appellant does not appear to dispute the Examiner’s determination
that the claims recite a judicial exception. Appeal Br. 7–9. Rather,
Appellant disputes that the claims are directed to a judicial exception
(abstract idea), because they are instead “directed to supporting brain
function enhancement of a prescribed brain function by enabling effective
learning.” Id. at 8 (emphasis omitted).
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As noted above, the Revised Guidance recognizes that an additional
limitation that “applies or uses a judicial exception to effect a particular
treatment or prophylaxis for a disease or medical condition” integrates the
judicial exception into a practical application. Revised Guidance, 84 Fed.
Reg. at 55. The Revised Guidance relies in this regard on Vanda Pharms.
Inc. v. West-Ward Pharms. Int’l Ltd., 887 F.3d 1117, 1135 (Fed. Cir. 2018).
Id. at 55 n.26. In Vanda, the claims at issue involved a method of treating
persons with schizophrenia, where the method first required performing a
genetic test to determine the person’s ability to metabolize iloperidone and
other drugs (i.e., the patient’s “CYP2D6 metabolizer genotype”), and then
administering a particular dose of iloperidone based on the results of the test;
a lower dose of iloperidone is administered to patients with lower CYP2D6
activity comparing with those with normal CYP2D6 activity to avoid a
potentially harmful side effect of the drug. Vanda, 887 F.3d at 1121, 1134.
The court determined that the claims “are not directed to patent-ineligible
subject matter” because they included specific steps to treat a particular
disease. Id. at 1134. The court contrasted Vanda’s claims with those at
issue in Mayo, which, even though they recited administering a drug to a
patient, they did so only as a diagnostic method “based on the ‘relationships
between concentrations of certain metabolites in the blood and the likelihood
that a dosage of [the] drug will prove ineffective or cause harm.’” Id.
(quoting Mayo, 566 U.S. at 77). The court characterizes Mayo’s claims as
directed to the “entirely natural process” of the body’s metabolizing of the
drug. Id. (citing Mayo, 566 U.S. at 77).
In Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC,
918 F.3d 1338 (Fed. Cir. 2019), a case similar to Vanda, the patents at issue
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claimed a method of using a dietary supplement to “increase[] the anaerobic
working capacity of muscle and other tissue.” Id. at 1341 (internal citation
and alterations omitted). The court found that the claims require the
administration of a specific dosage of beta-alanine, a naturally occurring
substance, to a human subject, which causes the subject’s body to produce
greater levels of creatine than it would have otherwise, resulting in specific
physiological benefits for the subject when engaged in certain intensive
exercise. Id. at 1344. Thus, according to the court, the claims “require
specific steps be taken in order to bring about a change in a subject, altering
the subject’s natural state.” Id. at 1345. The court concluded that the claims
at issue were “treatment claims,” and therefore “not directed to ineligible
subject matter.” Id. at 1346–47.
The same is true in this case. Here, claim 1 requires, during a brain
activity decoder configuration stage, a subject to be presented with “a
plurality of stimulus events,” defined as “a perceptual stimulus which
activates portions of the subject’s brain.” Appeal Br., Claims App. 1.
Claim 1 further requires, during a neurofeedback stage for training the
subject, repeatedly exposing the subject to a reward stimulus that also
induces brain activity, until “a predetermined condition is satisfied.” Id.
Claim 8 contains similar limitations. Id. at 2–3. Thus, the claims require
specific steps (exposing the subject to various stimuli) to alter the subject’s
natural state (activation of portions of the subject’s brain), to bring about a
change in the subject (brain function enhancement of a prescribed brain
function). For example, the Specification discloses that the claimed method
can be used for relaxation training and treatment for brain damage. Spec.
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¶¶ 135–142. We conclude, therefore, that the claims are treatment claims
and not directed to patent ineligible subject matter.
CONCLUSION
In summary:
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 3, 5–8,
20, 21
112(b) Indefiniteness 1, 3, 5–8,
20, 21
1, 3, 5–8,
20, 21
112(a) Written Description 1, 3, 5–8,
20, 21

1, 3, 5–8,
20, 21
101 Eligibility 1, 3, 5–8,
20, 21
Overall
Outcome:
  1, 3, 5–8,
20, 21

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