Alexander F. CastellanosDownload PDFPatent Trials and Appeals BoardSep 6, 201913598371 - (D) (P.T.A.B. Sep. 6, 2019) Copy Citation 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. 13/598,371 08/29/2012 ALEXANDER F. CASTELLANOS 60058-0022 7468 29989 7590 09/06/2019 HICKMAN PALERMO BECKER BINGHAM LLP 1 ALMADEN BOULEVARD FLOOR 12 SAN JOSE, CA 95113 EXAMINER RIGGS II, LARRY D ART UNIT PAPER NUMBER 4181 NOTIFICATION DATE DELIVERY MODE 09/06/2019 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): usdocket@h35g.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEXANDER F. CASTELLANOS ____________ Appeal 2018-004736 Application 13/598,371 Technology Center 1600 ____________ Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1,2 under 35 U.S.C. § 134(a) involving claims to a mobile measurement device. The Examiner rejected the claims as reciting non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and enter a new ground of rejection. 1 Appellant identifies Alexander F. Castellanos as the real party in interest (see App. Br. 1). 2 We have considered and herein refer to the Specification of Aug. 29, 2012 (“Spec.”); Final Office Action of June 27, 2017 (“Final Act.”); Appeal Brief of Oct. 12, 2017 (“App. Br.”); Examiner’s Answer of Feb. 9, 2018 (“Ans.”); and Reply Brief of Apr. 4, 2018 (“Reply Br.”). Appeal 2018-004736 Application 13/598,371 2 Statement of the Case Background “In humans, negative vascular condition has been associated with or is known to be symptomatic with a variety of serious diseases including coronary artery disease and diabetes” (Spec. ¶ 4). “Vascular function information also may be useful in early recognition of sepsis, hypertension, hypotension, or respiratory dysfunction. Accurate measurements of the elasticity, thickness, and mechanical performance of blood vessels in conducting blood flow may permit better evaluation of diseases that are associated with negative vascular health” (id.). The Claims Claims 1, 2, 6, 9–11, 20–22, 26, 29–32, and 34–43 are on appeal. Independent claims 1 and 41 representative and read as follows: 1. A mobile measurement device comprising: a computing device comprising non-transitory storage media storing instructions; one or more first sensors that are coupled to the computing device using one or more corresponding compatible digital interfaces and are configured for temporary attachment to peripheral artery locations of a human body; wherein the first sensors comprise at least one ultrasound sensor configured to acoustically measure blood flow in a blood vessel and to cooperate with the stored instructions to perform bidirectional waveform Doppler ultrasound analysis and determine the elasticity of vascular walls of the blood vessel from the bidirectional waveform Doppler ultrasound analysis, provide output waveform data representing the acoustic measurements of blood flow in the blood vessel, and provide vascular structure or performance metrics based on the bidirectional vascular waveform Doppler ultrasound analysis; wherein the instructions comprise a plurality of algorithms that are configured to determine recommendations of responsive treatment based upon, at least in part, parameters Appeal 2018-004736 Application 13/598,371 3 determined using the measured blood flow and the bidirectional waveform Doppler ultrasound analysis when executed by the computing device cause the computing device to perform determining: a first parameter comprising vascular function information comprising one or more of: the output waveform data, the elasticity of vascular walls, thickness of vascular walls, an indication of a number of elastic responses of vascular walls, and an indication of plaque formation on vascular walls; a second parameter comprising one or more of blood pressure, pulse, respiration, oxygenation, and nitric oxide; an increase in severity, via a first algorithm, of the vascular function information, a decrease in oxygenation, an increase in nitric oxide, and an elevation of blood pressure, pulse and respiration; physiological analysis of the first and second parameters comprising correlation of the first and second parameters; a severe increase, via a second algorithm and based on the increase in severity detected via the first algorithm, in blood pressure, respiration, pulse, temperature or vascular waveform; in response to detecting severe increases in blood pressure, respiration, pulse, temperature or vascular waveform, recommendations, based on the first and second parameters, for actions that an individual or healthcare provider should take. 41. A method of assessing physiological readiness for an athletic event, comprising: storing, in a mobile monitoring device comprising non- transitory storage media, baseline parameters and goals for a plurality of quantities in the non-transitory storage media, wherein the quantities comprise a metric of vascular condition and a nitric oxide value; during a training period, monitoring the plurality of quantities using the mobile monitoring device, wherein Appeal 2018-004736 Application 13/598,371 4 monitoring the metric of vascular condition comprises bidirectional waveform Doppler ultrasound analysis; comparing the monitored plurality of quantities with stored goals; determining that training goals for the training period have been met. The Rejection The Examiner rejected claims 1, 2, 6, 9–11, 20–22, 26, 29–32, and 34–43 under 35 U.S.C. § 101 as directed to an abstract idea of mathematical relationships (Final Act. 2–8). The Examiner finds “the methods of these claims are not directed to an improvement in computer or vascular device technology, but simply to receive, analyze, and reporting information, i.e., mathematical relationships, using the tangible components of such technologies only in their generic ways” (Ans. 10). Appellant contends: While the current claims may involve the idea of “mathematical relationships”, the claims are not directed to the idea and certainly do not recite it. The term “mathematical relationships” is not a recitation that appears in any specific claim limitations. Furthermore, the claims do not recite mathematical formulas within the body of the claims. (App. Br. 6). Appellant contends the Examiner’s analysis fails to address the claimed “improvement, which includes but is not limited to, for example, an integrated computing device configured to obtain and analyze a combination of bidirectional Doppler ultrasound measurements of peripheral arteries and other biomedical parameters in series of health assessments to determine declining or improving health” (App. Br. 7). Appeal 2018-004736 Application 13/598,371 5 Principles of Law 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 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. See, 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 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and therefore patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Appeal 2018-004736 Application 13/598,371 6 Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws,[] and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook), 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). 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 ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citations omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alteration in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2018-004736 Application 13/598,371 7 The United States Patent and Trademark Office published revised guidance on the application of 35 U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”).3 Under the Guidance, in determining what concept the claim is “directed to,” 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) (Guidance Step 2A, Prong 1); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)) (Guidance Step 2A, Prong 2). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim contains an “‘inventive concept’ sufficient to ‘transform’” the claimed judicial exception into a patent-eligible application of the judicial exception. Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 82). In so doing, we thus consider whether the claim: (3) adds a specific limitation beyond the judicial exception that are not “well-understood, routine and conventional in the field” (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (Guidance Step 2B). See Guidance, 84 Fed. Reg. at 54–56. 3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (January 7, 2019). Appeal 2018-004736 Application 13/598,371 8 Analysis Applying the Revised Guidance to the facts on this record, we find that Appellant’s claims 1, 2, 6, 9–11, 20–22, 26, 29–32, and 34–43 are directed to patent-ineligible subject matter. Because the same issues are present in each of the claims, we focus our consideration on representative claim 1. The same analysis applied below to claim 1 also applies to the other rejected claims. A. Guidance Step 2A, Prong 1 The Revised Guidance instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The Revised Guidance identifies three judicially-excepted groupings identified by the courts as abstract ideas: (1) mathematical concepts, (2) certain methods of organizing human behavior such as fundamental economic practices, and (3) mental processes. The Examiner finds that “[r]egarding claim 1, the steps of performing ultrasound analysis, determining elasticity from the analysis, provides vascular structure or performance metrics based on the analysis, and physiological analysis of correlating first and second parameters are considered mathematical relationships” (Ans. 5–6). We agree with the Examiner that claim 1 recites patent-ineligible subject matter. More specifically, claim 1, reproduced above, recites “a mobile measurement device” that comprises “a computing device”; “sensors”; and instructions that “comprise a plurality of algorithms that are configured to determine recommendations of responsive treatment” (App. Br. 23). The instructions use the sensors to determine two parameters and then determine “an increase in severity, via a first algorithm” and then Appeal 2018-004736 Application 13/598,371 9 performs a “correlation of the first and second parameters” to determine “a severe increase, via a second algorithm,” and makes a recommendation based on these parameters (App. Br. 23–24). Under the broadest reasonable interpretation, the limitations regarding the first and second algorithms, as well as the correlation of the first and second parameters, are drawn to determining steps that recite mathematical concepts. The claimed invention is described in the Specification as “configured to process information from the environment and human physiology and anatomy.” (Spec. ¶ 14). The Specification provides no details or discussion of the algorithms used to determine recommendations, lacking a description of the algorithms in a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure to determine what constitutes the algorithm (see Spec. generally). However, both algorithms and a correlation of first and second parameters, as recited in the claims, are operations used to process the sensor information, and are therefore fundamentally mathematical in nature. To the extent that these are not mathematical, they are mental steps. The Federal Circuit has “recognize[d] that defining the precise abstract idea of patent claims in many cases is far from a ‘straightforward’ exercise.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150 (Fed. Cir. 2016). However, “we continue to ‘treat[] analyzing information by steps people [could] go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.’” Id. at 1146–47. The Federal Circuit has recognized that “a claim for a new abstract idea is still an abstract idea.” Id. at 1151. It is well established that mental processes are abstract ideas. Appeal 2018-004736 Application 13/598,371 10 CyberSource instructs that “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373, 1375 (Fed. Cir. 2011) (“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.”). And, “if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” Parker v. Flook, 437 U.S. 584, 595 (1978). Here, the claims recite steps for receiving and/or analyzing sensor information, which people could go through in their minds, or by mathematical algorithms, which is a mental process within the abstract-idea category. Accordingly, we conclude that the steps of claim 1 recite the judicial exceptions of mathematical concepts and mental processes. B. Guidance Step 2A, Prong 2 Having determined that the claims are directed to a judicial exception, the Revised Guidance directs us to next consider whether the claims integrate the judicial exception into a practical application. Guidance Step 2A, Prong 2. “[I]ntegration into a practical application” requires that the claim recite an additional element or a combination of elements, that when considered individually or in combination, “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance at 54. Here, there is no practical integration of the abstract idea. Other than the limitations directed to the abstract idea, discussed above, the invention is Appeal 2018-004736 Application 13/598,371 11 claimed at a very high level of generality and relies upon standard computing devices (see Spec. ¶ 15) and standard sensors (see Spec. ¶ 16). We appreciate that simply because “a mathematical equation is required to complete the claimed method and system does not doom the claims to abstraction.” Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017). However, in Thales, the “claims specify a particular configuration of inertial sensors and a particular method of using the raw data . . . Far from claiming the equations themselves, the claims seek to protect only the application of physics to the unconventional configuration of sensors as disclosed.” Id. Here, the claims do not recite anything unconventional regarding the computing device, the sensor or sensor positions that integrates the abstract idea into a practical application that is more than the abstract idea itself. Instead, the claims recite conventional components that are used to apply the abstract algorithms. We are unpersuaded by Appellant’s reliance on Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (see App. Br. 7). Enfish explains that “the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, 822 F.3d at 1335–36. Applied to claim 1, this method does not teach a technical improvement in a computer processor, but rather uses the computer as a tool to perform data analysis (see claim 1, Spec. ¶ 15 “the computing device 202 comprises any of: a smartphone; a tablet computer; a laptop computer or other personal computer; a workstation; a watch computer; a ring-mounted Appeal 2018-004736 Application 13/598,371 12 computer; an active steering wheel of a motor vehicle; a hat-mounted computer; a helmet-mounted computer; an eyewear-mounted computer.”) We are also unpersuaded by Appellant’s comparison to the computer animation in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) (see App. Br. 9). Appellant contends that like McRO, “the current claims transform the traditionally subjective process of measuring health metrics and determining a recommendation based on those health metrics, which is traditionally performed by human physicians, into a mathematically automated process executed on computers” (App. Br. 9). In McRO, the method integrated specific process steps of phoneme analysis to obtain facial expression control of animated characters, thereby integrating the improvement into the animation process. See McRO, 837 F.3d at 1315. McRO was a computer based process that improves operations on the computer animation process itself, while claim 1 uses naturally occurring data composed of physiological measurements from conventional sensors in an algorithm, a type of mathematical operation, to process the data using conventional computers (see Spec. ¶¶ 15–16). Unlike McRO, the computer in claim 1 is simply used as a tool to perform the mathematical operation, and the claim does not improve the computer itself. Claim 1 does not integrate the process steps into a practical improvement because the final step simply provides data, generated by the mathematical algorithm based on naturally occurring information, for further consideration. Therefore, contrary to McRO, where the ultimate product produced was a synchronized computer animation that was itself the transformative use, the result of the presently claimed method is a drawn to a mathematical transformation of naturally occurring information without being directed to any particular use Appeal 2018-004736 Application 13/598,371 13 of the mathematically transformed data other than providing “recommendations, based on the first and second parameters, for actions that an individual or healthcare provider should take” (Claim 1). See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“[M]erely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes.”) We need not dispute Appellant’s argument that the claims may have some elements that are slightly more specific than those in Electric Power (see App. Br. 9). However, any advance the instant claims “purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions” (id. at 1354). That is, Appellant does not identify any inventive sensors, computers, or other technology, but solely relies upon undisclosed algorithms as the inventive concept. We also are unpersuaded by Appellant’s arguments distinguishing this fact pattern from that in SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950, 951–52, 955–56 (Fed. Cir. 2014) (nonprecedential) (see App. Br. 10–11).4 We find the instant claims similar to those in SmartGene, where the Federal Circuit held that claims directed to “comparing new and stored information and using rules to identify medical options” did not 4 We note that according to Rule 32.1(c) of the Federal Circuit’s rules of practice (2018) “Parties are not prohibited or restricted from citing nonprecedential dispositions issued after January 1, 2007.” Rule 32.1(d) states the court “may look to a nonprecedential disposition for guidance or persuasive reasoning.” We address Smartgene as both guidance and persuasive reasoning regarding the instant claims. Appeal 2018-004736 Application 13/598,371 14 satisfy Alice step one. See SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950, 951–52, 955–56 (Fed. Cir. 2014) (nonprecedential). As in Smartgene, the instantly claimed steps do not rely on an inventive device or technique for obtaining or displaying medical information, but rather recite undefined algorithms for mathematically manipulating naturally occurring data. See SmartGene, 555 F. App’x. at 954 (holding claims were patent ineligible because they did “no more than call on a ‘computing device,’ with basic functionality for comparing stored and input data and rules, to do what doctors do routinely.”). We are unpersuaded by Appellant’s statement that “In re TLI Comm. LLC is non-analogous to the current case because the current claims are directed to an improvement to computer processing and network resource usage” (App. Br. 11). In TLI, the claimed method for recording and administering digital images did not integrate the data analysis into a real world solution but rather simply stored the data on a server. In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 610 (Fed. Cir. 2016). Moreover, Appellant does not identify any specific details of any improvement to either computer processor or to network resource usage. Therefore, on this record, we conclude that the ineligible subject matter in Appellant’s claim 1 is not integrated into a practical application. C. Guidance Step 2B Having determined that the judicial exception is not integrated into a practical application, the Revised Guidance requires us to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept, such as a specific limitation beyond the judicial exception that is not well-understood, routine, conventional in the Appeal 2018-004736 Application 13/598,371 15 field, or simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 84 Fed. Reg. 51. Appellant identifies a number of limitations in the claim that “are either not directed to ‘mathematical relationships’ at all, or have elements that are far more specific than ‘mathematical relationships’” (App. Br. 13). Appellant asserts the current claims demonstrate an inventive concept that harnesses the technical features of a health monitoring devices and sensors by integrating various health metric measurement features into a single system. As previously mentioned, conventional methods of evaluating a variety of health metrics often required the use of numerous devices, often from different manufacturers, that contained different and incompatible programming. (App. Br. 16); citing Bascom Global Internet Services, Inc. v. AT&T Mobility LLC et al., 827 F. 3d 1341 (Fed. Cir. 2016). Appellant contends the “current claims improve upon the existing devices, systems, and methods by decreasing the use of processing resources, decreasing network bandwidth, and decreasing the use of computer memory and storage” (App. Br. 16). Appellant also contends “the limitations themselves provide details for specific implementation. Limitations, such as those set forth [in the claims], that tie the claims to a specific practical application are exactly the types of limitations that the courts have held satisfy the requirements of § 101” (App. Br. 20). We are not persuaded by Appellant’s arguments. There is nothing in the Specification indicating that any steps or components recited in the Appeal 2018-004736 Application 13/598,371 16 claims are not generic or conventional. The methods recited in the claims may be implemented by conventional computing devices (see Spec. ¶ 15). The Specification explains that a “healthcare provider may use a conventional Doppler vascular sensor” (Spec. ¶ 23). Appellant points to no additional steps that could not be performed without using a generic computer. The use of a generic computer to perform generic computer functions that are “well-understood, routine, conventional activit[ies]” previously known in the industry is not enough to transform the abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. We find that Appellant’s claims do not require anything other than the use of conventional and well-understood techniques and equipment to gather and process data according to the recited judicial exception. Accordingly, the preponderance of evidence of record supports the Examiner’s finding that Appellant’s claimed invention is directed to patent-ineligible subject matter. The rejection of the claims under 35 U.S.C. § 101 is affirmed. New Grounds of Rejection Under the provisions of 37 C.F.R. § 41.50(b), we enter the following new grounds of rejection. Claims 1, 2, 6, 9–11, 20–22, 26, 29–32, and 34–43 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. The issue with respect to this rejection is: Does the evidence of record support the conclusion that the terms “algorithms” or “metrics” in independent claims 1, 21, and 41 lack descriptive support? Appeal 2018-004736 Application 13/598,371 17 Findings of Fact 1. The Specification teaches: vascular function logic 210 encoded with instructions which when executed perform determining and storing vascular function information 211 and one or more of: values of metrics or parameters 212; physiological analysis 214 of the parameters and the vascular function information; recommendations 216 for actions that an individual or healthcare provider should take in response to the recommendations or parameters. (Spec. ¶ 14). 2. The Specification teaches: each algorithm receives as an input at least one element of digital vascular waveform data. Thus, the approaches herein can use vascular analysis as a contributing parameter in determining a resulting recommendation. Further, the integration of vascular analysis data means that a healthcare provider can correlate the other parameter values to the vascular data to result in a better assessment of the overall health of the individual, or to provide a better clinical judgment of responsive treatment that should be considered. (Spec. ¶ 32). 3. The Specification teaches a clinician may observe that a subject individual has elevated body temperature arising, for example, from heat exhaustion. With the availability of the vascular analysis data for the individual in addition to body temperature data, the clinician may be able to observe the effect of heat exhaustion on the vascular system. Further, the accumulation of data values from all other parameters may help explain anomalies that are seen in the waveform reflecting the vascular analysis. The combination of the vascular analysis data with other parameter values therefore permits a better global assessment of the individual and a better explanation of the individual’s vascular response. (Spec. ¶ 36). Appeal 2018-004736 Application 13/598,371 18 Principles of Law To satisfy the written description requirement, “the [original] specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. The claimed invention need not be recited in haec verba in the original specification in order to satisfy the written description requirement. Id. at 1352. Analysis While we appreciate that the claims do not use “means-plus-function” language, that does not insulate the claims from being required to satisfy the written description requirement. In the context of algorithms, the court has determined that the specification can express the algorithm “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted). Simply disclosing software, however, “without providing some detail about the means to accomplish the function[,] is not enough.” Id. at 1340–41 (citation omitted). Our review of the Specification finds no mathematical formulas, prose, flow charts or other disclosure that provides descriptive support for “a plurality of algorithms that are configured to determine recommendations of Appeal 2018-004736 Application 13/598,371 19 responsive treatment” as recited by claim 1, or even for “assessing physiological readiness for an athletic event” as recited in claim 41 (FF 1–3). For neither claim does the Specification provide any disclosure as to how the algorithms or assessing actually operate in a way that would allow an ordinary artisan to recognize whether any other approach falls within the scope of the claims. Disclosure of the algorithm is necessary “[b]ecause general purpose computers can be programmed to perform very different tasks in very different ways.” Finisar, 523 F.3d at 1341. Without disclosing any corresponding structure, “one of skill simply cannot perceive the bounds of the invention.” Id.. Thus, there is no evidence of possession of the algorithms required by the claims. Indeed, Appellant considers they have made the “inventive step to recognize that combining Doppler vascular information, such as elasticity of vascular walls, with determinations of other physiological parameters, under the control of programmed algorithms, can yield better output recommendations” (Reply Br. 3). Therefore, Appellant cannot rely upon the prior art to provide descriptive support for the algorithms but must, instead, provide possession by disclosure in the Specification. See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008) (The written description of the Specification must at least disclose the algorithm that transforms the general purpose microprocessor to a special purpose computer programmed to perform the disclosed algorithm). We, therefore, conclude that the claims fail to satisfy the written description requirement. Appeal 2018-004736 Application 13/598,371 20 SUMMARY We affirm the rejection of claims 1, 2, 6, 9–11, 20–22, 26, 29–32, and 34–43 under 35 U.S.C. § 101. We enter a new ground of rejection of claims 1, 2, 6, 9–11, 20–22, 26, 29–32, and 34–43 under 35 U.S.C. § 112(a). We enter a new ground pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the Appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the prosecution will be remanded to the Examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the Examiner, overcomes the new ground of rejection designated in the decision. Should the Examiner reject the claims, Appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Appeal 2018-004736 Application 13/598,371 21 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation