Alexander F. Castellanos

Patent Trials and Appeals Board

Sep 6, 2019

13598371 - (D) (P.T.A.B. Sep. 6, 2019)

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)