Boris P. Kovatchev

Patent Trials and Appeals Board

Aug 15, 2019

12159891 - (D) (P.T.A.B. Aug. 15, 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.
12/159,891 09/10/2008 Boris P. Kovatchev 070239.000015 3872
159093 7590 08/15/2019
Vorys, Sater, Seymour and Pease LLP
(Dexcom)
1909 K Street N.W.
9th Floor
Washington, DC 20006
EXAMINER
RIGGS II, LARRY D
ART UNIT PAPER NUMBER
4181
NOTIFICATION DATE DELIVERY MODE
08/15/2019 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):
patents@dexcom.com
patlaw@vorys.com
vmdeluca@vorys.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BORIS P. KOVATCHEV
____________

Appeal 2019-002422
Application 12/159,8911
Technology Center 1600
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
RICHARD J. SMITH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 30–89, 91, 92,
and 96–101 (Final Act.2 2). Examiner entered a rejection under 35 U.S.C.
§ 101. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies “University of Virginia Patent Foundation of
Charlottesville, Virginia” as the real party in interest (Appellant’s November
14, 2017 Appeal Brief (App. Br.) 1).
2 Examiner’s June 14, 2017 Final Office Action.
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STATEMENT OF THE CASE
Appellant’s disclosure relates “to the art of glucose monitoring, and
more particularly to hypo- and hyper-glycemic risk assessment” (Spec.3
1:21–22). Appellant’s claim 30, is representative and reproduced below:
30. A system for determining blood glucose variability of a
patient said system comprising:
an acquisition module acquiring a plurality of blood
glucose data points representing glucose concentration levels in
blood of said patient; and
a processor programmed to:
transform the plurality of blood glucose data points
from a blood glucose range to a transformed range according to
a transforming function,
calculate a risk value for each of a plurality of the
transformed plurality of blood glucose data points,
calculate a plurality of risk ranges each based on a
plurality of the calculated risk values within a period of time
with a predetermined duration, and
calculate at least one composite risk range based on a
plurality of the calculated risk ranges.
(Claims App’x4 16.)

Claims 30–89, 91, 92, and 96–101 stand rejected under 35 U.S.C.
§ 101.

3 Appellant’s July 2, 2008 Specification.
4 Appellant’s Appendix of Claims on Appeal, filed with Appellants’ March
3, 2018 Response to Notification of Non-Compliant Appeal Brief.
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ISSUE
Does the preponderance of evidence of record support Examiner’s
finding that Appellant’s claimed invention is directed to patent ineligible
subject matter?
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. 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 thus 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, 69 (1972)). Concepts
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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 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Gottschalk, 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 Gottschalk and Parker); see, e.g., id. at 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 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
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ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) (“Revised Guidance”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
See Revised Guidance, 84 Fed. Reg. at 54–55. 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:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, 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.
See Revised Guidance, 84 Fed. Reg. at 51.
ANALYSIS
Applying the Revised Guidance to the facts on this record, we find
that Appellant’s claims are directed to patent-ineligible subject matter.
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
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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.
On this record, Examiner finds that Appellant’s claims are “directed
to an abstract idea of mathematical relationships” (Ans.5 3). We agree. The
system of Appellant’s claim 30 comprises an acquisition module that
acquires data points and a processor that mathematically manipulates the
acquired data points to generate additional data (see Claims App’x 16).
These limitations simply require the mathematical manipulation of data,
which, without more, is an abstract idea. See Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (“[A]n
invention directed to collection, manipulation, and display of data was an
abstract process”); see also Digitech Image Techs., LLC. v. Elecs. For
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional
limitations, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
eligible”); Ans. 4–5.
Having determined that Appellant’s claim 1 is directed to a judicial
exception, the Revised Guidance directs us to next consider whether the
claims integrate the judicial exception into a practical application. On this
record, Appellant’s claimed system does not integrate the judicial exception
into a practical application (see generally Ans. 5).

5 Examiner’s November 27, 2018 Answer.
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Appellant’s claimed system comprises an acquisition module and a
processor (Claims App’x 16). According to Appellant’s claim 30,
Appellant’s “acquisition module acquire[s] a plurality of blood glucose data
points representing glucose concentration levels in blood of [a] patient” (id.).
The collection of data is an abstract process. Intellectual Ventures, 850 F.3d
at 1340.
The processor of Appellant’s claim 30 is programmed to: (1)
“transform the plurality of blood glucose data points from a blood glucose
range to a transformed range according to a transforming function,” (2)
“calculate a risk value for each of a plurality of the transformed plurality of
blood glucose data points,” (3) “calculate a plurality of risk ranges each
based on a plummy of the calculated risk values within a period of time with
a predetermined duration,” and (4) “calculate at least one composite risk
range based on a plurality of the calculated risk ranges” (Claims App’x 16).
Thus, each of the four steps performed by the processor of Appellant’s claim
30 manipulates data, which is an abstract process. See Intellectual Ventures,
850 F.3d at 1340.
For the foregoing reasons, we find that Appellant’s claim 30 is similar
to the claims at issue in Mayo, which involved acquiring patient information,
but did not require any particular use of the acquired information. See
Mayo, 566 U.S. 66, 79; cf. Vanda Pharms. Inc. v. West-Ward Pharms. Int’l
Ltd., 887 F.3d 1117, 1135 (Fed. Cir. 2018) (The claims at issue in Vanda
were not directed to an abstract idea, under Alice step one, because they
involved using the acquired data to direct a treatment program).
Therefore, on this record, we conclude that the judicial exception set
forth in Appellant’s claim 30 is not integrated into a practical application.
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Although Appellant contends that the “risk range” calculated by Appellant’s
claim 30 “is indicative of a physical, biological effect on a subject’s
metabolic state,” Appellant’s claim 30 does not integrate this calculated
result into a practical application (see App. Br. 11; cf. Claims App’x 16).
Therefore, we are not persuaded by Appellant’s contention that Appellant’s
claim 30 “does not constitute an ‘abstract idea’ such as a legal obligation, a
financial risk, or a mathematical relationship, which have been held to be
examples of ‘abstract ideas’” (App. Br. 11). For the same reason, we are not
persuaded by Appellant’s contention that “the claimed invention is not
directed to a ‘mathematical relationship’ but instead pertains to improvement
in management and control of diabetes mellitus in patient” (id. at 12; see
also id. at 14 (Appellant’s “claimed subject matter considered as a whole is
clearly directed to patent-eligible improvements in enabling diabetic patients
to manage their condition by maintaining more accurate control over
variability in their blood glucose levels throughout the day”)).
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
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 Revised Guidance, 84 Fed. Reg. at 51. In this
regard, we note that Appellant’s method comprises an acquisition module
and a processor (Claims App’x 16).
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With regard to Appellant’s acquisition module, Appellant’s
Specification discloses that a
glucose meter is common in the industry and includes
essentially any device that can function as a BG acquisition
mechanism. The BG meter or acquisition mechanism, device,
tool or system includes various conventional methods directed
towards drawing a blood sample (e.g. by fingerprick) for each
test, and a determination of the glucose level using an
instrument that reads glucose concentrations by
electromechanical methods.
(Spec. 33:16–20; see Ans. 6 (Examiner finds that Appellant’s Specification
discloses that “a glucose meter is common in the industry and includes
essentially any device that can function as a [blood glucose] acquisition
mechanism”)). Thus, we find that Appellant’s acquisition module simply
appends a well-understood, routine, conventional activity previously known
to the industry, which is specified at a high level of generality, to the judicial
exception on this record.
With regard to Appellant’s processor, Appellant’s Specification
discloses:
[T]he invention may be implemented using hardware, software
or a combination thereof and may be implemented in one or
more computer systems or other processing systems, such as a
personal digital assistance (PDAs), or directly in blood glucose
self-monitoring devices (e.g. SMBG memory meters) equipped
with adequate memory and processing capabilities. In an
example embodiment, the invention may be implemented in
software running on a general purpose computer.
(Spec. 31:1–6; see Ans. 6 (Examiner finds that Appellant’s Specification
discloses that Appellant’s “invention may be implemented in software
running on a general purpose computer”).) Thus, we find that Appellant’s
processor simply appends a well-understood, routine, conventional activity
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previously known to the industry, which is specified at a high level of
generality, to the judicial exception on this record.
We are not persuaded by Appellant’s contention that Appellant’s
claim 30
improve[s] the functionality of a processing device . . . by
enabling such device to provide an established new and
unobvious composite risk range indicative of blood glucose
variability to a user based on blood glucose data obtained from
the patient, thereby enabling the patient to avoid the occurrence
of a potential dangerous hypoglycemic event. This new
technological capability is not possible in conventional devices
and thus provides a clear improvement in the functionality of
the device vis-à-vis the entire purpose for such devices: [T]o
improve and maintain the health of users of the device.
(Reply Br. 3; see also App. Br. 11 (Appellant contends that Appellant’s
claim 30 “embod[ies] the concepts of the invention to a new and useful end
and thus, remain[s] eligible for patent protection, even if the concept of a
risk value, in and of itself, can be characterized as an ‘abstract idea’”).)
Notwithstanding Appellant’s contention to the contrary, the evidence
of record supports a finding that a glucose meter was a known acquisition
module for blood glucose data points representing glucose concentration
levels in blood of a patient and a generic processor was also well-known to
those of ordinary skill in this industry. The remaining elements of
Appellant’s claimed invention relate to mental processes or mathematical
algorithms that do no more than employ mathematical algorithms to
manipulate data to generate additional data, which do not improve the
functionality of the device itself. Simply stated, Appellant’s claimed system
does not transform matter; to the contrary, Appellant’s system, at best,
transforms information, i.e. data. See Digitech, 758 F.3d at 1351 (“Without
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additional limitations, a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible”); see also Gottschalk, 409 U.S. at 71–72 (holding that a
computer based algorithm that merely transforms data from one form to
another is not patent-eligible); cf. McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (holding that the claim
in that case is directed to a technological improvement over existing 3-D
animation techniques and, therefore, not directed to an abstract idea);
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1351 (Fed. Cir. 2016) (holding that the ‘606 patent is claiming a
technology-based solution (not an abstract idea based solution) to filter
content on the Internet that overcomes existing problems with other Internet
filtering systems).
Therefore, we find that when the elements of Appellant’s claim 30 are
considered individually and in combination they do not provide an inventive
concept, such as a specific limitation beyond the judicial exception that is
not well-understood, routine, and conventional in the field. Instead, the
additional elements of Appellant’s claim 30 simply append well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. For the foregoing
reasons, we are not persuaded by Appellant’s contention that the elements of
Appellant’s claim 30 were not considered individually and in combination
(see App. Br. 13 (“[t]he analysis in the rejection is incorrect because it . . .
[fails to] determin[e] what the claimed subject matter as a whole is directed
to”); see also id. at 12 (“[t]he rejection is in error because it does not
properly analyze the claimed subject matter as a whole in its entirety to
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determine what it is that the applicant has invented and seeks to patent”); see
Reply Br.6 2).
We are not persuaded by Appellant’s contention that “the record
reflects that the pending claims are patentable under 35 U.S.C. [§§] 102 and
103, or in other words the claimed invention is novel and unobvious from
the prior art, which is the opposite of being ‘generic,’ ‘conventional,’
‘common,’ ‘well-known’ or ‘routine’” (Reply Br. 3–4). As the Flook Court
explained, “the novelty of the mathematical algorithm is not a determining
factor at all,” but is “treated as though it were a familiar part of the prior
art.” Flook, 437 U.S. at 591–92. Appellant has given us no reason to depart
from this guiding principle. As the Court in Flook explained, “[v]ery
simply, our holding today is that a claim for an improved method of
calculation, even when tied to a specific end use, is unpatentable subject
matter under § 101.” Id. at 595 n.18. Thus, Appellant’s additional elements,
even if novel when combined, do not make the claim eligible for a patent
under § 101.
Further, we note that the Supreme Court cautioned that even though
the § 101 patent-eligibility inquiry and prior art inquiries might sometimes
overlap, “to shift the patent-eligibility inquiry entirely to these later sections
risks creating significantly greater legal uncertainty, while assuming that
those sections can do work that they are not equipped to do.” Mayo, 566
U.S. at 90; see also Diehr, 450 U.S. at 188–89 (“[t]he ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101

6 Appellant’s January 28, 2019 Reply Brief.
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categories of possibly patentable subject matter.”). Putting this into practice,
the Federal Circuit has held that “a claim for a new abstract idea is still an
abstract idea. The search for a § 101 inventive concept is thus distinct from
demonstrating § 102 novelty.” Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1151 (Fed. Cir. 2016) (holding claims to a method for
converting a hardware-independent user description of a logic circuit are
ineligible because the use of assignment conditions as an intermediate step
in the translation process is an aid to a mental process and does not change
the nature of the claims to being directed to more than an abstract idea).
For the foregoing reasons, we find Appellant’s claim 30 to represent
patent ineligible subject matter.
CONCLUSION OF LAW
The preponderance of evidence of record supports Examiner’s finding
that Appellant’s claimed invention is directed to patent ineligible subject
matter. The rejection of claim 30 under 35 U.S.C. § 101 is affirmed. Claims
31–89, 91, 92, and 96–101 are not separately argued and fall with claim 30.

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).

AFFIRMED