Christopher Wybo et al.Download PDFPatent Trials and Appeals BoardJul 17, 201913965457 - (D) (P.T.A.B. Jul. 17, 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. 13/965,457 08/13/2013 Christopher Wybo ISS0127PUS/ MED5075USNP 7245 159197 7590 07/17/2019 Quinn IP / J&J 21500 Haggerty Rd, Ste 300 Northville, MI 48167 EXAMINER WARSI, YASMEEN S ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 07/17/2019 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): patentadmin@quinniplaw.com usdocketing@quinniplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHRISTOPHER WYBO, DARREN SCARFE, and AASHISH SHAH ____________________ Appeal 2018-007237 Application 13/965,457 Technology Center 3700 ____________________ Before MICHAEL L. HOELTER, JAMES P. CALVE, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Decision rejecting claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2018-007237 Application 13/965,457 2 CLAIMED SUBJECT MATTER Claims 1, 10, and 18 are independent. Claims 2–9, 11–17, and 19 depend from claim 1, 10, or 18. Claim 1 is reproduced below: 1. A neural monitoring system for detecting an artificially- induced mechanical response of a muscle to an electrical stimulus provided within an intracorporeal treatment area of a human subject at a stimulation frequency, the intracorporeal treatment area including a nerve that innervates the muscle, the neural monitoring system comprising: a non-invasive mechanical sensor configured to be placed in mechanical communication with the muscle and to generate a mechanomyography output signal corresponding to a sensed mechanical movement of the muscle; and a processor in communication with the mechanical sensor and configured to: receive the mechanomyography output signal from the mechanical sensor; determine a frequency component of the mechanomyography output signal, wherein the frequency component has a peak magnitude relative to adjacent frequencies; and provide an indication of an artificially-induced mechanical muscle response to a user if the determined frequency component is either equal to, or an integer multiple of the stimulation frequency. REJECTIONS 1. Claims 1–19 are rejected under 35 U.S.C. § 101, as being directed to ineligible subject matter. 2. Claims 1, 3, 4, 10, 12, 13, and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Bartol (US 2011/0237974 A1, published Sept. 29, 2011) and McLeod (US 2011/0196262 A1, published Aug. 11, 2011). Appeal 2018-007237 Application 13/965,457 3 3. Claims 2 and 11 are rejected under 35 U.S.C. § 103 as being unpatentable over Bartol, McLeod, and Rigaux (US 6,324,432 B1, issued Nov. 27, 2001). 4. Claims 5–8, 14–16, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Bartol, McLeod, and Gharib (US 8,055,349 B2, issued Nov. 8, 2011). 5. Claims 9 and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Bartol, McLeod, Gharib, and Buhlmann (US 2005/0283204 A1, published Dec. 22, 2005). OPINION Patent Eligibility Section 101 of the Patent Act provides that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is patent eligible. 35 U.S.C. § 101. The Supreme Court, however, has long recognized an implicit exception to this section: “Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is “directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. Appeal 2018-007237 Application 13/965,457 4 66, 79, 78 (2012)). That is, we examine the claims for an “inventive concept,” “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). The Patent Office recently issued guidance about this framework. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Eligibility Guidance”). Under the 2019 Eligibility Guidance, to decide whether a claim is “directed to” an abstract idea, we evaluate whether the claim (1) recites an abstract idea grouping listed in the guidance and (2) fails to integrate the recited abstract idea into a practical application. See 2019 Eligibility Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea, as noted above, we then determine whether the claim recites an inventive concept. The guidance explains that when making this determination, we should consider whether the additional claim elements add “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56. With respect to whether a claim recites an abstract idea, the 2019 Eligibility Guidance “extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se)”: (a) Mathematical concepts––mathematical relationships, mathematical formulas or equations, mathematical calculations; Appeal 2018-007237 Application 13/965,457 5 (b) Certain methods of organizing human activity––fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and (c) Mental processes––concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Id. at 52 (footnotes omitted). The Examiner determines that the claims are directed to an abstract idea and, more specifically, that “claims 1, 10 and 18 are an idea standing alone that can be performed by the human mind, or by a human using a pen and paper.” Final Act. 3. Appellant disagrees. Appeal Br. 8–11. Based on the record before us, we are persuaded that the Examiner has failed to establish the claims recite an ineligible abstract idea. Other than asserting, generally, that “claims 1, 10 and 18 . . . can be performed by the human mind, or by a human using a pen and paper,” the Examiner offers no explanation as to how the features of those claims can be performed in such a manner. Because the claims do not recite a mathematical concept, an identified method of organizing human activity, or a mental process, as set forth in 2019 Eligibility Guidance, we conclude the claimed “neural monitoring system” of claims 1, 10, and 18 does not recite an abstract idea. See 2019 Eligibility Guidance, 84 Fed. Reg. at 53. Obviousness Claim 1 requires that the “neural monitoring system” “determine[s] a frequency component of the mechanomyography output signal” and “provide[s] an indication of an artificially-induced mechanical muscle Appeal 2018-007237 Application 13/965,457 6 response to a user if the determined frequency component is either equal to, or an integer multiple of the stimulation frequency.” Claim 10 similarly requires that the system “determine[s] a fundamental frequency of the mechanomyography output signal” and “provide[s] an indication of an artificially-induced mechanical muscle response to a user if the determined fundamental frequency is either equal to, or an integer multiple of the stimulation frequency.” Claim 18 “determine[s] a frequency component of the mechanomyography output signal” and “provide[s] an indication of an artificially-induced mechanical muscle response to a user if the determined frequency component” meets certain criteria. In the Final Action, the Examiner finds that Bartol teaches the majority of the limitations recited in claims 1, 10, and 18, but acknowledges that Bartol fails to teach the limitations related to the frequency of the mechanomyography signal and the limitations related to providing an indication of an artificially induced mechanical muscle response based on the frequency of the mechanomyography signal. See Final Act. 7, 10, 12. In the Answer, after repeating the rejection from the Final Action, including the acknowledged shortcomings of Bartol noted above, the Examiner finds that “Bartol discloses providing an indication of an artificially induced mechanical response to a user” and explains that “McLeod is not used to teach providing an indication of an artificially induced mechanical muscle response.” Ans. 25–26. The Examiner finds that “McLeod teaches the use of a fast fourier transform on a waveform and therefore, as is well-known in the art, is capable of determining a frequency component of the mechanomyography output signal, wherein the frequency component has a peak magnitude Appeal 2018-007237 Application 13/965,457 7 relative to adjacent frequencies (paragraph 0141–0144).” Final Act. 7; see also id. at 10, 12–13 (making similar findings with respect to claims 10 and 18). The Examiner explains that “one can see all of the frequencies of the signal [in McLeod] and therefore can inherently determine whether a frequency component is equal to or an integer multiple of the stimulation frequency.” Id. at 8; see also id. at 10, 12–13 (providing similar explanation as to the frequency features recited in claims 10 and 18). As for the rationale for combining the teachings of McLeod with those of Bartol, the Examiner reasons that “it would have been obvious to modify at the time of the invention Bartol by McLeod for the purpose of providing a more effective strategy for information extraction via time- frequency analysis.” Final Act. 8. In the Answer, the Examiner explains that it would have been obvious at the time of the invention to combine Bartol which discloses a system using myographic signals to provide an indication of artific[i]ally induced muscle response with McLeod which uses the frequency data of myographic signals to make determinations regarding muscle contractions in response to an applied signal. Ans. 26. We agree with Appellant that the Examiner has failed to establish that McLeod is non-analogous art (Appeal Br. 13–15) and that the Examiner’s rationale is insufficient (id. at 16–18). “A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC v. MGA Entm’t., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Appeal 2018-007237 Application 13/965,457 8 Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d at 1348 (quoting In re Bigio, 381 F.3d at 1325). “[T]he field of endeavor test . . . requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” In re Bigio, 381 F.3d at 1325. “This test does not make the assessment of the field of endeavor a wholly subjective call for the examiner.” Id. at 1326. Rather, “[t]he examiner and the Board must have a basis in the application and its claimed invention for limiting or expanding the scope of the field of endeavor.” Id. Appellant contends that “[t]he present disclosure relates generally to a surgical diagnostic system for detecting the presence of one or more nerves within an intracorporeal treatment area of a human subject.” Appeal Br. 13 (citing Spec. ¶ 1). Appellant explains that “[i]n its most general sense, this technology falls within the field of surgical diagnostics.” Id. Appellant distinguishes this from McLeod, explaining that “[t]he technology described in McLeod relates to a non-invasive physical therapy device for determining peak muscle strength/effort,” which “is a system for monitoring muscular exertion during a functional exercise.” Appeal Br. 13 (citing McLeod ¶¶ 1– 4, 243–248). Appellant contends that “[s]trength training/rehabilitation is not the same as neural detection/monitoring, nor is it the same as surgical diagnostics.” Id. Appeal 2018-007237 Application 13/965,457 9 The Examiner responds that “Applicant’s field of endeavor is: a neural monitoring system capable of detecting an artificially induced mechanical response of a muscle to an electrical stimulus that is provided within an intracorporeal treatment area of a human subject” (Ans. 23) and “McLeod’s field of endeavor is: a real-time muscle assessment during functional activities using vibromyography technology” (id.). As Appellant aptly notes, “the Answer factually acknowledges that McLeod is from a different field of endeavor than the present technology.” Reply Br. 4. The Examiner concludes, however, that “[b]oth pieces of prior art gather a myographic signal from a muscle and perform an analysis of myographic signals gathered from a muscle to make determinations.” Ans. 23. Initially, we note that a comparison of the prior art does not address how McLeod is in Appellant’s field of endeavor. To the extent the Examiner meant to state “both Appellant’s invention and McLeod,” rather than “[b]oth pieces of prior art,” there is no explanation for this subsequent broader generalization of the relevant field of endeavor. That is, the Examiner does not even reference, generally, let alone provide a citation to, anything in Appellant’s Specification to support this general characterization of the purported field of endeavor. Accordingly, the Examiner has failed to establish sufficiently that McLeod is in Appellant’s field of endeavor. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “[T]he purposes of both the invention and the prior art are important in determining whether the reference is reasonably Appeal 2018-007237 Application 13/965,457 10 pertinent to the problem the invention attempts to solve.” Id. Appellant contends that “[t]he problem faced by the inventor was, specifically, how to best detect an artificially-induced muscle response during a surgical procedure.” Appeal Br. 14. Appellant contends that “McLeod relates to a system for monitoring the effort/exertion of intentional/user-intended muscle contractions during a functional exercise, as may be used in a physical therapy regimen and/or athletic training routine.” Id. (citing McLeod ¶¶ 1–4, 243–248). To distinguish the problem addressed, Appellant explains that “a surgeon is generally not concerned with monitoring how strong his patient is . . . during an invasive surgical procedure that is typically performed under anesthesia.” Id. The Examiner responds, again, that “[b]oth pieces of prior art gather a myographic signal from a muscle and perform an analysis of myographic signals gathered from a muscle to make determinations.” Ans. 23. Notwithstanding the issue noted above regarding comparing to prior art, rather than Appellant’s disclosure, the Examiner says nothing about any particular problem addressed, either by Appellant’s invention or the prior art. Accordingly, the Examiner has failed to establish sufficiently that McLeod is reasonably pertinent the problem addressed by the inventors of the pending application. As noted above, Appellant also disputes the rationale proposed by the Examiner as insufficient. See Appeal Br. 16–18; Reply Br. 5–6. In the Answer, the Examiner supplements the rationale provided in the Final Action noted above, responding that it would have been obvious at the time of the invention to combine Bartol which discloses a system using myographic signals to provide an indication of artific[i]ally induced muscle Appeal 2018-007237 Application 13/965,457 11 response with McLeod which uses the frequency data of myographic signals to make determinations regarding muscle contractions in response to an applied signal. Ans. 26. Appellant has the better position. The Examiner’s reasoning, both in the Final Action and in the Answer, is conclusory, at best. The Examiner fails to offer any meaningful explanation as to why one skilled in the art would have used McLeod’s teachings regarding frequency analysis in Bartol’s system. Instead, and as seen above, the Examiner simply concludes that such a combination would have been obvious because it provides the arrangement recited in the claims. Accordingly, the Examiner has failed to establish sufficiently that one skilled in the art would have combined McLeod’s teachings with those of Bartol. For at least these reasons, we do not sustain the Examiner’s decision to reject claims 1–19. DECISION We REVERSE the Examiner’s decision to reject claims 1–19. REVERSED Copy with citationCopy as parenthetical citation