Ex Parte Bodin et al

Board of Patent Appeals and Interferences

Apr 10, 2009

10637019 (B.P.A.I. Apr. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WILLIAM KRESS BODIN, MICHAEL JOHN BURKHART,
DANIEL G. EISENHAUER, DANIEL MARK SCHUMACHER,
and THOMAS J. WATSON
__________

Appeal 2008-4315
Application 10/637,019
Technology Center 2100
__________

Decided:1 April 10, 2009
__________

Before JEAN R. HOMERE, JAY P. LUCAS, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1 through 24. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

The Invention
The disclosed invention relates generally to data maintenance and
more particularly to methods, systems, and products for administering
devices (Spec. 1).
Independent claim 1 is illustrative:
1. A method for administering devices, the method comprising:
creating a user metric vector comprising a plurality of disparate
metrics for a user;
selecting a predefined condition space for the user in
dependence upon the user metric vector;
identifying an action in dependence upon the selected
predefined condition space; and
executing the action.

The References
The Examiner relies upon the following reference as evidence in
support of the rejections:
Kroll 6,645,153 B2 Nov. 11, 2003

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The Rejections
1. The Examiner rejects claims 1 through 24 under 35 U.S.C. § 102(e) as
being anticipated by Kroll.
2. The Examiner rejects claims 1 through 16 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.

ISSUE #1
Appellants argue that the Examiner’s rejection of claims 1 through 16
under 35 U.S.C. § 101 should be reversed since they are directed to patent-
eligible subject matter under the useful, concrete and tangible result test
provided in State Street Bank & Trust Co. v. Signature Financial Group Inc.
(App. Br. 4–5). In response, the Examiner submits that the cited claims do
not explicitly teach a tangible result and therefore are not directed to
statutory subject matter under the cited tests (Ans. 8).
Did Appellants demonstrate that the Examiner erred in rejecting
claims 1 through 16 as being directed to patent-eligible subject matter under
35 U.S.C. § 101?

ISSUE #2
Appellants assert that Kroll “merely determines a single metric . . .
which is not a user metric vector” (App. Br. 8).
The Examiner finds that “Kroll’s CHF metric is literally ‘a collection
of a user metrics each representing a single quantifiable aspect of a user
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metrics each representing a single quantifiable aspect of a user’s condition
and a quantity measuring the aspect’” (Ans. 10) (underlining omitted).
Did Appellants demonstrate that the Examiner erred in finding that
Kroll discloses creating a user metric vector comprising a plurality of
disparate metrics for a user?

ISSUE #3
Appellants argue that Kroll “does not disclose anything close to a
predefined condition space” (App. Br. 9) and that Kroll fails to disclose
“selecting a predefined space for the user in dependence upon the user
metric vector” (id. at 10).
The Examiner finds that Kroll teaches a “predetermined threshold
value” (Ans. 11) as a predefined conditions space.
Did Appellants demonstrate that the Examiner erred in finding that
Kroll discloses selecting a predefined condition space for the user in
dependence upon the user metric vector?

ISSUE #4
Appellants assert that Kroll does not disclose “identifying an action in
dependence upon the selected predefined condition space” (App. Br. 10).
Did Appellants demonstrate that the Examiner erred in finding that
Kroll teaches identifying an action in dependence upon the selected
predefined condition space?

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ISSUE #5
Appellants argue that Kroll is not “an enabling disclosure of each and
every element of the claims of the present application” (App. Br. 11)
because “Kroll does not disclose each and every element and limitation of
claim 1” (id.).
Did Appellants demonstrate that the Kroll disclosure is not an
enabling disclosure?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Kroll teaches “signals from various physiological sensors: specifically
an arterial oxygen saturation sensor, a right ventricular O2 sensor, a
stroke volume sensor, a tidal volume sensor, a respiration rate sensor
and an activity sensor [as well as a heart rate sensor]” (col. 11, ll. 9–
14 and fig. 3, 200).
2. Kroll teaches that acquired metrics can be digitized and stored for
analysis (col. 8, ll. 31–36 and fig. 2, 90).
3. Kroll teaches a predefined condition space for the user, including
where a derived “CHF metric is compared with a predetermined
threshold value” (col. 9, ll. 39–40), where a warning signal is
“generated if the CHF metric exceeds a pre-stored threshold value of
90” (col. 12, ll. 7–9 and fig. 3), where if “the VR value falls below
[the predetermined VR-based risk threshold value of] 45, there is a
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significant risk of mortality and the warning signal is generated” (col.
14, ll. 13–15), and employing the “activity sensor or other appropriate
sensors . . . as a ‘rate-responsive’ sensor for using adjusting pacing
stimulation rate according to the exercise state of the patient” (col. 9,
ll. 52–55).
4. Kroll teaches the identification and execution of an action in
dependence upon a predefined condition space, including “adjusting
pacing stimulation rate according to the exercise state of the patient”
(col. 9, ll. 54–55), generating a warning signal if the “CHF metric
exceeds a pre-stored threshold value of 90” (col. 12, ll. 7–9 and fig.
3), and generating a warning signal if “the VR value falls below 45”
(col. 14, ll. 13–15).
5. Kroll discloses that the CHF metric is a metric derived from disparate
metrics for the user (col. 9, ll. 24–64).
6. Kroll discloses that the VR metric is a metric derived from disparate
metrics for the user (col. 12, ll. 59–60).

PRINCIPLES OF LAW
35 U.S.C. § 101
The Court of Appeals for the Federal Circuit recently clarified the law
regarding patent eligible subject matter for process claims. In re Bilski, 545
F.3d 943 (Fed. Cir. 2008) (en banc). The en banc court in Bilski held that
“the machine-or-transformation test, properly applied, is the governing test
for determining patent eligibility of a process under § 101.” Id. at 956. The
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court in Bilski further held that “the ‘useful, concrete and tangible result’
inquiry is inadequate [to determine whether a process claim is patent-eligible
under § 101.]” Id. at 959–60. The court explained the machine-or-
transformation test as follows:
The machine-or-transformation test is a two-branched inquiry;
an applicant may show that a process claim satisfies § 101
either by showing that his claim is tied to a particular machine,
or by showing that his claim transforms an article. See Benson,
409 U.S. at 70, 93 S. Ct. 253. Certain considerations are
applicable to analysis under either branch. First, as illustrated by
Benson and discussed below, the use of a specific machine
or transformation of an article must impose meaningful limits
on the claim’s scope to impart patent-eligibility. See Benson,
409 U.S. at 71-72, 93 S. Ct. 253. Second, the involvement of
the machine or transformation in the claimed process must not
merely be insignificant extra-solution activity. See Flook, 437
U.S. at 590, 98 S. Ct. 2522.
Id. at 961-62.
The court declined to decide under the machine implementation
branch of the inquiry whether or when recitation of a computer suffices to tie
a process claim to a particular machine. As to the transformation branch of
the inquiry, however, the court explained that transformation of a particular
article into a different state or thing “must be central to the purpose of the
claimed process.” Id. at 962. As to the meaning of “article,” the court
explained that chemical or physical transformation of physical objects or
substances is patent-eligible under § 101. Id. The court also explained that
transformation of data is sufficient to render a process patent-eligible if the
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data represents physical and tangible objects, i.e., transformation of such raw
data into a particular visual depiction of a physical object on a display. Id.
The court further noted that transformation of data is insufficient to
render a process patent-eligible if the data does not specify any particular
type or nature of data and does not specify how or where the data was
obtained or what the data represented. Id. (citing In re Abele, 684 F.2d 902,
909 (CCPA 1982) (process claim of graphically displaying variances of data
from average values is not patent-eligible) and In re Meyer, 688 F.2d 789,
792-93 (CCPA 1982) (process claim involving undefined “complex system”
and indeterminate “factors” drawn from unspecified “testing” is not patent-
eligible)).
35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) “In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.” Id. (internal citations
omitted).
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Enablement of a Prior Art Reference
“The disclosure in an assertedly anticipating reference must be
adequate to enable possession of the desired subject matter. It is insufficient
to name or describe the desired subject matter, if it cannot be produced
without undue experimentation.” Elan Pharmaceuticals, Inc. v. Mayo
Foundation for Medical Education and Research, 346 F.3d 1051, 1055 (Fed.
Cir. 2003). Undue experimentation may be established by consideration of
(1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill
of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims. (Id.).
The patentee asserting non-enablement has the burden of
demonstrating non-enablement of a disputed reference. Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“If a
patentee presents evidence of nonenablement that a trial court finds
persuasive, the trial court must then exclude that particular prior art patent in
any anticipation inquiry . . . . Therefore, it was [the Plaintiff] who bore the
burden of proving the nonenablement of [the cited reference] before the
district court. [The Defendant] did not bear a burden of proving
enablement”).

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ANALYSIS (ISSUE #1)
Claims 1-8 recite a method for administering devices by creating a
vector, selecting a predefined condition identifying and selecting an action.
We find that the disclosed method fails to transform a physical object from a
different state or thing. Further, we find that the claimed method is not
performed with a particular machine or apparatus. See In re Bilski, 545 F.3d
at 961 (“[E]ven a claim that recites ‘physical steps’ but neither recites a
particular machine or apparatus, nor transforms any article into a different
state or thing, is not drawn to patent-eligible subject matter.”). Appellants’
arguments that the claims are directed to statutory subject matter under the
useful, concrete, and tangible result test are moot since the CAFC has
cautioned us against using such test in evaluating method claims for patent
eligibility. Bilski, 88 USPQ2d at 1393. It follows that Appellants have failed
to show that the Examiner erred in finding claims 1-8 non-statutory under 35
U.S.C. § 101. We therefore agree with the Examiner that independent claim
1, and associated dependent claims 2-8, are not directed to statutory subject
matter under 35 U.S.C. § 101.
Claims 9–16 recite systems and particular machines including means
for creating a user metric vector, selecting a predefined condition space,
identifying an action, and executing an action. The Examiner summarily
rejected those system claims without actually discussing how they are
deficient under 35 U.S.C. § 101. Since the Examiner has failed to
particularly show that these claims are not directed to patent-eligible subject
matter, we reverse the rejection of claims 9-16 under 35 U.S.C. § 101.
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ANALYSIS (ISSUE #2)
As set forth above, Kroll teaches determining and storing parameters
or metrics corresponding to a user or patient (FF 1-2). The metrics of Kroll
are multiple (i.e., a “plurality of metrics”), are disparate (i.e., different or
distinct elements), and are subsequently used to generate a “CHF metric”
(col. 11, l. 61). We construe the term metric vector broadly but reasonably
and in light of the Specification to include any “collection of a user metrics
each representing a single quantifiable aspect of a user's condition” (Spec.
33, ll. 23–25), where a “user metric comprises data describing an indication
of a user condition” (Spec. 31, ll. 16–19). Under this construction and
because the claims do not require that the metric vector be individually
retrievable, we agree with the Examiner that Kroll discloses a metric vector
that comprises disparate metrics for the user (FF 5).
Appellants argue that Kroll “merely determines a single metric – the
CHF metric – which is not a user metric vector comprised of a plurality of
disparate user metrics and which does not have multiple quantifiable aspects
of a user’s condition and multiple quantities measuring the aspects” (App.
Br. 8). However, as set forth above, Kroll discloses multiple and disparate
metrics that measure multiple quantifiable aspects of a user’s condition, such
as oxygen saturation, heart rate, etc., and a CHF metric derived from the
multiple and disparate metrics. Thus, we find Appellants’ argument
unpersuasive.
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For at least these reasons, we find that Appellants have failed to
provide arguments or evidence persuasive of error in the Examiner’s
rejection of claims 1–24 with respect to issue #2.

ANALYSIS (ISSUE #3)
In the absence of an explicit definition of the term “condition space”
in the Specification, we construe the term broadly but reasonably and in light
of the Specification to include any area (i.e., “space”), such as a range of
values, that describes or otherwise characterizes a condition of a user. Such
an interpretation includes ranges of values corresponding to patient or user
parameters obtained from sensors.
As set forth above, Kroll discloses creating a CHF metric from a
plurality of disparate metrics (e.g., oxygen saturation, stroke volume, etc.)
and further determines when the CHF metric is “greater than 90” (Fig. 3) or
when “CHF increases by more than 5% since initial value” (id.). Kroll also
discloses “adjusting the pacing stimulation rate in response to the exercise
state of the [user]” (col. 9, ll. 54–55; FF 3) based on sensor criteria
indicating the user’s physical state (e.g., when the CHF metric is “greater
than 90”). Any of the disparate metrics (e.g., oxygen saturation, stroke
volume, etc.) or CHF metric, for example, represents values or ranges of
values corresponding to a patient or user such as amount of oxygen
dissolved in a patient’s blood (i.e., oxygen saturation), volume of blood
output from a patient’s heart per beat (i.e., stroke volume), or risk of episode
of CHF (e.g., CHF metric). Thus, such parameters or ranges of parameter
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values constitute a “condition space.” Hence, we agree with the Examiner
that Kroll discloses selecting a predefined “condition space” (e.g., an
area/range of CHF values greater than 90) in dependence upon the CHF
metric vector.
Appellants argue that even if Kroll “does disclose a predefined
condition space . . . [that] it does not disclose the second element of claim 1
. . . ‘selecting a predefined condition space for the user in dependence upon
the user metric vector’” (App. Br. 9–10). Yet, the predefined condition
spaces are dependent on “the exercise state of the patient” (FF 3) or on
metrics such as the CHF and VR metrics (FF 4). The exercise state of the
patient itself is dependent on the “activity sensor or other appropriate
sensors” (FF 3), while both the CHF and VR metrics are derived from
disparate metrics for the user (col. 9, ll. 24–64 and 10, eq. 5; FF 5–6). The
predefined condition spaces selected are clearly dependent upon the user
metric vector taught by Kroll.
The invention disclosure supports this finding with its teaching that in
some “embodiments of the present invention, selecting a predefined
condition space for the user in dependence upon the user metric vector
includes retrieving a user metric space for the user, determining a degree to
which the user metric vector is outside the user metric space, and identifying
a predefined condition space in dependence upon the degree to which the
user metric vector is outside the user metric space” (Spec. 3, ll. 19–24), that
“determining whether the user metric vector is outside the metric space is a
function of multiple individual comparison between metric values and
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metric ranges” (Spec. 70, ll. 1–3), and that one “way of calculating a metric
vector value is by using a predetermined formula to identify a single value
that is a function of the metric values of the user metric vector” (Spec. 70, ll.
25–26).
The metric values of the invention are analogous to the derived CHF
and VR metrics of Kroll (FF 5–6). The CHF and VR threshold values used
to trigger warning signals if metric values and metric vectors are analogous
to the metric space of the disclosure. Thus, a predefined condition space for
the user in dependence upon the user metric vector is taught by Kroll.
For at least these reasons, we conclude that Appellants have not
sustained the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s rejection of claims 1–24 with respect
to issue #3.

ANALYSIS (ISSUE #4)
Kroll teaches adjusting pacing stimulation rate in accordance with the
exercise state of the patient (col. 9, ll. 54–55; FF 4) and generating a warning
signal “if the CHF metric exceeds a pre-stored threshold value of 90” (col.
12, ll. 7–9 and fig. 3; FF 3). Kroll also teaches that if “the VR value falls
below [the predetermined VR-based risk threshold value of] 45 . . . the
warning signal is generated” (col. 14, ll. 13–15; FF 3). In the absence of an
explicit definition of executing an action in the Specification, we apply a
broad but reasonable meaning in light of the Specification as including
performing any activity. As such, we find that adjusting pacing stimulation
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rate or generating warning signals constitute performing activities and
therefore also constitute “executing an action” within the broad meaning of
the Specification.
For at least these reasons, we conclude that Appellants have not
sustained the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s rejection of claims 1–24 with respect
to issue #4.

ANALYSIS (ISSUE #5)
Appellants argue that Kroll is not an enabling disclosure for each and
every element of the claim because “Kroll does not disclose each and every
element and limitation of claim 1, [and therefore] Kroll cannot possibly
place the elements and limitations of claim 1 in the possession of a person of
ordinary skill in the art” (App. Br. 11).
We find that Appellants have failed to provide a showing that Kroll
would have been insufficient to enable one of skill in the art to practice the
disputed subject matter without undue experimentation. Because
Appellants, as the party asserting non-enablement of the reference, bear the
burden of showing non-enablement but have failed to do so, we cannot find
that Kroll would have been non-enabling to one of skill in the art. Amgen
Inc., 314 F.3d at 1355.
Appellants argue that “Kroll does not disclose each and every element
and limitation of claim 1” (App. Br. 11) but, as set forth above, fail to
demonstrate that Kroll does in fact fail to disclose every element of claim 1.
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Even assuming Appellants contention to be correct, Appellants fail to
demonstrate that Kroll would have been insufficient to enable one of skill in
the art to practice the disputed subject matter without undue
experimentation. For example, Appellants have not demonstrated, much
less asserted, that it would have been necessary for one of skill in the art to
have engaged in undue experimentation, given the Kroll disclosure, based on
the quantity of experimentation necessary, amount of direction or guidance
presented, presence/absence of working examples, nature of the invention,
state of the prior art, relative skill of those in the art, the predictability or
unpredictability of the art, or the breadth of the claims. Indeed, Appellants
have failed to provide any rationale supporting non-enablement of the Kroll
reference.
For at least these reasons, we conclude that Appellants have not
sustained the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s rejection of claims 1–24 with respect
to issue #5.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have failed to demonstrate the Kroll reference is not an enabling
disclosure or that the Examiner erred in:
1. finding that Kroll discloses creating a user comprising a plurality
of disparate metrics for a user,
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2. finding that Kroll discloses selecting a predefined condition space
for the user in dependence upon the user metric vector,
3. finding that Kroll discloses identifying an action in dependence
upon the selected predefined condition space, and
4. finding that claims 1-8 are not directed to patent-eligible subject
matter under 35 U.S.C. § 101.
However, we conclude that the Examiner erred in rejecting claims 9–
16 under 35 U.S.C. § 101.

DECISION
We affirm the Examiner’s decisions rejecting claims 1–24 under 35
U.S.C. § 102 and claims 1–8 under 35 U.S.C. § 101. We reverse the
Examiner’s decision rejecting claims 9–16 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).

AFFIRMED

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