Ex Parte Cho et al

Patent Trial and Appeal Board

Oct 26, 2018

13744456 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/744,456 01/18/2013
27581 7590 10/30/2018
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS:MVC22
MINNEAPOLIS, MN 55112
FIRST NAMED INVENTOR
Yong K. Cho
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P0029560.USU2 2744
EXAMINER
TOTH, KAREN E
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
10/30/2018 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):
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YONG K. CHO, MARK K. ERICKSON,
DOUGLAS A. HETTRICK, and TODD M. ZIELINSKI 1
Appeal2017-009973
Application 13/744,456
Technology Center 3700
Before JEFFREY N. FREDMAN, JOHN E. SCHNEIDER, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a method and system for monitoring respiratory function. Claims
1-27 are on appeal as rejected under 35 U.S.C. § 101. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as "Medtronic, Inc." Appeal
Br. 3. We herein refer to the Specification of Jan. 18, 2013 ("Spec."); the
Final Office Action of May 31, 2016 ("Final Action"); Appeal Brief of Jan.
3, 2017 ("Appeal Br."); Examiner's Answer of May 18, 2017 ("Answer");
and Reply Brief of July 18, 2017 ("Reply Br.").
Appeal2017-009973
Application 13/744,456
STATEMENT OF THE CASE
Claims 1 is representative and is reproduced below:
1. A method for monitoring respiratory function,
compnsmg:
sensing, in a tissue field of a patient and by an implantable
medical device, a first thoracic impedance waveform for at least
one breath of the patient;
determining, by the implantable medical device, a first
inspiration slope value in response to the first thoracic impedance
waveform;
comparing, by the implantable medical device, the first
inspiration slope value to a first threshold slope value of the
patient and determining an increase in the first inspiration slope
value based on the comparison;
determining, by the implantable medical device, a
magnitude of decrease in mean impedance of the tissue field of
the patient in which the first thoracic impedance waveform is
sensed;
determining, by the implantable medical device, an
indication of respiratory function of the patient, wherein the
indication of respiratory function comprises pulmonary edema in
response to at least determining both the increase in the first
inspiration slope value and the magnitude of decrease in mean
impedance being greater than a threshold impedance decrease
value; and
storing, by the implantable medical device, the determined
indication of respiratory function.
Appeal Br. 33 (Claims App'x).
The following rejections are appealed:
Claims 1-11, 24, and 25 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Action 4.
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Application 13/744,456
Claims 12-22, 26, and 27 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Id.
Claim 23 stands rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter. Id.
DISCUSSION
"[T]he examiner bears the initial burden ... of presenting a prima
facie case ofunpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant." In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). We have considered those arguments
made by Appellants in the Appeal Brief and properly presented in the Reply
Brief; arguments not so presented in the Briefs are waived. See 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv) (2015); see also Ex parte Borden, 93 USPQ2d 14 73, 14 7 4
(BP AI 2010) (informative) ("Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived.").
"Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work." Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)). Claims directed to nothing more than
abstract ideas (such as mathematical algorithms), natural phenomena, and
laws of nature are not eligible for patent protection. Diamond v. Diehr, 450
U.S. 175,185 (1981); accordMPEP § 2106 (II) (discussingDiehr).
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, the Supreme Court instructs us to "first determine
whether the claims at issue are directed to a patent-ineligible concept." Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). If the
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Application 13/744,456
claims are determined to be directed to an ineligible concept we then move
to a second step and "consider 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." Id. (quoting Mayo, 566 U.S. at 97).
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) (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014)). 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."' Synopsys, 839 F.3d at 1146-47
( emphasis added) ( quoting Electric Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (citations omitted)); see also Electric
Power Grp., 830 F.3d at 1353 ("collecting information, analyzing it, and
displaying certain results of the collection and analysis" "fall[ s] into a
familiar class of claims 'directed to' a patent-ineligible concept," that of the
abstract idea). The Federal Circuit has recognized that "a claim for a new
abstract idea is still an abstract idea." Synopsys, 83 9 F .3 d at 1151.
There is an abundance of cases where the Federal Circuit has held
that, for example, manipulating, organizing, analyzing, and displaying data
using generic computer components is not patent-eligible under the common
law application of 35 U.S.C. § 101. The Federal Circuit, in Intellectual
Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir.
2017), where the claims were held to be directed to a computer programmed
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to edit XML documents, "conclude[d] [the claims were,] ... at their core,
directed to the abstract idea of collecting, displaying, and manipulating
data." Id. at 1339-40. Even though the patent at issue in Intellectual
Ventures I indicated its invention provided a concrete solution to a particular
problem in computer programming, it "at best, ... limit[ ed] the invention to
a technological environment for which to apply the underlying abstract
concept," which did "not render an otherwise abstract concept any less
abstract." Id. at 1340 (citing Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1259 (Fed. Cir. 2016)). Under step two of the Alice analysis,
the court in Intellectual Ventures I held that claims reciting generic computer
components or elements and their functions, e.g., organizing, mapping,
identifying, defining, detecting, and modifying, "merely describe[ d] the
functions of the abstract idea itself' and were not sufficient to supply
significantly more than the abstract idea so as to confer patent-eligibility. Id.
at 1341.
The Federal Circuit has established in several other cases that
collecting, classifying, storing, and organizing data, regardless of whether
such data manipulations are limited to a particular technological
environment, is an abstract idea and, without more ( which cannot be
provided by generic components or steps used in their routine and customary
ways), is not patent eligible. See, e.g., Interval Licensing LLC v. AOL, Inc.,
896 F.3d 1335 (Fed. Cir. 2018) (claims directed to manipulating data for
selective display using routine and conventional instructions/programming
not patent-eligible); SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016,
1018 (Fed. Cir. 2018) (claims directed to "nothing but a series of
mathematical calculations based on selected information and the
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presentation of the results of those calculations" is merely an advancement
in an abstract idea and patent-ineligible, even though physical things like
databases and processors are claimed); Electric Power Grp., 830 F.3d 1350
("claim[ s] [to] systems and methods for performing real-time performance
monitoring of an electric power grid by collecting data from multiple data
sources, analyzing the data, and displaying the results" was not patent-
eligible even though limited to a particular technological environment); In re
TL! Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016)
( collecting and organizing data in the form of digital images is abstract and
patent ineligible, and using computer systems in their generic ways do not
add an inventive concept); Content Extraction and Transmission LLC v.
Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014) (extracting
data from documents, recognizing information therefrom, and storing the
information is abstract).
Further, simply applying an abstract idea to a natural phenomenon
does not make it patent-eligible. In In re BR CAI, the Federal Circuit held
that a claimed method for screening a germline of a human subject for an
alteration of the BRCAl gene by comparing a sample BRCAl gene
sequence with a reference, wild-type germline sequence ofBRCAl gene
was directed to an abstract idea - a "mental process of 'comparing' and
'analyzing' two gene sequences." In re BRCAJ- and BRCA2-Based
Hereditary Cancer Test Patent Litigation, 774 F.3d 755, 763---64 (Fed. Cir.
2014) (citation omitted) ("allowing a patent on the comparison step could
impede a great swath of research relating to the BRCA genes, and it is
antithetical to the patent laws to allow these basic building blocks of
scientific research to be monopolized.").
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Further, our reviewing court has held that detecting, measuring, and/or
comparing natural phenomena using known and conventional techniques is
not patent-eligible. For example, in Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371 (Fed. Cir. 2015), the Federal Circuit held claims directed
to amplifying cfIDNA from a plasma or serum sample and detecting
paternally inherited cfIDNA to make a diagnosis using well-understood,
routine, and conventional methods, like PCR amplification, were directed to
a patent-ineligible natural phenomenon, without more to supply an inventive
concept. As another example, in Cleveland Clinic Foundation v. True
Health Diagnostics LLC, 859 F.3d 1352 (Fed. Cir. 2017), the Federal Circuit
held claims directed to comparing levels of MPO ( an enzyme) in a subject's
blood to reference samples to diagnose risk of cardiovascular disease, i.e.,
detecting and measuring and comparing a natural phenomenon, to be
directed to a patent-ineligible observation of a law of nature using
conventional detection and statistical methods, which did not confer patent-
eligibility.
Turning to the claims on appeal, although there are three separate
rejections under § 101, which are respective of the three independent claims
on appeal, these rejections are substantially identical in their factual
determinations, rationale, and conclusions, as the claims are substantially
similar in most respects. Similarly, although Appellants' arguments separate
the claims into groups respective of the independent claims and their
rejections, Appellants' arguments are essentially the same for each group.
Therefore, we address all rejections together; claim 1, as noted above, is
representative.
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The Examiner determined, pursuant to Alice step one, that the claims
"are directed to a mathematical algorithm for correlating changes in slope of
a waveform and mean values of a waveform with respiratory function, a
concept which is essentially a mathematical relationship, which has been
held to be abstract." Final Action 4. The Examiner identified that the
claims' determining a slope value, comparing slope value to a threshold,
determining a magnitude of decrease in mean impedance, and determining
an indication of respiratory function limitations, are each a part of and
directed to the mathematical algorithm constituting the abstract idea.
Answer 4; see also Spec. Fig. 7 (illustrating an algorithm within the scope of
the claims).
Pursuant to Alice step two, the Examiner determined that any
additional claim elements, i.e., elements not directed to the abstract idea of
the mathematical algorithm, (i.e., the implantable medical device for claim
1; the impedance sensor, memory, and processor for claim 12; and the
computer-readable medium and, maybe, processor for claim 23) are generic
components performing non-specific tasks and do not amount to
significantly more than the judicial exception itself. Id. at 4--5; see also id.
at 5 (identifying that the prior art of record2 evidences that the components
of the claims were well known as used for determining pulmonary edema
using the techniques claimed). We discern no error in the Examiner's
determinations and adopt the Examiner's findings of fact and rationale in
2 US 2005/0085734 Al (published Apr. 21, 2005) ("Tehrani"); US
2009/0024176 Al (published Jan. 22, 2009) ("Yun"); US 2009/0275854 Al
(published Nov. 5, 2009) ("Zielinski"); US 2005/0124908 Al (published
June 9, 2005) ("Belalcazar").
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support of the rejections. See Final Action 4--6; Answer 2-9; see also
Advisory Action of Oct. 6, 2016.
As noted above, Appellants' arguments are essentially the same for
each rejection and all claims. Appellants argue the claims are not directed to
an abstract idea because they involve sensing an impedance signal, which
Appellants contend is somehow transformatory in nature because electricity
interacts with the body's physiology. Appeal Br. 7; see also id. at 31-32.
Appellants argue "the claims do not seek to tie up all applications of an
abstract idea," i.e., they are not preemptive, but have meaningful limitations
that limit the use of the mathematical algorithm to analysis of respiratory
function. Id. at 10, 18, 22, 27-29. Appellants argue the Examiner's
rejections are not sufficiently specific as to how the claim limitations are
directed to a mathematical algorithm; Appellants take issue with the fact that
the abstract idea identified by the Examiner is not expressly recited in the
claims. Id. at 11-12, 23. Appellants also argue their claims are analogous to
those at issue in Enfish, LLC, which the Federal Circuit held to be patent-
eligible. Id. at 12, 24; see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016). Appellants argue that, considering the claims as a
whole, they are not directed to abstract ideas because they recite specific
steps to achieve concrete results that are not abstract, e.g., an implantable
medical device is not an abstract idea. Appeal Br. 13, 25. Appellants also
argue their claims are like those found patent-eligible by the Supreme Court
in Diehr and by the Federal Circuit in Bascom because they offer an
improvement in the technical field of detecting pulmonary edema. Id. at 14,
25, 30; see also Diehr, 450 U.S. 175; Bascom Global Internet Serv., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Appellants argue that
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"determining ... an indication of respiratory function ... " is not a routine or
conventional step in the art because the Examiner has not cited any evidence
that it is routine or conventional. Appeal Br. 15, 19, 26.
Appellants' arguments are not persuasive. Under the facts here, the
precedent of our reviewing court requires that the rejections be affirmed. As
determined by the Examiner, the claims are directed to an abstract idea, i.e.,
a mathematical algorithm, without more to provide an inventive concept.
Simply put, "[i]nformation as such is an intangible," collecting it and
analyzing it by mathematical algorithms without more is abstract, and
manipulating information with routine tools "is abstract as an ancillary part
of such collection and analysis." Electric Power Grp., 830 F.3d at 1353-54.
Here, similar to Electric Power Group, the claims merely require collecting
data in a conventional way, and manipulating that data for analytical
purposes using a conventional computer component programmed to do so;
these steps do not transform the abstract ideas of the claims into a patent-
eligible invention. Also, similar to Cleveland Clinic, 859 F.3d at 1352, the
claims are directed to measuring a natural biological phenomenon
(pulmonary edema). Detecting, measuring, and/or comparing natural
phenomena using known and conventional techniques is not patent-eligible.
The claims here are also not unlike those of SAP America, Inc., which
included a claim for a system and recited processing information in a new
way to generate a report, which was argued to be an improvement in the
field of financial analysis; the claims also recited non-abstract components
like a database and processors. The Federal Circuit held that the claims
were directed to an abstract idea - analyzing information by mathematical
algorithms, with the steps occurring in the non-physical realm, and the
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additional claimed components being merely routinely available things like
computers using their already available basic functions, all together being a
patent-ineligible concept. Similarly, here, we are confronted with claims, be
them method, system, or computer-readable medium claims, that recite a
mathematical algorithm including determining a slope relating to inspiration
and measured impedance, comparing this to a threshold, determining a
magnitude of mean impedance decrease, and then identifying a correlation
between these things and a physical condition, i.e., pulmonary edema. All
this is directed to a mathematical algorithm, like that illustrated by
Appellants in the Specification's Figure 7. The other claimed features, such
as an implantable medical device, a processor, a memory, or an impedance
sensor, are not claimed to be used in a new and unconventional way or to be
themselves improved in any way, but are standard components used in
generic ways, as explained in the Specification. See, e.g., ,r,r 117-119.
Moreover, the facts here are unlike those of Enfish, Diehr, and
Bascom. Unlike Enfish, where the Federal Circuit found the claims to be
patent-eligible, here, although the claims are similarly directed, essentially,
to a software solution or something similar to it, they are not "directed to a
specific implementation of a solution to a problem in the software arts," as
were the claims in Enfzsh. See Enfzsh, 822 F.3d at 1339. Unlike Diehr,
where the Supreme Court held that the claims were not directed to a
mathematical algorithm, but instead to a process for manufacturing rubber,
here the claims are directed solely to a mathematical algorithm, using
conventional data collecting sensors and computer devices in generic ways,
to achieve a non-physical result (i.e., storing a determination of pulmonary
edema). See Diehr, 450 U.S. at 176. Unlike Bascom, where the claims
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provided a software solution applicable to solve a problem specific to the
software-based environment of the internet, the claims here are directed to a
new way of making calculations on data routinely used in analyzing cardiac
and pulmonary conditions, even pulmonary edema specifically. See
Bascom, 827 F.3d 1343--45, 1350-51; see also Final Action 5 (citing
Tehrani (Abstract, ,r,r 8, 15-16, 29, 82 (determining pulmonary edema by
measuring respiration parameters)); Yun (i1i1 18, 21, 31, 38, 58, 64
(measuring respiratory impedance and inspiration waveform slopes using
IMD to determine pulmonary edema)); Zielinski (Abstract, ,r 3, Figure 1
(measuring impedance waveforms using IMD to evaluate pulmonary
edema)); and Belalcazar (Abstract, ,r,r 4, 21, 32, 56 ( diagnosing pulmonary
edema by sensing impedance using IMD and processor))).
Appellants have argued that there is no evidence that the additional
claim elements, noted above, not directed to the abstract idea, are merely
generic components used in conventional and routine ways. We note that
such a determination is a question of fact, as discussed in Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). Appellants' arguments are not
persuasive in view of the aforementioned evidence cited by the Examiner to
the contrary. See Final Action 5 ( citing Tehrani, Yun, Zielinski, and
Belalcazar); and Specification as cited supra.
Appellants' tie-up argument is also unpersuasive. "While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa, 788 F.3d at
1379.
For the reasons set forth above, pursuant to the precedent of our
reviewing court, we affirm the § 101 rejections.
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SUMMARY
The rejections of the claims as directed to patent-ineligible subject
matter are each affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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