Medidata Solutions, Inc.Download PDFPatent Trials and Appeals BoardMar 31, 202014630259 - (D) (P.T.A.B. Mar. 31, 2020) 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. 14/630,259 02/24/2015 David Lee 20622.0067US (IDF-67 US) 3523 127350 7590 03/31/2020 Steptoe & Johnson LLP 1330 Connecticut Avenue NW Washington, DC 20036 EXAMINER PORTER, RACHEL L ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 03/31/2020 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): hfox@steptoe.com ipdocketing@steptoe.com rgreenfeld@steptoe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID LEE, KARA DENNIS, and JOHN SAVAGE Appeal 2018-008137 Application 14/630,259 Technology Center 3600 Before JASON J. CHUNG, JOYCE CRAIG, and STEPHEN E. BELISLE, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 5–9 and 11. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on March 10, 2020. We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Medidata Solutions, Inc. Appeal Br. 3. Appeal 2018-008137 Application 14/630,259 2 CLAIMED SUBJECT MATTER The claims are directed to a system and method for determining subject conditions in mobile health clinical trials. Spec., Title. Claim 5, reproduced below, is illustrative of the claimed subject matter: 5. A system comprising: a processor; a model training module configured to receive data from a plurality of mobile health sensors, including sensors within a single device or multiple devices, and to generate, using the processor, a predictive model of the state of a subject of a clinical trial based on said data and a data source that records said subject state; and a scoring module configured to use the predictive model to calculate, using the processor, subject state for data without the data source that records said subject state. REJECTIONS Claims 5–9 and 11 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception without significantly more. Final Act. 2–4. Claims 5–9 and 11 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Srinivasan et al. (US 2013/0226613 A1, published Aug. 29, 2013) (“Srinivasan”) and Wang et al. (US 2016/0091965 A1, published Mar. 31, 2016) (“Wang”). Final Act. 4–12. ANALYSIS Rejection of Claims 5–9 and 11 under 35 U.S.C. § 101 Appellant argues that the Examiner’s rejection of claims 5–9 and 11 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter is in Appeal 2018-008137 Application 14/630,259 3 error. Appeal Br. 7. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). Legal Standard “Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (citation omitted). The Supreme Court’s two-step framework guides our analysis of patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). In addition, the Office recently published revised guidance for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically with respect to applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office Guidance”). If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture, or composition of matter) then the first inquiry is whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two prongs of analysis: (i) does the claim recite a judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial exception integrated into a practical application. 84 Fed. Appeal 2018-008137 Application 14/630,259 4 Reg. at 54. Under the Office Guidance, if the judicial exception is integrated into a practical application, see infra, the claim is patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claim is directed to a judicial exception (i.e., recites a judicial exception and does not integrate the exception into a practical application), the next step is to determine whether any element, or combination of elements, amounts to significantly more than the judicial exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56. 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 (citation omitted). To summarize, under the current Office 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 Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)). 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 Appeal 2018-008137 Application 14/630,259 5 (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 Office Guidance. Prima Facie Case Appellant argues that the Examiner failed to make a prima facie case of subject matter ineligibility by overgeneralizing and ignoring certain claim elements. Appeal Br. 7. We disagree. The Federal Circuit has observed repeatedly that “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the U.S. Patent and Trademark Office (the “USPTO” or “Office”) carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for the rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original). Thus, what is required of the Office is that it sets forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of § 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (“Section 132 is violated when a rejection is so Appeal 2018-008137 Application 14/630,259 6 uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”). Here, in rejecting the pending claims under 35 U.S.C. § 101, the Examiner notified Appellant that the claims are “directed to the abstract idea of developing a predictive model to determine a patient’s condition” (Final Act. 2), and that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception (id). The Examiner, thus, set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of 35 U.S.C. § 132. And we find that, in doing so, the Examiner established a prima facie case of patent ineligibility. Accordingly, we are not persuaded that the Examiner has failed to set forth a prima facie case of patent ineligibility for representative claim 5. Step 1 Claim 5, as a system claim, falls within the machine category of § 101. See Office Guidance, 84 Fed. Reg. at 53–54 (citing MPEP §§ 2106.03, 2106.06). Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner determined that claim 5 is directed to “the abstract idea of developing a predictive model to determine a patient’s condition,” which recites mathematical relationships and, thus, recites an abstract idea. Final Act. 3. The Examiner identified the following steps as part of the recited abstract idea: Appeal 2018-008137 Application 14/630,259 7 receiving data from a plurality of mobile health sources, including sources that come from a single device or multiple devices, and generating using the processor, a predictive model of the state of a subject of a clinical trial based on said data and a data source that records said subject state; and using the predictive model to calculate . . . subject state for data without the data source that records said subject state. Final Act. 2–3. Consistent with Appellant’s description of the claims, we find that the limitations we summarize above describe generating and using a predictive model to calculate “subject state” for data. The Specification describes the mathematical calculations and relationships for predictive modeling and correlation analysis on captured data. See Spec. ¶¶ 35–42; Final Act. 3. Thus, the limitations above are characterized fairly as using mathematical relationships and calculations, which fall into the “mathematical concepts” category of abstract ideas. See 84 Fed. Reg. at 52. Appellant first argues that the Examiner erred by citing to Alice, which did not involve claims directed to mathematical concepts. Appeal Br. 7–8. Appellant’s argument is not persuasive. As the Examiner explained in the Answer, the Examiner cited to Alice as a reference to the Supreme Court’s characterization of mathematical relationships and formulas as abstract ideas. Ans. 14. We see no error in the Examiner’s reference to Alice. Appellant next argues that claims involving mathematical relationships are patent eligible. Appeal Br. 11 (citing Diamond v. Diehr, 450 U.S. 175 (1981); Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). In particular, Appellant argues that, like claims Appeal 2018-008137 Application 14/630,259 8 found patent eligible that use mathematics or an algorithm or perform a calculation, claim 5 is directed to a system for determining subject state based on data from mobile health sensors. Appeal Br. 12. Also according to Appellant, claim 5 is “not [directed to] a mathematical formula,” so it is patent eligible. Id. (citing Thales, 850 F.3d at 1348). The question before us is not whether other cases that involve mathematical relationships were patent eligible, but whether claim 5 recites an abstract idea. We are not persuaded that the Examiner erred in determining it does. Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible. See Parker v. Flook, 437 U.S. 584, 595 (1978). Appellant next argues that claims involving sensors are patent eligible. Appeal Br. 12. Appellant argues that the claims in Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), involved using information from sensors to make a determination of orientation. Appeal Br. 12. According to Appellant, claim 5 recites using information from sensors to make a determination of subject state by generating a predictive model of subject state and then using the predictive model to determine subject state. Id. Appellant argues that, because “Appellant’s claimed invention is more specific and concrete than the claims in Thales, it is also patent eligible, and the rejection should be reversed.” Id. at 13. We disagree. In Thales, the improvement was to a physical tracking system that used mathematical equations that were “dictated by the placement of the inertial sensors and application of laws of physics” to determine the orientation of a tracked object relative to a moving platform. Appeal 2018-008137 Application 14/630,259 9 Thales, 850 F.3d at 1348. Thus, the claims were directed to “systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame.” Id. at 1348–49. Here, however, Appellant does not argue that claim 5 recites a unique combination and arrangement of sensors. Rather, claim 5 recites sensors merely as the source of data received by the model training module. In a Supplemental Appeal Brief, filed March 4, 2020, Appellant further argues that claim 5 is similar to the claim in Example 39 that accompanies the Office Guidance. Supp. Appeal Br. 5. We disagree. The claim in Example 392 recites the collection and transformation of “digital facial images” to create a “training set” that is then used to train a “neural network” for facial detection. The hypothetical claim in Example 39 does not recite any of the groups of abstract ideas identified in the Office Guidance. Unlike the claim in Example 39, claim 5 expressly recites “to calculate.” Appeal Br. 20. Claim 5, under its broadest reasonable interpretation, recites the mathematical concepts of generating and using a mathematical model to calculate values for data. The Specification describes the mathematical calculations and relationships for predictive modeling and correlation analysis on captured data. See Spec. ¶¶ 35–42; Final Act. 3. A claim that recites a mathematical calculation falls within the “mathematical concepts” grouping of abstract ideas. Oct. 2019 Update: 2 Hypothetical claim in Example 39 (Method for Training a Neural Network for Facial Detection) of the Office Guidance. Subject Matter Eligibility Examples: Abstract Ideas, 8–9. Appeal 2018-008137 Application 14/630,259 10 Subject Matter Eligibility, at 4. In particular, “an act of calculating using mathematical methods to determine a variable or number” is considered a mathematical concept. Id. Thus, at least the limitation “a scoring module configured to use the predictive model to calculate, using the processor, subject state for data without the data source that records said subject state,” as recited in claim 5, recites a mathematical concept. Because we agree with the Examiner that the claim recites an abstract idea, we proceed to Prong Two of Step 2A to determine if the idea is integrated into a practical application, in which case the claim as a whole would not be “directed to” merely an abstract idea. Step 2A(ii): Judicial Exception Integrated into a Practical Application? Because we determined that claim 5 recites a patent-ineligible concept, we next determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. We use the term “additional elements” for claim features, limitations, or steps that the claim recites beyond the identified judicial exception. See Revised Guidance at 55 n.24. In claim 5, the additional elements include the limitations “system,” “processor,” “model training module,” “mobile health sensors,” “single device,” “multiple devices,” “data source,” and “scoring module.” The Examiner determined that the additional limitations are not sufficient to amount to significantly more than the judicial exception Appeal 2018-008137 Application 14/630,259 11 because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. Final Act. 3 (citing Spec. Figs. 1A, 1B, and 3, ¶ 60). We agree with the Examiner. Appellant argues that claim 5 is directed to “an improvement in the ways data about subject state have been acquired and used in the past, and this invention goes further by using such data to predict that subject’s state or condition.” Supp. Appeal Br. 9. Appellant argues that “this invention is a specific way of using data from mobile health sensors, such as a Fitbit®, to improve the development of drugs.” Id. We are not persuaded by Appellant’s arguments. Appellant has not identified which additional element(s) integrates the abstract idea into a practical application that will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. Nor has Appellant identified where the Specification provides sufficient details that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Claim 5 recites a step directed to receiving data and generating a predictive model of the state of a subject of a clinical trial based on received data and a data source. Data gathering or receiving data is merely insignificant extra-solution activity that does not add significantly more to the abstract idea to render the claimed invention patent-eligible. See In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (en banc), aff’d on other grounds, 561 U.S. 593 (2010) (“[T]he involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity.”); see also MPEP § 2106.05(g); and see buySAFE, Inc. v. Google, Appeal 2018-008137 Application 14/630,259 12 Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (computer receives and sends information over a network). Moreover, claim 5 does not recite any particular way “to generate” the predictive model. Instead, the claim identifies the data used in the creation of the model and broadly claims the resulting model, which is used, without any details, in the “to calculate” step recited in claim 5. Considering claim 5 as a whole, then, Appellant’s invention lacks a technical solution to a technical problem. Claim 5 as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Here, the additional limitation(s) do not integrate the judicial exception into a practical application. More particularly, the claims do not recite (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55. Rather, claim 1 recites an abstract ideas as identified in Step 2A(i), supra, and none of the limitations integrates the judicial exception into a practical application. Therefore, because the abstract idea is not integrated into a practical application, we conclude that the claim is directed to the judicial exception. Step 2B — “Inventive Concept” or “Significantly More” If the claims are directed to a patent-ineligible concept, as we conclude above, we proceed to the “inventive concept” step. For Step 2B we Appeal 2018-008137 Application 14/630,259 13 must “look with more specificity at what the claim elements add, in order to determine ‘whether they identify an inventive concept in the application of the ineligible subject matter’ to which the claim is directed.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). We look to see whether there are any “additional features” in the claims that constitute an “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be more than “well- understood, routine, conventional activity.” Mayo, 566 U.S. at 79. The Examiner determined that, taken alone and as an ordered combination, the collective functions of the additional elements merely provide “conventional computer implementation.” Final Act. 4. Appellant argues that the Examiner has not satisfied the requirements set forth in Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018), which requires evidence of the well-understood, routine, and conventional (“WURC”) nature of the additional elements. Reply Br. 14. We are not persuaded by Appellant’s argument that the Examiner erred. The Examiner cited paragraph 15 of the Specification as showing that the recited sensors are WURC. Ans. 16. The Examiner also cited paragraph 60 as showing that the recited “processor” is WURC. Id. The Examiner cited Figures 1A, 1B, and 3 as showing the recited “system” and “processor” are WURC. Courts have recognized that receiving or transmitting data over a network, in a manner similar to that recited in the claims, is WURC. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d Appeal 2018-008137 Application 14/630,259 14 1350, 1355 (Fed. Cir. 2014) (computer receives and sends information over a network). We note that the Specification describes that the parts and blocks shown in Figures 1A and 1B are “examples of parts that may comprise system 10, and do not limit the parts or modules that may be included in or connected to or associated with system 10.” Spec. ¶ 31. Moreover, we find that the Specification describes that patients “may use one or more mobile health devices or other wearable devices (either or both referred to herein as “mHealth devices”) to monitor personal data or metrics . . . .” Spec. ¶ 11. Appellant does not persuasively rebut the Examiner’s findings or direct our attention to anything in the Specification that indicates the computer components perform anything other than WURC functions. See buySAFE, 765 F.3d at 1355 (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data, extracts classification information from the received data, and stores the digital images insufficient to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing, sending information over networks insufficient to add an inventive concept). Because the Specification describes the additional elements in general terms, without describing the particulars, we conclude the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of Appellant’s Specification, as cited above. See Berkheimer Memo3 § III.A.1; Spec. Figs. 3 “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes Appeal 2018-008137 Application 14/630,259 15 1A, 1B, 3, ¶¶ 11, 15, 60. We conclude claim 5 does not have an inventive concept because the claim, in essence, merely recites various computer- based elements along with no more than mere instructions to implement the identified abstract idea using the computer-based elements. With regard to dependent claims 6–9 and 11, Appellant contends the Examiner erred because the Examiner “did not describe any aspect of any of claims 6-9 and 11.” Appeal Br. 10. Appellant, however, did not present arguments that any of the additional elements in claims 6–9 and 11 integrate the abstract idea into a practical application and includes an inventive concept. See id. Thus, Appellant has not persuasively rebutted the Examiner’s determination that “the additional limitations of claims 6–9 and 11 fail to add significantly more to the limitations of claim 5.” Final Act. 4. Therefore, on the record before us, Appellant has not shown that the claims on appeal add a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional, when the claim limitations are considered both individually and as an ordered combination. See MPEP § 2106.05(d). In light of the foregoing, we conclude, under the case law and Office Guidance, that each of Appellant’s claims 5–9 and 11, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application, and does not include an inventive concept. additional elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional). Appeal 2018-008137 Application 14/630,259 16 Rejection of Claims 5–9 and 11 under 35 U.S.C. § 103 We have reviewed the § 103 rejection of claims 5–9 and 11 in light of Appellant’s arguments that the Examiner erred. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments Appellant could have made, but chose not to make, in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant’s arguments are not persuasive. We agree with and adopt as our own the Examiner’s findings of facts and conclusions as set forth in the Answer and in the Action from which this appeal was taken. We provide the following explanation for emphasis. With respect to independent claim 5, Appellant contends the cited portions of Srinivasan and Wang do not disclose “generat[ing], using the processor, a predictive model of the state of a subject of a clinical trial,” as recited in claim 5. Appeal Br. 15. Appellant argues that, regarding the cited portions of Srinivasan, “[n]othing in these passages discusses ‘subject state’ (e.g., sleep, work, wake, gym) or a predictive model of subject state, as required by the claims.” Id. We are not persuaded that the Examiner erred. The Examiner concluded that under its broadest, reasonable interpretation, the claim term “subject state” may include any type of medical data or parameter. Ans. 19. The Examiner found that Srinivasan teaches “identifying an estimate of a missing value in medical data” (Srinivasan ¶ 36, where “value in the medical data” reads on subject state) and further teaches “determining patient temperature, and heart rate at various time intervals” (id. at ¶¶ 23, 24). We agree with the Examiner that Appellant does not define “subject state” in the Specification. Appellant points to paragraph 11 of the Appeal 2018-008137 Application 14/630,259 17 Specification as defining “subject state” to include “sleeping, exercising, or at work, or whether the subject is experiencing an adverse event, is in pain, or is suffering from a disease condition.” Reply Br. 18–19. Our reviewing court guides, “[i]n the patentability context, claims are to be given their broadest reasonable interpretations . . . limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description.”). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted). Here, we agree with the Examiner that Appellant did not define the term “subject state” clearly. The Specification identifies some types of information that “subject state” “may include” (Spec. ¶ 11), but does not make clear that “subject state” is limited to such information. With regard to Appellant’s further argument that the missing body temperature taught in Srinivasan cannot be the recited “subject state” because it is “personal data or metrics,” we are not persuaded. See Reply Br. 19 (citing Spec. ¶ 11). Appeal 2018-008137 Application 14/630,259 18 Again, the Specification provides examples of personal data or metrics, but does not clearly limit personal data or metrics to those examples or indicate that “subject state” cannot also include such information. Thus, Appellant has not persuaded us that the Examiner’s interpretation of “subject state” is overly broad, unreasonable, or inconsistent with the Specification. Even under Appellant’s interpretation, however, claim 5 is obvious in view of the combination of Srinivasan and Wang because the disputed limitation would only differ from the prior art in the content or nature of the data processed. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Srinivasan and Wang teaches or suggests the disputed limitation. Appellant next contends that the Examiner has not provided a proper motivation to combine the two prior art references. Appeal Br. 16. Appellant argues that “there was nothing in Srinivasan and/or Wang to encourage one of ordinary skill in the art to combine those references.” Reply Br. 21. We are not persuaded by this contention either. The Supreme Court has rejected the rigid requirement of demonstrating a teaching, suggestion, or motivation to combine references in order to show obviousness. See KSR Int’l Co., v. Teleflex Co., 550 U.S. 398, 419 (2007). Instead, a rejection based on obviousness only needs to be supported by “some articulated Appeal 2018-008137 Application 14/630,259 19 reasoning with some rational underpinning” to combine known elements in the manner required by the claim. Id. at 418. The Examiner provides “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Wang reference was provided to disclose the teaching of capturing data from sensors attached to one or more health devices and providing this data to training module and/or AI system. Ans. 20. The Examiner concluded, and we agree, that, at the time of Appellant’s invention, it would have been obvious to one of ordinary skill in the art to modify the system and method of Srinivasan with the teaching of Wang to capture data from health sensors from one or more mobile devices to providing to training module/AI system. See id.; Wang ¶ 79. For these reasons, we are not persuaded that the Examiner erred in combining the teachings of Srinivasan and Wang. Accordingly, we sustain the Examiner’s § 103 rejection of independent claim 5, as well as the Examiner’s § 103 rejection of dependent claims 6–9 and 11, argued as a group with claim 5. Appeal Br. 17–18. CONCLUSION We affirm the decision of the Examiner rejecting claims 5–9 and 11. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed 5–9, 11 101 Eligibility 5–9, 11 5–9, 11 103 Srinivasan, Wang 5–9, 11 Overall Outcome: 5–9, 11 Appeal 2018-008137 Application 14/630,259 20 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation