Medidata Solutions, Inc.

Patent Trials and Appeals Board

Mar 31, 2020

14630259 - (D) (P.T.A.B. Mar. 31, 2020)

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.
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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
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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.
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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
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(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
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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:
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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
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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.
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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.
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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
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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,
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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
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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
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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
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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).
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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
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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).
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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
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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

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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