Al-Ali, Ammar

Patent Trials and Appeals Board

Apr 10, 2020

14566032 - (D) (P.T.A.B. Apr. 10, 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.
14/566,032 12/10/2014 Ammar Al-Ali MAS.685D1 1638
64735 7590 04/10/2020
KNOBBE, MARTENS, OLSON & BEAR, LLP
MASIMO CORPORATION (MASIMO)
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
AGAHI, PUYA
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
04/10/2020 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AMMAR AL-ALI
____________________

Appeal 2018-001514
Application 14/566,032
Technology Center 3700
____________________

Before LISA M. GUIJT, BRADLEY B. BAYAT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 6–12, and 19–21 under 35 U.S.C.
§ 101 as being directed to ineligible subject matter.3 See Final Act. 2. We
have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on
October 22, 2019.
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims relate to patient monitors. Spec. ¶ 2. Independent claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for improving a physiological monitor display
providing an indication of a patient’s condition, the method
comprising:
noninvasively measuring a first physiological parameter
of a patient using light attenuation by pulsing blood detected by
an optical sensor;
noninvasively measuring a second physiological
parameter of the patient using the light attenuation by pulsing
blood detected by the optical sensor;
loading a first range of values corresponding to a range of
normal values for the first physiological parameter;
loading a second range of values corresponding to a range
of normal values for the second physiological parameter;

1 In this Decision, we refer to (1) the Examiner’s Final Office Action
dated July 14, 2016 (“Final Act.”) and Answer dated September 28, 2017
(“Ans.”), and (2) Appellant’s Appeal Brief dated May 5, 2017 (“Appeal
Br.”) and Reply Brief dated November 28, 2017 (“Reply Br.”).
2 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 Masimo
Corporation. Appeal Br. 3.
3 Claims 5 and 13–18 are cancelled. Appeal Br. 30–33 (Claims App.).
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displaying a first axis corresponding to the first
physiological parameter of the patient on a display area of the
physiological monitor display;
displaying a second axis corresponding to the second
physiological parameter of the patient with respect to the first
axis on the display area of the display;
displaying a shape on the display area with respect to the
first axis and the second axis defined by the first range of values
and the second range of values; and
plotting on the display area an assessment indicator
representing the measured first physiological parameter as a
function of the first axis and the measured second physiological
parameter as a function of the second axis, wherein the position
of the assessment indicator with respect to the shape indicates
whether the patient’s condition is normal.

OPINION
Claims 1–4, 6–12, and 19–21 stand rejected under 35 U.S.C. § 101
because “the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more.” Final Act. 2. Appellant argues claims 1–4, 6–12, and 19–21 as a
group. Appeal Br. 5–7. We select independent claim 1 as the representative
claim, and claims 2–4, 6–12, and 19–21 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(iv) (2019).

35 U.S.C. § 101 – Patent Eligibility
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court determined that there are certain judicial
exceptions to § 101, namely: (1) laws of nature, (2) natural phenomena, and
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(3) abstract ideas. See Mayo Collaborative Svc. v. Prometheus Labs, Inc.,
566 U.S. 66, 70–71 (2012).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo,
566 U.S. at 72–73). According to the Supreme Court, we first determine
whether the claims at issue are directed to one of those concepts. Id. If so,
we secondly “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 79, 78).
The Patent Office published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) (“Revised Guidance”). When conducting
step one of the Alice framework under this guidance, we first look to
whether the claim recites:
Prong 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
Prong 2 additional elements that integrate the judicial exception
into a practical application.
See Revised Guidance, 84 Fed. Reg. at 54–55. 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; 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 Revised Guidance, 84 Fed. Reg. at 51.

§ 101 Analysis
Applying the Revised Guidance to the facts on this record, we agree
with the Examiner that Appellant’s claims are directed to patent-ineligible
subject matter without significantly more.
Judicial Exception: Step One of the Mayo/Alice Framework; Step 2A,
Prong 1 of the 2019 Revised Guidance

The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human activity such as fundamental economic practices, and (3)
mental processes. The Revised Guidance identifies the following as markers
of mathematical concepts as “mathematical relationships, mathematical
formulas or equations, mathematical calculations.” Revised Guidance, 84
Fed. Reg. at 52 (citations omitted). Similarly, markers of a mental process
are “concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).” Id. (footnotes omitted).
Here, the Examiner finds that claim 1 is “directed to the abstract idea
of ‘displaying a shape on the display area . . . and plotting on the display
array an assessment indicator . . . wherein the position of the assessment
indicator with respect to the shape indicates whether the patient’s condition
is normal’” (Final Act. 2–3), and that the steps in claim 1 are directed to “the
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concept of organizing information through mathematical correlations” (id. at
3). The Examiner explains that the courts have deemed that “the idea of
diagnosing an abnormal condition in an individual (i.e. ‘. . . assessment
indicator with respect to the shape indicates whether the patient’s condition
is normal’)” is abstract (id. at 7 (citing In re Grams, 888 F.2d 835 (Fed. Cir.
1989))), and that “utilizing a conventional sensor to display data in the
manner recited is no more than organizing information through
mathematical correlations” (id. at 7).
Appellant argues that the Examiner’s characterization of claim 1 as
directed to “organizing information through mathematical correlations” is
erroneous because this characterization “is unhinged from the specific
limitations recited in the claims to improve an electronic medical monitor
display.” Appeal Br. 13. According to Appellant, the “pending claims recite
specific limitations for generating a structured display using two sets of
physiological parameters.” Id. at 14; see Reply Br. 4 (arguing that
“Appellant’s claims relate to improved techniques for displaying multiple
physiological parameters on a patient monitor” (citing Spec. ¶ 7)). Appellant
also argues that “the subject matter is direct[ed] to a unique and novel system
for providing a caregiver a straightforward, fast, and meaningful visual
representation of a patient’s condition, i.e., normal or abnormal, not merely
plotting one parameter measurement versus another.” Reply Br. 7.
Under Prong 1, we find that the claimed “method for improving a
physiological monitor display providing an indication of a patient’s
condition” recites a mental process. See Final Act. 2–3, 7 (finding the
claims recite a method of organizing information through mathematical
correlations). This can be seen, not only in the preamble of claim 1, but also
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in the recited steps including: (1) “measuring” first and second
physiological parameters of a patient; (2) “loading” a first and second range
of values corresponding to a range of normal values for the first and second
physiological parameters; and (3) “plotting on the display area an
assessment indicator representing the measured first physiological parameter
. . . and the measured second physiological parameter . . . , wherein the
position of the assessment indicator with respect to the shape indicates
whether the patient’s condition is normal.”
The claimed method recites a mathematical relationship between (1)
the first and second physiological parameters of a patient, (2) an assessment
indicator representing the measured first and second physiological
parameters, and (3) the first and second range of values that correspond to
normal values. We find that plotting the assessment indicator based on
measured parameters recorded on x and y axes is a mental process step,
which may be performed with pen and paper.
The claimed method also recites a mental process––
observation/measurement of the first and second physiological parameters of
the patient; and evaluation/comparison between the first and second
physiological parameters of the patient and an assessment indicator against
the first and second range of values that correspond to normal values. We
note that Appellant does not identify anything in claim 1 or any disclosure in
the Specification that indicates that the claimed method cannot be done in
the human mind or with pen and paper. See Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer-implemented steps, there is nothing in the
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claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”).

Practical Application: Step One of the Mayo/Alice Framework; Step 2A,
Prong 2 of the 2019 Revised Guidance
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we next consider under Prong 2, whether the claim recites
additional elements, considered individually and in combination, that
integrate the judicial exception into a practical application. See Revised
Guidance, 84 Fed. Reg. at 54–55.
Here, Appellant argues that the claimed inventions solve a specific
problem in the patient monitoring arts which includes improving a patient
monitoring display. Appeal Br. 16. Appellant argues, in part, that:
Like the claims at issue in Enfish LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016), Trading Techs. Int'l, Inc. v. CQG,
INC., No. 2016-1616, 2017 WL 192716 (Fed. Cir. Jan. 18, 2017)
1, and McRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299 (Fed. Cir. 2016), the detailed medical monitoring
display claims here recite a specific implementation of a solution
to a problem in physiological monitor display arts. “Precedent
has recognized that specific technologic modifications to solve a
problem or improve the functioning of a known system generally
produce patent-eligible subject matter.” Trading Techs., 2017
WL 192716, at *3 (emphasis added).
Id.; see also Reply Br. 10 (“Appellant’s claims are directed to solving a
specific problem in the patient monitoring arts, and the claims recite a
particular solution for using physiological parameter information to improve
a patient monitor display.”), 15–16.
We disagree. Neither the Specification (see, e.g., Spec. ¶¶ 7–17) nor
claim 1 purport to improve the functioning of the display monitor or
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overcome a problem arising in the realm of computer networks. The
problem with which the claims are concerned is indicating whether a
patient’s condition is normal by plotting an assessment indicator using first
and second physiological parameters. Although a physiological monitor
display is recited in claim 1 for displaying, for example, axes corresponding
to measured parameters, shapes corresponding to value, and an assessment
indicator, we are not persuaded by Appellant’s argument that the display of
specified data itself is an improvement to physiological monitor display
technology. Put another way, there is no indication that the elements recited
in the claims produce an improvement in the display monitor or “an
improvement to computer functionality itself.” Enfish, 822 F.3d at 1336.
In view of the above, we determine that under Step 2A, Prong 2, the
additional elements do not integrate the recited abstract idea into a practical
application.4 Thus, we find claim 1 is directed to a judicial exception: an
abstract idea and, in particular, a mental process of determining whether a
patient’s condition is normal.

4 Notably, claim 1 fails to specify a device onto which the values are
loaded. Cf. (claim 1: “loading a first range of values . . . ; loading a second
range of values . . . ). To the extent claim 1 implies that the values are
loaded onto a computing device, the recitation of a generic computing device
does not integrate the recited abstract idea into a practical application.
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea . . . on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359; see also, e.g., Spec.
¶ 17 (“[t]he method for providing an individual baseline for the patient’s
wellness also includes loading the stored data and comparing the stored data
to at least one new measurement of physiological parameters of the patient”)
(emphasis added)).
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Inventive Concept: Step Two of the Mayo/Alice Framework (Step 2B of the
2019 Revised Guidance)
Under this step, the Examiner determined that the “claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception 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. 4. The Examiner
found that the “claims recite the additional limitations of [] ‘a physiological
monitor display’ and an ‘optical sensor’, which are recited at a high level of
generality and are recited as performing generic computer functions
routinely used in computer applications,” and “[g]eneric computer
components recited as performing generic computer functions that are well-
understood, routine and conventional activities amount to no more than
implementing the abstract idea with a computerized system.” Id.
Appellant argues that the Examiner’s findings are erroneous because
the pending claims here involve a particular method for using raw data from
an optical sensor in order to improve a patient monitoring process (Appeal
Br. 20), the claims do not preempt the alleged abstract ideas (id. at 21), the
claims are necessarily rooted in technology (id. at 23), and the claims also
recite a specific, discrete implementation of the identified abstract ideas (id.
at 25).
Appellant’s arguments are not persuasive. We agree with the
Examiner that, as discussed above, almost all of the claimed steps are
directed to mathematical concepts and mental processes (e.g., ‘assessment
indicator with respect to the shape indicates whether the patient's condition
is normal’).” Providing a display and an optical sensor does no more than
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implement the abstract idea on a computer. Appellant’s arguments that there
are benefits to the invention, which are “significantly more” than that
offered currently, simply describes the benefits of the abstract idea, rather
than identifying that there is something claimed beyond the abstract idea.
Similarly, the absence of complete preemption does not demonstrate patent
eligibility.
For all of the above reasons, we are not persuaded of error in the
Examiner’s rejection of claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–4, 6–12, and 19–
21, which fall with claim 1.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–4, 6–12,
19–21
101 Eligibility 1–4, 6–12,
19–21

The rejection of claims 1–4, 6–12, and 19–21 is AFFIRMED.
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) (2017).
AFFIRMED