Byung Hoon Ko et al.

Patent Trials and Appeals Board

Mar 10, 2020

14815245 - (D) (P.T.A.B. Mar. 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.
14/815,245 07/31/2015 Byung Hoon KO 012052.1234 8012
89980 7590 03/10/2020
NSIP LAW
P.O. Box 65745
Washington, DC 20035
EXAMINER
STICE, PAULA J
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
03/10/2020 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):
pto.nsip@gmail.com
pto@nsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BYUNG HOON KO, SANG KON BAE, CHOONGHEE LEE,
SUB SUNOO, SANG SEOK NAM, and HUN YOUNG PARK
Appeal 2019-002303
Application 14/815,245
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s final rejection of claims 1–11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellant’s claimed invention “relates to a method and apparatus that
analyze and evaluate characteristics of an exercise performed by a user”
(Spec. 1:10–11). Claims 1 and 11 are the independent claims on appeal.2
Claim 1, reproduced below with bracketed notations and indentation added,
is illustrative of the claimed subject matter:
1. An exercise managing method comprising:
[(a)] determining a cumulative heart rate (HR) of a user;
[(b)] analyzing, at a processor operatively connected to
a sensor, an exercise performed by the user based on the
cumulative HR; and
[(c)] outputting a result of the analyzing to the user,

1 We use the term Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed September 10, 2018) and Reply Brief (“Reply Br.,” filed January 22,
2019), and the Examiner’s Answer (“Ans.,” mailed November 19, 2018) and
Final Office Action (“Final Act.,” mailed March 21, 2018). Appellant
identifies Samsung Electronics Co., Ltd., as the real party in interest (Appeal
Br. 3).
2 Claim 11 recites “[a] non-transitory computer-readable storage medium
storing instructions that, when executed by a processor cause the processor
to perform the method of claim 1.” Claim 11, thus, appears to have been
drafted in a “shorthand” format to avoid rewriting the particulars of the
method of claim 1, and not to further define the claimed method recited in
claim 1 — an indication that claim 11 is an independent claim. See Ex parte
Porter, 25 USPQ2d 1144, 1145 (BPAI 1992). This does not, however,
affect our analysis here.
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[(d)] wherein the cumulative HR comprises at least one
of
[(i)] a first cumulative HR calculated based on
sum of HRs of the user measured, by the sensor, from a
start time of the exercise to an end time of the exercise,
or
[(ii)] a second cumulative HR of the user based on
sum of HRs measured, by the sensor, during a steady state,
and the steady state comprises a time period during which
the HRs of the user is maintained to be substantially
uniform.
REJECTIONS
Claims 1–11 are rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter.
Claims 6 and 7 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Claims 1–11 are rejected under 35 U.S.C. § 112(b) as indefinite for
failing to particularly point out and distinctly claim the subject matter that
Appellant regards as the invention.
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group (Appeal Br. 16–23).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “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., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
We are not persuaded, as an initial matter, by Appellant’s argument
that the Examiner has failed to establish a prima facie case of patent
ineligibility (Appeal Br. 17–18). 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”) carries its procedural burden of
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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
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 analyzing cumulative heart rate” (Final Act. 6), and that the claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception (id. at 6–7; see also Ans. 8–9). 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.
After Appellant’s Appeal Brief was filed, and the Examiner’s Answer
mailed, the USPTO published revised guidance for use by Office personnel
in evaluating subject matter eligibility under 35 U.S.C. § 101.
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019 Revised Guidance”). That
guidance revised the USPTO’s examination procedure with respect to the
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first step of the Mayo/Alice framework by (1) “[p]roviding groupings of
subject matter that [are] considered an abstract idea”; and (2) clarifying that
a claim is not “directed to” a judicial exception if the judicial exception is
integrated into a practical application of that exception. Id. at 50. The 2019
Revised Guidance, by its terms, applies to all applications, and to all patents
resulting from applications, filed before, on, or after January 7, 2019. Id.3
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.

3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the 2019
Revised Guidance in response to comments solicited from the public.
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Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded by Appellant’s arguments that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 17–23). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
Claim 1, reproduced above, recites an exercise managing method
comprising: (1) “determining a cumulative heart rate (HR) of a user”
(limitation (a)); (2) “analyzing, at a processor operatively connected to a
sensor, an exercise performed by the user based on the cumulative HR”
(limitation (b)); and (3) “outputting a result of the analyzing to the user”
(limitation (c)). Claim 1 also recites that the cumulative HR comprises at
least one of “[(i)] a first cumulative HR calculated based on sum of HRs of
the user measured, by the sensor, from a start time of the exercise to an end
time of the exercise,” or “[(ii)] a second cumulative HR of the user based on
sum of HRs measured, by the sensor, during a steady state, and the steady
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state comprises a time period during which the HRs of the user is maintained
to be substantially uniform” (limitation (d)). These limitations, when given
their broadest reasonable interpretation, recite managing a user’s exercise by
determining a user’s cumulative heart rate; analyzing an exercise performed
by the user based on the cumulative heart rate; and outputting the result of
the analysis.4 Claim 1 recites that the cumulative heart rate is determined by
calculating a sum of measured heart rates, i.e., (1) the sum of the user’s heart
rates measured from a start time of an exercise to an end time of the exercise
or (2) the sum of the user’s heart rates measured during a steady state when
the heart rates are substantially uniform. The Specification also discloses
that a user exercise is analyzed by calculating evaluation indices ΔHRsteady
and ΔHR Sumsteady (Spec. 20–22). The Specification describes that
“ΔHRsteady may be used as an evaluation index to evaluate whether the
quantity of the actually performed exercise is greater than, equal to, or less
than an exercise objective set for the user” (id. at 21), and that “ΔHRsteady
refers to a difference between measured HRsteady corresponding to an HR
measured in the steady state period and a target HR, as expressed by
Equation 4” (id. at 20). Equation 4 is reproduced below.

Equation 4
The Specification discloses that “ΔHR Sumsteady may be used as an
evaluation index to evaluate whether a quantity of an exercise actually

4 This interpretation is consistent with Appellant’s own characterization of
the claims as directed to “more accurately predicting the efficiency and
efficacy of the exercise of a user through determining and analyzing the
cumulative heart rate (HR)” (Appeal Br. 19, 21).
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performed after the steady state is reached is greater than, equal to, or less
than a target exercise quantity, in comparison to the exercise objective after
the user ends the exercise” (id. at 21). “ΔHR Sumsteady refers to a sum of
ΔHRsteadys” and “may be determined by summing up ΔHRsteadys from a start
time of the steady state to the end time of the exercise, as expressed by
Equation 5” (id.). Equation 5 is reproduced below.

Equation 5
Simply put, claim 1 recites mathematical calculations and mathematical
relationships, which are mathematical concepts and, therefore, an abstract
idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. See also SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that
claims to “a series of mathematical calculations based on selected
information” are directed to an abstract idea).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The only additional elements recited in claim 1, beyond the abstract
idea, are a sensor and “a processor operatively connected to [the] sensor,” —
elements that are described in the Specification as generic computer
components (see, e.g., Spec. 17:1–5; 28:8–20). We find no indication in the
Specification, nor does Appellant direct us to any indication, that the
operations recited in claim 1 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
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assertedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.5
Appellant argues that the claims are not directed to an abstract idea
but rather “directed at a highly specific combination of software
functionalities and hardware to aid in the computerized analysis of exercise
intensity from heart rate data” (Appeal Br. 20). Yet, as described above, we
find no indication in the Specification that the operations recited in claim 1
require any specialized computer hardware or other inventive computer
components, invoke any assertedly inventive programming, or that the

5 The 2019 Revised Guidance references the MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e) in describing
the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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claimed invention is implemented using other than generic computer
components to perform generic computer functions.
Indeed, although Appellant maintains that “a highly specific
combination of software functionalities and hardware” is required, claim 1
simply calls for “a processor operatively connected to a sensor” to perform
basic mathematical calculations in support of “determining a cumulative
heart rate (HR) of a user,” such as calculating a “sum of HRs of the user
measured.” Summation is a basic mathematical function that any processor
is capable of performing, i.e., a generic computer function performed by a
generic computer component. Determining a cumulative HR based on the
specified mathematical relationships also is substantially similar to other
practices that the courts have held abstract. See, e.g., Digitech Image Techs.,
LLC v. Elec. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
(holding that a process that employs mathematical algorithms to manipulate
existing information to generate additional information is abstract); see also
Parker v. Flook, 437 U.S. 584, 595 (1978) (“If a claim is directed essentially
to a method of calculating, using a mathematical formula, even if the
solution is for a specific purpose, the claimed method is nonstatutory.”
(internal citations omitted)).
Appellant attempts to draw an analogy between the present claims and
the patent-eligible claims at issue in Enfish (Appeal Br. 21–22 (arguing that
the claims at issue are like those in Enfish)). But, we can find no parallel
between claim 1 and the claims at issue in Enfish.
There, the Federal Circuit held that claims reciting a self-referential
table for a computer database were not directed to an abstract idea under
step one of the Mayo/Alice framework, and were patent eligible, because the
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claims were directed to an improvement in computer functionality. Enfish,
822 F.3d at 1336. The specification described the benefits of using a self-
referential table — faster searching and more effective data storage — and
highlighted the differences between the claimed self-referential table and a
conventional database structure. Id. at 1333, 1337. The Federal Circuit,
thus, rejected the district court’s characterization of the claims as directed to
the abstract idea of “storing, organizing, and retrieving memory in a logical
table,” id. at 1337, emphasizing that the key question is whether the focus of
the claims is on the specific asserted improvement in computer capabilities
or, instead, on a process that qualifies as an abstract idea for which
computers are invoked merely as a tool. Id. at 1335–36.
Appellant maintains here that “the present claims recite innovations
and improvements in computer technology, namely computerized analysis of
exercise intensity from heart rate data” (Appeal Br. 21) and “are rooted in
computer technology to overcome a problem specifically arising in exercise
management” (id. at 22). Yet, as the court expressly recognized in Enfish,
there is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other. The alleged advantages that
Appellant touts do not concern an improvement to computer capabilities but
instead relate to an alleged improvement in “more accurately predicting the
efficiency and efficacy of the exercise of a user” (id. at 19, 21) — a process
in which a computer is used as a tool in its ordinary capacity. Cf. Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266,
1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be
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performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”).
It also is not controlling that the claims do not preempt all kinds of
computerized analysis of exercise intensity (Appeal Br. 20) (citing DDR
Holdings and Helios Software, LLC v. SpectorSoft Corp., 2014 WL
4796111, *17 (D. Del. Sept. 18, 2014)). Although the Supreme Court has
described “the concern that drives [the exclusion of abstract ideas from
patent-eligible subject matter] as one of pre-emption,” Alice Corp., 573 U.S.
at 216, characterizing preemption as a driving concern for patent eligibility
is not the same as characterizing preemption as the sole test for patent
eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We also are not persuaded of Examiner error to the extent Appellant
maintains that the claims are not directed to an abstract idea because the
claims are allegedly novel and/or non-obvious, i.e., that “the Examiner has
been unable to produce prior art references disclosing the features recited in
the pending claims, and has withdrawn her prior art-based rejections”
(Appeal Br. 22). Neither a finding of novelty nor a non-obviousness
determination automatically leads to the conclusion that the claimed subject
matter is patent eligible. Indeed, “[g]roundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for
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Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent ineligible. See Mayo, 566 U.S. at 90; see also Diamond
v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.”).
We conclude, for the reasons outlined above, that claim 1 recites
mathematical concepts, i.e., an abstract idea, and that the additional elements
recited in the claim are no more than generic components used as tools to
perform the recited abstract idea. As such, they do not integrate the abstract
idea into a practical application. See Alice Corp., 573 U.S. at 223–24
(“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 adds specific limitations beyond the judicial exception that
are not “well-understood, routine, conventional” activity in the field, or
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception.
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Appellant argues that “there are ample ‘inventive concepts’ in the
claims to demonstrate patent eligibility” (Appeal Br. 21). In this regard,
Appellant notes that the Specification explains that although “[e]xercise
intensity is generally expressed in terms of measurable indices,” “[s]uch
measurements are inaccessible to most users because expensive equipment
and professional analysis is required to determine such indices” (id. at 22)
(citing Spec. 1:22–2:4). Appellant asserts that “accurate and quantitative
calculation of the exercise intensity is significant in exercise prescription”
and that “[t]he innovative technology of [claims] 1–11 accessibly and
conveniently measure[s] the exercise intensity” (id.). But, Appellant’s
argument is unpersuasive of Examiner error at least because “relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.” OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
Appellant further argues that “the claimed features are necessarily
rooted in computer technology in order to device [sic] a solution to
overcome a problem specifically arising in the realm of computerized
exercise management and optimization” (Appeal Br. 22). In particular,
according to Appellant, “[t]he present claims represent an improvement in a
computer’s detection and analysis of the exercise efficiency of the user” (id.
at 23) (citing Spec. 27:5–17).
The Specification describes operation 840 (on page 27 to which
Appellant refers) in which “exercise managing apparatus provides a result of
the analyzing to the user” (Spec. 27:5–6). For example, the Specification
states that “the exercise managing apparatus may analyze an exercise of a
user based on HR information, and provide the user with an optimized
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exercise objective or exercise program suitable for a current state of the
user” (id. at 27:14–17). But we do not see how, and Appellant does not
persuasively explain how, improving the analysis and optimization of a
user’s exercise objectives, and displaying a result to the user “on a display
screen” (id. at 27:7) amounts to an improvement in computer technology, as
opposed to an improvement in exercise management for which a generic
processor is used as a tool in its ordinary capacity.6
Appellant further argues that the section 101 rejection cannot be
sustained because “the Examiner has provided no evidence that computer-
aided exercise management based on cumulative heart rate (HR) of a user, as
recited in the present claims, is in any way a ‘conventional’ activity known
in the industry” (Appeal Br. 22). But, that argument is not persuasive at
least because “the relevant inquiry is not whether the claimed invention as a
whole is unconventional or non-routine.” BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Instead, the question under
step two of the Mayo/Alice framework (i.e., step 2B) is whether the claim
includes additional elements, i.e., elements other than the abstract idea itself,
that “‘transform the nature of the claim’ into a patent-eligible application.”
Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). See also
Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use
of a natural law also contain other elements or a combination of elements,

6 See, e.g., Spec. 28:8–12 (“A processing device may be implemented using
one or more general-purpose or special-purpose computers, such as, for
example, a processor, a controller and an arithmetic logic unit, a digital
signal processor, a microcomputer, a field-programmable array, a
programmable logic unit, a microprocessor, or any other device capable of
running software or executing instructions.”)
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sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added)).
Here, the only claim elements beyond the abstract idea are a sensor
and “a processor operatively connected to [the] sensor” i.e., generic
computer components used to perform generic computer functions — a
determination amply supported by, and fully consistent with the
Specification (see, e.g., Spec. 17:1–5; 28:8–20).7
Appellant cannot reasonably maintain, nor does Appellant,8 that there
is a genuine issue of material fact regarding whether operation of these
components is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 1 require any specialized hardware or inventive computer components
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions, e.g.,
determining, analyzing, and outputting information. Indeed, the Federal
Circuit, in accordance with Alice, has “repeatedly recognized the absence of

7 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
8 Appellant acknowledges that “‘exercising’ and ‘analyzing heart rate’ has
been practiced for quite some time” (Appeal Br. 20).
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a genuine dispute as to eligibility” where claims have been defended as
involving an inventive concept based “merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality.” Berkheimer v. HP, Inc., 890 F.3d
1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (Moore, J., concurring)
(citations omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does
not argue that other, non-abstract features of the claimed inventions, alone or
in combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–11, which fall with
claim 1.
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112(a) is a question of fact, and is assessed on a
case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding, Inc.,
230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as originally filed,
need not literally describe the claimed subject matter (i.e., using the same
terms or in haec verba) in order to satisfy the written description
requirement. But, the specification must convey with reasonable clarity to
those skilled in the art that, as of the filing date, the inventors were in
possession of the claimed invention. See id.
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Dependent Claim 6
The Examiner notes that dependent claim 6 recites “determining the
second cumulative HR based on a mean HR” (Final Act. 7). And the
Examiner takes the position that claim 6 is properly rejected under § 112(a),
because “[t]here is no discussion of averaging of HRs in the specification;
hence, no support for the term a ‘mean HR’” (id.).
We agree with Appellant that the requisite written description support
is provided at least by claim 6, as originally filed, and by the original written
disclosure at page 12, lines 13–19 (Appeal Br. 10). See In re Koller,
613 F.2d 819, 823 (CCPA 1980) (“original claims constitute their own
description”); see also In re Gardner, 475 F.2d 1389, 1391 (CCPA 1973)
(“[A]n original claim, in itself constituted a description in the original
disclosure equivalent in scope and identical in language to the total subject
matter now being claimed.”). Therefore, we do not sustain the Examiner’s
rejection of dependent claim 6 under 35 U.S.C. § 112(a), as failing to
comply with the written description requirement.
Dependent Claim 7
The Examiner notes that dependent claim 7 recites “indicating to the
user that a condition related to the exercise is achieved” (Final Act. 7). And
the Examiner takes the position that the claim is properly rejected under
§ 112(a), because “[t]here are many conditions related to exercise which are
not described by the specification and probably not intended (e.g. back pain,
muscle stress, etc.)” (id. at 7–8). See also Ans. 6 (“the specification does not
provide any conditions what-so-ever”).
We agree with Appellant that the requisite written description support
is provided at least at page 8, lines 15–24 of the Specification (Appeal
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Br. 11). For example, the Specification discloses that “when a preset target
exercise duration elapses or when a target exercise quantity is achieved, the
exercise managing apparatus may output a pre-stored audio signal through a
speaker, generate oscillation, or continually change a brightness of the
display” (Spec. 8:20–23).
We find that the Specification provides sufficient evidence that the
inventors were in possession of the claimed functionality at the time of
filing. See Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671,
683 (Fed. Cir. 2015) (“The more telling question is whether the specification
shows possession by the inventor of how [the claimed function] is
achieved.”). In particular, a person of ordinary skill in the art, on reviewing
the Specification, would understand that the inventors were in possession of
indicating to the user that a condition related to the exercise is achieved
(e.g., preset target exercise duration elapses).
In view of the foregoing, we do not sustain the Examiner’s rejection
of dependent claim 7 under 35 U.S.C. § 112(a), as failing to comply with the
written description requirement.
Indefiniteness
Independent Claims 1 and 11 and Dependent Claims 2–10
In rejecting the pending claims under 35 U.S.C. § 112(b), and
specifically focusing on independent claim 1, the Examiner takes the
position that claim 1 is “incomplete for omitting essential steps, such
omission amounting to a gap between the steps” (Final Act. 8). According
to the Examiner, “[t]he omitted steps [sic] are: a preliminary step of
gathering the heartbeats using a sensor which would be necessary for the
determining of cumulative heart rate” (id.).
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We agree with Appellant (Appeal Br. 12–13) that a person of skill in
the art would understand what is claimed when the claims are read in light of
the Specification, including the claim language itself, i.e., that a
determination of a cumulative heart rate (HR) of a user is made based on
collected user heart rate information. To the extent that the claim covers a
wide variety of methods for obtaining heart rate information, this relates to
the breadth of the claim, and not to indefiniteness. See, e.g., In re Miller,
441 F.2d 689, 693 (CCPA 1971) (“Breadth is not . . . indefiniteness.”).
Again, specifically focusing on claim 1, the Examiner takes the
position that the claims are indefinite for the additional reason that “[t]he
term ‘substantially’ in claim 1 is a relative term which renders the claim
indefinite” and, according to the Examiner, “there is no indication as to what
the range of substantially is or could be” (Final Act. 9).
“It is well established that when the term ‘substantially’ serves
reasonably to describe the subject matter so that its scope would be
understood by persons in the field of the invention, and to distinguish the
claimed subject matter from the prior art, it is not indefinite.” Verve, LLC v.
Crane Cams, Inc., 311 F.3d 1116 (Fed. Cir. 2002).
Expressions such as “substantially” are used in patent documents
when warranted by the nature of the invention, in order to
accommodate the minor variations that may be appropriate to
secure the invention. Such usage may well satisfy the charge to
“particularly point out and distinctly claim” the invention, 35
U.S.C. § 112, and indeed may be necessary in order to provide
the inventor with the benefit of his invention. In Andrew Corp.
v. Gabriel Elecs. Inc., 847 F.2d 819, 821–22, 6 USPQ2d 2010,
2013 (Fed.Cir.1988) the court explained that usages such as
“substantially equal” and “closely approximate” may serve to
describe the invention with precision appropriate to the
technology and without intruding on the prior art. The court
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again explained in Ecolab Inc. v. Envirochem, Inc., 264 F.3d
1358, 1367, 60 USPQ2d 1173, 1179 (Fed. Cir. 2001) that “like
the term ‘about,’ the term ‘substantially’ is a descriptive term
commonly used in patent claims to ‘avoid a strict numerical
boundary to the specified parameter,’” quoting Pall Corp. v.
Micron Separations, Inc., 66 F.3d 1211, 1217, 36 USPQ2d 1225,
1229 (Fed. Cir. 1995).
Id. at 1120.
Here, we agree with, and adopt the Appellant’s reasoning on
pages 14–15 of the Appeal Brief regarding why the use of the term
“substantially” serves reasonably to describe the claimed subject matter so
that its scope would be understood by persons of ordinary skill in the field of
the invention.
Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 112(b) of claims 1–11 on the bases outlined above.
Dependent Claim 3
In separately rejecting claim 3 under 35 U.S.C. § 112(b), the
Examiner takes the position that claim 3 is indefinite because “ratios are
unitless measures, whereas a difference in HRs is still denoted in beats/sec”
and “it is not clear how a difference in HRs is equivalent to, or descriptive
of, a ratio” (Final Act. 9–10).
Claim 3 broadly recites determining a ratio “based on” the difference
in HRs; thus, the determination of the ratio may include other operations in
addition to the claimed difference computation. The Examiner’s concern
about units of notation is not indicative of a lack of clarity. Although
claim 3 may be broad, we agree with Appellant (Appeal Br. 15–16) that it is
not indefinite.
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Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 112(b) of dependent claim 3.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11 101 Eligibility 1–11
6, 7 112(a) Written
Description
6, 7
1–11 112(b) Indefiniteness 1–11
Overall
Outcome
1–11
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