Carlos Carbonera et al.Download PDFPatent Trials and Appeals BoardAug 14, 20202019000569 (P.T.A.B. Aug. 14, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/338,374 12/28/2011 Carlos Carbonera 0G-0482USO/065513-000420 4197 67337 7590 08/14/2020 DYKEMA GOSSETT PLLC (STJ) 4000 Wells Fargo Center 90 South Seventh Street Minneapolis, MN 55402 EXAMINER FERNANDEZ RIVAS, OMAR F ART UNIT PAPER NUMBER 2128 NOTIFICATION DATE DELIVERY MODE 08/14/2020 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): ASJM_Patents@abbott.com MN-IPMail@dykema.com Patents@dykema.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CARLOS CARBONERA, VASILY VYLKOV, DANIEL R. STARKS, JIANG QIAN, and ERIC J. VOTH ____________ Appeal 2019-000569 Application 13/338,374 Technology Center 2100 ____________ Before JAMES R. HUGHES, DENISE M. POTHIER, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 4–6, 8–11, 13–16, 18–21, 24, and 25, i.e., all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest as St. Jude Medical, Atrial Fibrillation Division, Inc. Appeal Br. 1. Appeal 2019-000569 Application 13/338,374 2 STATEMENT OF THE CASE The Invention According to the Specification, the invention concerns “a computer- implemented system and method for generating a multi-dimensional model of a geometric structure, such as, for example, an intra-cardiac structure, from a plurality of individual surface models corresponding to different regions of the geometric structure that are joined together to form a single composite surface model.” Spec. ¶ 1; see id. ¶ 147 (Abstract).2 The Specification explains that conventional methodologies “for generating composite surface models from multiple individual surface models” have drawbacks. Id. ¶ 5. For example, “composite surface models formed by joining individual surface models generated using collections of location data points may not generate the most accurate representation of the structure of interest” because “the individual surface models may not reflect the corresponding region of interest with a desired degree [of] detail or accuracy.” Id. Moreover, composite surface models produced using conventional methodologies “may contain false positive volumes that misrepresent the actual region where the location data points are collected.” Id. ¶ 6. Hence, the invention endeavors to “generat[e] a multi-dimensional model of a geometric structure that will minimize and/or eliminate one or more of the deficiencies in conventional systems.” Id. ¶ 9. 2 This decision uses the following abbreviations: “Spec.” for the Specification, filed December 28, 2011; “Final Act.” for the Final Office Action, mailed August 18, 2017; “Appeal Br.” for the Appeal Brief, filed April 18, 2018; and “Ans.” for the Examiner’s Answer, mailed August 30, 2018. Appeal 2019-000569 Application 13/338,374 3 Exemplary Claim Independent claim 1 exemplifies the claims at issue and reads as follows: 1. A system for generating a multi-dimensional surface model of a geometric structure, comprising: a processing apparatus configured to: acquire a set of location data points from a catheter-mounted sensor, wherein the location data points comprise a plurality of location data points corresponding to respective locations on a surface of a region of the geometric structure; determine a maximum or minimum coordinate in at least one dimension of said set of location data points; define a bounding box containing each location data point of said set of location data points, wherein defining a bounding box comprises defining an edge of said bounding box to be equal to said coordinate; construct a voxel grid corresponding to said bounding box, wherein said voxel grid comprises a plurality of voxels; and extract the multi-dimensional surface model comprising a plurality of facets from certain of said plurality of voxels of said voxel grid, wherein the multi- dimensional surface model comprises a multi-faceted surface model; decimate the surface of each of said plurality of facets to remove excess facets therefrom; smooth said surface of each of said plurality of facets; and output the multi-faceted surface model to a display. Appeal Br. 24 (Claims App.). Appeal 2019-000569 Application 13/338,374 4 The Prior Art Supporting the Rejections on Appeal As evidence of unpatentability under 35 U.S.C. § 103(a), the Examiner relies on the following prior art:3 The Rejections on Appeal Claims 1, 2, 4–6, 8–11, 13–16, 18–21, 24, and 25 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 2–5. Claims 1, 2, 4–6, and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Olson, Lee (alternatively), Hussain, and Reisfeld. Final Act. 5–12. Claims 9–11, 13–16, and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Olson, Hussain, and Reisfeld. Final Act. 12–17. Claims 19–21, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Olson, Hussain, Reisfeld, and Starks. Final Act. 17–26. 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the filing date for Application 13/338,374 predates the AIA’s amendment to § 103, this decision refers to the pre-AIA version of § 103. Reisfeld US 6,226,542 B1 May 1, 2001 Lee US 7,317,456 B1 Jan. 8, 2008 Starks US 7,988,639 B2 Aug. 2, 2011 Olson US 8,000,941 B2 Aug. 16, 2011 Muhammad Hussain, Fast and Reliable Decimation of Polygonal Models Based on Volume and Normal Field, in ADVANCES IN VISUAL COMPUTING 64–73 (George Bebis et al. eds. 2010) (“Hussain”) Appeal 2019-000569 Application 13/338,374 5 ANALYSIS We have reviewed the rejections in light of Appellant’s arguments that the Examiner erred. For the reasons explained below, we concur with the Examiner’s conclusions concerning ineligibility under § 101 and unpatentability under § 103(a). We adopt the Examiner’s findings and reasoning in the Final Office Action and Answer. See Final Act. 2–32; Ans. 2–9. We add the following to address and emphasize specific findings and arguments. The § 101 Rejection of Claims 1, 2, 4–6, 8–11, 13–16, 18–21, 24, and 25 INTRODUCTION The Patent Act defines patent-eligible subject matter broadly: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the Supreme Court explained that § 101 “contains an important implicit exception” for laws of nature, natural phenomena, and abstract ideas. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v. Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a two-step analytical framework for evaluating patent eligibility. Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18. Under Mayo/Alice step one, we “determine whether the claims at issue are directed to” a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves Appeal 2019-000569 Application 13/338,374 6 looking at the “focus” of the claims at issue and their “character as a whole.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). In January 2019, the PTO issued revised guidance for determining whether claims are directed to a judicial exception. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42; see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for providing policy direction” for the PTO). Neither the Examiner nor Appellant had the benefit of the 2019 Guidance when presenting their respective positions concerning patent eligibility. The 2019 Guidance specifies two prongs for the analysis under Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one requires evaluating “whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the claim does not recite a judicial exception, it is not directed to a judicial exception,” and it satisfies § 101. Id. “If the claim does recite a judicial exception, then it requires further analysis” under prong two. Id. Prong two requires evaluating “whether the claim as a whole integrates the recited judicial exception into a practical application of the exception.” Id. “When the exception is so integrated, then the claim is not directed to a judicial exception,” and it satisfies § 101. Id. “If the additional elements do not integrate the exception into a practical application, then the claim is directed to the judicial exception,” and it “requires further analysis” under Mayo/Alice step two (PTO step 2B). Id. Under Mayo/Alice step two, we “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the Appeal 2019-000569 Application 13/338,374 7 additional elements” add enough to transform the “nature of the claim” into “significantly more” than the judicial exception. Alice, 573 U.S. at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed. Cir. 2019). “[A]n inventive concept must be evident in the claims.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE Patent-ineligible abstract ideas include mathematical formulas, mental processes, and fundamental economic practices. See, e.g., Alice, 573 U.S. at 219–20 (fundamental economic practice of intermediated settlement); Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010) (fundamental economic practice of hedging or protecting against risk in independent claim and mathematical formula in dependent claim); Parker v. Flook, 437 U.S. 584, 585–86, 596–98 (1978) (mathematical formula for calculating updated alarm limit); Gottschalk v. Benson, 409 U.S. 63, 65–67 (1972) (mental process of converting binary-coded-decimal representation to binary representation). The 2019 Guidance specifies three groupings of abstract ideas: (1) mathematical concepts, (2) mental processes, and (3) certain methods of organizing human activity. 84 Fed. Reg. at 51–52. In Alice, the Supreme Court “did not establish any ‘precise contours’ for defining whether claims are directed to ‘abstract ideas’ or something else.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir. 2019) (citing Alice, 573 U.S. at 221). Further, for Mayo/Alice step one, the Federal Circuit has noted that “[a]n abstract idea can generally be described Appeal 2019-000569 Application 13/338,374 8 at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here, the Examiner determines that the claims are directed to the abstract idea of “gathering, analyzing, and manipulating information of a specified content and describing mathematical relationships and/or formulas.” Final Act. 3; see id. at 4; Ans. 3–4. The Examiner explains that the claims concern concepts “identified as abstract ideas by the courts” in the following decisions: Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017) (collecting, displaying, and manipulating data); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (collecting information, analyzing it, and displaying certain results of the collection and analysis); and Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014) (data recognition and storage). Final Act. 3; see id. at 4–5; Ans. 2–3. Appellant disputes that the claims are directed to an abstract idea. See Appeal Br. 10–14. We disagree with Appellant. In determining that the claims are directed to an abstract idea, the Examiner accurately assesses the “focus” of each claim and its “character as a whole.” See Final Act. 2–5; Ans. 2–4; see also SAP Am., 898 F.3d at 1167. In addition, we determine that each independent claim recites abstract ideas falling within one of the three groupings of abstract ideas specified in the 2019 Guidance, i.e., mathematical concepts. See 84 Fed. Reg. at 51–52. The 2019 Guidance describes mathematical concepts as including “mathematical relationships, mathematical formulas or equations, [and] mathematical calculations.” 84 Fed. Reg. at 52. Appeal 2019-000569 Application 13/338,374 9 Here, claim 1 recites the following limitations encompassing mathematical relationships and mathematical calculations: ● “determine a maximum or minimum coordinate in at least one dimension of said set of location data points”; ● “define a bounding box containing each location data point of said set of location data points, wherein defining a bounding box comprises defining an edge of said bounding box to be equal to said coordinate”; ● “construct a voxel grid corresponding to said bounding box, wherein said voxel grid comprises a plurality of voxels”; ● “extract the multi-dimensional surface model comprising a plurality of facets from certain of said plurality of voxels of said voxel grid, wherein the multi-dimensional surface model comprises a multi-faceted surface model”; ● “decimate the surface of each of said plurality of facets to remove excess facets therefrom”; and ● “smooth said surface of each of said plurality of facets.” Appeal Br. 24. The other independent claims recite similar limitations. Id. at 25–27, 29–31. Each of the above-identified limitations involves mathematical relationships or mathematical calculations (or both). For example, determining a maximum or minimum coordinate and defining a bounding box involve mathematical relationships comparing the magnitudes of numbers representing location data points. See Spec. ¶¶ 29, 70–74, Fig. 7. The Specification explains that “the minimum and maximum values along each of the x-, y-, and z- axes are determined and used as the coordinates of the bounding box.” Id. ¶ 71. Constructing a voxel grid involves mathematical relationships comparing the magnitudes of numbers representing voxels. See Spec. ¶¶ 30, Appeal 2019-000569 Application 13/338,374 10 75–76, Fig. 8. The Specification describes a voxel grid as having “dimensions given by I cells in the x-direction, J cells in the y-direction, and K cells in the z-direction.” Id. ¶ 76. The Specification explains that the “actual values of I, J, and K are calculated using” equations (7)–(9) below where the value “v” corresponds to the distance between each voxel in the voxel grid: (7) I = (maxx - minx)/v (8) J = (maxy - miny)/v (9) K = (maxz - minz)/v Id. ¶¶ 75–76. Extracting a multi-dimensional surface model involves mathematical calculations to, among other things, determine various distances. See Spec. ¶¶ 31–34, 67–68, 77–81, Figs. 9–12. The Specification discloses extracting “a surface model using one of any number of triangulated surface reconstruction techniques known in the art,” such as an alpha-hull algorithm or a Marching Cubes algorithm. Id. ¶¶ 67–68. Decimating a surface involves mathematical calculations to, among other things, compute facet normals and vertex normals. See Spec. ¶¶ 35, 82–102, Figs. 13A–13B. The Specification explains that facet normals and vertex normals “may be computed using techniques that are well known in the art.” Id. ¶ 84. In addition, the Specification discloses “execut[ing] a decimation algorithm that reduces the number of” facets and vertices in a surface model “while maintaining the accuracy of the representation.” Id. ¶ 82; see id. ¶¶ 35, 83, 96, 98, Figs. 13A–13B. Smoothing a surface involves mathematical calculations to, among other things, calculate smoothed coordinates by summing weight values Appeal 2019-000569 Application 13/338,374 11 assigned to vertices. See Spec. ¶¶ 37, 103–108, Fig. 15. The Specification explains that a “multi-faceted surface is smoothed by employing a simple Laplacian relaxation technique that is known in the art.” Id. ¶ 103. For the reasons discussed above, claim 1 and the other independent claims recite mathematical relationships and mathematical calculations. The 2019 Guidance identifies mathematical relationships and mathematical calculations as mathematical concepts, and thus abstract ideas. 84 Fed. Reg. at 52. MAYO/ALICE STEP ONE: PTO STEP 2A PRONG TWO Because we determine that each independent claim recites abstract ideas, we consider whether each claim as a whole integrates the recited abstract ideas into a practical application. See 84 Fed. Reg. at 54–55. “Only when a claim recites a judicial exception and fails to integrate the exception into a practical application, is the claim ‘directed to’ a judicial exception . . . .” Id. at 51. As additional elements, the independent claims recite computer and hardware components, i.e., a “processing apparatus,” a “sensor,” and a “display.” Appeal Br. 24–27, 29–31 (Claims App.). The claims also recite data-collecting and data-presenting limitations. Id. For instance, claim 1 recites the following data-collecting and data- presenting limitations: ● “acquire a set of location data points from a catheter- mounted sensor, wherein the location data points comprise a plurality of location data points corresponding to respective locations on a surface of a region of the geometric structure”; and ● “output the multi-faceted surface model to a display.” Appeal 2019-000569 Application 13/338,374 12 Appeal Br. 24. The other independent claims recite similar limitations. Id. at 25–27, 29–31. We determine that each independent claim as a whole does not integrate the recited abstract ideas into a practical application because the additional elements do not impose meaningful limits on the abstract ideas. See 84 Fed. Reg. at 53–54; see also Final Act. 3–4; Ans. 3–4. Instead, the claimed computer and hardware components constitute generic computer and hardware components that perform generic computer functions. See Spec. ¶¶ 45, 49, 55, 145; Final Act. 4. Further, the data-collecting and data- presenting limitations constitute insignificant extra-solution activity. See, e.g., Mayo, 566 U.S. at 79; Bilski, 561 U.S. at 611–12; Apple, 842 F.3d at 1241–42; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011); In re Grams, 888 F.2d 835, 839–40 (Fed. Cir. 1989). As an example of insignificant extra-solution activity, in Mayo the Supreme Court decided that measuring metabolite levels for later analysis constituted purely “conventional or obvious” pre-solution activity. Mayo, 566 U.S. at 79. Similarly, the Federal Circuit has held that mere data- gathering steps “cannot make an otherwise nonstatutory claim statutory.” CyberSource, 654 F.3d at 1370 (quoting Grams, 888 F.2d at 840). The Federal Circuit has also held that (1) presenting offers to potential customers and (2) gathering statistics concerning responses were “conventional data- gathering activities that [did] not make the claims patent eligible.” OIP Techs., 788 F.3d at 1363–64. Consistent with those decisions, the Manual of Appeal 2019-000569 Application 13/338,374 13 Patent Examining Procedure (“MPEP”) identifies “gathering data” as an example of insignificant pre-solution activity. MPEP § 2106.05(g) (9th ed. rev. 08.2017 Jan. 2018). Here, the data-collecting limitations amount to mere data-gathering steps and require nothing unconventional or significant. See Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (analogizing “data gathering” to “insignificant extra-solution activity”). In particular, the “acquire” and “acquiring” limitations operate to make data, i.e., location data points, available for processing like the “conventional data-gathering activities” in OIP Technologies. See OIP Techs., 788 F.3d at 1363–64; see also Bilski, 561 U.S. at 611–12 (establishing inputs for mathematical formula); Spec. ¶¶ 50, 65, 70 (describing acquiring location data points from memory). Hence, the data- collecting limitation in each independent claim does not help integrate the recited abstract ideas into a practical application. Further, in Flook the Supreme Court decided that adjusting an alarm limit according to a mathematical formula was “post-solution activity” and insufficient to confer eligibility. Flook, 437 U.S. at 590, 596–98; see Bilski, 561 U.S. at 610–11 (discussing Flook). Similarly, the Federal Circuit has held that printing menu information constituted insignificant post-solution activity. Apple, 842 F.3d at 1241–42. Consistent with those decisions, the MPEP identifies printing “to output a report” as an example of insignificant post-solution activity. MPEP § 2106.05(g). Here, the data-presenting limitations require no particular presentation tool and nothing unconventional or significant. Instead, the “output” limitations require nothing more than a generic “display” for presenting a Appeal 2019-000569 Application 13/338,374 14 surface model. Just as printing menu information in Apple constituted insignificant post-solution activity, presenting a surface model on a generic “display” here constitutes insignificant post-solution activity. Hence, the data-presenting limitation in each independent claim does not help integrate the recited abstract ideas into a practical application. Appellant references hypothetical claim 1 from Example 23 in the PTO’s July 2015 Update Appendix of Examples. See Appeal Br. 12–13. Appellant asserts that hypothetical claim 1 “does not recite any mathematical concept or a mental process such as comparing or categorizing information that can be performed in the human mind, or by a human using a pen and paper.” Id. at 12–13. Appellant then contends that the “pending claims comprise collecting data, transforming that data into something new, i.e., a multi-dimensional surface model comprising a plurality of facets created from a set of location data points.” Id. at 13. We disagree that collecting and transforming data into new and different data suffices for patent eligibility. A “process that start[s] with data, add[s] an algorithm, and end[s] with a new form of data [is] directed to an abstract idea.” RecogniCorp, 855 F.3d at 1327. Here, each independent claim recites a “process that start[s] with data, add[s] an algorithm, and end[s] with a new form of data.” Thus, each claim is directed to an abstract idea. Appellant notes that in Electric Power the Federal Circuit said, “Information as such is an intangible. Accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas.” Appeal Br. 14 (emphasis by Appellant) (quoting Elec. Power, Appeal 2019-000569 Application 13/338,374 15 830 F.3d at 1353) (citation omitted). Appellant seeks to distinguish Electric Power by asserting that the “pending claims do change the character of the information that is collected.” Id. Appellant’s assertion about changing the character of the information does not persuade us of Examiner error because the Federal Circuit has ruled that claims covering an analogous change of information from one form (“a functional description of a logic circuit”) to another form (“a hardware component description of the logic circuit”) were directed to abstract ideas. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 1150–51 (Fed. Cir. 2016); see Gottschalk, 409 U.S. at 71–74 (holding that claims covering methods for converting binary-coded-decimal representation to binary representation did not satisfy § 101). As the Federal Circuit said in Electric Power, “[M]erely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” Elec. Power, 830 F.3d at 1354. The 2019 Guidance identifies exemplary considerations indicating that additional elements in claims “may have integrated the [judicial] exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29 (citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis indicates, we have evaluated Appellant’s arguments in light of those exemplary considerations. For the reasons discussed above, however, we determine that each independent claim as a whole does not integrate the recited abstract ideas into a practical application. Thus, each claim is directed to a judicial exception and does not satisfy § 101 under Mayo/Alice step one. Appeal 2019-000569 Application 13/338,374 16 MAYO/ALICE STEP TWO: PTO STEP 2B Because we determine that each independent claim is directed to a judicial exception, we “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements” add enough to transform the “nature of the claim” into “significantly more” than the judicial exception. See Alice, 573 U.S. at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice step two, we “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, 830 F.3d at 1353). An “inventive concept” requires more than “well-understood, routine, conventional activity already engaged in” by the relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–80). But a “non-conventional and non-generic arrangement of known, conventional pieces” may provide an “inventive concept” satisfying step two. BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). As discussed above, the independent claims recite computer and hardware components, i.e., a “processing apparatus,” a “sensor,” and a “display.” Appeal Br. 24–27, 29–31 (Claims App.). As also discussed above, the claimed computer and hardware components constitute generic computer and hardware components that perform generic computer functions. See Spec. ¶¶ 45, 49, 55, 145; Final Act. 4. Appeal 2019-000569 Application 13/338,374 17 The Specification describes the claimed computer and hardware components generically and evidences their conventional nature. See Spec. ¶¶ 45, 49, 55, 145. As an example, the Specification explains that a “processing apparatus” may “include conventional processing apparatus known in the art, capable of executing pre-programmed instructions stored in an associated memory.” Spec. ¶ 145. According to the Specification, a “processing apparatus” may (1) “comprise a programmable microprocessor or microcontroller, or . . . an application specific integrated circuit (ASIC)”; (2) “include a central processing unit (CPU) and an input/output (I/O) interface through which the processing apparatus . . . receive[s] a plurality of input signals including, for example, signals generated by . . . sensor(s)”; (3) “generate a plurality of output signals including, for example, those used to control and/or provide data to, for example, [a] display device”; and (4) “perform various functions . . . with appropriate programming instructions or code (i.e., software).” Id. ¶ 55. As another example, the Specification explains that “sensors” may support “a variety of diagnostic and therapeutic purposes including, for example and without limitation, electrophysiological studies, pacing, cardiac mapping, and ablation” as well as “perform a location or position sensing function.” Spec. ¶ 49; see id. ¶¶ 51–53. According to the Specification, a catheter “may include . . . one or more sensors” and “may further include other conventional components,” e.g., “additional sensors or electrodes . . . and corresponding conductors or leads.” Id. ¶ 45. The Specification does not discuss an advance in hardware or software that, for example, causes a computer itself to operate faster or more efficiently. See Final Act. 4. Nor does the Specification discuss an advance Appeal 2019-000569 Application 13/338,374 18 in sensor technology. See id. As claimed, a “sensor” operates no differently than conventional sensors when supplying signals representing location data points. See, e.g., Spec. ¶¶ 45, 49–53. Simply implementing an abstract idea using conventional machines or devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a mathematical principle on a physical machine” does not suffice for patent eligibility) (citing Gottschalk, 409 U.S. at 64–65, 71). Moreover, the claimed computer and hardware components operate to collect, manipulate, and display data. Appeal Br. 24–27, 29–31 (Claims App.); see Final Act. 2–5; Ans. 2–4. Court decisions have recognized that generic computer and hardware components operating to collect, manipulate, and display data are well understood, routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Apple, 842 F.3d at 1234, 1241–42; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316–20 (Fed. Cir. 2016) (“Symantec”); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, 772 F.3d at 715–16; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). For example, the system claims in Alice recited a “data processing system” (e.g., a “processing apparatus”) with a “communications controller” and a “data storage unit.” Alice, 573 U.S. at 226. The Supreme Court decided that the system claims failed to satisfy § 101 because “[n]early every computer” includes those generic components for performing “basic calculation, storage, and transmission functions” and the system claims simply implemented the same abstract idea as the method claims. Id. Appeal 2019-000569 Application 13/338,374 19 at 226–27. The Court reasoned that (1) “the system claims are no different from the method claims in substance”; (2) “[t]he method claims recite the abstract idea implemented on a generic computer”; and (3) “the system claims recite a handful of generic computer components configured to implement the same idea.” Id. at 226. Here, the claimed computer and hardware components perform “basic calculation, storage, and transmission functions” that nearly every computer performs. Appeal Br. 24–27, 29–31 (Claims App.); see Final Act. 2–5; Ans. 2–4. For instance, nearly every computer includes a “programmable microprocessor or microcontroller” that receives input signals and generates output signals. Nothing in the claims “requires anything other than conventional computer and [hardware] components operating according to their ordinary functions.” See Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339, 1341 (Fed. Cir. 2017). Hence, the claimed computer and hardware components do not satisfy the “inventive concept” requirement. See, e.g., Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1361, 1366 (Fed. Cir. 2020) (describing the claimed “processor,” “storage device,” “programmable receiver unit,” and “remote server” as “generic computer components”); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (holding that “generic computer components such as an ‘interface,’ ‘network,’ and ‘database’” did not satisfy the “inventive concept” requirement); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095–96 (Fed. Cir. 2016) (describing the claimed “microprocessor” and “user interface” as “generic computer elements”); Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17 (Fed. Cir. 2017) Appeal 2019-000569 Application 13/338,374 20 (describing the claimed “authentication server,” “access server,” “Internet Protocol network,” “client computer device,” and “database” as “indisputably generic computer components”). We reach a similar conclusion concerning the data-collecting and data-presenting limitations, e.g., claim 1’s “acquire” and “output” limitations. As discussed above, the data-collecting limitations amount to mere data-gathering steps and require nothing unconventional or significant. As also discussed above, the data-presenting limitations require no particular presentation tool and nothing unconventional or significant. Consequently, the claimed insignificant extra-solution activity does not satisfy the “inventive concept” requirement. See, e.g., Mayo, 566 U.S. at 79–80; Bilski, 561 U.S. at 611–12; Flook, 437 U.S. at 590; Apple, 842 F.3d at 1241–42; OIP Techs., 788 F.3d at 1363–64; CyberSource, 654 F.3d at 1370. Appellant asserts that the Examiner “fails to show that the pending claims are recognized in the art or by the courts as being well-understood, routine, or conventional.” Appeal Br. 12. Insofar as Appellant relies on the recited abstract ideas to satisfy the “inventive concept” requirement, Appellant wrongly does so. A “claimed invention’s use of the ineligible concept,” e.g., an abstract idea, “cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Under “the Mayo/Alice framework, a claim directed to a newly discovered” abstract idea “cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Appeal 2019-000569 Application 13/338,374 21 Insofar as Appellant relies on novelty and nonobviousness over the prior art to satisfy the “inventive concept” requirement, Appellant wrongly does so. Novelty and nonobviousness do not “resolve the question of whether the claims embody an inventive concept” under Mayo/Alice step two. Symantec, 838 F.3d at 1315; see SAP Am., 898 F.3d at 1163. “The search for a § 101 inventive concept” differs “from demonstrating § 102 novelty.” Synopsys, 839 F.3d at 1151; see Two-Way Media, 874 F.3d at 1340. “The ‘novelty’ of any element[s] or steps” in a claim or even the claim itself “is of no relevance in determining whether the subject matter of a claim” satisfies § 101. Diehr, 450 U.S. at 188–89. Regarding the well-understood, routine, and conventional nature of the additional elements, court decisions have recognized that generic computer and hardware components operating to collect, manipulate, and display data are well understood, routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Apple, 842 F.3d at 1234, 1241–42; Symantec, 838 F.3d at 1316–20; Versata, 793 F.3d at 1334; Ultramercial, 772 F.3d at 715–16; buySAFE, 765 F.3d at 1355. “Whether a combination of claim limitations supplies an inventive concept that renders a claim ‘significantly more’ than an abstract idea to which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290. Considering the limitations as an ordered combination adds nothing to the abstract ideas that is not already present when considering the limitations separately. See Mayo, 566 U.S. at 79; Final Act. 4. The ordered combination of limitations in each independent claim amounts to nothing more than the abstract ideas implemented with generic computer and Appeal 2019-000569 Application 13/338,374 22 hardware components that perform generic computer functions. See Alice, 573 U.S. at 225–26; Final Act. 4. Hence, we conclude that the ordered combination of limitations in each independent claim does not supply an “inventive concept” that renders the claim “significantly more” than the abstract ideas. See Final Act. 3; Ans. 3. Thus, each claim does not satisfy § 101 under Mayo/Alice step two. SUMMARY FOR INDEPENDENT CLAIMS 1, 5, 9, 14, AND 19 For the reasons discussed above, Appellant’s arguments have not persuaded us of any error in the Examiner’s findings or conclusions under Mayo/Alice step one or step two. Hence, we sustain the § 101 rejection of the independent claims. DEPENDENT CLAIMS 2, 4, 6, 8, 10, 11, 13, 15, 16, 18, 20, 21, 24, AND 25 We also sustain the § 101 rejection of dependent claims 2, 4, 6, 8, 10, 11, 13, 15, 16, 18, 20, 21, 24, and 25 because Appellant does not argue eligibility separately for them. See Appeal Br. 10–15; 37 C.F.R. § 41.37(c)(1)(iv). The § 103(a) Rejection of Claims 1, 2, 4–6, and 8 CLAIM 1: “DECIMATE” AND “SMOOTH” As noted above, the § 103(a) rejection of claim 1 rests on Olson, Lee (alternatively), Hussain, and Reisfeld. See Final Act. 5–10. Appellant argues that the Examiner erred in rejecting claim 1 because no reference teaches or suggests both of the following limitations: “decimate the surface of each of said plurality of facets to remove excess facets therefrom”; and “smooth said surface of each of said plurality of facets.” See Appeal Br. 17– 19. Appellant states that “Appellant is unable to find any discussion in any Appeal 2019-000569 Application 13/338,374 23 of the cited references that would disclose, teach, or suggest to one of ordinary skill in the art to perform both operations on the same model.” Id. at 18–19. Further, Appellant faults the Examiner for making “no argument . . . as to why one of ordinary skill in the art would decimate the model before smoothing, or smooth a decimated model.” Id. at 18. Appellant’s arguments do not persuade us of Examiner error because Appellant attacks the references individually. Where, as here, a rejection rests on the combined disclosures in the references, an appellant cannot establish nonobviousness by attacking the references individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner correctly finds as follows: (1) Hussain teaches or suggests the “decimate” limitation because Hussain discloses a decimation algorithm; and (2) Reisfeld teaches or suggests the “smooth” limitation because Reisfeld discloses a smoothing process applied to a surface. Final Act. 8–9, 30–32; Ans. 6; see Hussain, 64 (Abstract), 65–68 (§§ 2–3); Reisfeld, 4:45–50. Appellant does not dispute that Hussain discloses a decimation algorithm or that Reisfeld discloses a smoothing process applied to a surface. See Appeal Br. 15–19. Moreover, any such dispute would lack merit. Hussain discloses a two-phase decimation algorithm called VNSIMP. Hussain, 64 (Abstract), 65–68 (§§ 2–3). In the first phase, “a vertex is selected randomly using the measure of geometric fidelity that is based on normal field variation across its one-ring neighborhood.” Id. at 64 (Abstract), 65–66 (§ 2.1). In the second phase, the “selected vertex is eliminated” by “collapsing an outgoing half-edge that is chosen by using volume based measure of geometric deviation.” Id. at 64 (Abstract), 66–67 (§ 2.2). Appeal 2019-000569 Application 13/338,374 24 In addition, Reisfeld discloses embodiments where “a smoothing process is applied to [a] reconstructed surface, preferably by applying a surface convolution with a Gaussian-like kernel.” Reisfeld, 4:45–48. Regarding Appellant’s argument that the references do not teach or suggest decimating the model before smoothing, the Examiner properly reasons in the Answer that “with the broadest reasonable interpretation, the ‘decimate’ step and the ‘smooth’ step may be performed individually to the same ‘surface of each of said plurality of facets’ without any requirement to smooth a decimated surface.” Ans. 7. We note that Appellant did not file a Reply Brief to refute the Examiner’s reasoning in the Answer. Consistent with the Examiner’s reasoning, the Specification repeatedly describes decimating and smoothing as alternatives performed individually or together. See, e.g., Spec. ¶¶ 12, 14, 16, 18, 21, 103, 110, 124, 138, 143. For instance, the Specification describes a processing apparatus “configured to decimate the surface of the multi-faceted surface model to remove excess facets therefrom, and/or to smooth the surface of the multi-faceted surface model.” Id. ¶ 12; see id. ¶ 110. Further, the Specification states, “The smoothing operation may be performed regardless of whether the above-described decimation process is performed on the multi-faceted surface.” Id. ¶ 103. When performing both decimating and smoothing operations, the Specification does not require a particular order for those operations, e.g., decimating before smoothing. See id. ¶¶ 12, 14, 16, 18, 21, 103, 110, 124, 138, 143. And when performing both decimating and smoothing operations, only two alternatives exist for performing those operations: decimating before smoothing or smoothing before decimating. The existence of “two Appeal 2019-000569 Application 13/338,374 25 known, finite, predictable solutions for solving” a problem supports a conclusion of obviousness. See Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1341 (Fed. Cir. 2020). CLAIM 1: MOTIVATION TO COMBINE Appellant argues that the Examiner erred in rejecting claim 1 because “the combination of Olson, alternatively in view of Lee, in view of Hussain, and further in view of Reisfeld fails to disclose a motivation for one of ordinary skill in the art to combine the features of” claim 1. Appeal Br. 16. We disagree with Appellant because the Examiner correctly determines that a motivation to combine comes from the references themselves. See Final Act. 8–10, 31–32. An obviousness analysis should consider whether an ordinarily skilled artisan “would have been motivated to combine or modify the teachings in the prior art.” Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018); In re Stepan Co., 868 F.3d 1342, 1345–46, 1346 n.1 (Fed. Cir. 2017). The motivation to combine or modify may come “from the prior art reference itself, from the knowledge of one of ordinary skill in the art, or from the nature of the problem to be solved.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000) (citations omitted). Here, the Examiner correctly finds that a motivation to combine Hussain with the other references comes from Hussain because Hussain contains the following statements: First, the decimation algorithm “not only has better speed-quality trade-off but also keeps visually important features even after drastic simplification in a better way than similar state-of-the-art best algorithms.” Final Act. 8–9 (quoting Hussain, 64 (Abstract)); see Hussain, 64 (Abstract); see also id. at 72–73 (§ 5). Second, the decimation Appeal 2019-000569 Application 13/338,374 26 algorithm “preserves visually important high frequency information in a better way and keeps the semantic meaning of the surface model even after drastic reduction.” Final Act. 8–9, 31 (emphasis by the Examiner) (quoting Hussain, 71 (§ 4)); see Hussain, 71 (§ 4). Further, the Examiner correctly finds that a motivation to combine Reisfeld with the other references comes from Reisfeld because Reisfeld states that the “smoothing process provides a better approximation of the surface and allows easier performance of calculations based on the reconstructed surface.” Final Act. 9–10, 32 (quoting Reisfeld, 4:48–50); see Reisfeld, 4:48–50. For the reasons discussed above, Appellant’s motivation-to-combine argument lacks merit. SUMMARY FOR CLAIM 1 For the reasons discussed above, Appellant’s arguments have not persuaded us that the Examiner erred in rejecting claim 1 for obviousness based on Olson, Lee (alternatively), Hussain, and Reisfeld. In our view, the claimed subject matter exemplifies the principle that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, we sustain the § 103(a) rejection of claim 1. INDEPENDENT CLAIM 5 AND DEPENDENT CLAIMS 2, 4, 6, AND 8 Claims 2 and 4 depend from claim 1, while claims 6 and 8 depend from independent claim 5. Appellant does not argue patentability separately for these claims. See Appeal Br. 15–19. Thus, we sustain the § 103(a) Appeal 2019-000569 Application 13/338,374 27 rejection of these claims for the same reasons as claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The § 103(a) Rejections of Claims 9–11, 13–16, 18–21, 24, and 25 Appellant makes essentially the same patentability arguments for claims 9–11, 13–16, 18–21, 24, and 25 as for claims 1, 2, 4–6, and 8. Compare Appeal Br. 19–22, with id. at 15–19. Thus, we sustain the § 103(a) rejections of claims 9–11, 13–16, 18–21, 24, and 25 for the same reasons that we sustain the § 103(a) rejection of claims 1, 2, 4–6, and 8. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION We affirm the Examiner’s decision to reject claims 1, 2, 4–6, 8–11, 13–16, 18–21, 24, and 25. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–6, 8–11, 13–16, 18–21, 24, 25 101 Eligibility 1, 2, 4–6, 8–11, 13–16, 18–21, 24, 25 1, 2, 4–6, 8 103(a) Olson, Lee (alternatively), Hussain, Reisfeld 1, 2, 4–6, 8 9–11, 13–16, 18 103(a) Olson, Hussain, Reisfeld 9–11, 13–16, 18 19–21, 24, 25 103(a) Olson, Hussain, Reisfeld, Starks 19–21, 24, 25 Appeal 2019-000569 Application 13/338,374 28 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Overall Outcome 1, 2, 4–6, 8–11, 13–16, 18–21, 24, 25 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation