Christopher Scheib

Patent Trials and Appeals Board

Mar 3, 2020

13487986 - (D) (P.T.A.B. Mar. 3, 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.
13/487,986 06/04/2012 Christopher Scheib 256-008 CIP 5348
37468 7590 03/03/2020
STOCKWELL & SMEDLEY, PSC
861 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
BERHANU, ETSUB D
ART UNIT PAPER NUMBER
3791
MAIL DATE DELIVERY MODE
03/03/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER SCHEIB
Appeal 2018-002963
Application 13/487,986
Technology Center 3700
Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–11, 13–22, and 24. Claim 3 was
canceled during prosecution and the Examiner withdrew the patent
eligibility rejection against claims 12, and 23. Ans. 5. 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. Appellant identifies the real party in interest as Dr. Christopher
Scheib. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed “to monitoring brain function during different
states of consciousness such as general anesthesia, coma or natural sleep
and, more particularly, to using electroencephalogram (EEG) data and other
physiological data to evaluate brain function.” Spec. ¶ 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for providing an indication of a state of
awareness for a patient, comprising the steps of:
acquiring, by a microprocessor, a first EEG power
spectrogram of a patient exposed to anesthesia;
retrieving, by the microprocessor, a previously-stored,
second EEG power spectrogram;
comparing, by the microprocessor, the first EEG power
spectrogram to the second EEG power spectrogram, wherein the
second EEG power spectrogram is associated with a known state
of awareness;
before comparing the first EEG power spectrogram and
the second EEG power spectrogram, arranging, by the
microprocessor, first data of the first EEG power spectrogram to
provide a first power versus frequency waveform in a first log-
log arrangement; wherein second data of the second EEG power
spectrum is arranged to provide a second EEG power versus
frequency waveform in a second log-log arrangement;
based on comparing the first and second EEG power
spectrograms, calculating, by the microprocessor, a value that
indicates a similarity between the first EEG power spectrogram
and the second EEG power spectrogram; and
based on the calculated value, providing, by the
microprocessor, an indication of a current state of awareness of
the patient; wherein the indication is visually or audibly
discernible.

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Application 13/487,986
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REJECTION
Claims 1, 2, 4–11, 13–22, and 24 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter. Ans. 2.

OPINION
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept,” id. at 216–18, and, in this case, the inquiry
centers on whether the claims are directed to an abstract idea. If the initial
threshold is met, we then move to the second step, in which we “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. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step as 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. (quoting Mayo, 566 U.S. at 72–
73).
The USPTO published revised guidance on the application of § 101.
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance. Under that guidance, we first look to whether
the claim recites:
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(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 Memorandum.
ANALYSIS
Claim Grouping
Appellant presents separate arguments for each of claims 1, 4, 9, 14,
20, 22, and 24. We address all of the arguments in turn, but initially focus
on claim 1.
Examiner’s Findings and Conclusion
In the first step of the Alice inquiry, the Examiner rejects the claims
stating that the claims “do not amount to significantly more than an abstract
idea.” Final Act. 3. The Examiner identifies the claimed series of steps for
indicating an awareness of a patient. Id. At Alice step 2, the Examiner
additionally finds that the claims do not add a meaningful limitation to the
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abstract idea so as to amount to significantly more than the judicial
exception. Id.
Analysis According to the Guidelines
Step One: Does Claim 1 Fall within a Statutory Category of § 101?
We first examine whether the claim recites one of the enumerated
statutory classes of subject matter, i.e., process, machine, manufacture, or
composition of matter, eligible for patenting under 35 U.S.C. § 101. Claim
1 is directed to a method, which is one of the statutory classes (i.e., a
process) under 35 U.S.C. § 101.
Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception?
We next look to whether the claim recites any judicial exceptions,
which include laws of nature, natural phenomena, and certain groupings of
abstract ideas, i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes.
In this instance, claim 1, for example, recites the steps of collecting
and processing data. Specifically, the claim recites:
acquiring, by a microprocessor, a first EEG power
spectrogram of a patient exposed to anesthesia;
retrieving, by the microprocessor, a previously-stored,
second EEG power spectrogram;
comparing, by the microprocessor, the first EEG power
spectrogram to the second EEG power spectrogram, wherein
the second EEG power spectrogram is associated with a known
state of awareness;
before comparing the first EEG power spectrogram and
the second EEG power spectrogram, arranging, by the
microprocessor, first data of the first EEG power spectrogram
to provide a first power versus frequency waveform in a first
log-log arrangement; wherein second data of the second EEG
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power spectrum is arranged to provide a second EEG power
versus frequency waveform in a second log-log arrangement;
based on comparing the first and second EEG power
spectrograms, calculating, by the microprocessor, a value that
indicates a similarity between the first EEG power spectrogram
and the second EEG power spectrogram; and
based on the calculated value, providing, by the
microprocessor, an indication of a current state of awareness of
the patient; wherein the indication is visually or audibly
discernible.
The Examiner determines that the step of providing an indication of a
current awareness of a patient is a correlation, which “is a consequence of
natural processes, similar to the naturally occurring correlation found to be a
law of nature.” Ans. 2. Although the Examiner classifies this as a law of
nature, the calculations (i.e., converting to log-log form and calculating a
similarity value) and comparisons are mathematical concepts, which is one
of the groupings of abstract ideas identified in the guidance.
The claim, itself, describes the calculations as providing a “frequency
waveform in a . . . log-log arrangement” and “calculating . . . a value that
indicates a similarity” by “comparing the first and second EEG power
spectrograms.” Appellant explains, for example, that the “comparing” is
“statistical analysis such as linear regression analysis” with “best-fit lines of
the log-log arranged data . . . calculated for comparison and similarities
between line slopes and starting and ending points of the lines.” Appeal Br.
14–15. The additional steps of acquiring and retrieving steps are
insignificant extrasolution activity and providing the indication is
insignificant post-solution activity. Accordingly, although not a law of
nature, per se, the Examiner is still correct that the claims recite ineligible
subject matter, i.e., an abstract idea. See Ans. 3, see also MPEP 2106.
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Step 2A, Prong Two: Does Claim 1 Recite Additional Elements that
Integrate the Judicial Exceptions into a Practical Application?
Following our Office guidance, having found that claim 1 recites a
judicial exception, we next determine whether the claim recites “additional
elements that integrate the exception into a practical application” (see MPEP
§§ 2106.05(a)–(c), (e)–(h)). See Revised Guidance, 84 Fed. Reg. at 54. As
noted above, each of the claimed steps is merely recited as being performed
by a microprocessor. The only thing in the claim other than the abstract idea
is a “microprocessor.” As used in claim 1, the microprocessor is merely a
generic component of a computer system that does not result in an
improvement in the functioning of a computer or other technology or
technological field. The recitations of the generic structures with which the
recited steps are performed are merely instructions to use a generic computer
system as a tool to perform the abstract idea. Thus, claim 1 does not apply,
rely on, or use the judicial exception or additional data processing steps in a
manner that imposes a meaningful limit on those steps. Rather, the claim is
simply a drafting effort designed to monopolize the judicial exception and
data processing steps of claim 1. See MPEP § 2106.05(f) (“Use of a
computer or other machinery in its ordinary capacity for . . . tasks (e.g., to
receive, store, or transmit data) or simply adding a general purpose computer
or computer components after the fact to an abstract idea . . . does not
provide significantly more.”).
The Examiner is correct that the “additional steps of acquiring EEG
data, retrieving previously stored EEG data, comparing the two sets of EEG
data, and generating a first power versus frequency waveform and a second
power versus frequency waveform” are merely “well-understood, routine
and conventional activity for those in the field of medical diagnostics.” Ans.
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3. In short, the additional elements discussed above: (1) do not improve the
functioning of a computer or other technology; (2) are not applied with any
particular machine; (3) do not effect a transformation of a particular article
to a different state; and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Consequently, the claimed invention does not integrate the judicial
exception into a “practical application.”
For these reasons, the additional elements of claim 1 do not integrate
the judicial exception into a practical application. Thus, claim 1 is directed
to a series of pre- and post-solution activities and mathematical concepts
performed by a microprocessor, which all fall into the judicial exception to
patent-eligible subject matter under 35 U.S.C. § 101.
Step 2B: Does Claim 1 Recite an Inventive Concept?
We next consider whether claim 1 recites any elements, individually
or as an ordered combination, that transform the judicial exception into a
patent-eligible application, e.g., by providing an inventive concept. Alice,
573 U.S. at 217–18. As noted above, the only additional elements include
routine diagnostic activity. These additional elements do not provide, either
individually or as a combination, improvements to another technology or
technical field or the functioning of the computer itself.
According to Office guidance, under Step 2B, “examiners should . . .
evaluate the additional elements individually and in combination . . . to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
See Revised Guidance 84 Fed. Reg. at 56 (emphasis added). Thus, the
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second step of the inquiry (Step 2B) looks at the additional elements in
combination. See, e.g., Examples accompanying Guidance (Example 37
(claim 3 analysis) and Example 40 (claim 2 analysis)). See also BSG Tech
LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been
clear since Alice that a claimed invention’s use of the ineligible concept to
which it is directed cannot supply the inventive concept that renders the
invention ‘significantly more’ than that ineligible concept.”).
Apart from being used to perform the judicial exception, the generic
computer system components only serve to perform well-understood
functions (e.g., acquiring, comparing, arranging, and outputting data). See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (“[T]he use of generic computer elements like a microprocessor or
user interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter”). In our view, claim 1 fails to add a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field, but instead “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 56. That is, we are not persuaded
that claim 1 is directed to a specific application designed to achieve an
improved technological result, as opposed to being directed to merely
ordinary functionality of the above-recited additional elements to apply a
judicial exception. For the reasons discussed above, we find no element or
combination of elements recited in claim 1 that contains any “inventive
concept” or adds anything “significantly more” to transform the judicial
exception into a patent-eligible application. See Alice, 573 U.S. at 221.
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As to the remaining independent claims, we agree with the Examiner
that the same rationale as applied to claim 1 equally applies to claims 20 and
24. As to the dependent claims, as with claim 1, the additional recitations
merely amount to additional routine diagnostic activity or display of results,
which does not add anything significant to claim 1 that would make them
patent eligible. Accordingly, we agree with the Examiner that all of the
claims are directed to patent-ineligible subject matter.
Appellant’s Contentions
Appellant’s main arguments are that two EEG power spectrograms
are compared to one another to determine similarity and that these
spectrograms have their data arranged in a log-log arrangement prior to the
comparison. Reply Br. 2. As the Examiner states, however, “[c]laim 1
merely compares data acquired from a patient to stored data that is
associated with a ‘known’ level of awareness” and that this “is the basic
method of pattern/template matching that is used routinely in medical
diagnostics.” Ans. 5. Further, the Examiner is correct that “[t]he use of a
log-log, power versus frequency waveform spectrogram merely transforms
the already conventionally analyzed log-linear EEG spectrogram into an
alternate mathematical scale by which to compare EEG spectrograms.”
Ans. 6. Regardless of the format, the analysis is still merely comparison of
two spectrograms for similarities. Appellant also asserts that the claims
provide “an improvement in computer-related technology.” Reply Br. 7.
The claims, however, do not improve the actual function of the computer,
but merely amount to an alleged improvement in the actual diagnostic
method being used. Such is not the type of improvement that is
contemplated to confer patent eligibility.
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Regarding claim 4, Appellant asserts that this claim “does not recite
physiological data but is limited to providing a specific way that a second
EEG power spectrogram is derived.” Reply Br. 8. Regardless of the
specific manner in which the EEG is derived, the Examiner is still correct
that utilizing a database of average values for comparison is well known.
Ans. 7. Here, the reference is still an amalgamation “of known reference
data obtained from a plurality of different individuals in order to properly
classify the patient,” which is insignificant extra-solution activity. Id. (citing
Feng col. 3, ll. 16–27 and Pinhas ¶¶ 239 and 307).
As to claims 9, 14, and 24, the Examiner is correct that “overlaying
two waveforms on one another in order to allow a person to visually
compare the two waveforms is not unconventional.” Ans. 8 (citing Sato,
Hoffman, and Lerman). Appellant again relies on the alleged benefits of a
log-log scale over a log-linear scale, which we have already addressed above
and found unpersuasive. In sum, we are not persuaded by Appellant’s
arguments.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–11,
13–22, 24
101

1, 2, 4–11,
13–22, 24

Appeal 2018-002963
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED