DAEGU GYEONGBUK INSTITUTE OF SCIENCE AND TECHNOLOGY

Patent Trials and Appeals Board

Jan 29, 2021

2019005660 (P.T.A.B. Jan. 29, 2021)

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.
14/679,383 04/06/2015 Ho Jeong Kim 2644KI-000001-US 9303
30593 7590 01/29/2021
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
THANGAVELU, KANDASAMY
ART UNIT PAPER NUMBER
2129
NOTIFICATION DATE DELIVERY MODE
01/29/2021 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):
dcmailroom@hdp.com
jcastellano@hdp.com
jhill@hdp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HO JEONG KIM and KELVIN E. JONES
____________________

Appeal 2019-005660
Application 14/679,383
Technology Center 2100
____________________

Before JAMES W. DEJMEK, MICHAEL T. CYGAN, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the
Examiner’s rejection of claims 1, 3–6, and 8–20. Although Appellant
appeals from a non-final rejection, we have jurisdiction pursuant to

1 This Decision uses the following abbreviations: “Spec.” for the original
Specification, filed April 6, 2015, which claims the benefit of an earlier-filed
application; “Non-Final Act.” for the Office Action, mailed April 24, 2018;
“Appeal Br.” for Appellant’s Appeal Brief, filed August 28, 2018, which
includes an appendix listing the claims (“Claims App.”), and which was
supplemented with an updated summary of claimed subject matter on
September 27, 2018; and “Ans.” for Examiner’s Answer, mailed
November 30, 2018. Appellant elected not to file a reply brief.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). According to Appellant, the real party in interest is
Daegu Gyeongbuk Institute of Science and Technology. Appeal Br. 2.
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35 U.S.C. §§ 6 and 134 because the claims have been twice presented and
rejected. See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994)
(precedential).
We AFFIRM.
BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to
modeling a neuron. Abs.; Spec. ¶ 2. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A reduced modeling method for a neuron,
comprising:
[(1)] confirming asymmetry in signal propagation
between a soma and dendrites of the neuron which is being
modeled;
[(2)] confirming dendritic excitability of the neuron;
[(3)] identifying a relationship between the asymmetry in
signal propagation and the dendritic excitability; and
[(4)] determining the reduced modeling method of the
neuron using the relationship between the asymmetry in signal
propagation and the dendritic excitability,
[(5)] wherein the relationship between the asymmetry in
signal propagation and the dendritic excitability comprises:
[(6)] increases in signal attenuation from the soma to the
dendrites increase an activation threshold of a persistent inward
current (PIC) dispersed over the dendrites (hypo-excitability);
and
[(7)] increases in signal attenuation from the dendrites to
the soma decrease the activation threshold of the PIC dispersed
over the dendrites (hyper-excitability).
Claims App. 1 (reference numbers and emphases added).
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REJECTION
Claims 1, 3–6, and 8–20 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Non-Final Act. 3–15.3
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 5–9) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the patent-
ineligible subject matter rejection of claims 1, 3–6, and 8–20 on the basis of
independent claims 1 and 6. Dependent claims 3–5 and 8–20 are not argued
separately and, thus, stand or fall with the respective independent claim from
which they depend.4
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments

3 Although the Examiner references “utility” (see Non-Final Act. 2–3, 20),
we understand these statements to be part of the Examiner’s explanation of
the eligibility rejection. Accordingly, we agree with Appellants that the
Non-Final Action does not include a rejection of the claims on the basis of
lack of utility under 35 U.S.C. § 101. See Appeal Br. 8.
4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Patent Eligibility Rejection of Representative Claims 1 and 6
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized implicit exceptions to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “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.” Alice, 573 U.S.
at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
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upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
The Patent Office issued guidance regarding this framework. See
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).5 Under the Revised Guidance,
to decide whether a claim is “directed to” an judicial exception, we evaluate
whether the claim (1) recites a judicial exception (which may include subject
matter falling within an abstract idea grouping listed in the Revised
Guidance) and (2) fails to integrate the recited judicial exception into a
practical application. See Revised Guidance, 84 Fed. Reg. at 51. If the
claim is “directed to” an judicial exception, as noted above, we then
determine whether the claim recites an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry.” Revised
Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the § 101 rejection.
The Judicial Exceptions—Law of Nature and Abstract Idea
The Examiner concluded that claim 1 is directed to an abstract idea.
Non-Final Act. 6. The Examiner explained that the steps recited in the claim

5 The USPTO current eligibility guidance is found in the Ninth Edition,
Revision 10.2019 (revised June 2020) of the Manual of Patent Examination
Procedure (MPEP), and particularly within Sections 2103 through
2106.07(c).
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“describe the concept of identifying a relationship between the asymmetry in
signal propagation and the dendritic excitability and determining the reduced
modeling method of the neuron using that relationship comprising
mathematical modeling and data processing activities,” which “correspond
to concepts identified as abstract ideas by the courts, such as mathematical
modeling and algorithm development.” Id.; see id. at 5 (addressing each
claim limitation). The Examiner concluded that claim 6 is directed to an
abstract idea for similar reasons. Id. at 9–10.
For the reasons explained below, we agree with the Examiner that
independent claims 1 and 6 recite judicially excepted subject matter. We
agree with the findings of the Examiner as to the nature of the concepts (e.g.,
the manipulation of data in a manner identified by the courts as abstract),
rather than the specific terms used to characterize those abstract concepts,
which have changed as a result of the Revised Guidance, which issued after
the Examiner’s Answer. Compare 79 Fed. Reg. 74618, 74622 (Dec. 16,
2014) (identifying abstract ideas as “including fundamental economic
practices, certain methods of organizing human activities, an idea ‘of itself,’
and mathematical relationships/formulas”) with 84 Fed. Reg. at 52
(identifying abstract ideas as “(a) Mathematical concepts . . . (b) Certain
methods of organizing human activity . . . and (c) Mental processes”).
In particular, claim 1 recites a method comprising: (1) confirming
asymmetry in signal propagation between a soma and dendrites of a neuron,
(2) confirming dendritic excitability of the neuron, (3) identifying a
relationship between the asymmetry and the excitability, and (4) determining
a reduced modeling method of the neuron using the relationship, where
(5) the relationship comprises (6) “increases in signal attenuation from the
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soma to the dendrites increase an activation threshold of a persistent inward
current (PIC) dispersed over the dendrites (hypo-excitability)” and (7)
“increases in signal attenuation from the dendrites to the soma decrease the
activation threshold of the PIC dispersed over the dendrites (hyper-
excitability).” Claims App. 1.
Under the broadest reasonable interpretation, these recitations may be
characterized as natural phenomena and abstract ideas, which are both
descriptors of judicially excepted subject matter.6 As the Specification
explains, a neuron has asymmetry in signal propagation between its soma
and dendrites (limitation (1)), and a neuron has dendritic excitability
(limitation (2)). E.g., Spec. ¶¶ 3–5. Under the broadest reasonable
interpretation, “confirming” the truth of these natural phenomena is an
observation or judgment; i.e., a mental process. The Specification also
explains that there exists a relationship between the neuron’s asymmetry and
its excitability (limitation (3)). E.g., id. ¶¶ 5, 39–40, 43. Although this
relationship is not clearly understood (id. ¶ 5), the inventors discovered a
naturally occurring property of this relationship: increases in signal
attenuation either increase or decrease the activation threshold of the PIC,
depending on the direction of the signal attenuation (limitations (5), (6), and
(7)). E.g., id. ¶¶ 43–44 (“The inventors of the present invention found that
increases in signal attenuation from soma to dendrites increased the

6 See, e.g., MPEP § 2106.04 (“[T]here are no bright lines between the types
of exceptions . . . [and] many of the concepts identified by the courts as
exceptions can fall under several exceptions. For example, mathematical
formulas are considered to be a judicial exception as they express a scientific
truth, but have been labelled by the courts as both abstract ideas and laws of
nature.”).
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activation threshold of a PIC (hypo-excitability), whereas increases in signal
attenuation from dendrites to soma decreased the activation threshold of a
PIC (hyper-excitability).”), 66, 85. Determining a model using this natural
phenomena (limitation (4)) is, to the extent that the details of the model are
unrestricted by the claim, a type of mental process held to be abstract. See,
e.g., In re BRCA1 & BRCA2-Based Hereditary Cancer Test Patent
Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (finding “abstract mental steps” of
comparing two sequences, unlimited in number of comparisons and
unrestricted by the purpose of the comparison or any particular end use, to
be unpatentable abstract ideas). To the extent that the determination requires
a particular modeling method expressing a described mathematical
relationship, this limitation may further be characterized as a mathematical
concept, another type of abstract idea. See, e.g., Spec. ¶¶ 53–54; Claims
App. 1–2 (dependent claims 3–5).
Similarly, claim 6 recites:
[a] determining voltage attenuation factors which
represent properties of signal propagation between dendrites
and a soma and is represented as functions of distance from the
soma; and
[b] determining a plurality of passive parameters at a
pre-determined path length using system parameters defined
from an anatomical model comprising the voltage attenuation
factors at the pre-determined path length;
[c] wherein the voltage attenuation factors comprise
VASDDC and VASDAC which are DC and AC components from
the soma to dendrites respectively, and VADSDC which is a DC
component from the dendrites to the soma.
Claims App. 2 (reference letters and emphases added). Under the broadest
reasonable interpretation, limitations (a), (b), and (c) of claim 6 recite mental
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processes and mathematical relationships describing natural phenomena, as
discussed above. See, e.g., Spec. ¶¶ 3–5; see also, e.g., id. ¶¶ 10–11 (voltage
attenuation factors may be determined using identified equations), 24–25
(passive parameters may be determined using identified equations).
Stated differently, Appellant’s claims recite a method of modeling a
neuron (mental process/mathematical relationship) using Appellant’s
discovery regarding the relationship between a neuron’s signal propagation
asymmetry and its dendritic excitability (natural phenomena). Accordingly,
the claims recite judicial exceptions. See Mayo, 566 U.S. at 74 (The
challenged patents “embody findings that concentrations in a patient’s blood
of [a particular] metabolite beyond a certain level . . . indicate that the
dosage is likely too high for the patient, while concentrations in the blood of
[the] metabolite lower than a certain level . . . indicate that the dosage is
likely too low to be effective. The patent claims seek to embody this
research in a set of processes.”); Genetic Veterinary Scis., Inc. v. LABOKLIN
GmbH & Co. KG, 933 F.3d 1302, 1317 (Fed. Cir. 2019) (“Here, the
Asserted Claims are not directed to a new and useful method for discovery
because they begin and end with the point discovery of the HNPK mutation
in the SUV39H2 gene.”); see also Digitech Image Techs., LLC v. Elec. for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional
limitations, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent eligible.
‘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.’” (quoting Parker v. Flook, 437 U.S. 584,
595 (1978)).
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Although the claims combine natural phenomena with a mathematical
relationship, the Supreme Court has made clear that “a scientific truth, or the
mathematical expression of it, is not a patentable invention.” Mayo, 566
U.S. at 71 (quoting Diamond v. Diehr, 450 U.S. 175, 188 (1981)); see also
Flook, 437 U.S. at 594 (“[T]he discovery of [a mathematical formula] . . .
cannot support a patent unless there is some other inventive concept in its
application.”); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena
of nature, though just discovered, mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work.”).
Accordingly, we conclude that each of claims 1 and 6 recite abstract
ideas (specifically, mental processes and mathematical relationships) and
natural phenomena. See 84 Fed. Reg. at 54 (identifying law of nature,
natural phenomena, and abstract ideas as judicial exceptions at Revised Step
2A); see also id. at 52 (abstract idea includes “mathematical relationships”
and “mental processes”).
We note Appellant’s argument that claims 1 and 6 do not describe a
mental process that can be performed in the human mind, as “specific and
specialized electrophysiological experiment equipment” is required “to
implement the claimed invention.” Appeal Br. 5–7. Because this argument
is premised upon alleged additional limitations, we address this argument in
our discussion of whether additional limitations integrate the exception into
a practical application. Infra at 11–14.
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Integration of the Judicial Exception into a Practical Application
Having determined the claims recite judicial exceptions, we determine
whether the recited judicial exception(s) are integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application, the
claim is not directed to the judicial exception.
Here, neither claim 1 nor claim 6 recites any additional elements. See
Mayo, 566 U.S. at 77–78 (“A patent, for example, could not simply recite a
law of nature and then add the instruction ‘apply the law.’ . . . [(The claim
limitations are] like Einstein telling linear accelerator operators about his
basic law and then trusting them to use it where relevant).”).
Appellant does not identify any additional elements, and Appellant’s
arguments have not persuaded us that claim 1 is not directed to a patent-
ineligible concept. In particular, Appellant argues that a “computer system”
and “specific and specialized electrophysiological experiment equipment
[are] needed” “in order to implement the claimed invention.” Appeal Br. 6;
see id. at 8 (arguing that “the claims at issue are inextricably tied to
particular machines needed to generate the modeling method for a neuron”).
In support, Appellant points (id. at 6–7) to a declaration, in which one of the
inventors testifies that “one of ordinary skill in the art would recognize that
specialized equipment is required to carry out the process steps of the
claimed invention.” Appeal Br., Evid. App. ¶¶ 4, 7. Neither Appellant nor
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its declarant, Dr. Kim, clearly specifies which claim limitations allegedly
require this specialized equipment.
We disagree with Appellant’s conclusions regarding the scope of
claims 1 and 6. We give no weight to the testimony of the declarant because
the testimony fails to provide any support for its conclusions regarding the
scope of the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed.
Cir. 2005) (en banc) (explaining that although expert testimony “can be
useful . . . to provide background on the technology at issue, [or] to explain
how an invention works, . . . conclusory, unsupported assertions by experts
as to the definition of a claim term are not useful”). Appellant’s declarant
describes the equipment necessary to experimentally measure specific
parameter values for actual neurons. Evid. App. ¶¶ 4, 7. However, we agree
with the Examiner that, under their broadest reasonable interpretation,
Appellant’s claims require neither data collection through acts of
measurement, nor specialized equipment for the purpose of performing such
measurement.7 See Ans. 7 (determining that the claimed method “is not
dependent on how the data was collected and what [or whether] specialized
equipment was used to collect the data,” and the “claims are not actually tied
to any computer equipment”); see also Digitech, 758 F.3d at 1351
(determining that there was no need to determine “whether tying the method
to an image processor” would render the claims eligible because “nothing in

7 Incidentally, the Specification fails to include any mention of the
equipment identified by Appellant—e.g., “a dual patch clamp workstation
consisting of electrical signal generators, electrical signal amplifiers, analog-
digital converters, computer containing signal acquisition and analysis
software, a microscope, fine position controllers for two hydraulic
manipulators and patch pipettes and holders” (Appeal Br. 6–7).
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the claim language expressly ties the method to an image processor”). Even
if the “confirming” and “determining” limitations can be performed using
data collected from the measurements described by Appellant, the acts of
data collection are not required by any of the claim limitations. Thus, these
acts (and the equipment required to accomplish them) are not limiting on the
claims.
Accordingly, claims 1 and 6 do not include any additional elements
that integrate the recited judicial exceptions into a practical application.
Inventive Concept
Because we agree with the Examiner that claims 1 and 6 are “directed
to” judicial exceptions, we consider whether an additional element (or
combination of elements) adds a limitation that is not well-understood,
routine, conventional (“WURC”) activity in the field or whether the
additional elements simply append WURC activities previously known to
the industry, specified at a high level of generality, to the judicial exception.
Revised Guidance, 84 Fed. Reg. at 56. The Examiner’s finding that an
additional element (or combination of elements) is WURC activity must be
supported with a factual determination. Id. at n.36 (citing MPEP
§ 2106.05(d), as modified by the Berkheimer Memorandum8). Whether
additional elements are WURC activity is a question of fact. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).

8 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”).
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The Examiner has not found any claim limitations to be additional to
the limitations identified as an abstract idea. Final Act. 6–7; Ans. 7. On the
record before us, and as discussed, supra, Appellant has not shown that the
claims on appeal add a specific limitation beyond the judicial exception.
For these reasons, we conclude that claims 1 and 6, each considered as
a whole, do not include an inventive concept. Therefore, we sustain the
Examiner’s § 101 rejection of independent claims 1 and 6, as well as
dependent claims 3–5 and 8–20, which are not argued separately.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–6, 8–20 101 Eligibility 1, 3–6, 8–20
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