Daniel John. Dilorenzo

Patent Trials and Appeals Board

Mar 3, 2020

15136651 - (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.
15/136,651 04/22/2016 Daniel John DiLorenzo 104292-1722 9752
137985 7590 03/03/2020
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
GETZOW, SCOTT M
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL JOHN DILORENZO
Appeal 2018-006472
Application 15/136,651
Technology Center 3700
Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
JILL D. HILL, 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 1–20. 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 Cyberonics, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed “to intracranial stimulation for optimal control
of movement disorders and other neurological disease.” Spec. ¶ 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system for monitoring a subject, the system comprising:
an acoustic sensor;
an accelerometer; and
a recording device coupled to the acoustic sensor and the
accelerometer, wherein the recording device:
collects acoustic data from the acoustic sensor and
acceleration data from the accelerometer;
measures a progression of a neurological disease of
a subject using the acoustic data and the acceleration data;
and
records progression data indicating the progression
of the neurological disease.
REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
non-eligible subject matter. Final Act. 2.
OPINION
Subject Matter Eligibility
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
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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. at 217–18 (quoting Mayo, 566 U.S.
at 72–73).
The USPTO recently published revised guidance on the application of
§ 101. See USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or
mental processes); and
(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
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previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.

Examiner’s Findings and Conclusion
In the first step of the Alice inquiry, the Examiner rejects claims 1–20
because the claims are “directed to a judicial exception,” specifically “a
‘mental process.’” Final Act. 2–3. The Examiner identifies the claimed
series of steps for monitoring a subject. Id. At Alice step 2, the Examiner
additionally finds that the claims do not add a meaningful limitation to the
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 claims recite 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 or process, 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 claims recite any judicial exceptions,
including certain groupings of abstract ideas, i.e., mathematical concepts,
certain methods of organizing human activity such as a fundamental
economic practice, or mental processes.
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In this instance, claim 1, for example, recites the steps of collecting
data and measuring progression of a neurological disease using the data.
Specifically, the claims recite:
collects acoustic data from the acoustic sensor and
acceleration data from the accelerometer;
measures a progression of a neurological disease of a
subject using the acoustic data and the acceleration data; and
records progression data indicating the progression of the
neurological disease.
Although these steps are claimed as being done by a system, the
activities themselves are all capable of being performed in the human mind
and, as such, each step of collecting and measuring in the claim falls into the
abstract idea of mental processes. See, e.g., CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”). We
therefore determine that claim 1 recites the abstract idea of mental processes,
which is a judicial exception to patent-eligible subject matter.
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 system. As used in the claims, the recording device of the system is
merely a generic component of a computer system that does not result in an
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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 recording device
as a tool to perform the abstract idea. Thus, the claims do not apply, rely on,
or use the mental process steps in a manner that imposes a meaningful limit
on those steps. Rather, the claim is simply a drafting effort designed to
monopolize the mental process steps of claim 1.
The additional elements do not add meaningful limits to the mental
process steps recited in claim 1. Instead, the generic system limitations are
no more than instructions to apply the judicial exception (i.e., a mental
process) using a system and recording device. 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.”).
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 abstract idea 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
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to an abstract idea, which is a 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 abstract idea into a patent-
eligible application, e.g., by providing an inventive concept. Alice, 573 U.S.
at 217–18. The only additional elements in claim 1 are a recording device,
an acoustic sensor, and an accelerometer for data collection. 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 Guidance 84 Fed. Reg. at 56 (emphasis added). Thus, the 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.”)
As noted above, the recording device and sensors are invoked as
conventional tools. Apart from being used to perform the abstract idea
itself, these generic system components only serve to perform well-
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understood functions (e.g., storing, selecting, analyzing, 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”). The sensor and
accelerometer likewise are used in a conventional manner to obtain data
necessary for the ultimate measuring of progression. 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 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 an
abstract idea. 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 abstract
concept into a patent-eligible application. See Alice, 573 U.S. at 221.
Appellant’s Contentions
Appellant’s main contention against the Examiner’s rejection is that
“the Examiner has not shown that the claimed features as a combination
lack significantly more,” specifically the Examiner has failed to show “that
measuring progression of a neurological disease using data from an acoustic
sensor and an accelerometer, as recited in the claims, is conventional.”
Reply Br. 7. Appellant asserts that the claims at issue are similar to those in
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BASCOM Global Internet Servs. Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016) and that “the Examiner has merely performed an
obviousness-type analysis by looking at each claimed feature separately.”
Reply Br. 7. We first note that the claims in BASCOM recited a unique
arrangement of known conventional pieces. BASCOM, 827 F.3d at 1349.
Here, Appellant recites no unique arrangement, but merely the stacking of
two known types of data collection.
Appellant further asserts that using the acoustic data and acceleration
data represents a unique combination and the Examiner fails to address the
combination apart from the elements individually. Reply Br. 7. Appellant’s
claims, however, do not recite how the data is used in combination, merely
that it is in combination. Simply stacking known methods of data collection
and analysis without further explanation as to how some heretofore
unknown synergy is achieved in the combination does not place the claims
into the realm of eligible subject matter.
Further, the claims do not appear to require any combined use of the
data. There is no difference in the claim between some heretofore
unexplained and unique combined use and simply looking at two sets of data
and making a better-informed conclusion as to progression using the two
sets separately. For example, if the acoustic data showed a progression of
between six and eight on a ten point scale and the accelerometer data
showed a progression of between seven and nine, the ultimate conclusion
would be that the progression is actually between seven and eight, which is
more accurate than using either data set alone. This conclusion, however,
would merely be the routine finding that the overlapping ranges between the
two sets of data is indicative of the actual progression. Ultimately, one of
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skill in the art performing both kinds of analysis sequentially would be using
data from an acoustic sensor and an accelerometer and could fall within the
metes and bounds of the claims without doing anything unconventional.
Nothing in the claims requires any unique combination of the data to achieve
a better result. Appellant relies upon the same arguments for the remainder
of the claims and as such we sustain the Examiner’s rejection of claims 1–
20.
CONCLUSION
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–20 101 Eligibility 1–20

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