Ex Parte Audet

Patent Trials and Appeals Board

Jun 25, 2019

12618739 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/618,739 11/15/2009
81833 7590
9224-5489 Quebec Inc.
4198 Marcil
Montreal, QC H4A 2Z6
CANADA
06/27/2019
FIRST NAMED INVENTOR
Mathieu Audet
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MAU-026-001-US2 7293
EXAMINER
ANDERSON, LYNNE D
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
topatentagent@gmail.com
math.audet@gmail.com
m.geffroy@maya-systems.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIEU AUDET
Appeal2017-008844
Application 12/618,739
Technology Center 2800
Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
Patent Judge, CHRISTOPHER L. OGDEN, and A VEL YN M. ROSS,
Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 8, 23, 25-33, and 35--42. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 In our Decision we refer to the Specification filed November 15, 2009, as
amended, ("Spec."), the Final Office Action appealed from dated May 13,
2016 ("Final Act."), the Appeal Brief filed November 21, 2016 ("Appeal
Br."), the Examiner's Answer dated March 29, 2017 ("Ans.") and the Reply
Brief filed May 30, 2017 ("Reply Br.").
Appeal2017-008844
Application 12/618,739
STATEMENT OF THE CASE
The subject matter on appeal relates to a method of scanning,
analyzing, and identifying electromagnetic field sources. Spec. ,r 4.
According to the Specification, "[ e ]lectrical devices generate magnetic and
electric fields that can potentially be harmful to the health of humans and
other living species" (Id. ,r 6); therefore, "there is a need for a method and
device that provide[s] a history of EMF exposition of an individual." Id.
,r 12. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A non-transitory computer-readable medium having
stored thereon computer-readable instructions that, when
executed, provide a method for monitoring, recording, and
providing data representing a personal EMF environment
experienced by an individual during daily life activities of the
individual over an extended period of time, the method
compnsmg:
(I) receiving, via one or more antennae, at different
times over the extended period of time, a plurality of EMF input
signals each including EMF sub-signals generated by one or
more extremely low frequency field (ELF) generating devices,
intermediate frequency (IF) generating devices, and radio
frequency (RF) generating devices; and
(II) for each received EMF input signal,
(a) determining a geographical location and time
of the received EMF input signal;
(b) separating the received EMF input signal into
EMF sub-signals;
( c) identifying the energy levels of the EMF sub-
signals; and
( d) for each EMF sub-signal having an energy
level above a predetermined energy level,
(i) identifying an EMF source corresponding
to the EMF sub-signal; and
(ii) recording EMF-related data corresponding
to the EMF sub-signal for later recall, and
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Application 12/618,739
further processing and analysis, including
storing the determined geographical
location, time, at least one of the identified
energy level, frequency, and EMF source
corresponding to the EMF sub-signal;
(III) wherein the non-transitory computer-readable
medium is part of a personal apparatus having a size and
configuration for carrying or wearing by the individual during
the life activities of the individual;
(IV) wherein the EMF-related data for each EMF sub-
signal is stored such that data can be accessed later for providing
a historical record of the EMF environment of the individual over
the extended period of time;
(V) wherein the method further includes accessing the
stored EMF-related data and, based thereon, providing a
historical record of the personal EMF environment of the
individual over the extended period of time; and
(VI) wherein identifying an EMF source corresponding
to at least one of the EMF sub-signals comprises utilizing a
digital decoder in an attempt to decode an electronic signature
for the EMF sub-signal.
Appeal Br. 20-21 (Claims App'x).
REJECTIONS
The Examiner maintains the rejection of claims 1, 8, 23, 25-33, and
35--42 under 35 U.S.C. § 101 as directed to non-statutory subject matter.
Final 2; Ans. 2. 2
Appellant presents argument for independent claim 1, and does not
separately argue claims 8, 23, 25-33, and 35--42. Appeal Br. 17-18. We,
therefore, limit our discussion to claim 1, and claims 8, 23, 25-33, and 35-
42 stand or fall with that claim. 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
2 In the Final Action, the Examiner rejected claims 1, 8, 23, 25-30, and 35-
39 as obvious over certain prior art. Final 4. The Examiner withdraws that
rejection in the Answer. Ans. 2.
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Application 12/618,739
OPINION
We review the appealed rejection for error based upon the issues
Appellant identifies Appellant and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections .... ")). After
considering the evidence presented in this Appeal and each of Appellant's
arguments, we are not persuaded that Appellant identifies reversible error.
Thus, we affirm the Examiner's rejection for the reasons expressed in the
Final Office Action and the Answer. We add the following.
Patent Eligible Subject Matter
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. However,
the Supreme Court has long recognized certain exceptions to this section
including "[l]aws of nature, natural phenomena, and abstract ideas." Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014).
To determine whether a claim falls within an excluded category, the
Supreme Court's two-step framework, described in Mayo and Alice, guides
us. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
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Appeal2017-008844
Application 12/618,739
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include mathematical formulas. E.g., Parker v. Flook, 437 U.S. 584, 594--95
(1978). However, not every claim that recites a mathematical formula is
patent ineligible. In Diamond v. Diehr, 450 U.S. 175 (1981), the claim at
issue recited a mathematical formula, but the Supreme Court held that "[a]
claim drawn to subject matter otherwise statutory does not become
nonstatutory simply because it uses a mathematical formula." Diehr, 450
U.S. at 176; see also id. at 191 ("We view respondents' claims as nothing
more than a process for molding rubber products and not as an attempt to
patent a mathematical formula."). Having said that, the Supreme Court also
indicated that a claim "seeking patent protection for that formula in the
abstract ... is not accorded the protection of our patent laws, ... and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment." Id. ( citing Benson and
Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
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"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The USPTO recently published revised guidance on the application of
§ 101. See Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) ("Guidance"). Under Step 1 of the Guidance, we
determine whether the claimed subject matter falls within the four statutory
categories: process, machine, manufacture, or composition of matter. Step
2A of the Guidance is two-pronged, under which we look to whether the
claim recites:
(1) any judicial exception, 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)).
See Guidance at 54--55.
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));
( 4) or 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 at 56.
Step 1 (statutory category)
There is no dispute that claim 1 is within a statutory category. Claim
1 recites a method.
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Step 2A, Prong 1 (recites a judicial exception)
According to Step 2A of the Guidance, we first consider whether the
Examiner erred in determining that the claim recites a judicial exception.
The Examiner determines that claim 1 "is directed to the abstract idea of an
algorithm or mathematical formula for monitoring, recording and providing
data representing a personal EMF environment experienced by an individual
during daily life activities of the individual over an extended period of time."
Final 2. In particular, the Examiner finds that "collecting data, recognizing
certain data within the collected data set and storing the recognized data is
an abstract idea." Id.
Appellant contends that the Examiner failed to make out a prima facie
case of patent ineligibility. Appeal Br. 12-13. In particular, Appellant
argues that the Examiner "failed to identify the particular abstract idea that
the Examiner believes the claims to be directed to and at risk of
monopolizing." Id. at 13. As a result, Appellant states that it is unable to
present any meaningful response. Id.
Applying the construct set forth in the Guidance, we must first
determine whether claim 1 recites a judicial exception to patent eligibility.
Guidance at 54. The Guidance identifies three judicially-excepted
groupmgs:
(a) mathematical concepts including "mathematical
relationships, mathematical formulas or equations, mathematical
calculations"; (b) certain methods of organizing human activity,
such as "fundamental economic principles or practices,"
"commercial or legal interactions," and "managing personal
behavior or relationships or interactions between people"; and
( c) mental processes including "observation, evaluation,
judgment, [ and] opinion."
Id. at 52.
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Application 12/618,739
Here, independent claim 1 recites, inter alia, the following limitations:
(II)(b) "separating the received EMF input signal into EMF sub-signals";
(II)( c) "identifying the energy levels of the EMF sub-signals"; and (II)( d)(i)
"identifying an EMF source corresponding to each EMF sub-signal" above a
predetermined energy level. Appeal Br. 20-21 (Claim App'x). These
limitations recite mathematical concepts because they describe receiving
EMF signals that are then separated, processed, stored, analyzed, compared,
and decoded using equations, frequency tables, variables, and parameters to
provide the EMF environment experienced by an individual over time.
In particular, steps (II)(b) and (II)( c) "separating the received EMF
input signal into EMF sub-signals" and "identifying the energy levels of the
EMF sub-signals" are accomplished using Equations 1 and 2. Spec. ,r 107;
see id. ,r 91 (depicting Equation 1 and explaining that "[t]he energy level of
the EMF input signal combined may be calculated" using Equation 1 ). The
Specification explains that
the digital signal-processing module 403 applies a digital
algorithm such as a Discrete-Time Fourier Transform (DTFT),
preferably a Fast Fourier Transform (FFT) algorithm, to the
sampled and quantizes EMF input signal 405. The digital signal-
processing module 403 separates the sampled and quantisized
EMF input signal 405 into a plurality of sub-signal( s) in the
frequency domain. Each EMF sub-signal is associated with a
corresponding frequency, or frequency band. In other words, the
digital signal-processing module 403 provides a power spectrum
of the sampled and quantisized EMF input signal 405.
Furthermore, the digital signal-processing module 403
determines the energy level of each frequency, or frequency
band, according to the equation ( 1) above. The power spectrum
follows the equation of the Fourier Transform given in equation
(2) below:
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Appeal2017-008844
Application 12/618,739
D{)'.l}<''f'.).f. }'-''('"'··u•p{. h-t·) :m f St f).P .. i,, ,·l.,·
f ., t~ ,....., "'·~--'W ·.-~.f ,..(-~,t."\.,;t :'-, ,, ,. '\,.;. ... -...-· (.f:,( ..
.•. •:<;.
Equation 2
Id. ,r 107. Accordingly, steps (II)(b) and (II)(c), which rely on mathematical
equations and algorithms, are mathematical concepts.
Step (II)( d)(i), "identifying an EMF source corresponding to each
EMF sub-signal" "may include using different steps such as decoding the
sub-signal signature or using a reference database of known sources mapped
by their characteristics." Id. at ,r 16. According to the Specification,
[t]he identifying module 203 is adapted to associate each EMF
sub-signal to an EMFS 905 by using those data. In other word[ s],
the identification module 203 matches the detected EMF data of
each sub-signals with predetermined EMF data representing each
EMFS 905. Table 1 that follows illustrates a number of
frequencies that represent an indication of the type of detected
EMFS 905.
Id. ,r 93. Or, in the alternative, a digital decoder may be used "to decode an
electronic signature for each sub-signal in order to identify their respective
EMFS 905." Id. ,r 95. Therefore, element (II)( d)(i), which correlates EMF
sub-signals to an EMF source using reference databases or a decoder to do
the same, also is a mathematical concept.
The instant claims are analogous to the claims in Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). In Electric
Power Group, like the claims here, "[t]he advance [the claims] purport to
make is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions," which is an abstract
idea. Id. at 1354; see also Univ. of Florida Research Foundation, Inc. v.
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Application 12/618,739
General Electric Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019)("This is a
quintessential 'do it on a computer' patent: it acknowledges that data from
bedside machines was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.").
In view of the foregoing, we do not discern a reversible error in the
Examiner's determination that claim 1 recites abstract subject matter.
Step 2A, Prong 2 (integration into a practical application)
Having determined that claim 1 recites a judicial exception, i.e., an
abstract idea, our analysis under the Guidance turns to whether the claims
include additional elements that integrate the abstract idea into a practical
application. Guidance at 54. That is, we must determine whether a
meaningful limit is imposed on the judicial exception such that the claims
"amount to significantly more than the exception itself' as opposed to
nothing more than a drafting effort that monopolizes the judicial exception.
Id.
The Examiner finds that the method steps (I) "receiving," (II)(a)
"determining", (II)(d)(ii) "recording", (II)(f) storing, and (II)(g) "accessing"
are simply data collection steps. Final 2. The Examiner further determines
that
[a]lthough the claims recite '(I) rece1vmg via one or more
antennae ... ', and (II)( e) 'wherein the non-transitory computer-
readable medium is part of a personal apparatus ... ', receiving
signals by a conventional device can be construed as merely
routine data gathering necessary to perform the abstract idea and
the non-transitory computer-readable medium being part of the
personal apparatus can be construed as merely linking the
method to a field of use or technology.
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Final 2-3; see also Ans. 3--4 (same). The Examiner recognizes that the
claim recites certain elements including an antenna, non-transitory
computer-readable medium, and a personal apparatus, but finds these
elements insufficient "to amount to significantly more than the judicial
exception" and the recited storage medium "does not add a meaningful
limitation to the abstract idea because it would be routine in any computer
implementation." Id. at 3.
Appellant argues "that the Examiner's rationale for characterizing
these method steps as defining an abstract idea could be utilized to argue that
any method steps for any method define an abstract idea." Appeal Br. 10.
Appellant contends that "[t]here are numerous methodologies for
'monitoring, recording, and providing data representing a personal EMF
environment ... which are not encompassed by the recited claim 1." Id.
Appellant points to methodologies that do not identify the energy levels of
EMF sub-signals as one such example. Id. at 10-11. Appellant also argues
that even though conventional computer technology may be used, the
functionality it provides still yields an inventive concept. Id. at 11.
Here, the additional method elements in claim 1 require "receiving ...
EMF input signals," "determining a geographic location and time,"
"recording EMF-related data ... and further processing," storing EMF
related data for each EMF sub-signal, "accessing the stored EMF-related
data ... and providing a historical record," and "utilizing a digital decoder."
See Appeal Br. 20-21 (Claims App'x). These method terms amount to data
gathering, storage, retrieval, and output steps that are incidental to
performing the mathematical concepts identified above. Guidance at 55
( describing such elements as "insignificant extra-solution activity to the
judicial exception"); see also SAP Am, Inc. v. InvestPic, LLC, 898 F.3d
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Application 12/618,739
1161, 1168 (Fed. Cir. 2018) ("As many cases make clear, even if a process
of collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." (quoting Elec. Power Grp., 830 F.3d at 1355)).
Nor does the claimed method apply the judicial exception using a
particular machine. See MPEP § 21.06.05(b ). The additional structural
aspects of claim 1 generically require one or more antenna, a non-transitory
computer-readable medium, a personal apparatus, an implied storage
medium, and a digital decoder. See Appeal Br. 20-21 (Claims App'x).
Appellant does not explain how these claim elements add any other
meaningful technological limitations, i.e., limitations beyond linking the use
of the abstract idea to generic technology. See Appeal Br. 11.
For the foregoing reasons, we determine that claim 1 does not
integrate the judicial exception into a practical application. 3
Although Appellant does not provide separate arguments addressing
the remaining claims----claims 8, 25-33, and 35--42-these claims also do
not add limitations beyond linking the use of the abstract idea to generic
technology. For example, the personal apparatus may be of a size and
configuration to allow an individual to carry or wear the device ( claim 25),
such as a mobile phone ( claims 8 and 26), which communicates EMF-
related data wirelessly ( claim 29) where the input signals are decoded ( claim
41) using decoding methods such as FDMA, TDMA, and CDMA (claim
42). Appeal Br. 21-25. The EMF-related data may be communicated over a
communications network and stored on a content database ( claim 27) where
the network is the Internet ( claim 28) and the content database comprises
3 Our analysis above applies equally to independent claim 23, which
Appellant does not argue separately.
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servers that store EMF-related data for a number of individuals ( claims 30
and 37). Id. at 23-24. The method includes allowing individual access to
the EMF-related data that is stored but prevents individuals from "changing"
( claims 33) or "tampering" with the data ( claim 32). Id. at 24. The method
can also generate an alarm where the energy level is above a threshold level
(claims 35 and 36). Id. at 24--25. A digital decoder may be used to decode
an electronic signature for the EMF sub-signal ( claim 40) where the
electronic signature includes an identifier of a radio station ( claim 41 ). Id. at
25. Therefore, the additional limitations of claims 8, 25-33, and 35--42 do
not integrate the abstract idea into a practical application.
Step 2B (inventive concept)
Consistent with the Guidance, "[i]t is possible that a claim that does
not 'integrate' a recited judicial exception is nonetheless patent eligible."
Guidance 56. In step 2B, we consider the elements of the claim, both
individually and as an ordered combination to assess whether the additional
elements transform the nature of the claim into patent-eligible subject
matter. Id.; see Content Extraction & Transmission LLC v. Wells Fargo
Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "An inventive concept that
transforms the abstract idea into a patent-eligible invention must be
significantly more than the abstract idea itself, and cannot simply be an
instruction to implement or apply the abstract idea on a computer." Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
(Fed. Cir. 2016). In this context, we consider whether the additional
elements simply append "well-understood, routine, and conventional"
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elements, particularly at a high level of generality to the judicial exception.
Guidance 56.
Here, we determine that the claims do not recite "significantly more"
than an abstract idea. As described in the Specification, the combination of
steps gather information in a conventional manner and utilize conventional
equipment. Appellant does not direct our attention to any record evidence
that would show the additional method steps or structural elements are more
that well-understood, routine, and conventional. See Appeal Br. 11; see also
Ans. 4 ("The Examiner ... was unable to find any discussion of any special
characteristics required by the antennae or decoder that would differentiate
the devices from a generic device.").
For the reasons discussed above and those the Examiner provides, we
are not persuaded that the Examiner reversibly erred and, therefore, sustain
the rejection of claims 1, 8, 23, 25-33, and 35--42.
Appellant's Additional Argument
Appellant additionally argues that the claimed invention would be
patent eligible under international agreements and that Congressional
statutes cannot be interpreted to violate these international agreements.
Appeal Br. 14. Specifically, Appellant argues that under the Agreement on
Trade-Related Aspects of Intellectual Property Rights ("TRIPS
agreement"), "'patents shall be available for any inventions, whether
products or processes, in all fields of technology, provided that they are new,
involve an inventive step and are capable of industrial application'. (TRIPS,
Section 5, Article 27)." Appeal Br. 15. Because, as Appellant urges, the
claimed invention "clearly fall[ s] within the inclusive ambit of inventions,"
it should be allowable. Id. Appellant reasons that "any construction of 35
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U.S.C. § 101 which deems as patent ineligible those inventions that are
required to be eligible under the international TRIPS agreement would itself
seem to be an improper construction of the statute." Id. at 16.
"As a general matter, administrative agencies do not have jurisdiction
to decide the constitutionality of congressional enactments" where
consideration of the question would "require the agency to question its own
statutory authority or to disregard any instructions Congress has given it."
Riggin v. Off of Senate Fair Emp. Prac., 61 F.3d 1563, 1569-70 (Fed. Cir.
1995); see also Elgin v. Dept. of Treasury, 567 U.S. 1, 16 (2012) ("It is well
settled that administrative agencies are without authority to determine the
constitutionality of statutes." (internal quotation marks and citations
omitted)). To the extent Appellant asks us to determine the proprietary of
Patent Office policy with respect to congressional statutes and international
agreements, we decline to consider that argument.
CONCLUSION
Appellant fails to identify a reversible error in the Examiner's
rejection of claims 1, 8, 23, 25-33, and 35--42 under 35 U.S.C § 101 as
directed to non-statutory subject matter.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 8, 23, 25-
33, and 35--42 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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