Ex Parte Boschetti Sacco

Patent Trial and Appeal Board

Nov 6, 2017

12298625 (P.T.A.B. Nov. 6, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/298,625 10/27/2008 Paolo Boschetti Sacco 2502-1109 9818
466 7590 11/08/2017
YOUNG fr THOMPSON
EXAMINER
209 Madison Street CATINA, MICHAEL ANTHONY
Suite 500
Alexandria, VA 22314 ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
11/08/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAOLO BOSCHETTI SACCO
Appeal 2015-007923
Application 12/298,625
Technology Center 3700
Before KEN B. BARRETT, EDWARD A. BROWN, and
LEE L. STEPINA, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paolo Boschetti Sacco (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 27-41. We heard oral argument
on September 20, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-007923
Application 12/298,625
THE INVENTION
Appellant’s claimed invention pertains to spirometry—“a diagnostic
test providing the analysis of the respiratory functionality”—and specifically
to providing an incentive to the patient to breathe out all the air in the lungs
at the maximum speed possible. Spec. 1:1—8. The Specification describes
Appellant’s system as involving the “progressive opening of a curtain (or
other alternative mechanism) related to the spirometry test” that unveils an
image having meaning only if completely unveiled. Id. at 4:23—32.
Claims 27 and 38 are independent. Claim 27, reproduced below, is
illustrative of the subject matter on appeal.
27. An incentive method for a spirometry test utilizing
two images, comprising:
connecting a spirometer to a computer device and a
display mechanism;
progressively sliding open, with an incentive control
mechanism, a first covering image representing a curtain, the
first image being controlled by the incentive control mechanism
related to respiration, and a second incentive image represents an
incentive to the spirometry and is completely independent both
of the first covering image and the respiration;
controlling the incentive control mechanism, via a
calculation algorithm based on a combination of both the
patient’s respiration flow rate and volume of exhaled air
compared with theoretical values, so that said first covering
image progressively opens and automatically gradually unveils
the second incentive image as a function of both the patient’s
respiration flow rate and volume of exhaled air, said calculation
algorithm being executed by said computer device,
the second incentive image being completely independent
from both of the first covering image and the respiration,
the second incentive image being chosen in a personalized
way according to the patient from a virtually infinite number of
fixed or animated images, and
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the second incentive image functioning as a stimulation
event by inducing psychologically the patient to a complete
viewing of the second incentive image by performing an entire
spirometric procedure; and
choosing said second incentive image from one of i) a list
of available fixed or animated images and ii) importing said
second incentive image as an image file,
wherein the calculation algorithm remains the same for
any chosen incentive image.
App. Br. 32—33 (Claims Appendix).
THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 27-41 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter;
2. Claims 27, 32, 33, and 38 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement;
3. Claims 27—33, 36, and 38-41 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Quinn (US 2006/0206036 Al, pub.
Sept. 14, 2006), Tanaka (US 6,256,040 Bl, iss. July 3, 2001), and
Hofmeister (US 2006/0284852 Al, pub. Dec. 21, 2006); and
4. Claims 34, 35, and 37 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Quinn, Tanaka, Hofmeister, and Dunning
(US 4,296,756, iss. Oct. 27, 1981).
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Application 12/298,625
ANALYSIS
A. The §101 Non-Patentable Subject Matter Rejection
Appellant argues the rejected claims 27-41 as a group. App. Br. 5—6.
We select claim 27 as representative, and decide the appeal as to this
rejection on the basis of that claim. See 37 C.F.R. § 41.37(c)(l)(iv).
Upon consideration of the evidence on this record and Appellant’s
arguments, we find that the preponderance of evidence on this record
supports the Examiner’s conclusion that the subject matter of claim 27 is
directed to non-statutory subject matter. In this regard, we adopt the
findings and reasoning of the Examiner found on pages 2—3 of the appealed
Non-Final Action. Specifically, we agree with the Examiner that claim 27 is
directed to an abstract idea and that the claims do not include significantly
more than the abstract idea. We also adopt the Examiner’s response to
Appellant’s arguments, as found on page 2 of the Answer.
We add the following for emphasis only.
We agree with the Examiner’s determination that the claims are
directed to the abstract idea of an incentive spirometry test “using an
algorithm to control the displayed matter, specifically the movement of the
covering image.” Ans. 2; see Non-final Act. 3. We note that Appellant
characterizes the claimed invention in a manner similar to that of the
Examiner, maintaining: “The present invention is a spirometry test that
requires a spirometer, a computer and a display [and] [t]he transformation of
the present invention is the completion of a spirometry test with the aid of a
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two-part incentive display.” App. Br. 51 * * * 5(emphasis omitted); see also id. at
12 (Appellant referring to “the algorithm underlying the incentive
mechanism which is the object of the patent application.”). The recitation of
“connecting a spirometer to a computer device and a display mechanism”
and the use of such components is well-understood conventional activity
already engaged in by those skilled in the art. See Ans. 2 (citing Quinn);
Quinn, Abstr. (disclosing a motivational spirometry system using a display
screen and a processor); Hrg. Tr. 4:16—20 (“Both [Quinn and the claimed
invention] use computer technology, at least to the extent of using computer
technology to display a image onto a screen in order to incentivize a subject
to give the best possible performance for a spirometry test.”). Thus, when
the claim is viewed as a whole, the use of these components adds nothing
significant to the abstract idea.
During the hearing, Appellant cited for the first time, but did not
discuss in any detail or adequately analogize to the claimed invention of this
appeal, two cases in which our reviewing court ruled in favor of patentable
eligibility under § 101. Hrg. Tr. 14:1—15:8. We are not persuaded that those
cases lead to a different outcome in this case. See Bascom Global Internet
Svcs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51 (Fed. Cir. 2016)
(finding patent eligibility where the claims may be read to improve an
1 We understand Appellant’s reference to a “transformation” to be in
response to the Examiner’s application of the second step of the Alice test,
with the Examiner determining that the additional claim elements, e.g.,
generic computer structure, do not transform the abstract idea into a patent-
eligible application of the abstract idea. Non-Final Act. 3; see Alice Corp. v.
CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct., 1289, 1298 (2012)).
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existing technological process, namely filtering content on the internet);
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1307, 1315
(Fed. Cir. 2016) (finding patent eligibility of claims directed to a “method
for automatically animating lip synchronization and facial expression of
three-dimensional characters” where the “claimed process uses a combined
order of specific rules that renders information into a specific format that is
then used and applied to create desired results”).
We sustain the Examiner’s rejection of claims 27-41 as being directed
to non-statutory subject matter.
B. The Written Description Rejection
Independent claim 27 recites “a calculation algorithm based on a
combination of both the patient’s respiration flow rate and volume of
exhaled air compared with theoretical values.” Independent claim 38
contains the same or similar recitation. We understand the Examiner’s
written description rejection to be concerned with the use of plural
“theoretical values” in the comparison. See Non-Final Act. 4; Ans. 2—3.
The Examiner points to “Paragraph 34,” presumably referring to the
paragraph of the published application corresponding to page 5, lines 26—30,
of the original Specification, as disclosing a comparison to a single
theoretical value. See Ans. 2—3. The Examiner maintains that one of
ordinary skill would not understand that the applicant intended there to be a
comparison of multiple values. Id.
We observe that the Specification also refers to plural “values” in
locations other than Paragraph 34, including computing and comparing data
to the theoretical values. Spec. 9:3—7, 12:1—5, Fig. 5; see App. Br. 18
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(referring to the flow chart of Figure 5). In light of this, we cannot sustain
the written description rejection based on the finding that Paragraph 34 does
not refer to plural “values.”
C. The Obviousness Rejections
Claims 27—33, 36, and 38-41 stand rejected as being obvious over
Quinn, Tanaka, and Hofmeister. Appellant argues the rejected claims as a
group, App. Br. 9, and we select claim 27 as representative of the claimed
subject matter for purposes of deciding the appeal as to this rejection.
The Examiner relies on Quinn for much of the claimed subject matter.
Non-Final Act. 4—5. It is undisputed that Quinn discloses a spirometry
incentive test. Id. at 4; App. Br. 20—21. Quinn describes an embodiment
using an animation involving a firefighter, where the magnitude and distance
of the water from the firehose is related to the peak flow rate goal and the
degree the fire is extinguished is related to the respiratory volume goal.
Quinn 141. The animation proceeds sequentially with the fire extinguishing
beginning when the goal for the highest water flow is reached. Id. 144. The
Examiner found that Quinn does not disclose that the incentive image is
covered by another image or the sliding of a covering to uncover the
underlying image. Non-Final Act. 5—6. The Examiner relies on Tanaka for
the teaching of the use of a covering image and then revealing an underlying
image based on user performance, thereby providing an incentive for the
user to complete a game. Id. The Examiner relies on Hofmeister for the
teaching of the use of a sliding motion of an image to reveal an underlying
image. Id. at 6.
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Appellant argues that “[t]he applied art fails to teach or infer an
algorithm utilizing a combination of both the patient’s respiration flow rate
and volume of exhaled air compared with a theoretical value that is a unique
single value.” App. Br. 5; see also id. at 20-21, 23.
Claim 27 broadly claims controlling an incentive control mechanism
and performing this “via a calculation algorithm based on a combination of
both the patient’s respiration flow rate and volume of exhaled air compared
with theoretical values.” The claim further informs that the covered image is
unveiled “as a function of both the patient’s respiration flow rate and volume
of exhaled air.” Appellant’s contention regarding an algorithm “utilizing” a
combination of values appears to be based on a narrower interpretation than
that appropriate for the recitation in claim 27 of an algorithm merely being
“based on a combination” of values. Additionally, to the extent that
Appellant argues that the claim requires that all the values in the claim be
distilled into “a unique single value,” we are not persuaded because the
claim language does not require such a narrow reading. See Ans. 3 (The
Examiner, in responding to Appellant’s arguments, stating: “The limitation
in the independent claims reciting that a combination of flow and volume is
compared to ‘theoretical values’ does not limit the interpretation to the
flow/volume curve of the instant specification.”); cf. App. Br. 17 (conceding
that the concept of flow/volume curve area, upon which it now bases its
“unique single value” theory, does not appear in the Specification).
As Appellant acknowledges, Quinn discloses a motivational
spirometry test where peak flow rate and total flow volume values are
obtained and compared to “normative,” i.e. theoretical, values. App. Br. 21.
As Appellant also acknowledges, “[i]n this [motivational] animation [of
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Quinn,] both values of peak flow rate and total volume flow generate a
particular aspect of what is shown (the distance of the water flow and the
degree of the fire extinguished).” Id. at 21. Accordingly, Quinn discloses
controlling an incentive control mechanism via a combination of
comparative values and therefore satisfies the recited limitation. See
Non-Final Act. 10, 14.
Appellant argues that one would not cover Quinn’s firefighter
animation because that would “not allow the user to immediately understand
how he/she is performing the spirometry test” and, therefore, combining
Quinn with Tanaka’s covering image “would change the principle of
operation of the reference and make it unsuitable for its intended purpose.”
App. Br. 23—24. This argument is not persuasive as it is premised on the
presumption that one of ordinary skill would blindly combine the
embodiments rather than the references’ teachings. See Ans. 4 (explaining
how Tanaka’s teaching of a display method of uncovering an image would
be controlled by Quinn’s spirometry in the modified combination); id.
(“Tanaka teaches using a covering image and the removal thereof as
incentive to finish the game in a manner similar to how Quinn uses the fire
image as motivation to complete test.”); see also In re Keller, 642 F.2d 413,
425 (CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.”);
see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”).
Further and as the Examiner notes, Quinn teaches that animations (i.e.
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images) other than the firefighter may be used. Non-Final Act. 15 (citing
Quinn | 50). Lastly, even were Tanaka’s embodiment bodily incorporated
over Quinn’s firefighter image, we fail to see why the progressive revealing
of the underlying image would not incentivize further efforts by the patient
to continue the reveal.
For similar reasons, we are not persuaded by Appellant’s arguments—
again, premised on bodily-incorporation—that Tanaka requires controls like
a joystick (App. Br. 24—25) and that Hofmeister directly manipulates the
covering image via fingers or hands {id. at 27—28). See Ans. 5.
Appellant also argues that Tanaka is non-analogous art because it
pertains to gaming, not medical technology. Id. at 25. We are not persuaded
because “Quinn discloses that the spirometry art, especially in relation to
testing children, has incorporated features of computer games and displays.”
Ans. 4. Thus, games and displays are pertinent to the problem with which
Appellant was concerned and are in the same field of endeavor as the
claimed invention.
We have considered Appellant’s remaining arguments and do not find
them persuasive of error. See, e.g., App. Br. 25 (Appellant seemingly
arguing that the claim requires a “unique, single [theoretical] value”
notwithstanding the use of the plural “values” in claim 27).
We have not been informed of error in and thus sustain the
Examiner’s rejection of claims 27—33, 36, and 38—41 as being obvious over
Quinn, Tanaka, and Hofmeister.
Claims 34, 35, and 37 stand rejected as being obvious over Quinn,
Tanaka, Hofmeister, and Dunning. Appellant argues that the teachings of
Dunning do not address the deficiencies of the underlying combination of
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Quinn, Tanaka, and Hofmeister. App. Br. 29. As discussed above, we do
not find such alleged deficiencies, and therefore sustain the rejection of
claims 34, 35, and 37.
CONCLUSIONS
We sustain the rejection of claims 27-41 under 35 U.S.C. § 101; the
rejection of claims 27—33, 36, and 38-41 as being obvious over Quinn,
Tanaka, and Hofmeister; and the rejection of claims 34, 35, and 37 as being
obvious over Quinn, Tanaka, Hofmeister, and Dunning.
We do not sustain the rejection of claims 27, 32, 33, and 38 for failing
to comply with the written description requirement.
DECISION
The decision of the Examiner to reject claims 27-41 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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