Ex Parte Centen

Patent Trial and Appeal Board

Jul 16, 2018

12841952 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/841,952 07/22/2010
126679 7590 07/18/2018
Lane Powell, PC
601 S.W. Second Avenue
Suite 2100
Portland, OR 97204
FIRST NAMED INVENTOR
Corey James Centen
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.
130424.003103 3079
EXAMINER
TRAN,THOQ
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
physio_control_docketing@cardinal-ip.com
IPMail.MedSurgGroup@stryker.com
patents@lanepowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COREY JAMES CENTEN1
Appeal2017-007184
Application 12/841,952
Technology Center 3700
Before ERIC B. GRIMES, CHRISTOPHER G. P AULRAJ, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a device for monitoring chest compressions during the
administration of cardiopulmonary resuscitation (CPR) to a patient. Claims
1, 5, 26-28, 30-33, 36, 38, 39, and 46-50 are on appeal as rejected under 35
U.S.C. § 101. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the Real Party in Interest as "Physio-Control, Inc."
Appeal Br. 3.
Appeal2017-007184
Application 12/841,952
STATEMENT OF THE CASE
Independent claim 1, reproduced below, is representative:
1. A device for monitoring chest compressions during the
administration of cardiopulmonary resuscitation to a patient,
compnsmg:
a three-dimensional image optical sensor_attached [sic] to
a wrist band configured to be worn around a wrist of a rescuer
administering cardiopulmonary resuscitation to the patient, the
optical sensor configured to sense a distance, for a plurality of
pixels of the optical sensor, between the optical sensor and an
object in an environment surrounding the optical sensor, the
distance sensed throughout motion of a chest compression
administered by the rescuer during cardiopulmonary
resuscitation and the object in the environment monitored for
changes that are related to the depth of the administered chest
compressions, the optical sensor positioned to move with the
motion of the chest compression;
processing circuitry configured to receive the sensed
distance from optical sensor and further configured to:
generate a depth map from the sensed distance
between the optical sensor and the object in the
environment of the sensor; and
extract depth information of the chest compression
based on the depth map.
Br. 26 (Claims App'x).
The following rejection is appealed:
Claims 1, 5, 26-28, 30-33, 36, 38, 39, and 46-50 stand rejected under
35 U.S.C. § 101 as directed to an abstract idea without significantly more.
Non-Final Action 3.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
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Appeal2017-007184
Application 12/841,952
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
( emphasis added).
"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." Mayo Collaborative Servs. v.
Prometheus Labs, Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)). Claims directed to nothing more than
abstract ideas (such as mathematical algorithms), natural phenomena, and
laws of nature are not eligible for patent protection. Diamond v. Diehr, 450
U.S. 175, 185 (1981); accord MPEP § 2106 (II) (discussing Diehr); see also
Parker v. Flook, 437 U.S. 584, 592-94 (1978) (if, once the mathematical
algorithm is removed from consideration, nothing patentable remains, the
claims are not patent-eligible).
In analyzing patent-eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to "first determine whether the claims at issue
are directed to a patent-ineligible concept." Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2355 (2014). If they are, we then move to a
second step and "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.
(quoting Mayo, 566 U.S. at 79, 78).
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Appeal2017-007184
Application 12/841,952
The entirety of the Examiner's patent-ineligibility rejection and
rationale in support thereof is set forth on page 3 of the Non-Final Office
Action, as follows:
Claims 1, 5, 26-28, 30-33, 36, 38, 39, and 46-50 are
rejected under 35 U.S.C. 101 because the claimed invention is
directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more.
Claim 1 is directed to the abstract idea of generating a depth map
of compressions within the processing circuitry. The claims do
not include additional elements that are sufficient to amount to
significantly more than the judicial exception because they are
amount to [sic] known structures in the art. The Office believes
that while amending the claim to actually output the compression
depth information as feedback to the user would overcome the
rejection.
The Examiner concluded in the Non-Final Office Action that "generating a
depth map of [CPR] compressions" is an abstract idea. Non-Final Action 3.
The Examiner went into some greater detail in the Answer, determining that
this amounts to mathematical operations and concluding that mathematical
relationships are abstract ideas. Answer 3. In the Non-Final Office Action,
the Examiner concluded that significantly more than such an abstract idea
was not added by the other claim elements so as to confer patent-eligibility
because they were "known structures in the art." Non-Final Action 3. The
Examiner expanded on this in the Answer, but without adding evidence,
stating "[ t ]he remaining limitations describe an optical device for collecting
distance data and are well-known structures in the art (i.e. well understood
or conventional structures)." Answer 3; see also id. at 4--9 (further
addressing this issue without evidence).
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Appeal2017-007184
Application 12/841,952
Appellant argues:
(1) the Examiner's § 101 rejection failed to meet the Office's
burden of proof; (2) the Examiner's§ 101 rejection improperly
combined the § 101 legal standard with an obviousness analysis
under§ 103; (3) Appellant's claims do not recite an abstract idea;
and (4) if Appellant's claims were to be found to recite an
abstract idea, Appellant respectfully concludes that they recite
significantly more than the abstract idea.
Br. 11. These arguments contended that the Examiner did not show that the
Supreme Court or the Federal Circuit has found similarly claimed subject
matter to be directed to an abstract idea and that the claims are not directed
to an abstract idea; that the Examiner did not evaluate the claim( s) as a
whole under the two-step Alice analysis; that the Examiner's determination
that claimed structural elements were well-understood, routine, and
conventional (in their use or function) was not supported and amounted only
to a conclusory obviousness analysis because something might be "known"
in the prior art, but not "conventional"; and that, if the claims are directed to
an abstract idea, the non-abstract-idea claim elements amount to
significantly more than a mere abstract idea so as to confer patent-eligibility.
Id. at 11-24.
As recognized by the Supreme Court and the Federal Circuit, "[a]t
some level, 'all inventions ... embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas."' Amdocs (Israel) Ltd. v.
Openet Telecom Inc., 841 F.3d 1288, 1299 (Fed. Cir. 2016) (quoting Alice,
134 S.Ct. at 2354 (quoting Mayo, 566 U.S. at 71)) (alterations and emphasis
in original). Because of this reality, as instructed by the Supreme Court, "we
tread carefully in construing this exclusionary principle lest it swallow all of
patent law." Alice, 134 S.Ct. at 2354.
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Appeal2017-007184
Application 12/841,952
Even assuming for the sake of argument that the claims on appeal are
"directed to" an abstract idea under the first step of the Alice framework as
determined by the Examiner, we conclude that the Examiner has not shown
that all the additional elements recited in the claims, considered individually
and as an ordered combination, were well-understood, routine, and
conventional as required under the second step of Alice. Regarding the
Examiner's determination that the non-abstract-idea claim elements are
merely routine and conventional,
Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a
factual determination. Whether a particular technology is well-
understood, routine, and conventional goes beyond what was
simply known in the prior art. The mere fact that something is
disclosed in a piece of prior art, for example, does not mean it
was well-understood, routine, and conventional.
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).
Here, there is a dispute over whether the claimed "three-dimensional
image optical sensor attached to a wrist band ... configured to sense a
distance" and the related "processing circuitry configured [i.e., programmed]
to receive the sensed distance ... generate a map ... and extract depth
information" were well-understood, routine, and conventional to a skilled
artisan. The Examiner has provided no evidence that they would have been
so-understood. Therefore, we conclude a prima facie case for patent-
ineligibility has not been established and we reverse the rejection.
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Appeal2017-007184
Application 12/841,952
SUMMARY
The rejection of the claims as directed to patent-ineligible subject
matter is reversed.
REVERSED
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