Ex Parte Fung et al

Patent Trial and Appeal Board

Dec 21, 2018

14318404 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/318,404 06/27/2014
110239 7590 12/26/2018
Edell Shapiro & Finnan LLC
9801 Washingtonian Blvd., Suite 750
Gaithersburg, MD 20878
FIRST NAMED INVENTOR
Wilson Fung
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.
3065.0294C 4127
EXAMINER
HENSON, MISCHITA L
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILSON FUNG, HARRY XIAO, and
JOSEF OSCAR
Appeal2018-004780
Application 14/318,404 1
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1--4 and 6-202 under
1 Appellant is the Applicant, Cochlear Limited, which, according to the
Appeal Brief, is the real party in interest. Appeal Brief (Appeal Br.) 2, filed
November 20, 2017.
2 The Appeal Brief Claims Appendix lists claims 1--4, 6-12, and 14--21 as
the claims on appeal (Appeal Br. 16-20) because claim 13 is left blank (id.
at 18). Claims 1--4 and 6-20 were pending at the time of the Final Office
Action (Final Office Action dated May 22, 2017 ("Final Act.")), as noted in
the Office Action Summary of the Final Office Action and in the § 101
Appeal2018-004780
Application 14/318,404
35 U.S.C. § 101 as being directed to patent ineligible subject matter.
We have jurisdiction under 35 U.S.C. § 6(b). 3
We AFFIRM.
The subject matter on appeal relates to diagnostic devices, methods of
using a diagnostic device including a primary sensor configured to measure
a characteristic of a magnetic field generated by an implanted magnet, and a
system including a sensor device configured to measure a magnetic field
generated by an implanted magnet and a computing device configured to
receive signals from the sensor device and to make determinations based on
the signals (see, e.g., claims 1, 14, and 20).
The Inventors disclose that implantable medical devices, such as a
hearing prosthesis, can include an implanted (internal) unit and an external
unit. Spec. ,r 2. The external unit can be maintained in position over the
internal unit by magnetically coupling them via a magnet in each unit. Id. ,r
23. According to the Inventors, if the retention force between the magnets
of the units is too weak, the external unit will not be sufficiently secured to a
recipient's body and can move, which can result in discomfort (e.g., chafing
of the recipient's skin) that may discourage the recipient from using the
medical device and can result in the external unit detaching. Id. ,r 24.
rejection. There were no claim amendments after the Final Office Action.
The Grouping of Claims and Argument sections of Appeal Brief notes
claims 1--4 and 6-20 are rejected. Appeal Br. 9, 15. Therefore, it appears
there was a mistake with claim numbering in the Claims Appendix of the
Appeal Brief, with claims 13-20 being incorrectly numbered claims 14--21.
We hold this to be a harmless error.
3 Our Decision additionally refers to the Specification filed June 27, 2014
("Spec."), the Examiner's Answer dated February 8, 2018 ("Ans."), and the
Reply Brief dated March 13, 2018 ("Reply Br.").
2
Appeal2018-004780
Application 14/318,404
Conversely, the retention force between the magnets can be too strong,
which can result in discomfort for the recipient and damage the recipient's
skin and/or soft tissues. Id. ,r 25.
In view of these considerations, the Inventors disclose it is important
to select a proper combination of magnets so the external unit is properly
retained without causing discomfort. Id. ,r 26. The Inventors state that
because the internal unit is not readily accessible post-implantation,
clinicians attempt to address this issue by selecting the proper magnet for the
external unit or selecting a proper setting for an electromagnet of the
external unit. Id.
However, according to the Inventors, various factors can influence the
retention force between the magnets of the external and internal units, which
can cause a clinician to select a less than optimal magnet or setting. Id. ,r
27-28. In view of this, the Inventors disclose a diagnostic device to assist a
clinician, such as by assisting the clinician in locating a center of the
magnetic field of the implanted magnet and determining a characteristic of
the implanted magnet to help the clinician identify the proper external
magnet or magnet setting. Id. ,r,r 29-37, 40-46, 53---64, 72-79.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.
1. A diagnostic device comprising:
a primary sensor configured to measure a characteristic
of a magnetic field generated by an implanted magnet, wherein
the implanted magnet is implanted in a recipient;
an output component; and
a processor component configured to:
(i) receive one or more measurement signals from
the primary sensor, wherein each measurement signal
includes information indicative of a measured
3
Appeal2018-004780
Application 14/318,404
characteristic of the magnetic field,
(ii) make a determination that the primary sensor
and the implanted magnet are misaligned, and,
responsive to the determination, (a) determine a direction
from a reference point of the diagnostic device to a center
of the magnetic field and (b) cause the output component
to output information indicative of the determined
direction to help navigate movement of the diagnostic
device for alignment of the primary sensor and the
implanted magnet,
(iii) based on the measured characteristic included
in each of the one or more measurement signals,
determine a magnet characteristic, wherein the magnet
characteristic is indicative of a characteristic of an
external magnet to include in an external apparatus that is
configured to be magnetically attached to the recipient,
and
(iv) cause the output component to output
information indicative of the magnet characteristic.
B. DISCUSSION
The first step in analyzing whether a claim is directed to patent-
eligible subject matter is determining whether the claim is directed to one of
the patent-ineligible concepts: laws of nature, natural phenomena, and
abstract ideas. Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347,
2355 (2014) ( citing Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289 (2012)). If a claim is directed to a patent-ineligible concept,
the second step in the analysis is to determine whether additional elements
of the claim, "both individually and 'as an ordered combination,'"
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297, 1298). Thus, a
claim that recites an abstract idea must include "'additional features"' to
4
Appeal2018-004780
Application 14/318,404
ensure "'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. at 2357 ( quoting Mayo, at 1297).
Here, the Examiner finds claim 1 is directed to the abstract ideas of
collecting information, analyzing the information, and displaying certain
results, as in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016). Final Act. 2-3. The Examiner finds the additional
recitations of claim 1, when considered individually and as an ordered
combination, do not amount to significantly more than the abstract ideas
because the limitations are recited with a high level of generality and are
conventional in nature. Id. at 3--4.
Appellant contends that Electric Power Group does not mean that
claims directed to collecting information, analyzing information, and
displaying certain results are per se patent ineligible because a determination
should be made whether a claim recites a particular concrete solution to a
problem or a claim attempts to patent the abstract idea of the solution to the
problem. Appeal Br. 9-11; Reply Br. 3--4. Specifically, Appellant asserts
claim 1 is rooted in the technology of diagnostic devices and is directed to a
particular and concrete solution for solving the specific problem of possible
misalignment between an external sensor and an implanted magnet and the
problem of selecting an external magnet to couple with the implanted
magnet, which ensures a characteristic of the implanted magnet is accurately
determined. Appeal Br. 11-14; Reply Br. 7-9. Appellant further argues
claim 1 requires a new source or type of information or new techniques for
analyzing information and/or invokes inventive programming and
unconventional, non-generic technology, which the Federal Circuit indicated
would have been helpful in Electric Power Group for making a favorable
5
Appeal2018-004780
Application 14/318,404
determination of patent eligibility. Appeal Br. 11-12, 14. To support this
argument Appellant notes there is no prior art rejection after withdrawal of a
previous rejection in view of Appellant adding the subject matter of claim 5
to claim 1. Id. at 14; Reply Br. 4---6.
The claims of Electric Power Group were directed to systems and
methods for performing real-time performance monitoring of an electric
power grid by collecting data from multiple sources, analyzing the data, and
displaying the results. Electric Power Group, 830 F.3d at 1351-1352. The
Federal Circuit noted that collecting information has been treated as within
the realm of abstract ideas, "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category," and "merely
presenting the results of abstract processes of collecting and analyzing
information, without more" is abstract and thus the claims focused on the
combination of these abstract ideas. Id. at 1353-1354. The Federal Circuit
has summarized such a situation in this way:
We have explained that claims focused on "collecting
information, analyzing it, and displaying certain results of the
collection and analysis" are directed to an abstract idea. Electric
Power, 830 F.3d at 1353. "Information as such is an intangible,"
hence abstract, and "collecting information, including when
limited to particular content (which does not change its character
as information), [i]s within the realm of abstract ideas." Id.
( citing cases). So, too, is "analyzing information . .. by
mathematical algorithms, without more." Id. at 13 54 ( citing
cases, including Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522,
57 L.Ed.2d 451 (1978), and Gottschalk v. Benson, 409 U.S. 63,
93 S.Ct. 253, 34 L.Ed.2d 273 (1972)). And "merely presenting
the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool
for presentation), is abstract as an ancillary part of such
6
Appeal2018-004780
Application 14/318,404
collection and analysis." Id. (citing cases). The claims here are
directed [to] abstract ideas under those principles.
SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018).
Here, claim 1 recites, among other things, a primary sensor configured
to measure a characteristic of a magnetic field generated by an implanted
magnet, an output component, and a processor component configured to (i)
receive one or more measurement signals from the primary sensor indicative
of the measured characteristic, (ii) make a determination that the primary
sensor and implanted magnet are misaligned and (a) determine a direction to
a center of the magnetic field and (b) cause the output component to output
information to help navigate movement of the diagnostic device for
alignment, (iii) determine a magnet characteristic, and (iv) cause the output
component to output information indicative of the magnet characteristic.
As stated by the Examiner (Ans. 5), step (i) corresponds to collecting
information (i.e., measuring a characteristic of the implanted magnet's
magnetic field), steps (ii}-(iii) correspond to analyzing the information (i.e.,
determining the primary sensor and implanted magnet are misaligned,
determining a direction to a center of the magnetic field, and determining a
characteristic of the magnet based on the measured characteristic), and steps
(ii) and (iv) are directed to outputting information (i.e., causing the output
component to output information indicative of the direction to the center of
the magnetic field and causing the output component to output information
indicative of the magnet characteristic). As a result, Electric Power Group
demonstrates that claim 1 is directed to abstract ideas (i.e., the collection of
information, the analysis of information, and presentation of results) under
7
Appeal2018-004780
Application 14/318,404
the first step of analyzing whether a claim is directed to patent-eligible
subject matter.
With regard to the second step in the analysis set forth by Alice, we
agree that the additional elements of claim 1, both individually and as an
ordered combination, do not transform the nature of claim 1 into patent
eligible subject matter. As stated by the Examiner at pages 5-6 of the
Examiner's Answer, the additional elements are recited at a high level of
generality that do no more than generally link the use of the abstract idea to
a particular technological environment. Each of functions (i}-(iv) of the
processor component are recited in generic terms without reference to a
specific type of information, specific information analysis technique, or
specific programming.
Moreover, the primary sensor, output component, and processor are
each recited in basic, general terms. Appellant's Specification discloses
generic examples for these recitations: the primary sensor can be a generic
magnetic field sensor ( e.g., magnetometer or Hall Effect sensor), the output
component can be a display and/or speaker, and processor component can be
a generic processor. Spec. ,r,r 34--37, 46, 51-54. Implementing an idea on a
general purpose computer does not transform it into a patentable apparatus;
the idea remains a pre-empted mental process. See Alice at 23 54 ("We have
described the concern that drives this exclusionary principle as one of pre-
emption."), citingBilskiv. Kappas, 130 S. Ct. 3218, 3231 (2010)
("upholding the patent 'would pre-empt use of this approach in all fields,
and would effectively grant a monopoly over an abstract idea"'). In other
words, claim 1 involves the sort of matter the Supreme Court cautioned
against in Alice by stating "transformation into a patent-eligible application
8
Appeal2018-004780
Application 14/318,404
requires 'more than simply stat[ing] the [abstract idea] while adding the
words 'apply it.'" Id. at 2357 (quoting Mayo at 1294).
As argued by Appellant, a determination should be made whether a
claim recites a particular concrete solution to a problem or a claim attempts
to patent the abstract idea of the solution to the problem. Appeal Br. 9-11;
Reply Br. 3--4. This issue is illustrated by McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). In McRO, the Federal
Circuit stated one should look to whether the claims "focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." 837 F.3d at 1314. The Federal Circuit
determined "the claims are limited to rules with specific characteristics" and
"[t]he specific, claimed features of these rules allow for the improvement
realized by the invention." Id. at 1313-1314. As discussed above, claim 1
invokes generic operations directed to collecting information, analyzing the
information, and outputting certain results without reciting specific
characteristics that would focus claim 1 on a specific improvement for
diagnostic devices, systems, and methods, as asserted by Appellant.
Appellant argues claim 1 requires a new source or type of information
or new techniques for analyzing information and/or invokes inventive
programming and unconventional, non-generic technology. Appeal Br. 11-
12, 14. However, as stated by the Examiner at page 7 of the Examiner's
Answer, there is no evidence in the record that claim 1 requires or is directed
to any of these features. With regard to claim 1 being rooted in the
technology of diagnostic devices, the Supreme Court has stated the
"prohibition against patenting abstract ideas 'cannot be circumvented by
9
Appeal2018-004780
Application 14/318,404
attempting to limit the use of [the abstract idea] to a particular technological
environment."' Bilski, 130 S. Ct. at 3230 (quoting Diamond v. Diehr 450
U.S. 175, 191-92 (1981)). As a result, claim 1 is not directed to a particular
concrete solution that addresses a problem, as argued by the Appellant.
In view of the above, Appellant's contention that claim 1 is similar to
claims in Thales Visionix Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017) (Reply
Br. 7) is also unpersuasive. The claims of Thales were directed to an
unconventional physical arrangement of inertial sensors and calculations
based on a different reference frame to reduce errors. Thales, 850 F.3d at
1348-1349. Appellant does not explain how the recited conventional or
generic steps or components are combined in an unconventional physical
arrangement that provides an improvement such that the claims would be
directed to patent-eligible subject matter. See id. at 1348.
In addition, Appellant's arguments that the lack of a prior art rejection
evidences the non-conventional nature of the claimed invention are also
unpersuasive. The fact that an abstract idea is considered novel and non-
obvious does not render the subject matter eligible under § 101.
"Groundbreaking, innovative, or even bri11iant discovery does not by itself
satisfy the§ 101 inquiry.~' Ass 'nfor Afolecular PatholOJ{Y v. J\1yriad
Generics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless1 patent-ineligible. See
1i1ayo~ 132 S. Ct at 1303-04. Further1 in response to an argument a claim
contained an inventive concept because it was not shown to be anticipated
under§ 102 or obvious under§ 103, the Federal Circuit has stated:
[t]hat position misstates the law. It is true that "the§ 101 patent-
eligibility inquiry and, say, the § 102 novelty inquiry might
sometimes overlap." Mayo, 132 S. Ct. at 1304. But, a claim for
10
Appeal2018-004780
Application 14/318,404
a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102
novelty.
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016).
In view of the above, Appellant's arguments do not identify a
reversible error in the Examiner's§ 101 rejection of claim 1.
Appellant does not argue independent claims 14 and 20 or dependent
claims 2--4, 6-13, and 15-19 separately from claim 1. Appeal Br. 14--15.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 101 rejection of claims 1--4 and 6-20.
C. DECISION
The decision of the Examiner 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).
AFFIRMED
11