Ex Parte Gross et al

Patent Trials and Appeals Board

Jul 2, 2019

13812993 - (D) (P.T.A.B. Jul. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/812,993 02/22/2013 Brian D. Gross
24737 7590 07/05/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
201 OP00620WOUS 8160
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/05/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAND. GROSS, DIMITRI SHV ARTSMAN,
DAVID YOUNGJIN KIM, and ELIZABETH J. ZENGO
Appeal 2018-003 817
Application 13/812,993 1
Technology Center 3600
Before MICHAEL R. ZECHER, JASON J. CHUNG, and
SCOTT E. BAIN, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 2-13, 15-18, 21, 23, and 25. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention "relates to medical monitoring and clinical data display
devices for monitoring the physiological condition of a patient." Spec. 1 :2-
3. Claims 2, 11, and 21 are illustrative of the invention and are reproduced
below:
1 According to Appellants, Koninklijke Philips N.V. is the real party in
interest. App. Br. 1.
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2. A medical monitoring system for monitoring and
displaying at least one physiological parameter in real time,
compnsmg:
medical sensors configured to sense physiological
parameters of a patient, at least one of the sensors sensing at least
one of the physiological parameters continuously;
an alarm configured to alert a caregiver;
a display on which visual renderings are displayed;
a control processor programmed to:
compare the sensed physiological parameters from
the medical sensors with an event criteria and an alarm
criteria;
in response to the sensed physiological parameters
meeting the alarm criteria, controlling the alarm to alert
the caregiver;
determine:
using the comparison, an onset time
signifying a time when an event is first detected,
an annunciation time signifying when the
control processor causes the alarm to alert the
caregiver,
an acknowledgment time signifying when the
alarm is acknowledged by the caregiver, and
using the comparison, a resolution time
signifying a time when the event is no longer active;
store physiological information indicative of the
physiological parameters relative to the timeline, the onset
time, the annunciation time, the acknowledgment time,
and the resolution time in a memory;
a display controller programmed to:
receive the physiological parameters, the onset
time, the annunciation time, the acknowledgment time,
and the resolution time;
control the display to:
on a physiologic signal timeline, display at
least one physiological parameter of the
physiological parameters as a function of time;
on an event state timeline, create and display
an event object for the event including displaying
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the onset time and the resolution time;
on an alarm announce state timeline, display
the annunciation time and the acknowledgement
time; and
label the annunciation time and the
acknowledgment time using all of color coding,
height coding, color intensity coding, and character
coding.
App. Br. 24--25 (Claims Appendix) ( emphases added).
11. A method for generating visual renderings of medical
events and alarms during real time monitoring and display of one
or more physiological parameters of a patient, the method
compnsmg:
with one or more processors, receiving physiological data
indicative of the physiological status of a selected patient
correlated to a physiologic signal timeline from medical sensors
associated with the selected patient;
with the one or more processors, comparing the received
physiological data with at least one of event criteria to detect
events and alarm criteria to detect alarms and correlating each
detected event and each detected alarm to segments of the
physiologic signal timeline;
in a data store, storing the physiological data correlated to
the physiologic signal timeline and storing the segments of the
physiologic signal timeline corresponding to each detected event
and alarm;
with the one or more processors, controlling a display
device to create an event object for each detected event including
an event bar extending along corresponding segments of an
event state timeline corresponding to each detected event and an
alarm object for each detected alarm;
with the one or more processors, controlling the display
device to label each event object by:
using color coding or color intensity coding, such
that the color or color intensity of each event object
represents a property of the physiological or clinical
information represented by the event object;
using height coding, such that height represents a
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property of the physiological data represented by the event
object; and
using character coding, such that a character
symbolizes a property of the physiological data
represented by the event object;
with the one or more processors, controlling the
display device to display the physiological data correlated
with the physiologic signal timeline and display the event
state timeline; and
with the one or more processors, controlling the
display to change a pattern density of an overlapping
portion of the event object pursuant to a determination
that an overlap occurs between an event object and
another event object.
Id. at 26-27 (Claims Appendix) ( emphases added).
21. A medical monitoring system for monitoring and
displaying one or more physiological parameters of a patient in
real time, the system comprising:
a control processor programmed to:
receive physiological data indicative of the
physiological status of a selected patient generated by a
plurality of medical sensors;
compare the received physiological data with at
least one of an event criteria and an alarm criteria to
detect events and alarms and identify when along a
timeline each event and each alarm occurs; and
store the physiological data along the timeline and
segments of the timeline corresponding to the occurrence
of each event and each alarm in a data store;
a display on which visual renderings of medical
events and alarms are displayed and
a display controller programmed to:
receive from the data store the physiological data
and segments;
create an event object for each event segment, each
event object including a bar extending along the timeline;
label each event object by:
using color coding or color intensity coding,
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such that the color or color intensity of each event
object represents a property of the physiological or
clinical information represented by the event
object;
using height coding, such that height
represents a property of the physiological data
represented by the event object; and
using character coding, such that a character
symbolizes a property of the physiological data
represented by the event object;
control the display to display the labeled bar
and the physiological data;
change a color transparency of an
overlapping portion of an event object pursuant to
a determination that an overlap occurs between the
event object and another event object;
determine a signal quality level of the event
object; and
change a height of the event object based on
the determined signal quality level.
Id. at 29--30 (Claims Appendix) (emphases added).
REJECTIONS AT ISSUE2,3,4
Claims 2-13, 15-18, 21, 23, and 25 stand rejected under 35 U.S.C.
§ 101 as directed to patent ineligible subject matter. Final Act. 2-8.
2 According to Appellants, claims 1, 14, 19, 20, 22, 24, and 26 are canceled.
App. Br. 24, 28-30.
3 In the Advisory Action mailed on August 22, 2017, the Examiner entered
Appellants' Amendment filed August, 8, 2017. This Amendment canceled
claims 14, 22, 24, and 26. We, therefore, interpret the Examiner's statement
of the rejection of claims 2-18 and 21-26 under 35 U.S.C. §§ 101 and 103
(Final Act. 2-8, 9--56) as a rejection of claims 2-13, 15-18, 21, 23, and 25
under 35 U.S.C. §§ 101 and 103 throughout this Decision.
4 The Examiner's rejection of claims 2-13, 15-18, 21, 23, and 25 under 35
U.S.C. § 103 has been withdrawn. Ans. 3.
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Claim 18 stands rejected under 35 U.S.C. § 112(d) as failing to further
limit the subject matter from the claim upon which it depends. Final Act. 8-
9.
ANALYSIS
I. Claims 2-13, 15-18, 21, 23, and 25 Rejected Under 35 US. C. § 1 OJ
A. Legal Principles
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. 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
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
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mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, 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 187; see also id. at 192 ("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).
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"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).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The U.S. Patent and Trademark Office ("USPTO") recently published
revised guidance on the application of§ 101. 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 Manual of Patent Examing Procedure
("MPEP") § 2106.0S(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 are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
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B. The Examiner's Conclusions and Appellants' Arguments
The Examiner concludes claims 2, 11, and 21 are analogous to the
claims in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016). Final Act. 4; Ans. 6. The Examiner also determines the present
claims do not amount to significantly more than an abstract idea itself
because the Examiner determines the abstract idea is implemented on
generic components that are well-understood, routine, and conventional
previously known to the industry. Final Act. 7 ( citing Spec. 4:2--4, 5); Ans.
6.
Appellants argue claims 2, 11, and 21 could not be performed in the
human mind alone. App. Br. 14; Reply Br. 4, 7. Appellants argue, similar
to Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), McRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1308-14 (Fed.
Cir. 2016), and Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.,
880 F.3d 1356 (Fed. Cir. 2018), claims 2, 11, and 21 are directed to an
improvement in computer-related technology. App. Br. 18-20; Reply Br. 4--
6. Appellants further argue, similar to DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014), claims 2, 11, and 21 are necessarily
rooted in medical equipment technology to solve problems specifically
arising in the realm of medical equipment technology. App. Br. 14, 16-17;
Reply Br. 10-11. Appellants argue claims 2, 11, and 21 are unlike the
claims in Electric Power because claims 2, 11, and 21 of the present case
solve a problem specific to medical equipment technology, whereas the
claims in Electric Power do not. App. Br. 21; Reply Br. 15. Appellants
argue, similar to claim 4 of Example 23 of the USPTO's July 2015 Update
Appendix 1: Examples (hereinafter "2015 Update"), which was determined
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to be patent eligible, claims 2, 11, and 21 of the present case improve the
basic display function of a computer. App. Br. 20-21; Reply Br. 14--15.
Appellants argue that, because there is no art rejection remaining for
our consideration, this is evidence that claims 2, 11, and 21 recite features
that were not known previously. App. Br. 12; Reply Br. 5-6. Appellants
argue claims 2, 11, and 21 do not preempt any abstract idea. App. Br. 22;
Reply Br. 15. Appellants argue, similar to BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), claims
2, 11, and 21 recite a combination of non-conventional and non-generic
arrangement of known, conventional elements, which results in an inventive
concept. App. Br. 11-12; Reply Br. 15. We disagree with Appellants.
C. Discussion
1. Step 2A, Prong 1
The emphasized portions of claim 2, reproduced above (see supra at
2--4), recite concepts that may be performed in the human mind, including
sensing physiological parameters of a patient, comparing those sensed
parameters with an event criteria and an alarm criteria, determining a
plurality of times, and displaying a plurality of timelines using color coding.
According to the Memorandum, concepts performed in the human mind fall
into the category of mental processes. See Memorandum. Moreover, those
mental processes are a type of an abstract idea. See id.
Additionally, the emphasized portions of claims 11 and 21,
reproduced above, recite concepts that may be performed in the human
mind, including receiving physiological data indicative of the physiological
status of a selected patient, comparing the received physiological data with
at least one of event criteria and alarm criteria, and displaying event objects
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for each detected event and alarm objects for each detected alarm using
color coding. According to the Memorandum, concepts performed in the
human mind fall into the category of mental processes. See Memorandum.
Moreover, those mental processes are a type of an abstract idea. See id.
We observe that claims 2, 11, and 21 are analogous to the claims
found to be abstract in Electric Power. In Electric Power, the court held that
the claims were drawn to "collecting information, analyzing it, and
displaying certain results of the collection and analysis," which is a mental
process (i.e., an abstract idea). Id. at 1355-1356. Claims 2, 11, and 21 at
issue here are similar because they recite collecting physiological data of a
patient, analyzing that data by comparing it against event criteria and alarm
criteria, and displaying results of the collection and analysis using color
coding.
We disagree with Appellants' argument that claims 2, 11, and 21
could not be performed in the human mind alone (App. Br. 14; Reply Br. 4,
7) for at least the reasons discussed above. Furthermore, by way of
example, we interpret claims 2, 11, and 21 as encompassing a doctor
visually assessing a patient, comparing his/her visual assessment to event
criteria and alarm criteria, and using paper and pen to draw the information
for subsequent display.
Because the present claims recite concepts performed in the human
mind, which fall into the category of mental processes (i.e., an abstract idea),
we proceed to prong 2.
2. Step 2A, Prong 2
Claims 2, 11, and 21, reproduced above, do not integrate the abstract
idea into a practical application because they do not impose any meaningful
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limits on practicing the abstract idea. In particular, we disagree with
Appellants' argument that claims 2, 11, and 21 recite improvements to the
functioning of a computer or to any other technology or technical field.
App. Br. 18-20; Reply Br. 4---6.
The alleged improvement is an improvement to organization and
presentation of physiological information of a patient. Unlike the claims of
Enfish, claims 2, 11, and 21 are not directed to "a specific improvement to
the way computers operate, embodied in the self-referential table." Enfish,
LLC v. Microsoft Corp., 822 F.3d at 1336. And unlike the claims of McRO,
claims 2, 11, and 21 are not directed to rules for lip sync and facial
expression animation or an improvement in computer technology. Lastly,
unlike the claims of Core Wireless, claims 2, 11, and 21 are not directed to a
graphical user interface for mobile devices that displays commonly accessed
data on a main menu.
Instead, claims 2, 11, and 21 are directed to an abstract idea as
discussed supra, in § LC. I. or at best, improving an abstract idea-not a
technological improvement. The Specification indicates the additional
elements (i.e., "medical sensors," "alarm," "display," "control processor,"5
"display controller," 6 "one or more processors," "memory,"7 and "data
store") recited in the present claims are merely tools used to implement the
abstract idea. Spec. 2:6-15, 3: 17-25, 4:30-32, 5: 10-11, 5: 18-19, 5:22-32.
Additionally, "a claim for a new abstract idea is still an abstract idea."
5 Claims 2 and 21 recite "control processor," whereas claim 11 recites "one
or more processors."
6 Claims 2 and 21 recite "display controller," whereas claim 11 recites "one
or more processors."
7 Claim 2 recites "memory," whereas claims 11 and 21 recite "data store."
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Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). "[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature ( or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility .... " Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Furthermore, claims 2, 11, and 21 amount to merely automating the
abstract idea discussed supra in§ LC. I. "Automation" or any increase in
processing speed in the claimed method ( as compared to without using
computers) comes from the capabilities of the generic computer
components, and not the recited process itself. See Fair Warning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp
Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)
("[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.")); see also Intellectual Ventures I LLC v. Erie
Indemnity Co., 711 F. App'x 1012, 1017 (Fed. Cir. 2017) (unpublished)
("Though the claims purport to accelerate the process of finding errant files
and to reduce error, we have held that speed and accuracy increases
stemming from the ordinary capabilities of a general-purpose computer 'do[
] not materially alter the patent eligibility of the claimed subject matter."').
We also disagree with Appellants' argument that claims 2, 11, and 21
are necessarily rooted in medical equipment technology that overcomes a
problem specifically arising in the realm of medical equipment technology.
App. Br. 14, 16-17; Reply Br. 10-11. Instead, claims 2, 11, and 21 are
directed to an abstract idea using additional generic elements as tools to
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implement the abstract idea as discussed supra in§§ LC. I., LC.2. or at best,
claims 2, 11, and 21 are rooted in collecting, analyzing, and displaying data
and overcoming a problem arising in those three areas.
We disagree with Appellants' argument that claims 2, 11, and 21 are
unlike the claims in Electric Power because claims 2, 11, and 21 of the
present case solve a problem specific to medical equipment technology,
whereas the claims in Electric Power do not. App. Br. 21; Reply Br. 15. As
discussed supra in§§ LC.I., LC.2., claims 2, 11, and 21 of the present case
do not solve a problem specific to medical equipment technology. Rather,
claims 2, 11, and 21 solve a problem arising in collecting, analyzing, and
displaying data.
We disagree with Appellants' argument that claims 2, 11, and 21 are
similar to the patent eligible claim 4 of Example 23 of the 2015 Update.
App. Br. 20-21; Reply Br. 14--15). Claims 2, 11, and 21 are unlike claim 4
of Example 23 of the 2015 update because claims 2, 11, and 21 recite a
different abstract idea than the abstract idea recited in claim 4. As stated
supra in§§ LC.I., we conclude claims 2, 11, and 21 of the present case
recite mental processes (i.e., an abstract idea); whereas claim 4 of Example
23 of the 2015 Update is distinguishable from the present case because claim
4 recites a different abstract idea (i.e., mathematical concepts).
With regard to Appellants' argument that the claims 2, 11, and 21
recite features that were not known previously because there are no
obviousness or novelty rejections of the claims, (App. Br. 12; Reply Br. 5-
6), Appellants improperly conflate the requirements for eligible subject
matter(§ 101) with the independent requirements of novelty(§ 102) and
non-obviousness(§ 103). "The 'novelty' of any element or steps in a
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process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter." Diehr, 450 U.S. at 188-89; see also
Genetic Techs., 818 F.3dat 1376 (stating that, "under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature ( or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility").
Additionally, we disagree with Appellants' argument that the present
claims are patent eligible because they do not preempt any abstract idea.
App. Br. 22; Reply Br. 15. Although preemption may denote patent
ineligibility, its absence does not demonstrate patent eligibility. See
FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d at 1098. For claims
covering a patent-ineligible concept, preemption concerns "are fully
addressed and made moot" by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Appellants do not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
3. Step 2B
We agree with the Examiner's determination that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional. Final Act. 7 ( citing Spec. 4:2--4, 5); Ans. 6. The Specification
supports the Examiners determination in this regard because it explains that
"medical sensors," "alarm," "display," "control processor," "display
controller " "one or more processors " "memory " and "data store" are
' ' '
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generic components. Spec. 2:6-15, 3:17-25, 4:30-32, 5:10-11, 5:18-19,
5:22-32. Appellants' Specification indicates these elements were well-
understood, routine, and conventional components because it describes them
at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id.
We disagree with Appellants' argument that claims 2, 11, and 21
recite a combination of non-conventional and non-generic arrangement of
known, conventional elements, which results in an inventive concept. App.
Br. 11-12; Reply Br. 15. Instead, claims 2, 11, and 21 are directed to an
abstract idea using generic components as discussed supra, in§§ LC. I. and
I.C.2. or at best, improving an abstract idea-not an inventive concept.
Appellants do not argue claims 3-10, 12, 13, 15-18, 23, and 25
separately, but assert the § 101 rejection of those claims should be
withdrawn for at least the same reasons as argued for independent claims 2,
11, and 21. App. Br. 11-22. Based on our review of the dependent claims,
these claims do not recite any additional features that would transform the
abstract idea embodied in claims 2, 11, and 21 into an inventive concept.
Accordingly, we sustain the Examiner's rejection of: (1) independent claims
2, 11, and 21; and (2) dependent claims 3-10, 12, 13, 15-18, 23, and 25
under 35 U.S.C. § 101.
II. Claim 18 Rejected Under 35 US.C. § l 12(d)
The Examiner finds claim 18 fails the infringement test and, therefore,
is not a proper dependent claim. Final Act. 8-9; Ans. 22-23.
Appellants argue dependent claim 18 further limits claim 11 and,
therefore, the rejection is improper. App. Br. 22; Reply Br. 16. We agree
with Appellants.
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As an initial matter, the Examiner's scant explanation behind the
rejection was not sufficient to put Appellants on notice as to why claim 19
was being rejected as an improper dependent claim. See In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011). Moreover, MPEP § 608.0l(n)(III), which
pertains to the infringement test, states "[a] dependent claim does not lack
compliance with 35 U.S.C. § 112(d) simply because there is a question as to
the significance of the further limitation added by the dependent claim"
(emphasis added). Accordingly, the Examiner's rejection contradicts MPEP
§ 608.01 (n)(III) because claim 18 further limits claim 11 by requiring the
method of claim 11 to be implemented on a non-transient computer readable
medium, which is an element not required by claim 11 itself.
Accordingly, we do not sustain the Examiner's rejection of claim 18
under 35 U.S.C. § 112(d).
DECISION
We affirm the Examiner's decision rejecting claims 2-13, 15-18, 21,
23, and 25 under 35 U.S.C. § 101.
We, however, reverse the Examiner's decision rejecting claim 18
under 35 U.S.C. § 112(d).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R.
§ 4I.50(a)(l).
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)(iv).
AFFIRMED
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