Ex Parte Holley et al

Patent Trials and Appeals Board

Jul 9, 2019

13148730 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/148,730 08/10/2011
147311 7590
Botos Churchill IP Law LLP
430 Mountain A venue
Suite 401
New Providence, NJ 07974
07/11/2019
FIRST NAMED INVENTOR
Liam Holley
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.
RESMED 3.3-023 (75) 4357
EXAMINER
ZHANG, RUIHUA
ART UNIT PAPER NUMBER
2416
NOTIFICATION DATE DELIVERY MODE
07/11/2019 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):
pto@bciplaw.com
rchurchill@bciplaw.com
rbotos@bciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIAM HOLLEY,
DION CHARLES CREWE MARTIN, and
STEVEN PAUL FARRUGIA
Appeal2017-006580
Application 13/148,730 1
Technology Center 2400
Before MICHAEL J. STRAUSS, IRVINE. BRANCH, and
JASON J. CHUNG, Administrative Patent Judges.
BRANCH, 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 1--47, 70, 71, and 84, which are all claims pending in the
application. A hearing was held on April 9, 2019, and a transcript has been
made of record. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
Appellants' disclosure relates to "acoustic detection ... useful for
automated devices such as [a] respiratory treatment apparatus." Spec. ,r 2.
1 According to Appellants, the real party in interest is ResMed Limited.
App. Br. 1.
Appeal2017-006580
Application 13/148,730
According to Appellants, the disclosed subject matter "may involve
detection of obstruction[,] such as within a patient interface or patient
respiratory system, detection of accessories or condition thereof, such as a
mask, and detection of a patient or user." Id.
Illustrative Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for detecting a respiratory treatment conduit
obstruction comprising:
determining with a sound sensor a measure of sound of a
flow generator within a respiratory treatment conduit, the flow
generator comprising a motor and impeller configured to provide
a respiratory treatment through the respiratory treatment conduit;
and
analyzing the measure of sound from the sound sensor in
a processor; and
indicating with the processor a presence or absence of
obstruction in the respiratory treatment conduit based on the
analyzing.
References and Rejections2
Claims 1--47, 70, 71, and 84 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 2---6.
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above mentioned Appeal Brief filed ("App.
Br.," filed September 1, 2016); ReplyBrief("ReplyBr.," filed March 20,
2017); Examiner's Answer ("Ans.," mailed January 20, 2017); Final Office
Action ("Final Act.," mailed March 1, 2016); and the Specification ("Spec.,"
filed August 20, 2011).
2
Appeal2017-006580
Application 13/148,730
Claims 1, 10-19, 28-36, 38, and 84 stand rejected under 35 U.S.C.
§ 103 3 as unpatentable over Wodicka (US 5,445,144, issued Aug. 29, 1995)
and Frater (US 2010/0006097 Al, published Jan. 14, 2010). Final Act. 7-13.
Claims 2--4, 20-22, 39, 43, and 47 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Wodicka, Frater, and Mitome (US 5,677,984,
issued Oct. 14, 1997). Final Act. 13-15.
Claim 70 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Wodicka, Frater, and Zdrojkowski (US 6,948,497 B2, issued Sept. 27,
2005). Final Act. 16-17.
Claim 71 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Wodicka, Frater, Zdrojkowski, and Mitome (US 5,677,984, issued Oct.
14, 1997). Final Act. 17-18.
Claim 37 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Wodicka, Frater, and Berthon-Jones (US 6,363,933 Bl, issued Apr. 2,
2002). Final Act. 18.
Claims 5-9, 23-27, 40--42, 44--46 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Wodicka, Frater, Mitome, and Meyer
(US 5,251,261, issued Oct. 5, 1993). Final Act. 18-22.
ISSUES
1. Did the Examiner err in determining that the claims are directed
to patent-ineligible subject matter?
3 We note that rejection states "35 U.S.C. § I02(b)." Final Act. 7. The
rejection appears, however, under a heading that states "35 U.S.C. § 103."
Id. at 6. Appellants recognize the typographically error and argue the
rejection as a rejection under§ 103. See App. Br. 11. Accordingly, we treat
the error in the final office action as a harmless typographical error.
3
Appeal2017-006580
Application 13/148,730
2. Did the Examiner err in finding the combination of Wodicka
and Frater teaches or suggests a "flow generator comprising a motor and
impeller configured to provide a respiratory treatment through the
respiratory treatment conduit," as recited in claim 1?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. We have considered in this Decision only those arguments
Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
A. Section 101
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, "because the claimed invention is directed to a judicial
exception [ abstract idea] without significantly more." Final Act. 2 see also
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014)
( describing the two-step framework "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts").
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
4
Appeal2017-006580
Application 13/148,730
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
mental processes ( Gottschalk v. 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, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); 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 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
5
Appeal2017-006580
Application 13/148,730
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. ( citation omitted) ( 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. ( alterations in original) ( 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.
B. USPTO § 101 Guidance
After the docketing of this Appeal, the USPTO published revised
guidance on the application of§ 101 ("Guidance"). See USPTO's 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) ("Memorandum"). Under the Guidance, the office first looks 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
6
Appeal2017-006580
Application 13/148,730
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP4 § 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, does the Office then look to whether
the claim:
(3) [ a ]dds 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.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, to the extent consistent
with our analysis herein. We add the following primarily for emphasis and
clarification with respect to the Guidance.
C. Alice/Mayo - Steps 1 and 2
C. I. 2019 Memorandum Step 2A - Prong One
Applying step 1 of the Alice/Mayo analysis, claim 1 recites an abstract
idea, namely a mental processes. Specifically, claim 1 recites a method for
detecting a respiratory treatment conduit obstruction comprising:
determining with a sound sensor a measure of sound of a
flow generator within a respiratory treatment conduit, the flow
generator comprising a motor and impeller configured to provide
a respiratory treatment through the respiratory treatment conduit;
analyzing the measure of sound from the sound sensor in
a processor; and
4 Manual of Patent Examining Procedure.
7
Appeal2017-006580
Application 13/148,730
indicating with the processor a presence or absence of
obstruction in the respiratory treatment conduit based on the
analyzing.
App. Br. 19 ( emphasis added).
The steps recite the concept of detecting an obstruction in a
respiratory treatment conduit, which corresponds to a mental process
including observations, evaluation, and judgment, which is an abstract idea.
A human can determine a measure of sound by listening (an observation),
analyze the sound by thinking about the measure of sound (evaluate), and
can indicate whether the measure of sound is produced by an obstruction.
Thus, a human mental process can detect an obstruction in a respiratory
treatment conduit as recited in claim 1. We therefore determine that claim 1
recites an abstract idea. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
C.2. 2019 Memorandum Step 2A-Prong Two
Further applying step 1 of the Alice/Mayo analysis, we determine that
claim 1 is directed to an abstract idea. The combination of elements do not
improve the functioning of a computer or any other technology. Claim 1
simply recites a "sound sensor" to determine a measure of sound, but there is
no indication that the sound sensor is anything other than generic ( e.g., a
"microphone"). Spec ,r 71. As claimed, the requirement that the sound is
produced by a "flow generator" or that the sound is "within a respiratory
treatment conduit" does not change the character of the "sound sensor." The
recited "flow generator comprising a motor and impeller configured to
provide a respiratory treatment through the respiratory treatment conduit" is
8
Appeal2017-006580
Application 13/148,730
typical of a respiratory treatment apparatus. Spec. ,r 3. The "processor" to
analyze the measure of sound to indicate "the presence or absence of
obstruction" also is not indicated to be anything but generic. See Spec. ,r
143. Claim 1 does not recite any particular analysis (i.e., the "analyzing"
limitation) indicative of an improvement in the functioning of the processor
or an improvement to any other technology.
Accordingly, we determine that, under the Guidance, the abstract idea
to which claim 1 is directed is not implemented into a practical application.
C.3. 2019 Memorandum Step 2B
Applying step 2 of the Alice/Mayo analysis, claim 1 does not add a
specific limitation that is not well-understood, routine, and conventional in
the field. Beyond "determining ... a measure of sound," "analyzing the
measure of sound," and "indicating ... a presence or absence of obstruction
in the respiratory treatment conduit based on the analyzing," the recited
structures of a "sound sensor," "flow generator," and "processor" are generic
(see Spec. ,r 71, 94, 143), in the case of the sound sensor and processor, or
typical (id. ,r 3), in the case of the flow generator. The claim does not add
activities or other elements that are other than well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the abstract idea. Generic or typical components, i.e.
processor, sound sensor, and flow generator, recited as performing generic
functions that are well-understood, routine and conventional activities
amount to no more than implementing the abstract idea with a computerized
system. Thus, taken alone, the additional elements do not amount to
significantly more than a judicial exception. Looking at the limitations as an
9
Appeal2017-006580
Application 13/148,730
ordered combination adds nothing that is not already present when looking
at the elements taken individually.
D. Appellants'§ 101 Arguments
Appellants argue the Examiner has mischaracterized the invention.
Reply Br. 2-3. Appellants argue
[t]he methods and apparatuses recited in Applicant's claims
improve the acoustic detection functionality of respiratory
treatment devices without the need for additional structures
recited in the prior art. More specifically, Applicant has obviated
the need for an additional speaker structure. Thus, Applicant's
claims are directed at solving a concrete problem, not some
vague abstract idea.
Id. at 2.
We understand Appellants to argue that claim 1 is not directed to an
abstract idea. For the reasons discussed infra, we disagree.
Specifically, claim 1 is directed to "detecting a respiratory treatment
conduit obstruction," idea mental process because all the recited steps can be
performed in the mind of a human. See CyberSource, 654 F.3d at 1375.
Even if the claim recites a solution to a concrete problem, the claim is
nevertheless directed to an abstract idea if it can be performed as a mental
process.
Appellants argue further that
[ c ]laim 1 limits the "measure of sound" to "a measure of sound
of a flow generator within a respiratory treatment conduit."
Moreover, that specific "measure of sound" is used for
"indicating with the processor a presence or absence of
obstruction in the respiratory treatment conduit." Therefore,
claim 1 limits the type of data that is gathered and how the data
analysis is performed."
10
Appeal2017-006580
Application 13/148,730
Reply Br. 3. Because a human could hear a sound, even if "of a flow
generator within a respiratory treatment conduit," and then indicate "a
presence or absence of obstruction in the respiratory treatment conduit"
based on observation and evaluation of the sound as a mental process, the
elements identified by Appellants do not make the recited abstract idea less
abstract.
Appellants' arguments as to the applicability of the cited cases (Reply
Br. 3-7; see App. Br. 5-11) are unpersuasive in view of our analysis infra
that, under the Guidance, claim 1 recites a judicial exception, an abstract
idea, does not integrate the judicial exception into a practical application,
does not add a specific limitation that is not well-understood, routine,
conventional in the field, but rather 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.
Accordingly, the claims are directed to patent ineligible subject
matter.
E. Appellants '§ 103 Arguments
Appellants argue the obviousness rejections based on claim 1. See
App. Br. 18. Accordingly, our decision with respect to claim 1 is
dispositive.
We disagree with Appellants' arguments with respect to the
obviousness rejection of claim 1, and, unless otherwise noted, we
incorporate by reference herein and adopt as our own: ( 1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer
11
Appeal2017-006580
Application 13/148,730
in response to Appellants' arguments. We highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
The Examiner finds Wodicka discloses all limitations of claim 1,
except that "Wodicka does not disclose the flow generator comprising a
motor and impeller." Final Act. 7. The Examiner finds that "Frater teaches
a flow generator comprising a motor and impeller" and concludes that it
would have been obvious to an ordinarily skilled artisan at the time of
Appellants' invention to modify Wodicka's "flow generator" "to include a
motor and impeller, such as the one of Frater, . . . to be capable of
generating more air flows, ... and to provide a quite flow generator with
reduced noise as suggested by Frater." Id. at 8 (citing Frater ,r 10 ("A first
aspect of the invention is to provide a system for reducing noise in a blower
or flow generator")).
Appellants argue error because "a speaker is not a flow generator,"
and because "the Wodicka speaker is not configured to provide a respiratory
treatment as in the context of Applicant's claims." App. Br. 12. Appellants
also argue that "absent improper hindsight, a person skilled in the art would
not see Applicant's present invention when considering both the disclosures
of Wodicka and Frater." Id. at 14.
The Examiner finds "Wodicka's speaker is a flow generator because it
generate[ s] pulsed air flows ... for providing a source of sound waves in
respiratory treatment conduit" and that Wodicka's "[u]se of a speaker for
acoustic measurement is part of patient's respiratory treatment procedures,
where the determining a position or distance into a body with the sound
source plays a very important role." Ans. 9 (citing Wodicka Figs. 1-3, 6;
12
Appeal2017-006580
Application 13/148,730
col. 1, 11. 8-15 and 43---62; col. 9, 11. 23--44, 66-68; col. 11, 11. 15-24 and 40-
42).
We agree with the Examiner that "Wodicka's speaker is a flow
generator because it generate[s] pulsed air flows." It is indisputable that
Wodicka's speaker moves air. Wodicka col. 9, 11. 66-68 ("Computer 92
therefore controls speaker 100 to generate incident pulses in wave guide 72 [,
which are] short duration sonic pulses")).
We are not persuaded of error by Appellants' argument that the
"Examiner appears to believe that a speaker is a 'flow generator' merely
because the sound waves that it produces can cause air to move." Reply Br.
9. Appellants do not direct our attention to sufficient evidence supporting a
construction of "flow generator" that would exclude Wodicka's speaker. See
App. Br. 11-17; Reply Br. 7-10.
Accordingly, because causing air to move is flow generation, we see
no error in the Examiner's determination that Wodicka's speaker teaches or
suggests the claimed flow generator.
We also agree with the Examiner that, even if the function of
Wodicka's speaker is exclusively for the purpose of placement of the
treatment apparatus, the Wodicka speaker is "configured to provide a
respiratory treatment through the respiratory treatment conduit." Ans. 9.
Placement of the device plays a role in the treatment process. Id.
Accordingly, we identify no reversible error in the Examiner's finding
that Wodicka discloses "a flow generator within a respiratory treatment
conduit, ... configured to provide a respiratory treatment through the
respiratory treatment conduit."
13
Appeal2017-006580
Application 13/148,730
We also are unpersuaded of error in the Examiner's conclusion that it
would have been obvious to an ordinarily skilled artisan at the time of
Appellants' invention to modify Wodicka's "flow generator" "to include a
motor and impeller, such as the one of Frater, . . . to be capable of
generating more air flows, ... and to provide a quite flow generator with
reduced noise as suggested by Frater." Final Act. 8 (citing Frater ,r 10).
Appellants argue unpersuasively that
[ o ]ne skilled in the art would not be motivated to do so reading
these references. This again is another improper hindsight
motivation that is not based on the prior art. Simply put, Wodicka
already has such a device for providing sufficient airflow to the
patient such that a person skilled in the art would not add another,
[let] alone to replace its speaker which serves a different purpose
as taught by Wodicka.
App. Br. 15. See App. Br. 15-17; Reply Br. 10-13.
Appellants' arguments do not persuasively rebut the Examiner's
evidence-based conclusion, namely that reducing noise in a flow generator
in a respiratory treatment apparatus is desirable. See Frater ,r 10. The
desirability of reducing noise in a flow generator of a respiratory treatment
apparatus supports the Examiner's proposed combination. Appellants, on
the other hand, do not provide sufficient persuasive argument or evidence to
rebut the Examiner's reasoning. It does not matter that reducing noise in a
flow generator in a respiratory treatment apparatus is not Appellants'
motivation. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). ("[T]he
motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness."). Instead, it is
enough that one of skill in the art would make the combination for at least
the purpose of reducing noise as taught by Frater. See Frater ,r 10.
14
Appeal2017-006580
Application 13/148,730
Accordingly, we are unpersuaded of error in the Examiner's rejection
of claim 1. We sustain the Examiner's rejection of claim 1, and the
rejections of claims 2--47, 70, 71, and 84, which Appellants argue are
patentable for similar reasons. See App. Br. 18; 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1--4 7, 70, 71, and 84 as being directed to patent ineligible subject
matter and the Examiner's decision rejecting claims 1--47, 70, 71, and 84 as
obvious.
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.
§ 41.50(±).
AFFIRMED
15