Ex Parte Hong et al

Patent Trial and Appeal Board

Oct 4, 2018

14216743 (P.T.A.B. Oct. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/216,743 03/17/2014
119042 7590 10/09/2018
Weaver Austin Villeneuve & Sampson LLP; FITBIT
ATTN: FITBIT, INC
P.O. BOX 70250
Oakland, CA 94612-0250
Jung Ook Hong
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.
FTBTP012/FB-0023 8809
EXAMINER
CERIONI, DANIEL LEE
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
10/09/2018 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):
uspto@wavsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNG OOK HONG, ANDREW COLE AXLEY, and
SHELTEN GEE JAO YUEN1
Appeal 2018-003376
Application 14/216,743
Technology Center 3700
Before FRANCISCO C. PRATS, JOHN E. SCHNEIDER, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
Opinion of the Board filed by Administrative Patent Judge SCHNEIDER
Opinion Concurring-in-part and Dissenting-in-part filed by Administrative
Patent Judge MAJORS
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
for tracking a step count metric, which have been rejected as being directed
to non-statutory subject matter and as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
1 Appellants identify the Real Party in Interest as Fitbit, Inc. Appeal Br. 3.
Appeal2018-003376
Application 14/216,743
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
"Sensor devices can infer biometrics of interest from sensor data that
are associated with activities of a user. In many implementations of sensor
devices, [] the high accuracy of biometric estimates is achieved by limiting
activity types and/or activity intensities that the sensor devices can monitor."
Spec. ,r 2. "Recent advances in sensor, electronics, and power source
miniaturization have allowed the size of personal health monitoring devices,
also referred to herein as 'biometric tracking' or 'biometric monitoring'
devices, to be offered in small sizes." Spec. ,r 4. "However, the miniature
size of the product limits the electric power it supplies." Id. The
Specification discloses a method that enables "sensor devices to use one or
more modes to achieve computation speed and accuracy while maintaining
energy efficiency." Spec. ,r 5.
Claims 39-46, 48-50, 52-58, 60-62, 71, and 76 are on appeal. Claim
39 is illustrative and reads as follows:
39. A method of tracking a step count metric of a user
using a wearable biometric monitoring device, wherein the
wearable biometric monitoring device comprises one or more
processors, one or more motion sensors, and a display device
configured to present the step count metric of the user, the
method comprising:
(a) operating the one or more motion sensors when the
wearable biometric monitoring device is in motion;
(b) generating, by the one or more motion sensors, a first
set of motion sensor output data indicative of the motion of the
wearable biometric monitoring device;
( c) determining, by the one or more processors, that a
first signal strength of the first set of motion sensor output data
is larger than a threshold value;
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( d) selecting, by the one or more processors and based on
determining that the first signal strength of the first set of
motion sensor output data is larger than the threshold value, a
time domain analysis of the first set of motion sensor output
data over a frequency domain analysis of the first set of motion
sensor output data;
( e) quantifying, by the one or more processors, a step count using the
time domain analysis of the first set of motion sensor output data, and
updating the step count metric using the step count quantified using
the time domain analysis of the first set of motion sensor output data;
( f) generating, by the one or more motion sensors, a
second set of motion sensor output data indicative of the motion
of the wearable biometric monitoring device;
(g) determining, by the one or more processors, that a
second signal strength of the second set of motion sensor output
data is smaller than the threshold value;
(h) selecting, by the one or more processors and based on
determining that the second signal strength of the second set of
motion sensor output data is smaller than the threshold value,
the frequency domain analysis of the second set of motion
sensor output data over the time domain analysis of the second
set of motion sensor output data; and
(i) quantifying, by the one or more processors, a step
count using the frequency domain analysis of the second set of
motion sensor output data, and updating the step count metric
using the step count quantified using the frequency domain
analysis of the second set of motion sensor output data;
(j) controlling the display device of the wearable
biometric monitoring device to display the step count metric.
The claims stand rejected as follows:
Claims 39, 40, 42--46, 48-50, 52, 58, 71, and 76 have been rejected
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
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Claims 39, 40, 42--45, 48, 52, 58, 71, and 76 have been rejected under
35 U.S.C. § I03(a) as unpatentable over Modi2 in view ofMeger3 and
Rayner. 4
Claim 46 has been rejected under 35 U.S.C. § I03(a) as unpatentable
over Modi in view of Meger and Rayner in further view of Weast. 5
Claims 49 and 50 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Modi in view of Meger and Rayner in further view of
Najarian. 6
NON-STATUTORY SUBJECT MATTER
Issue
The issue with respect to this rejection is whether the Examiner
properly concluded that the claims are directed to non-statutory subject
matter.
The Examiner finds that the claims are directed to an abstract idea.
Non-final Act. 3. The Examiner finds that each of the steps recited in the
claims are processes that can be performed in the human mind. Id.
Applying the second step of the Alice/Mayo analysis, the Examiner finds
that the claims do not recited something significantly more. Id. at 4. The
Examiner finds that while the claims recite structures such as sensors and
2 Modi, US 2014/0074431 Al, published Mar. 13, 2014 ("Modi")
3 Meger et al., US 2011/0112442 Al, published May 12, 2011 ("Meger").
4 Rayner et al. US 2014/0228649 Al, published Aug. 14, 2014 ("Rayner").
5 Weast et al., US 2013/0191034 Al, published July 25, 2013 ("Weast").
6 Najarian et al., US 2012/0123232 Al, published May 17, 2012
("Najarian").
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processors, the claims embrace generic and well known structures and do
not represent something significantly more. Id. at 4--5.
Appellants contend that the invention is not directed to an abstract
idea but is a method that improves the accuracy and performance of step
count tracking. Appeal Br. 7. Appellants contend that the method recited in
the claims represents a specific solution to a technological problem. Appeal
Br. 9--14 and 21. Appellants contend that the claims are directed to specific
step count process and do not preempt alternate approaches to step count
analysis. Appeal Br. 15-16. Appellants also contend that the claimed
method employs unconventional steps to track physiological metrics.
Appeal Br. 16-17. Appellants go on to argue that the claims are tied to a
specific machine - a biometric monitoring device, and not a generic
computer. Appeal Br. 18-20.
Analysis
As stated inJn re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting
a prima facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellants do not persuade us that a preponderance of the evidence
fails to support the Examiner's conclusion that the rejected claims recite
subject matter ineligible for patenting under 35 U.S.C. § 101.
Section 101 states that "[ w ]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
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and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title."
The Supreme Court has "long held that this provision contains an
important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Intern.,
134 S.Ct. 2347, 2354 (2014).
The Federal Circuit has summarized the Supreme Court's two-part
test for distinguishing between claims to patent-ineligible exceptions, and
claims to patent-eligible applications of those exceptions, as follows:
Step one asks whether the claim is "directed to one of
[the] patent-ineligible concepts." [Alice, 134 S.Ct. at 2354]. If
the answer is no, the inquiry is over: the claim falls within the
ambit of§ 101. If the answer is yes, the inquiry moves to step
two, which asks whether, considered both individually and as
an ordered combination, "the additional elements 'transform the
nature of the claim' into a patent-eligible application." Id.
( quoting Mayo [ Collaborative Services v. Prometheus Labs,
Inc., 132 S.Ct. 1289, 1297 (2012)]).
Step two is described "as a search for an 'inventive
concept."' Id. (quoting Mayo, 132 S.Ct. at 1294). At step two,
more is required than "well-understood, routine, conventional
activity already engaged in by the scientific community," which
fails to transform the claim into "significantly more than a
patent upon the" ineligible concept itself. Mayo, 132 S.Ct. at
1298, 1294.
Rapid Litigation Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed.
Cir. 2016) (paragraphing added).
In applying step one of the test recited above, it is important to not
only see if there is a patent-ineligible concept within the claim but we must
determine if the patent eligible concept is what the claim is directed to.
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Vanda Pharm. Inc. v. West Ward Pharm. Int 'l Ltd., 887 F .3d 1117, 1134
(Fed. Cir. 2018). Ifwe find that the claims are not directed to a patent
ineligible concept, we need not proceed to step two. Id.
Turning to the first step in the Alice/Mayo analysis, we agree with the
Examiner that the claims are directed to an abstract idea. Non-Final Act. 4.
The claims recited a method for tracking a user's steps. Response7 2. The
core steps recited in the method of applying, determining, selecting and the
quantifying are steps that can be performed in one's mind or with pencil and
paper. Non-Final Act. 4. Thus the claim, viewed as a whole, is directed to
an abstract idea and is not patent eligible.
Appellants argue that the claimed method is not directed to an abstract
idea but rather is directed to improving a step count metric obtained by a
wearable biometric device. Appeal Br. 7-10. In addition, Appellants
contend that the claimed method is analogous to the method claimed in
McRO, Inc. v. Bandai Namco Games Amer., Inc., 837 F. 3d 1299 (Fed. Cir.
2016) in that the present method incorporates a specific set of rules to
analyze the data. Appeal Br. 11-12.
We have considered Appellants' arguments and find them
unpersuasive. While the claims refer to a wearable biometric device, as
discussed below, the main thrust of the claimed method relates to how the
motion data is processed, not the structural elements of the device. Data
processing concepts are abstract ideas and are not patent eligible.
7 Response to Non-Compliant Brief, filed Sept. 12, 2017 ("Response").
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Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011).
Appellants' reliance on McRO is misplaced. In McRO a specific set
of rules were applied to a data set to produce an enhanced lip
synchronization. McRO, 837 F3d. at 1314. In the present case, the claim
only refers to manipulation of data and displaying the results of the
manipulation. There is no enhancement of the result nor is there any
evidence that the method improves the operation of the device.
Appellants argue that the method is directed to improving the
physiologic metric obtained by the biometric device and the in improves the
operation of the device. Appeal Br. 10 and 19. We are not persuaded.
Appellants do not point to any data in the record to show how the claimed
method improves the physiological metric or improve the operation of the
biometric device. Appellants have only presented attorney argument which
is insufficient to show patentability. Appeal Br. 10 and 19. "Attorneys'
argument is no substitute for evidence." Johnston v. IVAC Corp., 885 F.2d
1574, 1581 (Fed. Cir. 1989).
Having found that the claims are directed to an abstract idea, we now
tum to the second part of the Alice/Mayo test - are there additional claim
elements that represent something more than the abstract idea? Again, we
agree with the Examiner that the additional elements do not present
something significantly more that the abstract idea. Non-Final Act. 4--5.
Appellants argue that the claimed method involves unconventional
steps that represent something more than an abstract idea. Appeal Br. 16-
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21. Appellants also argue that the method is tied to a specific machine
which also supports patentability. Appeal Br. 18-17.
Appellants' argument is not persuasive. The analytical techniques
recited in the claims, frequency domain analysis and time domain analysis
are known in the art. Meger ,r 358. Threshold values have also been used to
determine which techniques should be used. Id. The recited steps
individually or in combination are not unconventional.
As to the claim being tied to a specific device, as shown by Modi,
such devices are known in the art. See Modi Abstract (wearable pedometer).
Appellants do not point to any evidence in the record that has shown that the
biometric device recited in the claims differs from that known in the art.
Appellants argue that the present claims do not preclude one skilled in
the art from developing biometric devices that operate in a different manner
than the claimed method. Appeal Br. 15-16. Appellants acknowledge that
lack or preemption alone is not determinative, but argue that it is a factor
that has been considered in determining if an invention is patent eligible. Id.
We have considered Appellants' argument and find it unpersuasive.
Our reviewing court has expressly rejected similar contentions regarding
preemption, stating that a patentee's "attempt to limit the breadth of the
claims by showing alternative uses ... outside of the scope of the claims
does not change the conclusion that the claims are directed to patent
ineligible subject matter." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015). The court explained that, "[w]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility .... Where a
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patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework ... preemption concerns are fully addressed and
made moot." Id.
In the present case, as discussed above, Appellants' claim 39 is
limited to patented ineligible subject matter under the Alice/Mayo
framework. Thus, that alternatives outside the claims are not preempted
does not demonstrate patent eligibility.
In sum, for the reasons discussed, Appellants do not persuade us that a
preponderance of the evidence fails to support the Examiner's conclusion
that Appellants' claim 3 9 is patent-ineligible under § 101. Accordingly, we
affirm the Examiner's rejection of claim 39 on that ground. Because they
were not argued separately, claims 40, 42--46, 48-50, 52, 58, 71, and 76 fall
with claim 39. See 37 C.F.R. § 4I.37(c)(l)(iv).
OBVIOUSNESS
Issue
All of the rejection are based, at least in part, on the combined
teachings of Modi and Meger. As discussed below, the propriety of this
combination is dispositive of all of the rejections under 35 U.S.C. § 103(a).
We therefore elect to consider all of the rejections for obviousness together.
The issue with respect to these rejections is whether a preponderance
of the evidence supports the Examiner's conclusion that the subject matter of
the claims would have been obvious over Modi combined with Meger.
The Examiner finds that Modi teaches a method for monitoring a
user's step count using a wearable biometric device. Non-Final Act. 11.
The Examiner finds that the biometric device in Modi comprises one or
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more processors, and one or more motion sensors. Id. The Examiner finds
that the method disclosed in Modi comprises the steps of
Id.
(a) operating the one or more motion sensors when the
wearable biometric monitoring device is in motion (" ...
detected by the motion sensor as the user is walking or
running," para [0014]);
(b) generating, by the one or more motion sensors, a first
set of motion sensor output data (i.e., 320, 322 of Pig. 3)
indicative of the motion of the wearable biometric monitoring
device (para [0019]);
( e) quantifying, by the one or more processors, a step
count using the time domain analysis of the first set of motion
sensor output data (para [0014], [0037], [0040], and/or [0041]),
and updating the step count metric using the step count
quantified using the time domain analysis of the first set of
motion sensor output data (para [0014], [0037], [0040], and/or
[0041 ]); and
( f) generating, by the one or more motion sensors, a
second set of motion sensor output data (i.e., 306, 308 of Pig. 3)
indicative of the motion of the wearable biometric monitoring
device (para [0019]).
The Examiner finds that Modi does not teach the remaining steps of
claim 39 but that Meger teaches those steps. Non-Final Act. 11-13. The
Examiner concludes
It would have been obvious to a skilled artisan to modify
Modi to include ( c) determining, by the one or more processors,
that a first signal strength of the first set of motion sensor
output data is larger than a threshold value; ( d) selecting, by the
one or more processors and based on determining that the first
signal strength of the first set of motion sensor output data is
larger than the threshold value, a time domain analysis of the
first set of motion sensor output data over a frequency domain
analysis of the first set of motion sensor output data; (g)
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determining, by the one or more processors, that a second
signal strength of the second set of motion sensor output data is
smaller than the threshold value; (h) selecting, by the one or
more processors and based on determining that the second
signal strength of the second set of motion sensor output data is
smaller than the threshold value, the frequency domain analysis
of the second set of motion sensor output data over the time
domain analysis of the second set of motion sensor output data;
and (i) quantifying, by the one or more processors, a step count
using the frequency domain analysis of the second set of
motion sensor output data, and updating the step count metric
using the step count quantified using the frequency domain
analysis of the second set of motion sensor output data, in view
of the teachings of another embodiment of Modi and Meger,
because "it is more effective to use a time domain algorithm"
during relatively low activity levels (i.e., sleep or walking) and
"a frequency domain algorithm" during relatively high activity
levels (i.e., awake or running) (see para [0358] of Meger).
Additionally, the Federal Circuit has recognized that
"[ c ]ombining two embodiments disclosed adjacent to each other
in a prior art patent does not require a leap of inventiveness."
Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982,
991 (Fed. Cir. 2009).
Non-Final Act. 13-14.
The Examiner finds that neither Modi nor Meger teach using a display
device to show the user's step count, but that this is taught by Rayner. Non-
Final Act. 14. The Examiner finds that it would have been obvious to
modify the device of Modi to include a display. Id. at 15.
Appellants argue that Modi teaches away from making the
combination proposed by the Examiner. Appeal Br. 25. Appellants contend
that Modi teaches using a threshold to determine whether to analyze the data
or ignore the data. Id. Appellants contend that this teaches away from using
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a threshold to determine whether to use a time domain analysis or a
frequency domain analysis. Id. at 25-26.
Appellants argue that one skilled in the art would not have a
reasonable expectation of success in combining the teachings of the
references. Non-Final Act. 26. Appellants argue that the combination of
reference would result in erroneously counting noise in the motion data as
steps. Id. This would lead to an inaccurate step count. Id.
Appellants go on to argue that Meger is a non-analogous reference
and cannot be properly combined with Modi and Rayner. Id. Appellants
argue that Meger is directed to monitoring large body movements of a
patient in bed whereas Modi and Rayner are directed to an ambulatory user.
Id. at 27. Appellants also argue that the data analyzed in Modi are different
than that analyzed in Meger. Id. Appellants argue that nothing in the
references teach that switching between frequency domain analysis and time
domain analysis for heart or respiratory rates as taught by Meger would be
applicable to the motion data of Modi. Id.
Analysis
We conclude that Appellants have the better position. The method
taught in Modi involves using frequency domain analysis of data derived
from one or more motion sensors. Modi ,r,r 14--16. Meger, on the other
hand, teaches alternating between frequency domain analysis and time
domain analysis to analyze respiratory or heart rates. Meger ,r 358. The
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Examiner has not shown why one skilled in the art would apply the split
analytical technique of Meger to the motion data of Modi.
The Examiner contends that the combination is proper in that both
Modi and Meger are in the same general field measuring physiological data
using biometric devices. Ans. 29--30. While this may be true, as Appellants
point out, Meger and Modi measure different types of physiological data,
heart rate and respiration rate versus motion data. The Examiner has not
shown adequately on this record that the analytical techniques used in Meger
for heart rate or respiration rate analysis would be useful to analyze the
motion data of Modi.
Conclusion of Law
We conclude that a preponderance of the evidence does not support
the Examiner's conclusion that subject matter of the claims
SUMMARY
We affirm the rejection of claims 39, 40, 42--46, 48-50, 52, 58, 71,
and 76 under 35 U.S.C. § 101.
We reverse the rejections under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
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-IN-PART
14
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNG OOK HONG, ANDREW COLE AXLEY, and
SHEL TEN GEE JAO YUEN
Appeal2018-000661
Application 14/250,356
Technology Center 3700
Before FRANCISCO C. PRATS, JOHN E. SCHNEIDER, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge, concurring-in-part and dissenting-
in-part.
DECISION ON APPEAL
Although I join the majority's analysis and decision regarding the
rejection for obviousness, I write separately on the rejection under § 101 for
lack of patent-eligible subject matter. Non-Final Act. 3-7. The majority has
summarized the law and general two-part test for determining whether
claimed subject matter is patent eligible under the Alice/Mayo framework,
which I do not repeat here. As for the application of that test to the facts and
rejection here, however, I see things differently and conclude that the claims
on appeal are not patent ineligible under § 101.
Is claim 39, which recites a method of tracking a user's step count
metric using a wearable biometric monitoring device according to certain
Appeal2018-003376
Application 14/216,743
steps, directed to a patent ineligible abstract idea? 1 On my review of the
record, it is not. I explain further below.
In addressing whether the claim is directed to an abstract idea, we
must heed several cautions. All inventions, at some level, embody or apply
patent ineligible subject matter such as abstract ideas, and so "we tread
carefully in construing this exclusionary principle lest it swallow all of
patent law." Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S.Ct. 2347, 2354
(2014 ). And we must "ensure at step one that we articulate what the claims
are directed to with enough specificity to ensure the step one inquiry is
meaningful." Thales Visionix Inc. v. US., 850 F.3d 1343, 1347 (Fed. Cir.
2017). Moreover, as the Federal Circuit has confirmed, "[a]t step one, ... it
is not enough to merely identify a patent-ineligible concept underlying the
claim; [we] must determine whether ... [the] patent-ineligible concept is
what the claim is 'directed to."' Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1050 (Fed. Cir. 2016).
The Examiner, in effect, distills claim 39 down to applying time and
frequency domain analyses to data, and making selections based on the
analyzed data - analyses that the Examiner asserts can be done with a pen
1 Determining whether a particular claim is directed to an abstract idea is
not, at present, a question that is easily answered. Cf Interval Licensing
LLC v. AOL, Inc., No. 2016-2502, slip op. at 5, 11 (Fed. Cir. July 20, 2018)
(Plager, J. concurring-in-part and dissenting-in-part) (describing a
"definitional morass" related to the abstract idea inquiry and noting that
"when two of our leading judges who have devoted their careers to the
practice and explication of patent law publicly proclaim that there is a real
problem, there is a real problem.").
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and paper or in the mind. Non-Final Act. 3--4. But to my eyes, this is an
overgeneralization of claim 39, and not what the claim is directed to.
Even if the data analysis and selection could be characterized as an
"abstract idea," reading the full claim in light of the Specification, I
conclude claim 39 is directed to a sufficiently non-abstract method that uses
a wearable biometric device in a more specific and practical way. That is,
claim 39 is directed to using a wearable biometric monitoring device2 to
collect user data indicating a user's physiological activity, specifically a step
count metric, process and select the data according to certain rules ( e.g.,
selecting sensor output data analyzed in the frequency domain versus the
time domain when signal power is lower), and updating and displaying the
user's step count metric on the wearable device's display. That the method
may include and rely upon abstract ideas ( e.g., frequency domain analysis of
data) is not decisive. Thales, 850 F.3d at 1349 ("That a mathematical
equation is required to complete the claimed method and system does not
2 The claim also indicates that the wearable biometric device includes
tangible, physical structures (sensors, processor, and a display), which are
configured in a specific way to carry out the particular steps claimed. In a
related appeal, the Board recently held that claims to a biometric monitoring
device were non-abstract and patent eligible under§ 101. Appeal No. 2017-
006708 slip op. 6-9 (PTAB Sept. 14, 2018) (Appl. No. 14/481,020). These
non-abstract device claims were configured to perform similar if not
substantially the same operations that are recited in the steps of present
method claim 39. Id. at 2-3 (claim 20). For my part, I am unable to
reconcile a conclusion that the present method claims are ineligible under§
101 while the related device claims are not. Of course, a "process" and a
"machine" are classes of invention that are both eligible for patenting under
§ 101, so whether one claim is a method and another a device cannot, in my
view, be the sole distinction for reaching a different result.
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doom the claims to abstraction."). And the Specification repeatedly explains
that using a wearable biometric monitoring device in the manner claimed
provides practical and real-world applications and benefits. See, e.g., Spec.
,r 7 ( describing the device's ability to discriminate between frequency and
time domain analysis depending on signal strength as "contribut[ing] to
improved accuracy and speed of biometric data."); ,r 94 (describing
preferential frequency domain analysis when the user engages in certain
physiological activities like bicycling or driving in a car; "the frequency
domain analysis helps us avoid counting steps when the user moves due to
vibration of the ride such as when the car runs over a bump.").
Appellants and the Examiner also disagree whether claims are
directed to a technological "improvement." Compare App. Br. 7-8 with
Ans. 21-22. According to the Examiner, Appellants' argument fails without
an "assessment of the conventional devices." Ans. 21. Also, the Examiner
asserts, the claimed subject matter "is not an improvement" because the
prior art (Meger) already recognized that switching between the time and
frequency domain was "more effective" for calculating certain physiological
parameters depending on the user's activity. Id. at 20-21. But the
Examiner's analysis misses the mark. 3 The issue is not whether, in fact, the
3 The majority rejects Appellants' contentions that the claims are directed to
an improvement obtained with the wearable biometric device because
Appellants have "only presented attorney argument" and "do not point to
any data in the record to show how the claimed method improves the
physiological metric or improve the operation of the biometric device."
Appellants, however, cite several disclosures in the Specification itself
describing the alleged improvement and benefits of the invention. See, e.g.,
App. Br. 8-9 (citing Spec. ,r,r 2, 6, 7, 59, 60, 124). Hence, Appellants do not
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Appeal2018-003376
Application 14/216,743
Appellants' invention is better or "improved" versus the prior art. Someone
else may have been first to recognize the technological improvement. But
this, if anything, is an issue more properly considered under § 102 or § 103.
The question for purposes of§ 101 is whether, on balance, the claim is
directed to a technological improvement or an abstraction. Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (holding it is
"relevant to ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea, even at the
first step of the Alice analysis."). In other words, that the Specification ( or
other evidence) describing the claimed invention as a technological
improvement may ultimately be proven wrong when compared to the prior
art does not necessarily mean that the invention is an abstract idea. And,
whether the invention is improved versus the prior art says little about
whether the invention is, in fact, a patent eligible practical application of an
abstract idea.
For the reasons above, I conclude the claims are not directed to an
abstract idea and, therefore, I would reverse the Examiner's rejection under
§ 101. If the claims are not directed to an abstract idea, the inquiry ends and
proceeding to step two of the Alice/Mayo framework is unnecessary. Thales,
850 F.3d at 1349.
rely only on attorney argument and it is unclear what "data" the majority is
requiring beyond the unrebutted description of the practical and real-world
benefits of the claimed wearable biometric monitoring device and method of
using it cited in the Specification.
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