Ex Parte YU et al

Patent Trial and Appeal Board

Oct 5, 2017

13466086 (P.T.A.B. Oct. 5, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/466,086 05/07/2012 Meng-Sun YU 422.016/CIP 7862
30236 7590 10/10/2017
Kile Park ReeH & Hmitteman PT T C EXAMINER
4035 Ridge Top Road
Suite 230
WESTON, TIFFANY C
Fairfax, VA 22030 ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
10/10/2017 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):
bekdocket @ gmail. com
wangxuzhuo @ yahoo, com
ibgamboa@kilepark.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MENG-SUN YU, HAI-YAN XIANG, and ZU-LAI TAO1
Appeal 2016-008302
Application 13/466,086
Technology Center 3700
Before TONI R. SCHEINER, RYAN H. FLAX,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
methods of measuring arterial blood pressure, which have been rejected as
indefinite, for patent-ineligible subject matter, and for obviousness. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants’ “invention relates [to] both a method and apparatus for
noninvasive arterial blood pressure measurement and individualized
rectifying technology for beat-to-beat blood pressure measurement.” (Spec.
1.) According to the Specification, “[i]t is very important to realize the
1 Appellants identify the Real Party in Interest as inventor, Meng-Sun Yu.
(App. Br. 2.)
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Application 13/466,086
noninvasive continuous BP [blood pressure] measurement. But, until now,
there is not an accurate method that can achieve the aim.” (Id.) The
Specification explains:
[T]he human’s BP is changing at any moment. But the
instantaneous change of BP can’t be measured non-invasively
with the known technique. The present invention can estimate
the change of BP per beat through the Korotkoff s sound delay
time, and measure individual rectifying parameters using
instantaneous change of BP.
(Spec. 5.)
Claims 1 and 3 are on appeal. Claim 1 is illustrative:
1. A method for noninvasive continuous measuring
arterial blood pressure by using instruments including a blood
pressure cuff, an inflating unit and a deflating unit for the blood
pressure cuff, a cuff pressure sensor, a Korotkoff s sound sensor,
an ECG electrode, a microprocessor, a signal processing circuit
connected between the cuff pressure sensor, the Korotkoff s
sound sensor and the microprocessor, and an ECG circuit
connected between the ECG electrode and the microprocessor,
comprising the steps of:
(1) wrapping the blood pressure cuff around an upper limb
of a given subject to obtain a mean blood pressure value BP0 of
the given subject, and recording the mean blood pressure value
BP0 in a memory of the microprocessor, wherein the step
comprising wrapping the blood pressure cuff around the upper
limb of the given subject; inflating the cuff until the blood
pressure cuff pressure exceeds the systolic blood pressure of the
given subject; and then deflating the blood pressure cuff slowly;
(2) wrapping the blood pressure cuff around the upper
limb of the given subject, inflating the cuff until the blood
pressure cuff pressure exceeds the systolic blood pressure of the
given subject, and then deflating the blood pressure cuff slowly
to obtain a series of discrete cuff pressure values P and a series
of discrete corresponding Korotkoff s sound delay time Tk,
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when the mean blood pressure value of the given subject is BPO,
recording the series of discrete cuff pressure values P and the
series of discrete corresponding Korotkoff s sound delay time Tk
in the memory of the microprocessor, wherein the Korotkoff’s
sound delay time is defined as a time interval between a fixed
time reference point and an arrival time of a corresponding
Korotkoff s sound, the fixed time reference point is an ECG R
wave peak or an ascending edge of a pulse wave, wherein the
Korotkoff s sound sensor sends arrival time data of Korotkoff s
sound to the microprocessor through the data processing circuit
and the ECG sends heart beating data to the microprocessor
through the data processing circuit, and the microprocessor thus
runs a data analyzing software to calculate the Korotkoff s sound
delay time and save the Korotkoff s sound delay time in the
memory of the microprocessor;
(3) using the microprocessor running a computing
software to quadratic curve fitting the series of discrete cuff
pressure values P and the series of discrete corresponding
Korotkoff s sound delay time Tk obtained in step (2) and thus
obtaining a curve line representing a relationship between the
cuff pressure value P and the corresponding Korotkoff s sound
delay time Tk, and then using the microprocessor running the
computing software to construct a function Tk=H(P) describing
the relationship between the Korotkoff s sound delay time Tk
and the cuff pressure P based on the curve line, wherein
Tk=H(P)= kjP2 + k:P + ki, wherein kl, k2 and k3 are coefficients
of the function and are obtained after the quadratic curve fitting;
(4) using the microprocessor running the computing
cTTksoftware to construct a function s{P) = — = 2kiP + k2 by
differentiating the function Tk=H(P)= kiP2 + k2P + k3, obtained
cTTkfrom step (3), the function g(P) = — = 2kjP + k: representing the
change in Korotkoff s sound delay time per unit change in cuff
pressure;
(5) measuring an actual blood pressure of the given subject
when the given subject makes moves that change its blood
pressure, the moves including deep breathing or body posture
changes, the measuring including:
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Application 13/466,086
wrapping the blood pressure cuff around the upper limb of
the give[n] subject,
setting a cuff pressure Pm at a value between the systolic
blood pressure and the diastolic blood pressure of the given
subject, and obtaining a Korotkoff s sound delay time Tkm
corresponding to the cuff pressure Pm;
using the microprocessor running the computing software
to calculate a Korotkoff s sound delay time TkmO by applying
the value of the cuff pressure Pm to the function Tk=H(P)= kiP2
+ Jt2P + k3 obtained from step (3), the Korotkoff s sound delay
time TkmO and the Korotkoff s sound delay time Tkm being
different since the given subject makes moves that change its
blood pressure;
calculating ATkm = Tkm — TkmO, and recording a value of
A Tkm in the memory of the microprocessor;
calculating g(Pm) by substituting with the value of the cuff
cTTkpressure Pm in the function g(P) = — = 2kiP + k2 obtained from
step (4), because g(Pm) also equals to ATkm/ABPm according to
a definition that g(P) also represents the change in Korotkoff s
sound delay time per unit change in blood pressure when the
pressure of the blood pressure cuff is stable, in which ABPm =
BP-BP0, which is the difference between the actual blood
pressure corresponding to the Korotkoff s sound delay time Tkm
and the mean blood pressure BP0 obtained from step (1), and
thus calculating ABPm based on the function ABPm = A Tkm /
g(Pm); and
(7) using the microprocessor running the computing
software to obtain the actual blood pressure BP of the given
subject by adding BP0 and ABPm, wherein BP = BP0 + ABPm.
(App. Br. 9—11 (Claims App.).)
The claims stand rejected as follows:
I. Claims 1 and 3 under 35 U.S.C. § 112(b) or § 112, second
paragraph (pre-AIA), for indefmiteness.
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II. Claims 1 and 3 under 35 U.S.C. § 101 for claiming patent-
ineligible subject matter.
III. Claims 1 and 3 under 35 U.S.C. § 103(a) based on Yu2 and
Kolluri.3
I-INDEFINITENESS
The Examiner rejected claims 1 and 3 for indefiniteness, citing four
reasons for the rejection. (Final Act. 2-4.)4 Appellants provide no argument
to the contrary, so the rejection is summarily affirmed. Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a
ground of rejection ... the Board may treat any argument with respect to
that ground of rejection as waived . . . [and] may affirm the rejection of the
group of claims that the examiner rejected on that ground without
considering the merits of those rejections.”)
II - INELIGIBLE SUBJECT MATTER
In analyzing patent eligibility under 35 U.S.C. § 101, the Supreme
Court has set forth a “framework for distinguishing patents that claim
[patent-ineligible] laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). According
2 Yu, et al., US 2008/0033310 Al, published Feb. 7, 2008.
3 Kolluri, et al., US 2005/0261597 Al, published Nov. 24, 2005.
4 Although not cited by the Examiner, we also note that claim 1 includes
steps “(5)” and “(7),” but fails to specify a step “(6).” The deletion of “(6)”
(see 4/20/15 Amendment (showing strikethrough of “(6)”)) may have been
inadvertent, but correction should be made if prosecution continues.
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to that framework, first “we determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. “If so, we then ask,
‘[w]hat else is there in the claims before us?’” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012).) To answer this second question,
we consider the elements of each claim both individually and as
an ordered combination to determine whether the additional
elements transform the nature of the claim into a patent-eligible
application. [The Supreme Court has] described step two of this
analysis as a search for an inventive concept — i.e., an element
or combination of elements that is sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.
Id. (internal citations and quotation marks omitted).
The Examiner rejected claims 1 and 3 under § 101. (Final Act. 4—5.)
According to the Examiner, “[c]laims 1 and 3 are directed to calculating a
blood pressure of a subject, which is an abstract idea similar to the idea of
organizing information through mathematical correlations.” {Id. at 4.) For
“the second part of the analysis,” the Examiner finds that “[t]he cuff,
sensors, and electrodes are used to gather the data (insignificant
extrasolution activity) used by a generic microprocessor” and “[t]he generic
microprocessor performs well-understood, routine, and conventional
activities” such as “constructing a function” and other mathematical
operations. {Id. at 5.) The Examiner thus concludes the claims are directed
to a patent-ineligible concept without significantly more. {Id.)
The Examiner did not separately address claims 1 and 3 as to the
§101 rejection, but rejected the claims together based on the reasoning
described above. Our analysis focuses on claim 1 as representative.
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Appellants argue the Examiner has mischaracterized claim 1 and
failed to account for the “inventive concept.” (App. Br. 5—7; Reply Br. 2—6.)
Appellants contend, inter alia, the Examiner erred in focusing on a particular
limitation in isolation — a mathematical formula — without considering the
claimed application of the formula to provide more accurate blood pressure
measurements, which solves a technological problem in conventional
industry practice. (App. Br. 6—7.) Appellants contend claim 1 also requires
“certain novel method steps and novel apparatus components as well.”
(Reply Br. 2.) Although Appellants’ method and conventional methods both
use a blood pressure cuff, Appellants contend the claim “uses the time delay
to calculate blood pressure.” (Id. at 3.)5 And, according to Appellants,
claim 1 requires “novel apparatus elements such as ‘Korotkoff s sound
sensors,’” that are “not found in conventional devices” to carry out the
claimed method. (Id. at 3^4; see also id. at 5.)
Under step one of the Alice!Mayo framework, we ask whether claim 1
is directed to a patent ineligible concept, such as an abstract idea. Because
all inventions, at some level, embody or apply laws of nature, abstract ideas,
etc., 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. U.S., 850 F.3d 1343, 1347 (Fed. Cir.
2017); see also Alice, 134 S.Ct. at 2354 (“[W]e tread carefully in construing
5 The Specification and claims define “Korotkoff’s sound delay time.”
Claim 1 recites “Korotkoff s sound delay time is defined as a time interval
between a fixed time reference point and an arrival time of a corresponding
Korotkoff’s sound, the fixed time reference point is an ECG R wave peak or
an ascending edge of a pulse wave.” (App. Br. 9; see also Spec. 2.)
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this exclusionary principle lest it swallow all of patent law.”). Moreover,
even at step one, it is appropriate to consider whether the claims are directed
to a technological improvement. Enfish, 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.”)
We are unpersuaded the Examiner has properly characterized
Appellants’ invention under step one. As mentioned above, the Examiner
finds that claim 1 is directed to the abstract idea of “calculating a blood
pressure of a subject.” (Final Act. 4.) Inasmuch as the Examiner is referring
to the mathematical functions recited in the claim, those functions might be
characterized as abstract. Yet focusing on the math alone overgeneralizes
the claim, which requires more. Appellants’ invention requires the
orchestrated interaction of various elements (including a blood pressure cuff
and sensor, ECG electrode, Korotkoff s sound sensors, signal processing
circuits, and a microprocessor) to provide continuous, noninvasive blood
pressure measurements more accurately. (See, e.g., claim 1 and Spec. 1—2,
5.) To be sure, mathematical relationships are necessary — indeed critical
— to carry out the claimed method. But, heeding the Supreme Court’s and
Federal Circuit’s cautions, we are not persuaded the mere presence of a
mathematical equation means the claims are directed to an abstract idea. See
Alice, 134 S.Ct. at 2354; Thales, 850 F.3d at 1349 (“That a mathematical
equation is required to complete the claimed method and system does not
doom the claims to abstraction.”) Under step one of the Alice!Mayo
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Application 13/466,086
framework, we instead find claim 1 is directed to noninvasively and
continuously measuring a subject’s blood pressure using the measured
relationship between Korotkoff’s sound delay time and the subject’s blood
pressure at variable and constant cuff pressures. Characterized in this way,
claim 1 is sufficiently concrete and non-abstract.
Although moving to step two of the Alice!Mayo framework is not
necessary, we nevertheless do so.6 As described below, even if claim 1 was
directed to an abstract idea based on the Examiner’s characterization, the
combination of claim elements provide a sufficient “inventive concept” to
satisfy the requirements of § 101.
Claim 1 requires an apparently unique arrangement of components
that are necessary to determine a Korotkoff s sound delay time and provide
continuous blood pressure measurements. According to the claimed steps,
the various components take readings and provide inputs to a CPU, where
the blood pressure calculations are performed. As noted above, this requires
at least a blood pressure cuff and sensor, ECG electrode, Korotkoff s sound
sensors, signal processing circuits, and a microprocessor. The Examiner
asserts this is simply conventional, insignificant extra-solution activity.
(Ans. 3.) But the Examiner does not support this assertion with adequate
evidence. Among other things, the Examiner does not show that using
Korotkoff’s sound sensors and outputs, particularly in combination with the
outputs of ECG and cuff pressure sensors, is conventional. (Reply Br. 3—4.)
Neither does the Examiner show that determining a Korotkoff s sound delay
6 Thales, 850 F.3d at 1349 (“Because we find the claims are not directed to
an abstract idea, we need not proceed to step two.”)
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time was known and useful,7 much less routine or conventional, for
measuring blood pressures. In these respects, the unique configuration of
steps and features of claim 1 is comparable to the patent-eligible claims in
Thales that recited a unique configuration of inertial sensors that used a
mathematical equation to calculate an object’s location on a platform.
Thales, 850 F.3d at 1345; see also Diamond v. Diehr, 450 U.S. 175, 188
(1981) (holding that a claim drawn to an improved rubber-curing process
that used a mathematical equation was patent eligible under § 101.)
We also contrast the claims here with the patent-ineligible claims in
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016),
which were directed to monitoring a power grid. In Electric Power, the
Federal Circuit found the claimed process did not differentiate from an
“ordinary mental process,” and did “not even require a new source or type of
information, or new techniques for analyzing it.” 830 F.3d at 1355. The
court further found the claims did not “require an arguably inventive set of
components or methods, such as measurement devices or techniques, that
would generate new data” or “invoke any assertedly inventive
programming.” Id. Appellants’ claim 1 does not have the same
shortcomings. For example, claim 1 requires new types of data (e.g.,
Korotkoff’s sound delay times) as well as new techniques and programming
for analyzing that data (e.g., “analyzing software to calculate the Korotkoff s
sound delay time . . . [and] computing software to quadratic curve fitting
7 Apart from the Specification, the only other reference in the record on
appeal to determining Korotkoff’s sound delay times like claimed is in Yu,
which is the parent to the present application. We discuss Yu further below.
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[sic] the series of discrete cuff pressure values P and the series of discrete
corresponding Korotkoff’s sound delay time Tk.”)
In sum, we are persuaded claim 1 requires a unique set of steps and
arrangement of features to produce new data, and to use that data for a
practical and improved effect — noninvasive and continuous measurement
of a subject’s blood pressure. Claim 1 thus includes a sufficient inventive
concept and recites patent-eligible subject matter under § 101.
For the reasons explained above, we reverse the Examiner’s rejection
of claim 1 (and the related rejection of claim 3) under 35 U.S.C. § 101.
Ill-OBVIOUSNESS
The sole issue here is whether claims 1 and 3 are entitled to claim
priority to the filing date of Yu — the parent of the present patent
application.8 If so, Yu is not prior art to claims 1 and 3.
The Examiner finds “the claims of the CIP are not fully supported by
the parent application” and thus the priority date of the claims is the filing
date of the present application — May 7, 2012. (Final Act. 14.) Because Yu
has a publication date of Feb. 7, 2008, the Examiner concludes it is available
as prior art. {Id. at 15.)
Appellants argue “the claims have a priority date going back to the
filing date of the parent application.” (App. Br. 7.) Appellants contend
“[t]he disclosure of the [parent] patent application is virtually identical to
that of the current application.” {Id.) According to the Appellants, “[t]he
8 The present application is a continuation-in-part of Appl. No. 11/775,870,
filed on July 11, 2007, which published as US 2008/0033310 A1 (“Yu”).
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only significant difference is that Appellants] added a final paragraph to the
current specification” that “summarizes several calculations described earlier
in the specification as well as a CPU” and “merely repeats the self-evident
fact that the calculations would [be] ‘calculated’ by the ‘CPU.’” (Id.)
The Examiner responds that “the original filed specification failed to
link the calculation steps of the method to being performed on a CPU.”
(Ans. 4.) According to the Examiner, “[a] CPU was mentioned, but only in
regards to the operation of the cuff itself and not the additional limitations of
the calculations.” (Id. at 4—5.) Because “[t]he instant claims require the use
of a CPU (microprocessor) to perform the steps of the method,” the
Examiner asserts the claims “also receiv[e] the effective filing date of
05/07/2012.” (Mat 5.)
Based on the respective positions of the Appellants and the Examiner,
the issue can thus be summed up follows: whether Yu provides an adequate
written description of the calculations in claims 1 and 3 being performed by
a microprocessor/CPU.
To resolve this issue, we ask whether Yu’s disclosure “reasonably
conveys to the artisan that the inventor had possession at that time of the
later claimed subject matter.” In re Kaslow, 707 F.2d 1366, 1375, (Fed. Cir.
1983) (citation and internal quotations omitted). As with the written
description requirement generally, the presence or absence of literal support
is not dispositive. (Id.; see also Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). Indeed, “[t]he descriptive text
needed to meet these requirements varies with the nature and scope of the
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invention at issue, and with the scientific and technologic knowledge already
in existence.” Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005).
On the record here, we are persuaded Yu’s disclosure would
reasonably convey possession of a method where a microprocessor performs
the calculations recited in claims 1 and 3. True, Yu does not expressly spell
out that the microprocessor performs the calculations, but literal support is
not required — particularly when related to basic features or functionalities
that would necessarily be understood by skilled persons, such as using a
CPU to perform complex (real-time) calculations. And the Examiner
elsewhere admits “[i]t is well known ... to use a processor and memory to
implement the method steps as claimed.” (Final Act. 10; see also id. at 5
(“[t]he generic microprocessor performs well-understood, routine, and
conventional activities such as calculating a quadratic curve . . .,
constructing a function,” etc.).)9
Moreover, using the CPU/microprocessor to perform the calculations
is reasonably implied by Yu’s disclosure. For example, Yu teaches that
signals output from the cuff pressure sensor, Korotkoff s sound sensors, and
ECG circuits are “input to the CPU.” (See, e.g., Yu 1 83; see also id. 112.)
After such signals are sent to the CPU, Yu teaches the computed values as
9 Appellants quote a number of disclosures that allegedly show “[t]he CPU
(microprocessor) was disclosed in the parent application.” (Reply Br. 9.)
The quoted disclosures are, however, not from Yu but from the other cited
prior art reference. (Id. at 9—10 (quoting paragraphs 49-52 and 53—56 from
Kolluri).) Although these disclosures do not support the exact point for
which Appellants offer them, the disclosures do reinforce that using a
microprocessor as a computing apparatus was well known, including for
purposes of blood pressure monitoring.
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well as the function Tk=H(P) “can be obtained.” (Id. at 138.) Figure 11
similarly shows a block diagram with the respective outputs of the various
sensors/circuits being sent to the CPU, which subsequently includes an
output to a display device. If the calculations are not being performed by the
CPU, it is unclear how or where else they would be done. As Appellants
note, “[t]he Examiner has never proposed an alternative mode of operation”
and we are not persuaded “the invention can be performed by an operator
with a stopwatch, pencil and clipboard.” (Reply Br. 10.)
For the reasons above, we are unpersuaded that Yu fails to provide
written description support for claims 1 and 3. So, claims 1 and 3 are
entitled to claim priority to Yu’s filing date and, accordingly, Yu is not prior
art to those claims. On this record, and absent Yu’s teachings, the Examiner
has not shown that claims 1 and 3 would have been obvious.
SUMMARY
We affirm the rejection of claims 1 and 3 for indefmiteness. We
reverse the rejections of claims 1 and 3 for patent-ineligible subject matter
and for obviousness.
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)(l)(iv).
AFFIRMED
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