Fung, Kin C. et al.

Patent Trials and Appeals Board

Aug 13, 2019

14961277 - (D) (P.T.A.B. Aug. 13, 2019)

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.
14/961,277 12/07/2015 Kin C. Fung HRA-39957.01 6536
139779 7590 08/13/2019
Rankin Hill & Clark LLP
23755 Lorain Road
Suite 200
North Olmsted, OH 44070
EXAMINER
NEGIN, RUSSELL SCOTT
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
08/13/2019 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):
dragony@rankinhill.com
overberger@rankinhill.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KIN C. FUNG,
TIMOTHY J. DICK, and CHARLES WILLIAM HALL JR
(APPLICANT: HONDA MOTOR CO., LTD.)
____________

Appeal 2019-003506
Application 14/961,2771
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1–21 (App.
Br.2 5).3 Examiner entered a rejection under 35 U.S.C. § 101. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellants identify “Honda Motor Co., Ltd” as the real party in interest
(App. Br. 3).
2 Appellants’ December 4, 2018 Appeal Brief.
3 The Appeal Brief is not paginated. Therefore, all reference to page
numbers of the Appeal Brief refer to page numbers as if the Appeal Brief
was number consecutively beginning with the first page.
Appeal 2019-003506
Application 14/961,277

2
STATEMENT OF THE CASE
Appellants’ disclosure relates to “a computer-implemented method for
biological signal recording [that] includes transmitting control signals from a
transmitter of a sensor to a transmission source,” “a system for biological
signal recording, [that] includes a sensor including a transmitter to transmit
control signals to a transmission source,” and “a system for biological signal
recording [that] includes a sensor including a transmitter to transmit control
signals according to a carrier sequence code to a transmission source” (Spec.
¶¶ 4–7). Appellants’ independent claims 1, 9, 13, and 16 are representative
and reproduced below:
1. A computer-implemented method for biological signal
recording, comprising:
transmitting control signals from a transmitter of a sensor
to a transmission source, wherein the transmission source
transmits energy towards a subject according to the control
signals;
receiving at a receiver of the sensor an evoked biological
signal in response to energy reflection returned from the
subject, wherein the evoked biological signal is an analog
signal;
processing a sampled evoked biological signal by
sampling the evoked biological signal at a predetermined
sampling rate;
modulating the sampled evoked biological signal with a
carrier sequence code resulting in a modulated evoked
biological signal, the carrier sequence code having an
autocorrelation function;
demodulating the modulated evoked biological signal by
processing a convolution of the modulated evoked biological
signal with the carrier sequence code resulting in an evoked
biological signal spectrum, the evoked biological signal
Appeal 2019-003506
Application 14/961,277

3
spectrum having a peak to sideband ratio as a function of the
carrier sequence code;
processing deviations between each element of the
sampled evoked biological signal and the peak to sideband
ratio;
filtering noise artifacts from the sampled evoked
biological signal based on the processed deviations; and
outputting a true evoked biological signal based on the
filtering.
(App. Br. 26.)
9. A computer-implemented method for biological signal
recording, comprising:
transmitting control signals from a transmitter of a sensor
to a transmission source, wherein the control signals are
transmitted according to a carrier sequence code and the
transmission source transmits energy towards a subject
according to the carrier sequence code, the carrier sequence
code having an auto correlation function;
receiving at a receiver of the sensor an evoked biological
signal in response to energy reflection returned from the
subject, wherein the evoked biological signal is an analog
signal and modulated according to the carrier sequence code;
demodulating the evoked biological signal by processing
a convolution of the evoked biological signal with the carrier
sequence code resulting in an evoked biological signal
spectrum, the evoked biological signal spectrum having signal-
to-noise ratio proportional to a peak to sideband ratio, wherein
the peak to sideband ratio is a function of the carrier sequence
code;
outputting a true evoked biological signal by extracting
the true evoked biological signal from the modulated evoked
biological signal based on the peak to sideband ratio.
(Id. at 27–28.)

Appeal 2019-003506
Application 14/961,277

4
13. A system for biological signal recording, comprising:
a memory storing instructions that are executed by a
processor that includes:
a sensor including a transmitter to transmit control
signals to a transmission source, wherein the transmission
source transmits energy towards a subject according to the
control signals, the sensor further including a receiver to receive
an evoked biological signal in response to energy reflection
returned from the subject, wherein the evoked biological signal
is an analog signal;
a system clock, communicatively coupled to the sensor,
to process a sampled evoked biological signal at a
predetermined sampling rate;
a modulator, communicatively coupled to the sensor, to
receive the sampled evoked biological signal and modulate the
sampled evoked biological signal with a carrier sequence code
having an autocorrelation function;
a demodulator, communicatively coupled to the sensor,
to receive the modulated evoked biological signal and
demodulate the modulated evoked biological signal by
processing a convolution of the modulated evoked biological
signal with the carrier sequence code resulting in an evoked
biological signal spectrum, the evoked biological signal
spectrum having a peak to sideband ratio as a function of the
carrier sequence code; and
a filter, communicatively coupled to the sensor, to
process deviations between the sampled evoked biological
signal and the peak to sideband ratio, filters noise artifacts from
the sampled evoked biological signal based on the processed
deviations, and
outputs a true evoked biological signal based on the
filtering.
(Id. at 28–29.)

Appeal 2019-003506
Application 14/961,277

5
16. A system for biological signal recording, comprising:
a memory storing instructions that are executed by a
processor that includes:
a sensor including a transmitter to transmit control
signals according to a carrier sequence code to a transmission
source, wherein the transmission source transmits energy
towards a subject according to the carrier sequence code, the
carrier sequence code having an autocorrelation function,
wherein the sensor further includes a receiver to receive
an evoked biological signal in response to energy reflection
returned from the subject, wherein the evoked biological signal
is an analog signal and modulated according to the carrier
sequence code; and
a demodulator, communicatively coupled to the sensor,
to receive the modulated evoked biological signal and
demodulate the modulated evoked biological signal by
processing a convolution of the evoked biological signal with
the carrier sequence code resulting in an evoked biological
signal spectrum, the evoked biological signal spectrum having
signal-to-noise ratio proportional to a peak to sideband ratio,
wherein the peak to sideband ratio is a function of the carrier
sequence code,
wherein the demodulator outputs a true evoked biological
signal by extracting the true evoked biological signal from the
modulated evoked biological signal based on the peak to
sideband ratio.
(Id. at 30.)

Ground of rejection before this Panel for review:
Claims 1–21 stand rejected under 35 U.S.C. § 101.

Appeal 2019-003506
Application 14/961,277

6
ISSUE
Does the preponderance of evidence of record support Examiner’s
finding that Appellants’ claimed invention is directed to patent ineligible
subject matter?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, 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. Kappos, 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
Appeal 2019-003506
Application 14/961,277

7
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.
252, 267–68 (1853))); and manufacturing flour (Gottschalk, 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 176; 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
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 Gottschalk and Parker); 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 turn 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
Appeal 2019-003506
Application 14/961,277

8
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 PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) (“Revised Guidance”). 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 MPEP § 2106.05(a)–(c), (e)–(h)).
See 84 Fed. Reg. 54–55. 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
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(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 84 Fed. Reg. 51.
ANALYSIS
Applying the Revised Guidance to the facts on this record, we find
that Appellants’ claims are directed to patent-eligible subject matter.
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Appeal 2019-003506
Application 14/961,277

9
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human behavior such as fundamental economic practices, and (3)
mental processes.
On this record, Examiner finds that Appellants’ claims are
directed to the judicial exceptions of “demodulating the
modulated evoked biological signal by processing a
convolution of the modulated evoked biological signal with a
carrier sequence code resulting in a modulated evoked
biological signal, the evoked biological signal spectrum having
a peak to sideband ratio as a function of the carrier sequence
code”.
(Ans. 3.) In this regard, Examiner finds that “[a] convolution is a
mathematical function in calculus involving the integration of the product of
two mathematical functions” (id. (emphasis added)).
Examiner further finds that Appellants’ dependent:
Claim 2 recites the judicial exception of converting the
sequences to binary form. Claims 3 and 12 recite the further
judicial exception of demodulating binary signals. Claim 5
recites the judicial exception of multiplying the biological
signals. Claims 8 and 20 recite the judicial exception of scaling
the biological signals. Claims 11 and 17 recite the judicial
exception of concatenation of sequence codes. Claims 14 and
18 recite the judicial exception of demodulating signals by use
of convolutions. Claim 21 recites the judicial exception of
optimizing the peak to sideband ratio. These mathematical
manipulations of signal processing data are analogous to the
Arrhenius equation in Diamond v. Diehr 450 U.S. 175 (1981),
which was also found to be an abstract idea.
(Id. at 3–4.)
For the foregoing reasons, we agree with Examiner that Appellants’
claims involve mental processes, which are an abstract idea under the
Appeal 2019-003506
Application 14/961,277

10
Revised Guidance. See generally, Digitech Image Techs., LLC. v. Elecs.
For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without
additional limitations, a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (“analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, [are] essentially
mental processes falling within the abstract idea category”).
Having determined that Appellants’ claim 1 recites a mental process,
a judicial exception, the Revised Guidance directs us to next consider
whether the claims integrate the judicial exception into a practical
application. On this record, we find that Appellants’ claimed method
includes additional elements sufficient to integrate the judicial exception into
a practical application. Specifically, as Appellants explain,
Even if the claims recite judicial exception . . ., that exception is
integrated into a practical application. Specifically, the claimed
processors filter noise artifacts from a sampled evoked
biological signal (claims 1, 13) and extract a true evoked
biological signal from a modulated evoked biological signal
based on electronic analysis of peak sideband radio [sic, ratio]
(claims 9, 16) to electronically output a true biological signal. . .
. Accordingly, the claims are directed to the practical
application of improving biological signal recording and
processing.
(Reply Br.4 4) Appellants further explain that their claimed invention
“improve[s] the functionality of a computer itself that pertains to processing
and executing biological signal recording. Such functions are (1) completed
by electronic components in a circuit and are executed by a processor which

4 Appellants’ March 29, 2019 Reply Brief.
Appeal 2019-003506
Application 14/961,277

11
is tangible and (2) are significantly more than mathematical manipulations
but rather are performed to improve the technological field” (id. at 8). See
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1351 (Fed. Cir. 2016) (holding that the ‘606 patent is claiming a
technology-based solution (not an abstract idea based solution) to filter
content on the Internet that overcomes existing problems with other Internet
filtering systems); see also Diehr, 450 U.S. at 179 n.5 (the claims in Diehr
recited a method for operating a rubber-molding press including the step of
“opening the press automatically when a said comparison [of calculated cure
time vs. elapsed time] indicates equivalence.” Thus, the recited
mathematical equation in Diehr had the practical application of
automatically operating a press); McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (holding that the claim in that
case is directed to a technological improvement over existing 3-D animation
techniques and, therefore, not directed to an abstract idea).
Because Appellants’ claimed method includes additional elements
that reflect “an improvement to other technology or technical field,” see
Revised Guidance, 84 Fed. Reg. at 55—specifically, an improvement in
biological signal recording and processing —we are persuaded that
Appellants’ claimed method integrates the judicial exception into a practical
application. Appellants’ claims are therefore eligible at Prong Two, and this
concludes the eligibility analysis.
For the foregoing reasons, we find that Appellants’ claimed invention
is patent eligible.

Appeal 2019-003506
Application 14/961,277

12
CONCLUSION
The preponderance of evidence of record fails to support Examiner’s
finding that Appellants’ claimed invention is directed to patent ineligible
subject matter. The rejection of claims 1–21 under 35 U.S.C. § 101 is
reversed.

REVERSED