International Business Machines Corporation

Patent Trials and Appeals Board

Sep 25, 2020

14672452 - (D) (P.T.A.B. Sep. 25, 2020)

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.
14/672,452 03/30/2015 James R. Kozloski YOR920140457US1 7610
98841 7590 09/25/2020
Otterstedt, Wallace & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807-0381
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/25/2020 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):
CTOFFICE@OEKLAW.COM
admin1@oeklaw.com
docket@oeklaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES R. KOZLOSKI, CLIFFORD A. PICKOVER,
VALENTINA SALAPURA, and MAJA VUKOVIC

Appeal 2020-001773
Application 14/672,452
Technology Center 3700
____________

Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 15–18, 25–28, and 30. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 3.
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BACKGROUND
The Specification’s disclosure “relates to assistive technology, and
more particularly to a device configured to monitor a user’s cognitive tone.”
Spec. ¶ 1.

CLAIMS
Claims 15, 25, and 27 are the independent claims on appeal. Claim 15
is illustrative of the appealed claims and recites:
15. A cognitive monitor embodied as a wearable device and
comprising:
an electrorheological fluid or a magnetorheological fluid
contained in the wearable device;
a first sensor housed in the wearable device and configured
to collect a physiologic measurement indicative of a current
cognitive tone of a user by physical contact with the user;
a second sensor configured to collect an electronic
communication indicative of the current cognitive tone of the
user; and
a processor connected in communication with the first
sensor to receive the physiologic measurement, connected in
communication with the second sensor to receive the electronic
communication, configured to determine in real-time a category
of the current cognitive tone by analyzing a combination of the
physiologic measurement and the electronic communication,
according to a rules engine implementing a custom dictionary of
terms that suggest a cognitive tone, and configured to impose a
haptic effector on the user by activating the electrorheological
fluid or the magnetorheological fluid in response to the category
of the current cognitive tone,
wherein the first sensor and the electrorheological or
magnetorheological fluid are housed in a wristband of the
wearable device, wherein the first sensor is a heart rate monitor
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and the processor applies a hidden model to obtain from the first
sensor a virtual measure of blood perfusion in the brain.
Appeal Br. 32 (Claims Appendix).
REJECTION
The Examiner rejects claims 15–18, 25–28, and 30 under 35 U.S.C.
§ 101 as claiming a judicial exception without significantly more.
DISCUSSION
PRINCIPLES OF LAW
Section 101
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 U.S. 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 Court’s two-part 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.”).
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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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making 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
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 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. (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 turn to the second
step of the Alice and Mayo framework, where “we must examine the
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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.
USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
ANALYSIS
Step 2A, Prong One
Per the 2019 Revised Guidance, we begin our Alice-step-one analysis
by determining whether independent claim 1 “recites” an abstract idea under
Prong One of Step 2A. (2019 Revised Guidance, 84 Fed. Reg. at 54.) The
Guidance “extracts and synthesizes key concepts identified by the courts as
abstract ideas,” and these concepts include “[m]ental processes,” and, more

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2),
84 Fed. Reg. at 54–55.
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particularly, “concepts performed by the human mind” such as “observation,
evaluation, judgement, [and/or] opinion.” (Id. at 52.)
As an initial matter, we note that the Final Action was mailed in
April 2019, and thus, each of the Final Action, the Examiner’s Answer, and
Appellant’s Briefs was filed after the issuance of the Revised Guidance on
January 7, 2019.
With respect to each of the independent claims, the Examiner
determines that the claim recites an abstract idea in the form of mental
processes. Final Act. 3. The Examiner determines that:
Applicant claims a process that can be performed mentally by a
human being in terms of collecting information (first and second
sensor data), analyzing that data (determining a category of the
current cognitive tone based on combining the data), and
displaying/outputting certain results based on that analysis
(selecting an effector and providing it via a feedback
mechanism).
Id.
We are persuaded of error in the rejection by Appellant’s argument
that the Examiner has not shown that the independent claims recite an
abstract idea. See, e.g., Reply Br. 15–16. Specifically, we agree with
Appellant that the Examiner has not established that the alleged mental
processes in the independent claims can be practically performed in the
human mind. See id. (citing October 2019 Update: Subject Matter
Eligibility, Section II(C)(i)). The Examiner determines that the claims recite
an abstract idea because they require collecting information, analyzing data,
and displaying or outputting a result, which can be performed as mental
processes.” Final Act. 3. Each of the independent claims requires the use of
sensors for obtaining and sending physiological measurements; processing
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the measurements to determine a “real-time category of the current cognitive
tone” by analyzing the combination of the physiological measurement and
electronic communication; and outputting a signal “to impose a haptic
effector on the user by activating the electrorheological fluid or the
magnetorheological fluid in response to the category of the current cognitive
tone.” See Appeal Br. 32, 33–34 (claims 15, 25, and 27). Although the
Examiner determined that steps for collecting information, analyzing data,
and outputting results can be performed as mental processes, the Examiner’s
determination does not address adequately the specific requirements of the
independent claims. For example, the claims require processing data to
output a signal “to impose a haptic effector on the user by activating”
electrorheological or magnetorheological fluid. The Examiner does not
provide an explanation as to how outputting the results of an analysis in the
form of imposing a haptic effector, as claimed, can be performed in the
human mind. Similarly, the Examiner does not explain adequately how the
collection of physiological measurement data or the analysis of such data in
combination with electronic communication indicative of a user’s cognitive
tone and through the use of a rules engine can be practically performed in
the human mind. Thus, at the very least, the Examiner’s Prong-One analysis
is incomplete.
Based on the foregoing, the Examiner has not established, on the
record before us, that the independent claims recite an abstract idea under
Prong One of Step 2A of the Revised Guidance.4 Accordingly, we do not

4 Thus, the Examiner has not established, on the record before us, that the
independent claims are “directed to” an abstract idea as required by Alice
step one.
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sustain the rejection of the independent or dependent claims and we need not
proceed to Step 2A, Prong Two or Step 2B of the Revised Guidance.5
CONCLUSION
We REVERSE the rejection of claims 15–18, 25–28, and 30.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15–18, 25–
28, 30
101 Eligibility 15–18,
25–28,
30

REVERSED

5 Per the Revised Guidance, “[i]f the claim does not recite a judicial
exception, it is not directed to a judicial exception” and “[t]his concludes the
eligibility analysis.” 2019 Revised Guidance, 84 Fed. Reg. at 54.