Isaza, Fernando Jose.

Patent Trials and Appeals Board

Jun 17, 2020

2019002927 (P.T.A.B. Jun. 17, 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.
13/133,194 06/07/2011 Fernando Jose Isaza 2008P01758WOUS 1228
24737 7590 06/17/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
CATINA, MICHAEL ANTHONY
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FERNANDO JOSE ISAZA

Appeal 2019-002927
Application 13/133,194
Technology Center 3700
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO,
ROBERT J. SILVERMAN, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 19–36. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Koninklijke Philips, N.V. Appeal Br. 3.
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STATEMENT OF THE CASE
Subject Matter on Appeal
Claims 19, 25, and 31 are the independent claims on appeal.
Claim 25, reproduced below, is illustrative of the claimed subject matter.
25. A method of determining an elastance and a
resistance of the breathing of a subject, the method comprising:
(a) delivering gas to and receiving gas from an airway of
a subject to mechanically ventilate the subject;
(b) detecting, with a sensor, the gas being delivered to or
received from the airway and generating an output signal that
conveys information related to a parameter of the gas being
delivered to or received from the airway; and
(c) determining an elastance and a resistance of the
subject without the natural ventilation of the subject being
adjusted to facilitate the determination, wherein determining the
elastance and the resistance of the breathing of the subject
comprises:
(1) determining parameters of gas at or near the
airway at a detection point in time at which the muscle
pressure of the subject and the time derivative of muscle
pressure of the subject are at or near zero based on the
output signal, and
(2) determining the elastance and the resistance
from functions that describe the values of elastance and
resistance as a function of the determined parameters of
the gas at or near the airway of the subject at the
detection point in time, and wherein the functions
implemented to determine the values of elastance and
resistance correspond to a system of equations in which
elastance and resistance are unknown parameters, muscle
pressure is assumed to be zero, and the time derivative of
muscle pressure is assumed to be zero.
Appeal Br., Claims App.
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Rejections
Claims 19–23, 25–29, and 31–35 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception without
significantly more.
Claims 19–23, 25–29, and 31–35 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ranieri et al. (US 2008/0234595 A1, pub.
Sept. 25, 2008) (“Ranieri”) and Lutchen et al. (US 6,435,182 B1, iss.
Aug. 20, 2002) (“Lutchen”).
Claims 24, 30, and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ranieri, Lutchen, and Jafari (US 8,434,480 B2, iss.
May 7, 2013) (“Jafari”).

ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
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directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting
Mayo, 566 U.S. at 78, 79). This is “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. at 217–18 (alteration in original).
After the Appellant’s brief was filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019 Revised
Guidance”). That guidance revised the USPTO’s examination procedure
with respect to the first step of the Alice framework by (1) “[p]roviding
groupings of subject matter that [are] considered an abstract idea”; and (2)
clarifying that a claim is not “directed to” a judicial exception if the judicial
exception is integrated into a practical application of that exception. Id. at
50. The 2019 Revised Guidance, by its terms, applies to all applications,
and to all patents resulting from applications, filed before, on, or after
January 7, 2019. Id.2

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
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We have reviewed the eligibility of the pending claims through the
lens of the 2019 Revised Guidance, but we are not persuaded the Examiner
erred in concluding that the pending claims are directed to a judicial
exception without significantly more.

Step One of the Alice Framework (2019 Revised Guidance, Step 2A)
The Examiner determines that the claims directed to an abstract idea,
namely, “the use of the functions to determine resistance and elastance,
which more specifically are essentially directed to mathematical algorithms
using the functions and equations 11 and 12 in [Appellant’s] specification,
and as such, amount to an abstract idea.” Final Act. 5–6. The Appellant
disputes the Examiner’s determination. See Appeal Br. 7–13.
The first step in the Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,

See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
currently superseded USPTO guidance.
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84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36.
Here, it is clear from the Specification (including the claim language)
that the focus of the claim is on an abstract idea. The Specification is
entitled “DETERMINING ELASTANCE AND RESISTANCE” and the
disclosure “relates to determining the elastance and resistance of the
breathing of a subject being ventilated.” Spec. ¶ 1. The Specification
describes the invention:
The determination of elastance and resistance of the breathing
of subject 12 is made without adjusting the ventilation of
subject 12 to facilitate the determination. That is, the
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determination of elastance and resistance of the breathing of
subject 12 is made without manipulating one or more
parameters of the ventilation in a manner not dictated by a
treatment algorithm that is designed to ventilate subject 12
effectively and/or comfortably. In conventional ventilation
systems, manipulations of one or more ventilation parameters
not dictated by a treatment algorithm are commonly made to
facilitate a determination of elastance or resistance by creating a
certain condition within the ventilation system (e.g., a common
pressure with the lungs of subject 12, an imposed pressure
oscillation on a therapeutic pressure during inhalation, etc.).
Id. ¶ 16; see id. ¶ 24, Abstract. Put simply, the Appellant’s invention
determines the elastance and resistance of the breathing of the subject
separately from the treatment the patient, i.e., the treatment algorithm is not
manipulated. The Specification also describes the collection of data and
calculations involved in determining an elastance and a resistance of a
breathing subject by using collected data in a set of equations. See
id. ¶¶ 20–21, 23–38; see also id. ¶¶ 43–46. The Specification discloses that
the gas pressure at or near the airway of subject 12 (Pa), flow rate of gas (Q)
at or near the airway of subject 12, and the volume (V) of gas in the
respiratory system of subject 12 are measured by sensors and that muscle
pressure (Pm), resistance (R), and elastance (E) are unknowns. See id. ¶¶ 20,
23, 25–26. Moreover, the Specification explains that when muscle pressure
(Pm) is assigned a value (i.e., assumed to be zero), then equation (1) of the
Specification, i.e.,
Pm = Pa – (R·Q + E·V)
has two unknowns, i.e., resistance (R), and elastance (E), which can be
calculated. See id. ¶¶ 25–38.
An examination of claim 25 shows that the claim recites: “[a] method
of determining an elastance and a resistance of the breathing of a subject, the
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method comprising:” (a) delivering gas to and receiving gas from an airway
of a subject to mechanically ventilate the subject; (b) detecting the gas being
delivered to or received from the airway and generates an output signal that
conveys information (i.e., data) related to a parameter of the gas; (c)
determining an elastance and a resistance of the subject by (1) determining
parameters of gas based on the output signal and (2) determining the
elastance and the resistance from a system of equations, i.e.,
(c) determining an elastance and a resistance of the
subject without the natural ventilation of the subject being
adjusted to facilitate the determination, wherein determining the
elastance and the resistance of the breathing of the subject
comprises:
(1) determining parameters of gas at or near the
airway at a detection point in time at which the muscle
pressure of the subject and the time derivative of muscle
pressure of the subject are at or near zero based on the
output signal, and
(2) determining the elastance and the resistance
from functions that describe the values of elastance and
resistance as a function of the determined parameters of
the gas at or near the airway of the subject at the
detection point in time, and wherein the functions
implemented to determine the values of elastance and
resistance correspond to a system of equations in which
elastance and resistance are unknown parameters, muscle
pressure is assumed to be zero, and the time derivative of
muscle pressure is assumed to be zero.
See Claim 25 supra. In other words, step (a) delivers gas to and receives gas
from an airway of a subject and step (b) detects the gas and generates an
output signal related to a parameter of the gas. Steps (a) and (b) are steps
that yield a collection of data. Step (c) uses the collected data in a set of
equations to determine elastance and a resistance of the subject. Notably,
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claim 25 does not recite a manipulation of a ventilator’s treatment algorithm.
See Ans. 3 (explaining “the control or adjustment of a ventilator is not
actually recited in . . . claim [25]”).
When considered collectively and under the broadest reasonable
interpretation of the claim’s limitations, claim 25 recites a process of
collecting data and determining an elastance and a resistance of a breathing
subject by using the collected data in a set of equations –– i.e., mathematical
relationships, mathematical formulas or equations, mathematical
calculations –– is a concept that falls under the “Mathematical concepts”
grouping. 2019 Revised Guidance, 84 Fed. Reg. at 52; see id. at n.12 (“SAP
America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a “series of mathematical calculations based on
selected information” are directed to abstract ideas)”). Consequently, under
Step 2A, Prong One, independent claim 25 recites an abstract idea.
Having concluded that claim 25 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two). 2019 Revised Guidance, 84
Fed. Reg. at 51. When a claim recites a judicial exception and fails to
integrate the exception into a practical application, the claim is “directed to”
the judicial exception. Id.
The additional element recited in claim 25 is the “sensor,” which is
disclosed in the Specification with a high degree of generality.3 More

3 Independent claim 19 includes as additional elements “a circuit” and “a
processor,” which are also described in the Specification as generic. See
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specifically, the sensor is only described by way of its functionality. For
example, the Specification describes:
In one embodiment, sensors 20 include one or more
sensors configured to monitor one or more parameters of the
gas within circuit 14. As such, sensors 20 generate output
signals that convey information about the one or more
parameters of the gas within circuit 14. The one or more
parameters may include one or more of a flow rate, a volume, a
pressure, concentrations of one or more molecular species
present in the gas, a temperature, a humidity, and/or other
parameters. During operation, sensors 20 output one or more
output signals that convey information related to the gas
parameters monitored by sensors 20.
Spec. ¶ 20. Put simply, the claimed “sensor” is generic. In this case, the
additional element in claim 25 does not, individually, integrate the recited
abstract idea into a practical application.
The Appellant argues that assuming arguendo the claims recite
mathematical algorithms/calculations, “the determination of an elastance and
a resistance of the breathing of a subject most definitely has a practical
application in patients, who are assisted in breathing by a ventilation
apparatus.” Appeal Br. 8; see id. at 7. The Appellant’s argument is not
persuasive. As discussed above, claim 25 recites a process of collecting data
and determining an elastance and a resistance of a breathing subject by using
the collected data in a set of equations and does not recite a manipulation of
a ventilator’s treatment algorithm. Here, claim 25 merely links the abstract
idea to a technological environment, i.e., ventilators. See Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The

Spec. ¶¶ 16, 17, 21–22 (describing gas delivery circuit 14, processor 22); see
also id. ¶¶ 4, 7, 10, 19, 23, 42.
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Supreme Court and [the Federal Circuit] have repeatedly made clear that
merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.”).
To extent that the Appellant argues that claim 25 does not raise
eligibility concerns because the claim includes new, rather than
conventional, information by determining parameters of gas at or near the
airway of the subject at a detection point in time, which is an improvement
to technology or technical field, we disagree. See Appeal Br. 8–13 (citing
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d
1057 (Fed. Cir. 2011); Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299
(Fed. Cir. 2018)). A review of the Specification demonstrates that the claim
limitations do not include an improvement in the functioning of a computer,
or an improvement to other technology or technical field. See supra. And,
the claimed features, alone and in combination, are no more than generic
components operating in their ordinary capacity. Accordingly, any
improvement attributable to claim 25 lies in the abstract idea itself, not to
any technological improvement. See BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1287–88 (Fed. Cir. 2018). Consequently, under Step 2A,
Prong Two, the additional element in independent claim 25 does not
integrate the abstract idea into a practical application.
The Appellant argues that Examiner’s rejection does not articulate
with any specificity to what the claims are directed. See Appeal Br. 11
(citing Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed.
Cir. 2017)), 13. We disagree. As the Examiner explained in the Final
Office Action, that the claims “essentially directed to mathematical
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algorithms using the functions and equations 11 and 12 in Applicant’s
specification” and that “additional components like . . . the sensor . . . are
routine and conventional in the art.” See Final Act. 5–7; Ans. 2–4.
Accordingly, claim 25 is directed to an abstract idea.

Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
In Step 2B, we evaluate whether “additional elements recited in the
claim[] provide ‘significantly more’ than the recited judicial exception.” See
2019 Revised Guidance, 84 Fed. Reg. at 56. More particularly, we evaluate
whether these additional elements “add[] a specific limitation or combination
of limitations that are not well-understood, routine, conventional activity,” or
whether they instead “simply append[] well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.” Id. If the additional elements in a claim
consist of a conventional arrangement of conventional computer components,
they will not amount to significantly more, and the claim fails the Alice test
for patent eligibility. Id.
The “sensor,” the additional element in claim 25, is a detection device
that is used to measure a parameter of the gas being delivered to or received
from the airway of a subject. The sensor is disclosed in the Specification with
a high degree of generality. See Spec. ¶ 20. Additionally, as disclosed in the
Specification, direct measurements of breathing parameters are performed by
generic components, e.g., gas pressure at or near the airway of subject, flow
rate of gas at or near the airway of subject, and volume of gas in the
respiratory system of subject. See id. ¶¶ 20–21, 23. Considering the steps
individually, claim 1 lacks additional elements to ensure that the claim
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amounts to significantly more. Specifically, the recited steps, understood in
light of the Specification, do not appear to require anything other than
conventional equipment. Id. Considered as an ordered combination, the
sensor adds nothing that is not already present when the steps are considered
separately.
To extent that the Appellant argues that claim 25 does not raise
eligibility concerns because the claim includes “new” (i.e., novel) information
by determining parameters of gas at or near the airway of the subject at a
detection point in time, we disagree. Appeal Br. 10. An abstract idea is not
transformed into an inventive concept just because the prior art does not
disclose or suggest it. See Mayo, 566 U.S. at 90. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). Indeed, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–
89; see also Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to
substitute §§ 102, 103, and 112 inquiries for the better established inquiry
under § 101”). “It has been clear since Alice that a claimed invention’s use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech, 899 F.3d 1281, 1290 (Fed. Cir. 2018); see Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (quoting
Mayo, 132 S. Ct. at 1304).
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Consequently, under Step 2B, claim 25, as a whole, with its limitations
considered both individually and as ordered combination does not provide
significantly more than the recited abstract idea.
Therefore, independent claim 25 fails the Alice test for patent
eligibility. Thus, we sustain the Examiner’s rejection of claim 25. The
Appellant does not argue claims 26–29 and 31–35 separately; these claims
fall with claim 25. See 37 C.F.R. § 41.37(c)(1)(iv).
The Appellant specifically addresses claim 19 and submits that
“claim 19 . . . is directed to system configured to determine useful
parameters at (different, and thus ongoing) points in time, and to use these
parameters to determine variables of a patient during ventilation.” Appeal
Br. 11. We appreciate that independent claim 25 is drawn to a method and
independent claim 19 is drawn to a system. Appeal Br., Claims App.
Independent claim 19 is effectively a system for performing the method of
claim 25. Notably, claim 19 includes as additional elements, a “circuit,” “a
sensor,” and a “processor,” each of which are described functionally and/or
with a high degree of generality and are generic. See Spec. ¶¶ 16–17, 20–22
(describing gas delivery circuit 14, sensors 20, and processor 22); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375–76 (Fed.
Cir. 2011) (citing In re Abele, 684 F.2d 902 (CCPA 1982) (“[T]he basic
character of a process claim drawn to an abstract idea is not changed by
claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium.”).
Under Step 2B, the additional elements, when considered individually and as
an ordered combination, do not add significantly more to the abstract idea.
Claim 19 does little more than simply instruct the practitioner to implement
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the abstract idea of claim 25 by a system, and thus does not transform the
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at
226–227. Therefore, claim 19 falls for substantially similar reasons as claim
25. The Appellant fails to separately argue claims 20–23, which depends
from claim 19; these claims fall with claim 25. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Obviousness based on Ranieri and Lutchen
The Appellant argues that Ranieri fails to disclose “determin[ing] an
elastance and a resistance of the breathing of the subject without the natural
ventilation of the subject being adjusted to facilitate the determination,” as
recited in independent claim 19 and, as similarly recited, in independent
claims 25 and 31. Appeal Br. 14–15 (alteration in original) (emphasis
omitted). The Appellant submits that Ranieri discloses a method of
determining the elastance of the patient’s respiratory system by
mechanically preventing air flow during ventilation, i.e., occluding a
patient’s breath, at the start of inspiration. Id. at 15 (citing Ranieri ¶¶ 8, 13).
The Appellant’s argument is not persuasive of error because the Examiner’s
rejection relies on the combined teachings of Ranieri and Lutchen to teach
the disputed requirements of claims 19, 25, and 31. Final Act. 8.
More specifically, the Examiner finds that Ranieri teaches
determining an elastance and a resistance of the breathing of the subject, but
fails to specifically disclose doing so without influencing the natural
ventilation of the patient to facilitate the determination. See id. The
Examiner relies on Lutchen to teach determining an elastance and a
resistance of the breathing of the subject without influencing the natural
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ventilation of the patient to facilitate the determination. Id. at 8, 11
(explaining that the Examiner’s rejection relies on Lutchen, and not Ranieri,
to teach determining an elastance and a resistance of the breathing of the
subject without influencing the natural ventilation of the patient to facilitate
the determination). The Examiner finds that “Lutchen teaches a ventilation
system that determines elastance and resistance when the muscle pressure is
about zero and does not require changing the ventilation parameters.” Id.
at 8 (citing Lutchen, col. 3, ll. 55–65, col. 8, ll. 27–38, col. 9, ll. 1–19). The
Examiner determines that it would have been obvious to one of ordinary
skill in the art to use Lutchen’s method of determining elastance and
resistance with Ranieri’s method in order to eliminate muscular pressure
(Pmus). See id. (citing Ranieri ¶ 8).
The Appellant argues that Lutchen fails to teach determining elastance
and resistance when “muscle pressure is assumed to be zero and the time
derivative of muscle pressure is assumed to be zero,” as recited in
independent claims 19, 25, and 31. See Appeal Br. 14, 16–20. The
Appellant submits that “no evidence has been presented to support that
‘relaxed chest wall muscles’ necessarily equates to zero muscle pressure,
and zero time derivative of the muscle pressure.” Id. at 19. We disagree. In
this case, evidence intrinsic to the record, by way of the Specification,
supports the Examiner’s position. The Specification explains:
[D]uring expiration, even if the ventilation being provided by
system 10 is only assisting the breathing of subject 12, muscle
pressure can be assumed to be zero as subject 12 relaxes the
respiratory muscles (Spec. ¶ 25);
Muscle pressure can be assumed to be zero at points in time
where it is likely that subject 12 is not exerting any effort to
breath. For example, in ventilated patients, exhalation is
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typically a relaxation of the respiratory muscles. As such,
during exhalation muscle pressure may assumed to be zero. As
another example, if a patient is not capable of exerting any
effort in breathing, muscle pressure may assumed to be zero
during inhalation as well as exhalation. Patients incapable of
exerting effort in breathing include patients who have been
over-supported, patients with extreme and/or degenerative
damage to their respiratory systems and/or brain function,
patients paralyzed by drugs, and/or other patients. (Id. ¶ 28);
As will be appreciated, during periods of time where muscle
pressure remains at or near zero (e.g., during exhalation, etc.),
muscle pressure is constant over time. (Id. ¶ 33); and
During periods of time where muscle pressure remains at or
near zero (e.g., during exhalation, etc.), muscle pressure is
constant over time, thus its time derivative is zero (0). (Id.
¶ 34).
The foregoing descriptions explain that muscle pressure is assumed to be
zero as a subject relaxes respiratory muscles, and when muscle pressure is
assumed to be zero, the time derivative of muscle pressure is assumed to be
zero.
The Appellant asserts that Lutchen’s “description of chest wall
muscles being relaxed does explicitly present a zero muscular pressure, or
zero time derivative thereof” because “the term ‘relax their chest muscles’
may easily be a relative state of muscular pressure but not necessarily zero
pressure in magnitude or time derivative.” Appeal Br. 17 (citing Lutchen,
col. 7, ll. 27–38). However, in light of the Specification, one of ordinary
skill in the art may assume muscle pressure to be zero and the time
derivative of muscle pressure to be zero when a breathing subject relaxes
chest wall muscles (e.g., during expiration).
The Appellant acknowledges Lutchen’s description “that ‘lungs have
achieved a near-static mechanical equilibrium with the chest wall[,]’” but
Appeal 2019-002927
Application 13/133,194

18

submits that “near static is not static, and thus the time derivative is not zero,
nor is the magnitude of the measured quantity necessarily zero.” Id. at 20;
see id. at 16 (citing Lutchen, col. 9, ll. 1–19). The Appellant’s argument is
not persuasive of error.
Lutchen describes the moment when expiration ceases and the lungs
have achieved a near-static mechanical equilibrium with the chest wall to
start its measurements. See Lutchen, col. 9, ll. 3–8. Stated otherwise,
Lutchen starts its measurement in the pause between breaths where the
muscles are relaxed. See Ans. 5. The Specification describes, “[m]uscle
pressure can be assumed to be zero at points in time where it is likely that
subject 12 is not exerting any effort to breath.” Spec. ¶ 28. Accordingly, in
light of the Specification, one of ordinary skill in the art may reasonably
assume muscle pressure to be zero in the pause between breaths where the
muscles are relaxed, i.e., the moment when expiration ceases and the lungs
have achieved a near-static mechanical equilibrium with the chest wall.
Additionally, as discussed above, in light of the Specification, one of
ordinary skill in the art may assume that during times when muscle pressure
is assumed to be zero the time derivative of muscle pressure is assumed to
be zero.
Thus, we sustain the Examiner’s rejection of independent claim 19
under 35 U.S.C. § 103 as unpatentable over Ranieri and Lutchen.
Dependent claims 20–23, 25–29, and 31–35 fall with claim 19. See 37
C.F.R. § 41.37(c)(1)(iv).

Appeal 2019-002927
Application 13/133,194

19

Obviousness based on Ranieri, Lutchen, and Jafari
The Appellant does not advance a separate argument for the rejection
of claims 24, 30, and 36, which depend from claims 19, 25, and 31,
respectively. See Appeal Br. 20. We likewise sustain the Examiner’s
rejection of claims 24, 30, and 36 under 35 U.S.C. § 103 as unpatentable
over Ranieri, Lutchen, and Jafari.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
19–23,
25–29,
31–35
101 Eligibility 19–23,
25–29,
31–35

19–23,
25–29,
31–35
103(a) Ranieri, Lutchen 19–23,
25–29,
31–35

24, 30, 36 103(a) Ranieri, Lutchen,
Jafari
24, 30, 36
Overall
Outcome
19–36

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED