John Lalonde

Patent Trials and Appeals Board

Jan 2, 2020

13591474 - (D) (P.T.A.B. Jan. 2, 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.
13/591,474 08/22/2012 John LaLonde 115.0165USU1 (11-120) 1048
62058 7590 01/02/2020
PAULY, DEVRIES SMITH & DEFFNER, L.L.C.
Suite 900
121 South 8th Street
MINNEAPOLIS, MN 55402-2481
EXAMINER
WINSTON III, EDWARD B
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
docketing@pdsdlaw.com
kds@pdsdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JOHN LaLONDE
____________________

Appeal 2018-006958
Application 13/591,474
Technology Center 3600
____________________

Before JUSTIN BUSCH, JENNIFER L. McKEOWN, and
CATHERINE SHIANG, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13 and 15–20, which constitute all
the claims pending in this application. We have jurisdiction over the pending
claims 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. Appellant identifies the real party in interest as Cardiac
Pacemakers, Inc. Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to the care and evaluation of patients
having implantable medical devices (IMDs) such as cardiac rhythm
management devices.” Spec. 1:8–9. “More particularly, the invention relates
to methods and systems for remotely evaluating patients having IMDs.”
Spec. 1:9–10. Claims 1, 12, and 13 are independent claims, and claim 12 is
reproduced below:
12. A method for assisting a remote implantable medical
device (IMD) clinician with evaluation of a patient having an
IMD, comprising:
a. providing a patient interface device having a processor at
a patient location configured to retrieve identity data and
sensor data from an implantable medical device (IMD),
wherein the patient interface device is further configured
to receive IMD data from the IMD;
b. providing a clinician interface device at a clinician
location configured to be in remote, bi-directional
audio/video communication with the patient interface
device;
c. the patient interface device capturing first audio/video data
of the patient, using at least one of the group of a camera
and a microphone, while the patient performs a first
evaluation protocol at the patient location at a first time;
and
d. the patient interface device capturing second audio/video
data of the patient, using at least one of the group of a
camera and a microphone, while the patient performs a
first evaluation protocol at the patient location at a second
time later than the first time; and
e. a processor performing a pattern recognition analysis of
the audio/video data of the patient, comprising comparing
specific portions of the second audio/video data to like
portions of the first audio/video data of the patient; and
f. providing to the clinician interface device a report of any
changes identified during the pattern recognition analysis,
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wherein the report comprises a quantification of at least
one of a frequency shift in the patient's voice, swelling of
a body part of the patient, a tremor in a body part of the
patient, and changes in the patient's breathing pattern; and
g. determining whether the changes identified during the
pattern recognition analysis meet alert threshold
requirements, and upon determining that the alert
threshold requirements are met, generating an alert.
REJECTIONS2
Claims 1–13 and 15–20 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Final Act. 2–4.
Claims 1, 2, 5, and 10 stand rejected under 35 U.S.C. § 103 as obvious
in view of Farhan (US 7,825,813 B2; Nov. 2, 2010) and Schaufele (US
2006/0206724 A1; Sept. 14, 2006). Final Act. 6–8.
Claims 3, 4, 7–9, 11–13, 15–17, and 20 stand rejected under 35 U.S.C.
§ 103 as obvious in view of Farhan, Schaufele, and Nelson (6,418,346 B1;
July 9, 2002). Final Act. 8–14.
Claims 6, 18, and 19 stand rejected under 35 U.S.C. § 103 as obvious
in view of Farhan, Schaufele, Nelson, and Zhang (US 2011/0301530 A1;
Dec. 8, 2011). Final Act. 14–16.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have

2 Claim 14 was rejected as being directed to ineligible subject matter under
35 U.S.C. § 101, as obvious under 35 U.S.C. § 103, and as indefinite under
35 U.S.C. § 112(b). See Final Act. 2, 5, 12. Appellant cancelled claim 14
before filing the Appeal Brief and the Examiner entered the amendment. See
Response After Final Action (filed Oct. 27, 2017), 6, 8; Advisory Action
(mailed Dec. 7, 2017). Accordingly, claim 14 is not before us on appeal.
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considered all evidence presented and all arguments Appellant made.
Arguments Appellant could have made, but chose not to make in the briefs,
are deemed waived. See 37 C.F.R. § 41.37(c)(1)(iv).
THE 35 U.S.C. § 101 REJECTION
The Examiner concludes claims 1–13 and 15–20 are directed to
judicially excepted subject matter. Final Act. 2–4. Appellant argues the
§ 101 rejection of all claims as a group. See Appeal Br. 14–18. We select
independent claim 12 as representative of the claims with respect to the
rejection of claims 1–13 and 15–20 as being directed to ineligible subject
matter. See 37 C.F.R. § 41.37(c)(1)(iv) (2016).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the United States Patent and Trademark
Office published revised guidance for evaluating subject matter eligibility
under 35 U.S.C. § 101, specifically with respect to applying the Alice
framework. USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter),
we determine whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of our inquiry, we “look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). The
Guidance directs us to address this inquiry using the following two prongs of
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analysis: (i) does the claim recite a judicial exception (e.g., an abstract idea),
and (ii) if so, is the judicial exception integrated into a practical application?
84 Fed. Reg. at 54.
Under the Guidance, if the judicial exception is integrated into a
practical application, the claim is patent eligible under § 101. 84 Fed. Reg. at
54–55. If the claim is directed to a judicial exception (i.e., the claim both
recites a judicial exception and fails to integrate the exception into a
practical application), we next determine whether the claim provides an
inventive concept, which includes determining whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56.
Here, we conclude representative claim 12 is directed to mental
processes (i.e., a concept performed in the human mind, such as an
observation, evaluation, judgment, and opinion), which are abstract ideas.
See 84 Fed. Reg. at 52. Claim 12 generally is directed to observing a patient
to evaluate the patient and render an opinion regarding changes in the
patient’s medical condition.
This is consistent with how Appellant describes the claimed
embodiments of the invention. Br. 3 (“the invention relates to methods and
systems for remotely evaluating patients having IMDs by capturing and
analyzing audio/video data of the patient”); Spec. 1:10 (“methods and
systems for remotely evaluating patients”), 1:13–27 (describing problems
with prior art systems and explaining that “visual and audio observation of
the patient . . . can provide important information about the patient’s
condition and overall health status,” such that “[c]linicians would benefit
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from improved systems for providing and analyzing audio/video patient
data”).
Claim 12 is reproduced below, with the claim limitations that recite
elements of the abstract idea of observing a patient to evaluate the patient
and render an opinion regarding changes in the patient’s medical condition
emphasized in italics:
12. A method for assisting a remote implantable medical
device (IMD) clinician with evaluation of a patient having an
IMD, comprising:
a. providing a patient interface device having a processor at
a patient location configured to retrieve identity data and
sensor data from an implantable medical device (IMD),
wherein the patient interface device is further configured
to receive IMD data from the IMD;
b. providing a clinician interface device at a clinician
location configured to be in remote, bi-directional
audio/video communication with the patient interface
device;
c. the patient interface device capturing first audio/video
data of the patient, using at least one of the group of a
camera and a microphone, while the patient performs a
first evaluation protocol at the patient location at a first
time; and
d. the patient interface device capturing second audio/video
data of the patient, using at least one of the group of a
camera and a microphone, while the patient performs a
first evaluation protocol at the patient location at a second
time later than the first time; and
e. a processor performing a pattern recognition analysis of
the audio/video data of the patient, comprising comparing
specific portions of the second audio/video data to like
portions of the first audio/video data of the patient; and
f. providing to the clinician interface device a report of any
changes identified during the pattern recognition analysis,
wherein the report comprises a quantification of at least
one of a frequency shift in the patient's voice, swelling of
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a body part of the patient, a tremor in a body part of the
patient, and changes in the patient's breathing pattern;
and
g. determining whether the changes identified during the
pattern recognition analysis meet alert threshold
requirements, and upon determining that the alert
threshold requirements are met, generating an alert.
More particularly, the abstract idea of observing a patient to evaluate
the patient and render an opinion regarding changes in the patient’s medical
condition comprises (i) capturing patient audio/video data while the patient
performs an evaluation protocol at a patient location at two different times;
(ii) analyzing the two patient video/audio sets of data to recognize patterns;
(v) providing a report of changes identified in the pattern recognition
analysis that quantifies a particular characteristic; (vi) determining whether
the identified changes are above a threshold; and (vi) if above the threshold,
generating an alert. These steps that make up the concept recited in claim 12
are simply a series of observations, evaluations, and judgements for render
an opinion regarding changes in the patient’s medical condition, and these
steps all fall within the types of mental processes considered abstract—i.e.,
observations, evaluations, judgments, and opinions. See 84 Fed. Reg. at 52.
Consistent with our Guidance and case law, we conclude this concept
is a mental process and, therefore, an abstract idea. See 84 Fed. Reg. at 52;
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed.
Cir. 2011) (determining claims that recite reviewing information to
determine a lower-risk immunization schedule were directed to an abstract
idea because they involve only mental processes); Digitech Image Techs.,
LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
(concluding “taking existing information . . . and organizing this information
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into a new form” is an abstract idea); SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 F. App’x 950, 954–56 (Fed. Cir. 2014)
(concluding claims that analyzed provided patient information using
knowledge bases to generate a ranked list of treatment regimens and
advisory information for treatment regimens were directed to an abstract
idea); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
(concluding claims were directed to the abstract idea of “selecting certain
information, analyzing it using mathematical techniques, and reporting or
displaying the results of the analysis”). If a claim, under its broadest
reasonable interpretation, covers performance in the mind but for the
recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”); see Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016)
(concluding that “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category” and concluding claims directed
to “collecting information, analyzing it, and displaying certain results of the
collection and analysis” were abstract). In other words, we agree with the
Examiner that claim 12 is similar to the claims held ineligible in SmartGene
and Electric Power.
Appellant fails to persuasively argue that claim 12 does not recite an
abstract idea. Appellant merely states disagreement “with the conclusion that
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the claims are directed to an abstract idea,” and generally asserts that
Appellant’s claims are not analogous to the claims in SmartGene because
Appellant’s “claims are not alleged to include mental steps.” Appeal Br. 14–
15; Reply Br. 5–6. Appellant also argues the claims are unlike SmartGene’s
claims because Appellant’s claims “utilize an improvement in technology to
perform a function that humans are incapable of doing.” Rely Br. 6. This
argument, however, fails to persuasively explain why the steps identified
above claim more than simply mental processes—i.e., observations,
evaluations, judgments, or opinions. Therefore, because we determine claim
12 recites mental processes, we disagree with Appellant that claim 12 fails to
recite an abstract idea.
Because claim 12 recites a judicial exception, we next determine
whether it integrates the judicial exception into a practical application.
84 Fed. Reg. at 54. To determine whether the judicial exception is integrated
into a practical application, we identify whether there are “any additional
elements recited in the claim beyond the judicial exception(s)” and evaluate
those elements to determine whether they integrate the judicial exception
into a practical application. 84 Fed. Reg. at 54–55 (emphasis added); see
also Manual of Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c),
(e)–(h) (9th ed. Rev. 08.2017, Jan. 2018).
Here, the additional limitations recited beyond the judicial exception
itself fail to integrate the exception into a practical application. More
particularly, and contrary to Appellant’s vague and general assertions, claim
12 does not recite: (i) an improvement to the functionality of a computer or
other technology or technical field (see MPEP § 2106.05(a)); (ii) a
“particular machine” to apply or use the judicial exception (see MPEP §
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2106.05(b)); (iii) a particular transformation of an article to a different thing
or state (see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See also 84 Fed. Reg. at 55.
Rather, the additional elements simply use computers as tools to
implement the abstract idea requiring no more than generic computer
elements to perform generic computer functions or add insignificant extra-
solution activity. The additional elements recited in claim 12 are: (1) the
patient interface device having a processor and providing the device at a
patient location configured to retrieve identity data and sensor data from an
implantable medical device (IMD) and receive IMD data from the IMD;
(2) the clinician interface device and providing the device at a clinician
location configured to be in remote, bi-directional audio/video
communication with the patient interface device; (3) the camera and/or
microphone used by the patient interface device to capture data; and (4) the
processor (that performs the pattern recognition analysis).
The patient interface device, clinician interface device, camera,
microphone, and processor are generic computer elements or components
recited at a high level of generality. The claims recite the patient interface
device includes a processor and includes or is connected to at least one of a
microphone and a camera.
Otherwise, the Specification and claims provide generic, high-level,
mostly functional descriptions of the interface devices, without providing
detail indicating these elements include any improvement to existing
computers or technology. See Spec. 5:1–20 (describing the two interface
devices only by the functions they are configured to perform), 6:14–23
(describing the two interface devices as having a communication link—e.g.,
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“phone lines, a wired network, the Internet 130, a pervasive wireless
network or any other data connection”), 7:5–6 (describing connecting the
patient interface device to external storage media); cf. Berkheimer Memo3
§ III.A.1. Although the Specification provides exemplary features of a
patient interface device, the Specification explains that the patient interface
device and the clinician interface device may be generic computing devices.
Spec. 7:18–8:3 (“the patient interface device may take the form of . . . a
laptop computer, a desktop computer, a tablet computer, a smart phone or
another configuration”), 16:13–19 (explaining that the clinician interface
device may be the same as the patient interface device, such as “a laptop
computer, a desktop computer, a tablet computer, a smart phone or another
configuration”), 16:29–17:21 (describing various functional components that
the interface devices may include, but explaining that the interface devices
need not have all the components), 17:22–18:8 (describing the interface
devices as optionally including various generic computer components).
Similarly, the recited microphone, camera, and processor are generic
components recited as performing their basic functions of recording audio
and video or executing computer instructions.

3 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well-understood, routine, and conventional).
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The claimed steps of “providing” the interfaces are the type of
insignificant extra-solution activity the courts have determined insufficient
to transform judicially excepted subject matter into a patent-eligible
application. See 84 Fed. Reg. at 55, 55 n.31; MPEP § 2106.05(g); Bilski v.
Kappos, 561 U.S. 593, 612 (2010) (holding the use of well-known
techniques to establish inputs to the abstract idea as extra-solution activity
that fails to make the underlying concept patent eligible); Mortgage Grader,
Inc. v. First Choice Loan Svcs., Inc., 811 F.3d 1314, 1324–25 (Fed.
Cir. 2016) (generic computer component (i.e., an interface) fails to provide
an inventive concept); Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“[T]he interactive interface
limitation is a generic computer element.”).
Appellant also argues that, even to the extent the claims are directed
to an abstract idea, the claims recite significantly more than just the abstract
idea. Appeal Br. 15–18; Reply Br. 6–7. Appellant contends the claims “are
directed to a telemedicine system for IMD patients using audio/video data”
that improves on prior patient management techniques. Appeal Br. 17.
Appellant asserts the claimed solution includes specific meaningful
limitations that integrate the abstract idea into a particular application
resulting in a claimed combination that is not well-understood, routine, and
conventional. Appeal Br. 17. Appellant asserts the steps relating to the
patient performing an evaluation protocol at two times, comparing the two
performances, and providing a report that quantifies changes add non-
conventional and non-generic steps to the claim that, in combination, claim
significantly more than the abstract idea. Appeal Br. 17–18; Reply Br. 6–7.
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Notably, Appellant neither claims nor describes any claimed
technological improvement tied to the invention recited in claim 12. Rather,
Appellant merely claims a general use of computing devices and
components (i.e., interfaces, camera, microphone, and processor) to aid in
collecting and analyzing data to assist in observing a patient to evaluate the
patient and render an opinion regarding changes in the patient’s medical
condition.
Appellant asserts the present claims do not recite mental steps, but
Appellant does not persuasively explain why or how the claims differ from
claims the Federal Circuit previously found ineligible in SmartGene and
Electric Power. Appellant identifies a problem that conventional systems do
not provide audio and video patient data and claims a solution that captures
and communicates such audio and video data. See Spec. 1:18–27. This,
however, is a data collection problem not a technical problem. Accordingly,
Appellant’s claimed solution captures, analyzes, and displays information so
a clinician may observe and evaluate a patient and render an opinion
regarding changes in the patient’s medical condition. As discussed above,
the claimed solution uses conventional components to capture, analyze, and
provide information, but the claims fail to improve a computer, technology,
or other technical field. Appellant’s claimed solution is rooted in data
collection and analysis, not technology.
Moreover, Appellant does not argue limitations in addition to the
abstract idea differentiate the claims over those found ineligible in Electric
Power and SmartGene. Instead, Appellant vaguely argues the limitations
recited in the claims that are part of the abstract idea, when taken in
combination, are unconventional and not generic. These arguments are
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insufficient to demonstrate Appellant’s claims are directed to something
other than mental processes to perform the abstract idea of observing a
patient to evaluate the patient and render an opinion regarding changes in the
patient’s medical condition. To the extent Appellant asserts the combination
of these limitations is more than what was well-understood, routine, and
conventional in the field, we address that assertion below.
For these reasons, we determine representative claim 12 recites an
abstract idea comprised of mental steps and fails to integrate the judicial
exception into a practical application. Therefore, claim 12 is directed to an
abstract idea, and we analyze the claims under step two of Alice to determine
whether there are additional limitations that individually, or as an ordered
combination, ensure the claims amount to “significantly more” than the
abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–73, 77–79 (2012)).
As stated in the Guidance, many of the considerations to determine
whether the claims amount to “significantly more” under step two of the
Alice framework are already considered as part of determining whether the
judicial exception has been integrated into a practical application. 84 Fed.
Reg. at 56. Thus, at this point of our analysis, we determine if claim 12 adds
a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field, or simply appends
well-understood, routine, conventional activities at a high level of generality.
84 Fed. Reg. at 56.
As mentioned above, Appellant argues the claims recite specific
meaningful elements that, considered as an ordered combination, provide
significantly more than the abstract idea and integrate the abstract idea into a
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particular application, which results in a claimed combination that is not
well-understood, routine, and conventional. Appeal Br. 15–18; Reply Br. 6–
7. Specifically, Appellant asserts the steps relating to the patient performing
an evaluation protocol at two times, comparing the two performances, and
providing a report that quantifies changes add non-conventional and non-
generic steps to the claim that, in combination, claim significantly more than
the abstract idea. Appeal Br. 17–18; Reply Br. 6–7.
An inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?’” (emphasis added, brackets in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218–
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
Alice “only assessed whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine and conventional,” (emphasis added)).
As alluded to above, however, Appellant’s argument focuses on
limitations that are part of the abstract idea, not limitations in addition to the
abstract idea. Appellant does not identify elements in addition to the abstract
idea that allegedly are not well-understood, routine, and conventional.
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Claim 12 fails to recite specific additional limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. Rather, Appellant’s claimed solution uses conventional
components to capture, analyze, and provide information, but fails to
improve a computer, technology, or other technical field. Even considered as
an ordered combination, the additional elements recited in representative
claim 12 merely perform their conventional functions that they perform
separately. As discussed above, the recited additional elements are generic
components recited at a high level of generality or extra-solution activity,
which do not recite limitations beyond what was well-understood, routine,
and conventional in the field. See Berkheimer Memo § III.A.1.
To the extent Appellant argues the claims are similar to the claims
held eligible in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016), we disagree. See Appeal Br. 12–14.
In BASCOM, the court found “the patent describes how its particular
arrangement of elements is a technical improvement” and, when construed
in favor of BASCOM,4 the claims may be read to improve an existing
technological process. BASCOM, 827 F.3d at 1350. As discussed above,
claim 10 does not improve an existing technological process, but rather
receives and analyzes data using a generic interfaces, cameras, microphones,
and processors. Additionally, unlike the arrangement of elements (i.e.,
installation of a filtering tool at a specific location) in BASCOM, 827 F.3d at
1349–50, claim 12 does not recite a non-conventional and non-routine
arrangement of known elements because the additional components are well-

4 In BASCOM, BASCOM appealed the district court’s granting of a motion
to dismiss under Fed. R. Civ. P. 12(b)(6). BASCOM, 827 F.3d at 1341.
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understood, routine, and conventional elements performing their ordinary
functions both when considered individually and in combination. Using
interfaces to receive and output information, using a camera and microphone
to record audio and video, and using a processor to execute computer
instructions are the most basic functions of the respective components and
do not even arguably constitute an unconventional or non-routine
arrangement or use of the generic components.
For the above reasons, Appellant has not persuaded us of Examiner
error, and we sustain the Examiner’s rejection of claims 1–13 and 15–20
under 35 U.S.C. § 101 as being directed to ineligible subject matter.
THE 35 U.S.C. § 103 REJECTIONS
The Examiner finds a combination of Farhan and Schaufele teaches or
suggests the subject matter recited in claims 1, 2, 5, and 10. Final Act. 6–8.
Of particular relevance to Appellant’s arguments, the Examiner finds
Schaufele teaches using biometric data to identify an individual, including
creating voice spectrographs from audio data to improve identity
verification. Final Act. 7 (citing Schaufele ¶¶ 54, 52, 59, 90). The Examiner
finds Schaufele discloses creating a spectrograph including at least three
separate audio portions that can be represented graphically and may help
identify an individual’s breathing pattern. Final Act. 7 (citing Schaufele,
Fig. 9 (901–904)); Ans. 11 (additionally citing Schaufele ¶ 123).
The Examiner concludes it would have been well known to expand or
modify Farhan’s method “to use sound spectrograph imaging as taught by
Schaufele et al. in order to provide photographing or otherwise recording
spectra.” Final Act. 7. The Examiner also reasons a person of ordinary skill
in the art would have been motivated to combine Farhan’s and Schaufele’s
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teachings to provide “voice spectrograph data that may be less intrusive and
generally provide more accurate biometric identification system data.”
Ans. 11 (citing Schaufele ¶ 123).
The Examiner finds independent claim 12 recites similar limitations to
those recited in claims 1, 5, and 11, and the Examiner rejects claim 12 for
the reasons set forth regarding those claims. Final Act. 12. Similarly, the
Examiner finds independent claim 13 recites similar limitations to those
recited in claims 1 and 11, and the Examiner rejects claim 13 for the reasons
set forth regarding those claims. Final Act. 12.
Appellant argues Schaufele fails to teach or suggest a report that
quantifies changes identified in the pattern recognition analysis, as recited in
claim 1. Appeal Br. 9–10; Reply Br. 2. Appellant contends Schaufele’s cited
disclosures—i.e., the voice spectrograph—merely provide graphical
representations of raw data (e.g., breathing patterns) collected and fail to
teach or suggest any quantification of changes. Appeal Br. 10; Reply Br. 2.
Appellant also argues the Examiner failed to provide a rational
underpinning to support a reason for combining Farhan’s and Schaufele’s
cited teachings. Appeal Br. 10–11; Reply Br. 3–4. Appellant argues there
would have been no reason to combine Schaufele’s voice spectrograph used
for biometric verification with Farhan’s comparison of detected non-speech
sounds to a number of expected sound events because Farhan merely
compares detected versus expected occurrences of habitual sounds, and there
would have been “no purpose for providing ‘photographing or otherwise
recording spectra’” in Farhan. Appeal Br. 11; Reply Br. 3. Appellant
contends the Examiner provided no evidence supporting any benefits or
desirability of combining Farhan and Schaufele. Appeal Br. 11. Even
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accepting that Schaufele’s biometric verification system is less intrusive and
more accurate than other verification systems, Appellant asserts a person of
ordinary skill would not have had a reason to combine Schaufele’s teachings
with Farfele because biometric verification would serve no purpose in
Farhan’s systems and methods. Reply Br. 4.
As Appellant notes, the portions of Farhan the Examiner finds teach
or suggest the limitations related to performing pattern recognition analysis
disclose identifying and counting a number of occurrences of certain types
of sounds and comparing that to an expected number of occurrences of a
type of sound. Farhan 2:52–59, 3:23–28, 4:11–20. Schaufele’s cited portions
relate to using biometric data, including an individual’s breathing pattern, to
verify an individual’s identity. Schaufele ¶¶ 51, 52, 59, 90, 123.
We agree with Appellant that the Examiner’s rationale for combining
Farhan’s and Schaufele’s disparate teachings is problematic. The Examiner’s
reasons for combining the cited teachings are “to provide photographing or
otherwise recording spectra” in Farhan’s system and to provide spectrograph
data that is less intrusive and more accurate than conventional biometric
analysis. Final Act. 7; Ans. 11. These reasons, however, simply explain what
Schaufele teaches, without providing any rational underpinning as to why
one of ordinary skill in the art would have added Schaufele’s biometric
verification techniques or systems to Farhan’s systems and methods that are
unrelated to identity verification. Importantly, the Examiner provides
insufficient explanation as to why a person of ordinary skill in the art would
have combined Schaufele’s biometric verification with Farhan’s system.
For the reasons discussed above, we reverse the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103 as obvious in view of Farhan
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and Schaufele. Claims 2, 5, and 10 depend directly from claim 1 and
incorporate claim 1’s limitations. Therefore, for the same reasons, we also
reverse the Examiner’s rejection of dependent claims 2, 5, and 10 under
35 U.S.C. § 103 as obvious in view of Farhan and Schaufele.
The Examiner rejects claims 3, 4, 7–9, 11–13, 15–17, and 20 under
35 U.S.C. § 103 as obvious in view of Farhan, Schaufele, and Nelson. The
Examiner rejects claims 6, 18, and 19 under 35 U.S.C. § 103 as obvious in
view of Farhan, Schaufele, Nelson, and Zhang. Independent claims 12 and
13 recite limitations commensurate in scope to the limitations recited in
claim 1, including providing a report quantifying the changes identified in
pattern recognition analysis. See Appeal Br. 12–13 (arguing claims 12 and
13 are patentable for the same reasons asserted with respect to claim 1,
Nelson does not cure the deficiencies, and the Examiner has not provided a
sufficient rationale for combining Nelson with Farhan and Schaufele).
Claims 3, 4, 6–9, and 11 ultimately depend from independent claim 1.
Claims 15–20 ultimately depend from independent claim 13. The Examiner
does not find Nelson or Zhang teach or suggest providing a report, and the
Examiner provides no further explanation regarding the proposed
combination of Schaufele’s spectrograph with Farhan’s teachings.
Therefore, for the same reasons addressed with respect to independent claim
1, we reverse the Examiner’s rejections under 35 U.S.C. § 103 of: (1) claims
3, 4, 7–9, 11–13, 15–17, and 20 as obvious in view of Farhan, Schaufele,
and Nelson and (2) claims 6, 18, and 19 as obvious in view of Farhan,
Schaufele, Nelson, and Zhang.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis /
References
Affirmed Reversed
1–13, 15–20 101 Ineligible 1–13, 15–20
1, 2, 5, 10 103 Farhan, Schaufele 1, 2, 5, 10
3, 4, 7–9, 11–
13, 15–17, 20
103 Farhan, Schaufele,
Nelson
3, 4, 7–9, 11–
13, 15–17, 20
6, 18, 19 103 Farhan, Schaufele,
Nelson, Zhang
6, 18, 19
Overall
Outcome
1–13, 15–20

AFFIRMED