Murata Manufacturing Co., Ltd.

Patent Trials and Appeals Board

Aug 11, 2021

2020005229 (P.T.A.B. Aug. 11, 2021)

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.
15/016,329 02/05/2016 TORU SHIMUTA 036433.03585 9690
38485 7590 08/11/2021
ARENT FOX LLP - New York
1717 K Street, NW
Washington, DC 20006-5344
EXAMINER
SHAH, JAY B
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
08/11/2021 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORU SHIMUTA
Appeal 2020-005229
Application 15/016,329
Technology Center 3700

Before MICHAEL L. HOELTER, JILL D. HILL, and LEE L. STEPINA,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 6–9, 11–13, and 16–19. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellant’s invention relates to a trunk muscle contraction detection
apparatus. Claims 1 (apparatus) and 11 (method) are independent. Claim 1,

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as MURATA
MANUFACTURING CO., LTD. Appeal Br. 3.
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reproduced below with limitations italicized, illustrates the claimed subject
matter:
1. A muscle contraction detection apparatus for detecting
muscle contractions from biological data, the apparatus
comprising:
a processor coupled to a pulse sensor that detects the
biological data including pulses of a human, the processor
configured to:
generate pulse-interval data from the detected biological
data,
acquire change-component data that represents a change
component of the pulse-interval data, the change component
relating to pulse intervals,
generate vibration-component removal data by removing
a vibration component from the change-component data,
wherein the vibration component is caused by periodic vibrations
in the pulse-interval data that correspond to periodic breathing of
the human, and wherein the vibration component is determined
as at least one downward peak in the pulse-interval data that
occurs within a predetermined pulse range of a corresponding
upward peak and when a difference between the at least one
downward peak and the corresponding upward peak is less than
a predetermined threshold,
extract a variation component from the generated
vibration-component removal data, and
determine trunk muscle contractions based on the
extracted variation component; and
an output configured to generate output data for the
determined trunk muscle contractions, wherein the output data is
configured to be at least one of visually presented by a display
and audibly presented by a speaker.

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REJECTIONS2
I. Claims 1–3, 6–9, 13, and 16–19 stand rejected under 35 U.S.C.
§ 112(a) as not enabled for determining any trunk muscle contraction.
II. Claims 1–3, 6–9, 11–13, and 16–19 stand rejected under 35
U.S.C. § 101 as directed to an abstract idea without significantly more.
III. Claims 1–3, 6, 7, 9, 11–13, and 16, 17, and 19 stand rejected
under 35 U.S.C. § 103 as unpatentable over Watson3 and Wenzel.4
IV. Claims 8 and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Watson, Wenzel, and Prance.5
ANALYSIS
Rejection I – Enablement
The preamble of claim 1 is directed to trunk muscle contractions,
rather than being limited to heart muscle contractions. The Examiner finds
that Appellant’s Specification “while being enabling for heart muscle
contractions, does not reasonably provide enablement for determining any
trunk muscle contractions,” and therefore does not enable a skilled artisan
“to make and use the invention commensurate in scope with these claims.”
Final Act. 3 (emphasis added).

2 The Examiner withdrew the rejection of claims 8 and 18 (regarding solely
the “time delay” limitation) under 35 U.S.C. § 112(a), and the rejection of all
claims under 35 U.S.C. § 112(b). Ans. 3. Objections to the Specification
(Final Act. 2), if still pending, are not addressed in this appeal. Claim 20
was canceled in the Amendment after Final filed on September 20, 2019.
3 US 2009/0326395 A1; publ. Dec. 31, 2009.
4 US 2011/0009754 A1; publ. Jan. 13, 2011.
5 US 2010/0289479 A1; publ. Nov. 18, 2010.
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Appellant argues that the Examiner focused on the preamble, thus
failing to consider the claim as a whole as read in light of the Specification,
when construing the claim scope to determine enablement. Appeal Br. 10–
11.
The purpose of the enablement requirement is to ensure that the
Specification describes the invention such that a skilled artisan can make and
use the claimed invention, which ensures that the invention is communicated
to the interested public in a meaningful way. The Examiner’s issue appears
to be that trunk muscle contractions other than heart muscle contraction are
inoperative. The presence of inoperative embodiments within the scope of a
claim, however, does not necessarily render a claim non-enabled. The
standard is whether a skilled artisan could determine which embodiments
that were conceived, but not yet made, would be inoperative or operative
with expenditure of no more effort than is normally required in the art. See
Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1577
(Fed. Cir. 1984).
We decline to apply a per se rule that a broad preamble that may lead
to an inoperative embodiment renders the claim non-enabled. The Examiner
does not allege that a skilled artisan, considering the written description and
expending minimal effort, could not determine which conceived trunk
muscle contractions would be inoperative or operative. We, therefore, do
not sustain the Examiner’s rejection of claim 1 as non-enabled. Claims 2, 3,
and 6–9 depend from claim 1. Claim 11 was not rejected for lack of
enablement. Claims 13 and 16–19 depend from claim 11. We do not
sustain the enablement rejection.
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Rejection II – Ineligible Subject Matter
Appellant argues the claims as a group. We select independent claim
11 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2019) (permitting the
Board to select a single claim to decide the appeal as to a single ground of
rejection of a group of claims argued together). Claims 1–3, 6–9, 12, 13,
and 16–19 stand or fall with claim 11.
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, 573 U.S. at 217. The
first step in that analysis is to “determine whether the claims at issue are
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 79, 78).
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The Examiner finds that the claimed invention is directed to an
abstract idea without significantly more. Final Act. 5. According to the
Examiner, the claimed abstract idea “is part of the Mathematical Concepts
and Mental Processes group(s) identified in the 2019 Revised Patent Subject
Matter Eligibility Guidance published in the Federal Register (84 FR 50) on
January 7, 2019.” Id.
Appellant argues that the claims are not directed to an abstract idea;
rather, they are directed to “a specific, technical, non-routine, and
nonconventional application for detecting muscle contractions from
biological data.” Appeal Br. 13. Appellant further argues that the
“‘[m]athematical concepts’ group relates to a limited grouping of
mathematical relationships, mathematical formulas or equations,
mathematical calculations,” and “the Examiner’s conclusory attempt to
generalize the claimed invention at such an unreasonably high level of
abstraction should be reversed because it is untethered from the many
technical, nonabstract limitations that the claims explicitly require.” Id. at
15 (emphasis omitted). Appellant characterizes the process performed by
the claimed processor as “complex and inventive signal processing of
biological data.” Id. at 16.
We have reviewed the eligibility of the pending claims through the
lens of the USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (January 7, 2019), “the 2019 Subject Matter
Guidance,” and we are not persuaded that the Examiner erred in concluding
that the pending claims are directed to a judicial exception without
significantly more.
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Under that guidance, in conducting step one of the Alice framework,
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
interactions 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)).

Step 1 -- Statutory Category
Claim 11 recites a method and, therefore, is a process. See Appeal Br.
33–34 (Claims App.).

Step 2A, Prong 1
The 2019 Subject Matter Guidance identifies three key concepts
identified as abstract ideas: (a) mathematical concepts including
“mathematical relationships, mathematical formulas or equations,
mathematical calculations”; (b) certain methods of organizing human
activity, such as “fundamental economic principles or practices,”
“commercial or legal interactions,” and “managing personal behavior or
relationships or interactions between people”; and (c) mental processes
including “observation, evaluation, judgment, [and] opinion.” 84 Fed. Reg.
at 52.
Claim 11 recites steps that involve receiving signals, generating data,
acquiring data, extracting components of the data, making a determination
based on the extracted data, and generating output based on this
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determination. In the context of claim 1, this language amounts to reciting a
mental process of evaluating. See In re BRCA1 & BRCA2-Based Heredity
Cancer Test Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014); see also 2019
Subject Matter Guidance, 84 Fed. Reg. at 52 (defining mental processes as
“concepts performed in the human mind (including an observation,
evaluation, judgment, opinion)” (footnote omitted)). Thus, we agree with
the Examiner that claim 1 recites a mental process, which is within one of
the three categories of abstract ideas set forth in the 2019 Subject Matter
Guidance. Accordingly, the outcome of our analysis under Step 2A, Prong
1, requires us to proceed to Step 2A, Prong 2. See 2019 Subject Matter
Guidance.
Step 2A, Prong 2
We next consider whether the claimed method includes additional
elements that integrate the judicial exception into a practical application.
The Examiner finds that the claimed “judicial exception is not
integrated into a practical application” because the recited steps of
generating acquiring, extracting, and determining “amount to simply
implementing the abstract idea on a computer.” Final Act. 5. The Examiner
continues that the claimed data gathering steps “do not add a meaningful
limitation to the method as they are insignificant extra-solution activity,” and
“there is no improvement to a computer or other technology.” Id.
Appellant argues that the claims integrate “even the Examiner’s
alleged abstract idea” into a practical application. Appeal Br. 17. According
to Appellant, the claims recite “complex and inventive signal processing to
provide an output configured to generate output data for the determined
trunk muscle contractions,” integrating the alleged abstract idea into “the
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practical application of a trunk muscle contraction detection for purposes of
detecting a state of a human body.” Id. at 18.
We find no indication in Appellant’s Specification, nor does
Appellant direct us to any indication, that the claimed invention is
implemented using other than generic sensors, processors, and output
devices. Appellant’s assertion that the claims recite “complex and inventive
signal processing” (Appeal Br. 18) is unavailing. Appellant’s Specification
discloses various embodiments having differing configurations of the trunk
muscle contraction detection apparatus 1 (see Figure 1), but makes clear that
the inventive concept is in the process performed by the apparatus 1, rather
than structural aspects of its various “units,” i.e., a sensor 20, a display 50,
and a speaker 55. The operations (receiving a signal, acquiring data,
generating data, extracting data components, and generating visual and audio
output performed by the processor) are generic computer functions of
generating and manipulating data. See TLI Commc’ns LLC v. AV Auto. LLC,
823 F.3d 607, 612–13 (Fed. Cir. 2016). Thus, the claimed invention does
not improve the functioning of the computer (processor) or memory. “[A]n
improvement to the information stored by a database is not equivalent to an
improvement in the database’s functionality.” BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018). Contrary to
Appellant’s assertion, signal processing is not a technological problem, it is
just processing data using conventional techniques. At most, claim 11 limits
the abstract idea of signal processing to being for muscle contraction
recognition. Such a limitation has been held insufficient to save a claim in
this context. See Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) (“The concept
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of data collection, recognition, and storage is undisputedly well-known.”).
Nor does the claimed invention use a particular, or special, machine. In
other words, the claims “are not tied to any particular novel machine or
apparatus” capable of rescuing them from the realm of an abstract idea. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). In
addition, we do not see a “transformation” as this term is used in patent
eligibility determinations. See Appeal Br. 11, 16. For data, mere
“manipulation of basic mathematical constructs[, i.e.,] the paradigmatic
‘abstract idea,’” has not been deemed a transformation. CyberSource v.
Retail Decisions, 654 F.3d 1366, 1372 n.2 (Fed. Cir. 2011) (quoting In re
Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994)).
In summary, we do not find anything of record, short of conclusory
attorney argument, that attributes any improvement in technology and/or
functionality to the claimed invention, or otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the 2019 Subject Matter Guidance, 84 Fed. Reg. at
50, 55.
Step 2B
In Step 2B, we determine whether the claim adds a specific limitation,
beyond the judicial exception, that is not “well-understood, routine,
conventional” in the field. See 2019 Subject Matter Guidance. The portion
of claim 1 that is directed to additional elements (e.g., first and second
processors) (see Spec. ¶ 23) are generic devices that do not perform other
than well-known, routine, and conventional activity, as discussed above.
The Examiner determines that the claims do not “include additional
elements that are sufficient to amount to significantly more than the judicial
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exception” –– “[t]he additional computer and data-gathering elements,
which are recited at a high level of generality, provide conventional
computer and data-gathering functions that do not add meaningful
limitations to practicing the abstract idea,” and a skilled artisan would
consider the additional elements to be “well-understood, routine, and
conventional means for data-gathering and computing.” Final Act. 6.
Appellant argues that “each claim contains numerous limitations that
are not ‘well-understood, routine, or conventional’ in the field,” and the
Examiner failed to provide evidence of the claim limitations being well
understood, routine, and conventional. Appeal Br. 19. Appellant explains
that guidance in deciding whether the claim limitations are known,
conventional, and routine, can be found by drawing on the rules of
patentability and determining whether the claim contains an inventive
concept. Id. at 22 (emphases omitted) (citing Internet Patents Corp. v.
Active Networks, Inc., 790 F.3d 1343, 1347 (Fed. Cir. 2015) (“the pending
claims . . . recite a host of limitations that are not found in the prior art of
record as discussed below, and thus must define patent eligible subject
matter under 35 U.S.C. § 101”)). However, the search for an inventive
concept should not be confused with a novelty or non-obviousness
determination. See 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”). The “‘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.” Intellectual Ventures I v. Symantec
Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016); see also Synopsys, Inc. v.
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Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“a claim for
a new abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.”).
We find no indication in Appellant’s Specification, nor does
Appellant direct us to any indication, that the claimed invention is
implemented using other than generic sensors, processors, and output
devices performing well-known, routine, and conventional activities of
receiving signals, generating data, acquiring data, extracting components of
the data, making a determination based on the data, and generating output
based on the determination.
For the above reasons, the recited elements of independent claim 11,
considered individually and as an ordered combination, do not constitute an
“inventive concept” that transforms independent claim 11 into patent-
eligible subject matter. See Alice, 573 U.S. at 217. On this record, we
affirm the Examiner’s § 101 rejection of claim 1. Claims 2, 3, 6–9, 12, 13,
and 16–19 fall with claim 1.
Rejections III and IV – Obviousness
Independent claims 1 and 11 recite, inter alia, “the vibration
component [being] determined as at least one downward peak in the pulse-
interval data that occurs within a predetermined pulse range of a
corresponding upward peak and when a difference between the at least one
downward peak and the corresponding upward peak is less than a
predetermined threshold.” The Examiner finds this disclosure in Watson.
Final Act. 9 (citing Watson ¶ 62).
Appellant argues that a skilled artisan would understand that “the
cited disclosure in Watson simply relates to general filtering techniques to
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remove high and/or low frequency noise,” rather than the specific claim
features for determining the vibration component quoted above. Appeal Br.
24. More particularly, Appellant argues that the claimed vibration
component data filtering requires determining both “the peak difference
between upwards and downward peaks,” and “confirming whether the two
signals are within a pulse range.” Id. at 26. In contrast, Appellant argues,
Watson’s paragraph 62 “only generally relates to the use of various filters to
filter and remove noise from a PPG signal.” Id. Appellant further contends
that Wenzel, like Watson, “simply discloses a standard band-pass filter,”
such that the combined teachings of Wenzel and Watson fail to disclose the
vibration component being “determined as at least one downward peak in
the pulse-interval data that occurs within a predetermined pulse range of a
corresponding upward peak” as recited in independent claims 1 and 11. Id.
at 27.
The Examiner responds that “[t]he difference between an upwards
peak and a downwards peak of a signal is directly related to the frequency of
a signal (i.e. the rate at which a signal repeats, such as a sine-wave),” such
that “any generic band pass or low pass filter would filter a signal whose
downward peak and upward peak cross a predetermined threshold (i.e. the
cutoff frequency for a filter) and within a predetermined pulse range (i.e. a
frequency range for a filter).” Ans. 7. Therefore, the Examiner contends,
Watson’s disclosure of generic filtering techniques (i.e., band-pass, low-pass
filter) in its paragraph 62 “reads on the claimed limitation under the broadest
reasonable interpretation [thereof].” Id. The Examiner’s position on the
broadest reasonable interpretation is as follows:
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When determining the difference between peaks, there
are at least two ways to measure the difference. The distance
between the peaks along the x-axis (in time), or the distance
between the peaks along the y-axis (in amplitude). As this is
never specified in the claims, under the broadest reasonable
interpretation, a generic filter satisfies the claimed limitation as
a filter is concerned with distance between the peaks along the
x-axis (or in time). Therefore, the use of Watson to satisfy the
claimed limitation, under the broadest reasonable interpretation
is valid.
Ans. 8.
Appellant has the better argument. While limitations from the
Specification should not be read into the claims, the claims must be read in
light of the Specification. Appellant’s Specification is clear that the claimed
difference between peaks is measured in the y-direction and, thus, the
broadest reasonable claim interpretation does not include measuring a peak
difference along the x-axis. Given this claim construction, we disagree with
the Examiner’s determination that “[t]he difference between an upwards
peak and a downwards peak of a signal is directly related to the frequency of
a signal” (Ans. 7) and that the filtering disclosed in the prior art teaches the
claimed filtering of a vibration component that is “determined as at least one
downward peak in the pulse-interval data that occurs within a predetermined
pulse range of a corresponding upward peak and when a difference between
the at least one downward peak and the corresponding upward peak is less
than a predetermined threshold” as recited in independent claims 1 and 11.
We, therefore, do not sustain the rejection of independent claims 1 and 11,
or claims 2, 3, 6, 7, 9, 12, 13, 16, 17, and 19 that depend therefrom.
Regarding Rejection IV, claims 8 and 18 depend indirectly from claim
1 and 11, respectively. The Examiner makes no finding that Prance
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discloses the claimed filtering of a vibrations component. For this reason,
we do not sustain Rejection IV.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–3, 6–9, 13,
16–19
112 Enablement 1–3, 6–9,
13, 16–19
1–3, 6–9,
11–13, 16–
19
101 Eligibility 1–3, 6–9,
11–13, 16–
19

1–3, 6, 7, 9,
11–13, 16,
17, 19
103 Watson, Wenzel 1–3, 6, 7, 9,
11–13, 16,
17, 19
8, 18 103 Watson, Wenzel,
Prance
8, 18
Overall
Outcome
1–3, 6–9,
11–13, 16–
19

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