NAJI, MOHAMMED

Patent Trials and Appeals Board

Jan 13, 2020

12610218 - (D) (P.T.A.B. Jan. 13, 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.
12/610,218 10/30/2009 MOHAMMED NAJI 0910NAJI01520 9962
61618 7590 01/13/2020
Jafari Law Group, Inc.
18201 Von Karman Ave.
Suite 1190
Irvine, CA 92612
EXAMINER
TOTH, KAREN E
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
01/13/2020 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):
djafari@jafarilawgroup.com
nmosqueda@jafarilawgroup.com
sacherman@jafarilawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MOHAMMED NAJI
____________

Appeal 2019-003255
Application 12/610,218
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL J. FITZPATRICK, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the non-final
rejection of claim 29. 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(a). Appellant identifies the inventor, Mohammed Naji, as the
real party in interest. Br. 2.
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THE INVENTION
Appellant’s invention relates to “a medical device, and more
specifically, to a medical device utilized for the communication of medical
data and the reduction of the likelihood of misidentification of medical
patients.” Spec. ¶ 1. Claim 29, reproduced below as the sole claim on
appeal, is illustrative of the subject matter on appeal.
29. A method for patient misidentification avoidance prior to
medical procedures, comprising:
securely attaching, by a medical personnel, a wearable
medical device to a patient prior to a medical procedure,
wherein the wearable medical device comprises a connection
device including a wristband adapted to be wrapped around and
securely attached to the patient and a data storage device
coupled to the wristband;
recording, by the patient onto the wearable medical
device, medical data, wherein recording the medical data
comprises:
providing speech input by the patient via a user
interface of the wearable medical device, the speech
input including a personal message from the patient
consenting to the medical procedure, and information
pertaining to one or more of: an identity of the patient, a
patient’s waiver of liability, a list of the patient’s known
allergies, a medical history of the patient, treatment or
surgical instructions, a pulse rate, a temperature, and
body movement information;
providing, by the wearable medical device via the user
interface, a prompt for a patient authentication in response to
receiving the speech input from the patient;
requesting an output of the medical data, by the medical
personnel subsequent to the patient providing the patient
authentication and prior to the patient undergoing the medical
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procedure, via the user interface of the wearable medical
device;
providing, by the wearable medical device, the output of
the medical data for patient identification confirmation,
including:
playing an audio of the speech input if the request
for the output of the medical data is a request for an
audio output; and
executing a speech-to-text algorithm on the
medical data if the request for the output of the medical
data is a request for a transfer of the medical data to an
external device; and
confirming, by the medical personnel immediately prior
to the patient undergoing the medical procedure, the identity of
the patient and the medical procedure, by reviewing the output
of the medical data including the personal message from the
patient consenting to the medical procedure.

THE REJECTIONS2
The following rejections are before us for review:
I. Claim 29 stands rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
II. Claim 29 stands rejected under 35 U.S.C. § 112, first paragraph,
for failing to comply with the enablement requirement.

2 The Examiner’s objection to an informality of the listing of the claims
(and, specifically, claim 29) is a petitionable, not appealable, matter. Non-
Final Act. 2.
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III. Claim 29 stands rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
IV. Claim 29 stands rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter.

OPINION
Rejections I–III
Appellant does not contest the rejections of claim 29 pursuant to 35
U.S.C. § 112, first and second paragraphs, and therefore, we summarily
affirm Rejections I–III. Br. 5–11; Ans. 3 (“Appellant has not addressed the
rejections under 112 1st and 112 2nd”).

Rejection IV
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Id. (quoting Mayo, 566 U.S. at 77
(alterations in original)). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under that guidance, we first
look to whether the claim recites: (1) any judicial exceptions, including
certain groupings of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a fundamental economic
practice, or mental processes); and (2) additional elements that integrate the
judicial exception into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim: (3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine,
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conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See 2019 Guidance.
Here, the Examiner finds that claim 29 is directed to an abstract idea,
and in particular, a certain method of organizing human activity:
“confirming an identity of a patient and a medical procedure by reviewing
inputted data.” Non-Final Act. 6 (citing Meyer). The Examiner determines
that
[claim 29 does] not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the method calls only for the use of generic
processing and sensing components (medical device,
connection device, wristband) to perform the extrasolution
activities of data gathering (via a “user interface”), storage of
the gathered data (via “data storage device”), and repeating
back an output of the gathered data (device not specified), none
of which add[s] anything “significantly more”, as storage and
playback of data are well-understood, routine, and conventional
activities that are performed by all computing devices and are
claimed herein by generic processing components which do no
more than generally link the use of the abstract idea to a
particular technological environment.
Id. at 6–7. The Examiner also determines that “the bulk of the abstract idea
itself is merely a list of activities performed by a human.” Id. at 7.
Appellant argues that “the recited elements of independent claim 29 –
describing a method for patient misidentification avoidance prior to medical
procedures, by implementation of a novel3 wearable medical device, which

3 Even if we assume that the techniques claimed are “[g]roundbreaking,
innovative, or even brilliant,” that fact, by itself, is not enough for eligibility.
Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591
(2013).

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is wrapped around and securely attached to a patient – does not recite an
abstract idea.” Br. 5. In support, Appellant submits that “the overall method
does not merely include methods of organizing human activity because the
medical wearable device is recited (in claim 29) as executing specific
instructions.” Id. at 9. Appellant also submits that
claim 29 specifically recites ordered steps that occur responsive
to user actions as well as the interactions between the users and
the wearable medical device in a specific sequence prior to an
anticipated medical procedure. When viewing these additional
limitations as an ordered combination with the remaining
limitations, the claim amounts to significantly more than the
allegedly abstract idea of manipulating data. Furthermore, the
limitations of claim 29 are not merely attempting to limit the
invention to a particular technological environment, but rather
recite steps that include users (i.e., the medical personnel and
patient) making use of the technology in order to address the
problem of misidentifications that may occur prior to medical
procedures.
Id. at 10.
Analysis under the Revised Guidance
Step 1: Statutory Category
Claim 29 recites a method, which is one of the enumerated categories
of eligible subject matter pursuant to 35 U.S.C. § 101. Therefore, the issue
before us is whether the claims are directed to a judicial exception without
significantly more.

Step 2A(1): Does claim 29 recite a judicial exception?
As set forth supra, the Examiner determines that claim 29 is directed
to confirming an identity of a patient and a medical procedure by reviewing
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inputted data, which the Examiner determines is a certain method of
organizing human activity that qualifies as an abstract idea.
The Revised Guidance provides that the abstract idea exception
includes, as a grouping, “certain methods of organizing human activity,” for
example, “managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions).” Revised Guidance 52.
We determine that the following limitations of claim 29 recite
managing interactions between a patient and medical personnel, by
following rules and instructions involving a patient’s medical wristband:
securely attaching, by a medical personnel, a wearable
medical device to a patient prior to a medical procedure,
wherein the wearable medical device comprises a connection
device including a wristband adapted to be wrapped around and
securely attached to the patient . . . ;
recording, by the patient onto the wearable medical device,
medical data, wherein recording the medical data comprises:
providing . . . input by the patient . . . of the wearable
medical device, the . . . input including a personal message
from the patient consenting to the medical procedure, and
information pertaining to one or more of: an identify of the
patient, a patient’s waiver of liability, a list of the patient’s
known allergies, a medical history of the patient, treatment or
surgical instructions, a pulse rate, a temperature, and body
movement information;
requesting an output of the medical data, by the medical
personal subsequent to the patient providing [] patient authentication
and prior to the patient undergoing the medical procedure, . . . ;
providing, by the wearable medical device, the output of the
medical data for patient identification confirmation, . . . ; [and]
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confirming, by the medical personnel immediately prior to the
patient undergoing the medical procedure, the identity of the patient
and the medical procedure, by reviewing the output of the medical
data including the personal message from the patient consenting to the
medical procedure.
These claim limitations recite steps that are performed by the patient
or medical personnel using, for example, a patient wristband, for the purpose
of avoiding patient misidentification prior medical procedures, as explained
in the preamble of claim 29. Thus, we determine that claim 29 recites a
certain method of organizing human activity, which qualifies as an abstract
idea, namely, a method to avoid patient misidentification prior to medical
procedures, whereby a medical personnel attaches a patient wristband to a
patient, a patient provides and records onto the wristband patient data, and
the medical personnel requests information from the wristband and confirms
information about the patient.

Step 2A(2): Is the judicial exception integrated into a “practical
application”?
Because the claims recite a patent-ineligible concept, we proceed to
the “practical application” Step 2A, second prong, in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
The Revised Guidance is “designed to more accurately and consistently
identify claims that recite a practical application of a judicial exception []
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and thus are not ‘directed to’ a judicial exception.” Revised Guidance 53.
More particularly, we evaluate the claims to determine whether the claims
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 § 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.
Here, the following limitations of claim 29 are in addition to the
limitations describing a method of organizing human activity discussed
supra:
wherein the wearable medical device comprises . . . a
data storage device coupled to the wristband;
providing speech input . . . via a user interface of
the wearable medical device;
providing, by the wearable medical device via the user
interface, a prompt for a patient authentication in response to
receiving the speech input from the patient; [and]
requesting an output of the medical data . . . via the user
interface of the wearable medical device;
playing an audio of the speech input if [a] request
for the output of the medical data is a request for an
audio output; and
executing a speech-to-text algorithm on the
medical data if the request for the output of the medical
data is a request for a transfer of the medical data to an
external device.

These additional method steps require the wearable medical device to
have a user interface and also a connection device that includes a data
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storage device coupled to the wristband, and further implies that the
wearable medical device has the functionality to record and output speech
input, including by audio play-back or speech-to-text transfer. The
additional limitations of claim 29 further require the method steps of: (i)
providing speech input via a user interface; (ii) providing, via the user
interface, a prompt for a patient authentication in response to receiving the
speech input; and (iii) requesting an output of the medical data via the user
interface, by playing an audio of the speech input if the request is for an
audio output, and executing a speech-to-text algorithm on the medical data if
the request is for a transfer of the medical data to an external device.
According to the Specification, the data storage device, functionality
to record and output speech, including audio play-back or speech-to-text
transfer, and user interface are all generic computing components used to
perform their respective generic computing functions. See, e.g., Spec. ¶ 37
(“[d]ata storage device 12 is designed to receive, store, and transmit or
output patient medical data,” wherein “[i]n exemplary usage of data storage
device 12, a user may input medical data to data storage device 12 via input
port 13, wherein processor 19 . . . may store medical data in memory 20, and
said medical data may be audibly transmitted or spoken to the user through
output port 14”); id. ¶ 39 (“[t]hrough user interface 15, a user may activate
data storage device 12 to audibly output said medical data through output
port 14,” wherein “[i]n an exemplary embodiment, user interface 15 may
comprise a plurality of buttons on the exterior housing of data storage device
12 that, when activated by a user, medical data is ‘read’ out to the user”).
Thus, the computerized patient wristband merely automates the method of
recording, authenticating, displaying, and confirming patient information. In
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other words, Appellant’s argument that the recitation of a “medical wearable
device . . . as executing specific instructions” is insufficient to support the
conclusion that claim 29 recites an integration of the method of organizing
the patient-medical personnel behavior into a practical application. See Br.
9.
In sum, we determine that the limitations of claim 29 fail to recite an
improvement to the functionality of a computer or other technology or
technical field, but rather, employ generic computing components to
automate a method for patient misidentification avoidance prior to medical
procedures. The wearable patient wristband is also not considered a
particular machine for implementing the method of organizing human
activity, but again is merely a wristband incorporating generic computing
components. Nor have we identified a particular transformation of an article
to a different thing or state in the limitations of claim 29 or any other
meaningful limitation that integrates the abstract idea of managing
interactions between a patient and a medical personnel, by following rules
and instructions involving a patient’s medical wristband, into a practical
application.
Thus, we determine that the abstract idea is not integrated into a
practical application and that claim 29 is directed to the judicial exception.

Step 2B: Does claim 29 recite an “inventive concept” or “significantly
more”?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
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determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)). In other words, we look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79. Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
a non-limiting or non-exclusive example, requiring no more than a generic
computer to perform generic computer functions that are well-understood,
routine and conventional activities previously known to the industry. Alice,
573 U.S. at 225 (e.g., using a computer to obtain data, adjust account
balances, and issue automated instructions).
Here, we are not apprised of error in the Examiner’s determination
that the limitations of claim 29 do not amount to significantly more than the
judicial exception because “storage and playback of data are well-
understood, routine, and conventional activities that are performed by all
computing devices,” which in this instance, “do no more than generally link
the use of the abstract idea to a particular technological environment.” Non-
Final Act. 6–7. Notably, locating a computer on a wristband is a well-
known concept. Appellant does not dispute the Examiner’s findings
regarding the conventionality of computing functions of the claimed patient
wristband. Moreover, Appellant’s argument that claim 29 “recites steps that
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include users (i.e. the medical personnel and patient) making use of
technology in order to address the problem of misidentification that may
occur prior to medical procedures,” does not demonstrate that the limitations
of claim 29 amount to significantly more than managing interactions
between a patient and a medical personnel, by following rules and
instructions involving a patient’s wristband. Br. 10.
Accordingly, we sustain the Examiner’s rejection of claim 29 under
35 U.S.C. § 101.
CONCLUSION
In summary:
Claims
Rejected
U.S.C. § Basis/Reference(s) Aff’d Rev’d
29 112, first paragraph Written
Description
29
29 112, first paragraph Enablement 29
29 112, second
paragraph
Indefiniteness 29
29 101 Eligibility 29
Overall
Outcome
29
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