PHILIPS MEDIZIN SYSTEME BÕBLINGEN GMBH

Patent Trials and Appeals Board

Jul 14, 2021

2021000035 (P.T.A.B. Jul. 14, 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.
14/761,649 07/17/2015 Reinhold Knoll 2013P02524WOUS 7408
24737 7590 07/14/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
AGAHI, PUYA
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
07/14/2021 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):
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 REINHOLD KNOLL and ULRICH PFEIFFER
Appeal 2021-000035
Application 14/761,649
Technology Center 3700
Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
WILLIAM A. CAPP, Administrative Patent Judges.

HOELTER, 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 1–20 as directed to a judicial exception
to subject matter eligibility under 35 U.S.C. § 101. Appeal Br. 1. 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 real party in interest as “PHILIPS
MEDIZIN SYSTEME BOBLINGEN GMBH.” Appeal Br. iii.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a method of approximating a
patient’s pulse wave based on non-invasive blood pressure measurement.”
Spec. 1:14–15. Method claims 1 and 18, non-transitory computer-readable
medium claim 13, and system claim 14, are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of approximating a patient's pulse wave based
on non-invasive blood pressure measurement, comprising the
following steps:
(a) receiving from a pressure cuff a sensor signal
representing non-invasively measured sequence n= 1...N of pulse
curves pulsen_measured(t) of the patient, thereby applying a non-
constant clamp pressure clampn(t) with a blood pressure
measurement device;
(b) weighting the measured pulse curves pulsen_measured(t)
using a weighting function to obtain weighted pulse curves
pulsen_weighted(t), wherein the non-constant clamp pressure
clampn(t) is an input parameter for determining the weighting
function;
(c) adding up the weighted pulse curves pulsen_weighted(t) to
obtain pulse wave pulseapprax(t) approximating a shape and an
amplitude of the patent's actual pulse wave;
(d) repeating steps (b) and (c) with a revised weighting
function;
generating an arterial blood pressure using the pulse wave
pulseapprax(t) wherein parts of the weighted pulse curves
pulsen_weighted(t) equal a predetermined percentage of the sensor
signal from the pressure cuff indicating the arterial blood
pressure; and
outputting the patient's actual pulse wave for analysis.

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ANALYSIS
Appellant argues claims 1–20 together. See Appeal Br. 1–15. We
select claim 1 for review with the remaining claims (i.e., claims 2–20)
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Appellant discusses the procedures to be followed when addressing a
rejection under 35 U.S.C. § 101. See Appeal Br. 2–12. Section 101 of the
Patent Act provides that “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof” is patent eligible. 35 U.S.C. § 101. Claim 1 falls within the literal
scope of this provision because it recites a method. See also Final Act. 2.
The Supreme Court, however, has long recognized an implicit
exception to this section: “Laws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework
(referenced herein as Step 2A and Step 2B). The framework requires, first
(Step 2A), a consideration as to whether the claim is “directed to one of
those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, then, second
(Step 2B), an examination of “the elements of each claim both individually
and ‘as an ordered combination’ [is undertaken] to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine
the claims for an “inventive concept,” i.e., “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
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significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
In addition, the PTO has published revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “2019 Eligibility
Guidance”).2 Regarding Step 2A, in order to decide whether a claim is
“directed to” an abstract idea, we are to evaluate whether the claim (a)
recites an abstract idea grouping which is listed in the guidance (referred to
as Step 2A, Prong 1) and (b) fails to integrate the recited abstract idea into a
practical application (referred to as Step 2A, Prong 2). See 2019 Eligibility
Guidance, 84 Fed. Reg. at 50. The groupings of abstract ideas listed in the
guidance for purposes of Step 2A, Prong 1 include, for example:
“[m]athematical concepts,” “[c]ertain methods of organizing human
activity,” and “[m]ental processes.” 2019 Eligibility Guidance, 84 Fed. Reg.
at 52.
As noted above, in the event the claim is “directed to” an abstract idea
(Step 2A), we then are instructed to determine whether the claim recites an
inventive concept (Step 2B). The 2019 Guidance explains that, when
making this Step 2B determination, we should consider whether the
additional claim elements add “a specific limitation or combination of
limitations that are not [a] well-understood, routine, conventional activity in
the field” or, stated another way, whether the claim element “simply appends

2 An update to the 2019 Eligibility Guidance issued in October 2019
(“October 2019 Update,” available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf).
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well-understood, routine, conventional activities previously known to the
industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
In undertaking the analysis required for Step 2A, Prong 1, the
Examiner is to (a) identify specific limitations in the claim (individually and
as a whole) and (b) determine whether the identified limitations fall within
one of the subject matter groupings identified in Section I of the 2019
Eligibility Guidance. See 2019 Eligibility Guidance, 84 Fed. Reg. at 54.
Appellant concurs on this point (see Appeal Br. 5). In the matter before us,
the Examiner has identified certain limitations of claim 1 by underlining
them thereby satisfying Step 2A, Prong 1, section (a) above. See Final Act.
2–3. Regarding Step 2A, Prong 1, section (b) above, the Examiner states,
“[t]he limitations underlined above . . . when considered individually and as
a whole, fall within the ‘Mathematical Calculations’ grouping of abstract
ideas.” Final Act. 3; see also Ans. 5 (“recites a judicial exception
(mathematical calculations set from in Steps (b) – (d) in claim 1)”). Some of
the limitations underlined by the Examiner include “weighting the measured
pulse curves,” “adding up the weighted pulse curves,” “repeating” these
steps, and “generating an arterial blood pressure using the pulse wave.”
Final Act. 2–3; see also Ans. 5.
Appellant replicates that portion of the 2019 Eligibility Guidance
which elaborates on the extent of the abstract group “Mathematical
concepts.” See Appeal Br. 5; see also 2019 Eligibility Guidance, 84 Fed.
Reg. at 52. Appellant also acknowledges that the Examiner “alleges that the
claims are directed to” this judicial exception. See Appeal Br. 12. However,
despite the above, Appellant contends, “the analysis that follows fails to
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consider the claim as a whole but rather parses the claim into elements.”
Appeal Br. 12 (referencing “Office Action at pp. 2–3”); see also Reply Br. 3.
We disagree with Appellant’s assessment of the Examiner’s actions.
The Examiner clearly identified (by underlining) those limitations of claim 1
which were deemed to fall within the indicated group required for a Step 2A,
Prong 1 analysis as set forth in the 2019 Eligibility Guidance (see 2019
Eligibility Guidance, 84 Fed. Reg. at 54) and as per Appellant’s Appeal
Brief. See Final Act. 2–3; Ans. 5; Appeal Br. 5. The Examiner further
expressly stated that these limitations “when considered individually and as
a whole” meet the requirement of Step 2A, Prong 1. Final Act. 3.
Appellant’s subsequent discussion of the “improved medical treatment”
claim 1 provides (see Appeal Br. 12–13) is not persuasive the Examiner’s
identification and grouping is incorrect, nor do Appellant’s statements
undermine or discredit the Examiner’s required actions. See, e.g., Appeal
Br. 5.
Appellant further contends that “the claims do not solely encompass
any equation and are not ‘directed to’ simply a mathematical equation.”
Appeal Br. 13. Here, Appellant appears to be requiring limitations directed
to the group “Mathematical concepts” to also encompass an actual
equation.3
Appellant’s indication that “Mathematical concepts” require recitation
of an actual equation is not an adequate reading of the 2019 Eligibility

3 Of interest, however, is Appellant’s acknowledgement that “Appellant
respectfully submits that although steps (a)–(d) include mathematical
equations, these mathematical equations form an independent part of the
claim.” Reply Br. 2.
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Guidance. The group “Mathematical concepts” is expressed as
encompassing “mathematical relationships, mathematical formulas or
equations, mathematical calculations.” 2019 Eligibility Guidance, 84 Fed.
Reg. at 52; see also Appeal Br. 5. Regarding the first cited “mathematical
relationship,” we are informed that “[a] mathematical relationship is a
relationship between variables or numbers.” October 2019 Update: Subject
Matter Eligibility, II(A)(i). We are also instructed that “[a] claim that recites
a mathematical calculation will be considered as falling within the
‘mathematical concepts’ grouping.” October 2019 Update: Subject Matter
Eligibility, II(A)(iii). To be clear, “[a] mathematical calculation is a
mathematical operation . . . or an act of calculating using mathematical
methods to determine a variable or number, e.g., performing an arithmetic
operation.” Id.
In the present case, claim 1 recites (and the Examiner underlined) the
limitations directed to “weighting,” “adding up,” and “repeating” these
steps. It is not explained by Appellant how these identified limitations fail
to be directed to a “relationship between variables or numbers” nor how they
fail to be directed to “a mathematical operation . . . or an act of calculating.”
October 2019 Update: Subject Matter Eligibility, II(A)(i) and (iii). Our
reviewing court has stated, “[a]s many cases make clear, even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018) (quoting Elec. Power Grp, LLC v. Alstom S.A., 830
F.3d 1350, 1353–56 (Fed. Cir. 2016)). In particular, and upon modifying
SAP above, our reviewing court stated that a “series of mathematical
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calculations based on selected information” is directed to an abstract idea.4
SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018);
see also Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d
1344, 1350 (Fed. Cir. 2014) (holding that claims to a “process of organizing
information through mathematical correlations” are directed to an abstract
idea).
In view of the above, Appellant’s contentions regarding the recitation
of an equation in the claim, or that claim 1 is “not ‘directed to’ simply a
mathematical equation” (Appeal Br. 12) is not persuasive of Examiner error.
We, instead, agree with the Examiner that the underlined limitations of
claim 1, based on the above, “fall within the ‘Mathematical Calculations’
grouping of abstract ideas.” Final Act. 3; see also Ans. 5.
Next, and as per Step 2A, Prong 2 noted above, we are to investigate
whether claim 1 integrates the recited abstract idea into a practical
application. Here, the Examiner addressed such “additional elements” as
receipt of a signal from a blood pressure cuff, the application of a non-
constant pressure by the cuff, and outputting results for further analysis. See
Final Act. 3. The Examiner deemed these “additional elements” as
amounting “to no more than obtaining data and outputting the result of the
mathematical calculation.” Final Act. 3. The Examiner concluded that
“these additional elements do not integrate the abstract idea into a practical
application” because these “additional elements” “do[] not impose any

4 In the modified decision, the court characterized the claims in that case as
being directed to the abstract idea of “selecting certain information,
analyzing it using mathematical techniques, and reporting or displaying the
results of the analysis.” SAP, 898 F.3d at 1167. Appellant does not explain
how the underlined limitations of claim 1 differs in this respect.
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meaningful limits on practicing the abstract idea.” Final Act. 3; see also
Ans. 6 (“the judicial exception alone cannot provide the improvement”).
Appellant contends that “[t]he claimed subject matter focuses on
enhancing the treatment of disease.” Appeal Br. 13 (referencing 2019
Eligibility Guidance, 84 Fed. Reg. at 55); see also Reply Br. 4. This portion
of the Guidance referenced by Appellant identifies, in the context of
Step 2A, certain “exemplary considerations [that] are indicative that an
additional element . . . may have integrated the exception into a practical
application.” 2019 Eligibility Guidance, 84 Fed. Reg. at 55. One such
consideration (alluded to by Appellant above) is, “an additional element that
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition.” 2019 Eligibility
Guidance, 84 Fed. Reg. at 55. However, in the present situation, no disease,
treatment, or prophylaxis is identified or addressed in claim 1, only the
limitation that the output is “for analysis.” See Ans. 7 (“the claimed
invention is not directed to a particular treatment or prophylaxis for a disease
or medical condition”). In other words, as per the Examiner, Appellant’s
argument “is not commensurate in scope with that [which] is claimed.”
Ans. 7.
Appellant also contends that claim 1 recites language “which is more
than a data gathering activity because the determined data is used to analyze
the actual pulse of a given patient.” Reply Br. 3. Appellant’s discussion to
the effect that “an improved approximation of the patient’s pulse wave is
generated” and that “[t]he exact shape of the patient’s pulse wave provides
important information” (Appeal Br. 13; see also Reply Br. 5, 6) does not
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persuade us that the Examiner’s findings are in error.5 In other words,
discussing the receipt of certain patient data, and manipulating such data to
render it more useful for further “analysis” (as claimed) is rather generic in
nature. We have also been instructed that even if the field of use has been
narrowed, “merely limiting the field of use of the abstract idea to a particular
existing technological environment does not render the claims any less
abstract.” Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1259
(Fed. Cir. 2016).
Regardless of how helpful the output of claim 1 may be, based on the
above, we are not persuaded that claim 1 “recite[s] additional elements that
integrates it into a practical application beyond the judicial exception.”
Appeal Br. 14. In short, Appellant’s contentions to the contrary are not
persuasive of Examiner error on this point. See also Final Act. 3; Ans. 7.
Appellant further contends, “the recitations of the independent claims
improve the operation of a computer or computing device and therefore are
patent eligible under Step 2A Prong II.” Reply Br. 6. We disagree with
Appellant on this point because of our reviewing court’s discussion of
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016).
To be clear, when addressing Enfish, our reviewing court stated,

5 Appellant contends, “the Examiner should consider the function of the
claim . . . and how it recites significantly more than the abstract idea.”
Reply Br. 6 (italics added). We, instead, focus on the actual claim language,
not its avowed “function.” For example, we have been instructed in other
scenarios that “[t]he U.S. is strictly an examination country and the main
purpose of the examination, to which every application is subjected, is to try
to make sure that what each claim defines is patentable. To coin a phrase,
the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998).
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In Enfish, for instance, the court determined that claims related
to a database architecture that used a new, self-referential
logical table were nonabstract because they focused on “an
improvement to computer functionality itself, not on economic
or other tasks for which a computer is used in its ordinary
capacity.”
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1304–5 (Fed.
Cir. 2018). In other words, it was the improvement in the computer
functionality itself that rendered the claims in Enfish nonabstract; that is,
claims that focus on economic or other tasks employing a computer in its
ordinary capacity were not sufficient to render such claims nonabstract.
Here, Appellant does not explain how claim 1 improves “computer
functionality itself” rather than perhaps focusing “on economic or other
tasks for which a computer is used in its ordinary capacity.” Enfish, 822
F.3d at 1336.
In summation, we are not persuaded the Examiner erred in the
Step 2A analysis. Thus, having determined that claim 1 is an abstract idea
under both prongs of Step 2A, we are to next investigate this claim in
accordance with Step 2B, i.e., does claim 1 recite an inventive concept. See
above.
Here, the Examiner states, “[m]erely obtaining data and outputting the
result of a mathematical calculation cannot provide an inventive concept.”
Final Act. 3–4. Appellant disagrees stating that claim 1 “provides a clinician
with the shape and amplitude of a patient’s actual pulse wave which can be
used to determine the health status of the patient.” Appeal Br. 14. Appellant
continues to extoll the virtues of the claimed method stating, the output
“ha[s] significant diagnostic value” and noting that prior methods “do not
measure the amplitude and shape accurately across all pulses.” Appeal
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Br. 14. As such, and as per Appellant, “the above-described method of
approximating the pulse wave is unconventional” and that “[t]his is apparent
by the novel steps of the claims.” Appeal Br. 15.
Appellant’s contentions above appear to be directed more to a
rejection based on prior art (i.e., novelty, non-obviousness) rather than one
addressing patent eligibility, which is presently before us. Even Appellant’s
contention that “the features of the present application are technological
improvements” falls short. Appeal Br. 15. This is because, presuming
Appellant’s method achieves a more accurate pulse wave output, claim 1
still recites a method by which data is received, given weight, added
together, and repeated to ultimately generate other (albeit more accurate)
data “for analysis.” In other words, Appellant appears to be manipulating
raw data into presumably better data, but data nevertheless. On this point,
the “Examiner maintains that an alleged ‘better’ calculation does not equate
to significantly more than an abstract idea.” Ans. 8. We agree with the
Examiner. As such, we are not persuaded the Examiner erred in stating (as
noted above), “[m]erely obtaining data and outputting the result of a
mathematical calculation cannot provide an inventive concept.” Final
Act. 3–4.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1–20 as, in the Examiner’s words, “directed
to an abstract idea without significantly more.” Final Act. 2.
CONCLUSION
The Examiner’s rejection is affirmed.

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DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
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