Serverius Petrus Paulus. Pronk et al.

Patent Trials and Appeals Board

Aug 29, 2019

14383171 - (D) (P.T.A.B. Aug. 29, 2019)

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.
14/383,171 09/05/2014 Serverius Petrus Paulus Pronk 2012P00107WOUS 2613
24737 7590 08/29/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
LANE, DANIEL E
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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 SERVERIUS PETRUS PAULUS PRONK,
GUIDO JOSEF MÜSCH, HENNING MAASS,
XAVIER LOUIS MARIE ANTOINE AUBERT, and
ELSA INGER STAPEL MOST
____________

Appeal 2018-007941
Application 14/383,1711
Technology Center 3700
____________

Before LINDA E. HORNER, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1‒18 under 35 U.S.C. § 101 as being directed
to patent ineligible subject matter. Non-Final Act. 6‒14 (Non-Final Office

1 Koninklijkie Philips N.V. (“Appellant”) is the applicant under 37 C.F.R.
§ 1.46 and is identified as the real party in interest. Appeal Br. 2 (Appeal
Brief filed March 19, 2018, “Appeal Br.”).
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Action, dated August 30, 2017, “Non-Final Act.”); see also Ans. 2‒8 (As
further modified in the Examiner’s Answer, dated May 30, 2018, “Ans.”).2
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons explained below, we agree with the Examiner that the
claimed subject matter is not eligible for patenting under 35 U.S.C. § 101.
Thus, we AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter on appeal relates to generating
information about a person’s circadian time cycle for presentation in a
graphical user-interface. Spec. 1:4‒10 (Specification, filed September 5,
2014, “Spec.”). The Specification describes that it was known in the art to
use data about a person’s exposure to light to estimate the circadian phase of
that person using a mathematical model of the human circadian clock. Id. at
1:27‒29. “The phase can be used to calculate the alignment or misalignment
of the circadian rhythm to the external night/day rhythm,” commonly using
as reference points either the wall-clock time of the dim-light melatonin
onset (DLMO) or the wall-clock time at which the person’s core body
temperature (CBT) is minimal, also referred to as the CBT nadir. Id. at
2:24‒29. The Specification explains that information about the temporal
character of the circadian phase of a person is useful to a clinician

2 The Non-Final Office Action also included a rejection of claims 1‒18
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, claims 6, 12, and 14‒18 under 35 U.S.C. § 112,
second paragraph, claims 1, 2, 4‒8, 10‒14, and 16‒18 under 35 U.S.C.
§ 102(e) as anticipated by, or under 35 U.S.C. § 103(a) as unpatentable over,
Gurley (US 2011/0144528 A1; published June 16, 2011) and claims 3, 9,
and 15 under 35 U.S.C. § 103(a) as unpatentable over Gurley. The
Examiner withdrew these rejections in the Examiner’s Answer. Ans. 7‒8.
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prescribing light therapy, but the information does not lend itself well for
daily use by a layperson. Id. at 3:4‒7. The Specification describes that the
prior art disclosed a timepiece for displaying a person’s current circadian
time for continuously calculating and displaying the actual biological time of
day of the person when the person is exposed to clock-altering stimuli, such
as bright light. Id. at 3:12‒22. According to the Specification, this
timepiece had the disadvantage that “the meaning of the biological time as
indicated is still insufficiently intuitive to the user.” Id. at 3:23‒24. “For
example, if, at 1:00 pm wall-clock time, the circadian time is displayed as
2:14 pm, it is not clear what this means other than that circadian time is
ahead of the current wall-clock time.” Id. at 3:24‒26.
The Specification describes that the invention provides ways for
presenting information about a person’s circadian time for “a more intuitive
grasping of the semantic meaning of the circadian time and its usefulness to
the person.” Id. at 4:6‒9. Specifically, the invention determines a specific
wall-clock time coinciding with an occurrence of the specific circadian time,
collects and stores past circadian times representative of respective past
wall-clock times, selects past circadian times that coincide with the specific
wall-clock time, and using these selected past circadian times, determines a
reference circadian time, and determines a difference between the specific
circadian time and the reference circadian time. Id. at 4:10‒29. In one
embodiment, the invention then displays the information about the person’s
circadian time cycle on a one-dimensional scale that comprises a set of
calibrated numerical markings against which a pointer or error bar moves to
enable the person to see a magnitude and polarity of the difference. Id. at
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14:15‒16:22, Figs. 2‒4 (showing examples of displays of the difference
between the current circadian time and the past circadian time(s)).
The invention also collects and stores special past circadian times
(corresponding to occurrence of a circadian event such CBT nadir) and
selects one or more of these special past circadian times that is compatible
with the specific circadian time, determines a special past wall-clock time
for each selected special past circadian time, and using these special past
wall-clock times, determines a reference wall-clock time, and determines a
difference between the reference wall-clock time and the specific wall-clock
time. Id. at 4:29‒5:5. In another embodiment, the invention then displays
the information about the person’s circadian time cycle on a
one-dimensional scale that comprises a set of calibrated numerical markings
against which a pointer or error bar moves to enable the person to see a
magnitude and polarity of the difference. Id. at 16:23‒17:9, Fig. 6 (showing
an example of a display of the difference between the wall-clock time of the
occurrence of the most recent special circadian event and the average of the
past wall-clock times at which the special circadian event occurred in the
past).
Claims 1, 7, and 13 are the independent claims. Claim 1 is
representative of the subject matter on appeal and is reproduced below with
reference letters added in brackets.
1. A method of determining a reference circadian
time and a reference wall-clock time for generating and
displaying information about a person’s circadian time cycle,
the method comprising:
[A] determining, with a circadian engine, a specific
circadian time of the person that is representative of a specific
circadian phase of the person’s circadian time cycle;
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[B] determining, with a clock, a specific wall-clock time
corresponding to an occurrence of the specific circadian time;
[C] storing, with a memory, one or more data items, each
respective one of the one or more data items comprising a past
circadian time of the person and a past wall-clock time
corresponding to the past circadian time,
[D] selecting from the memory, with one or more
physical processors, one or more first individual ones of the one
or more data items, each respective one of the one or more first
individual data items being selected such that a past wall-clock
time for the respective one of the one or more first individual
data items selected from the one or more first individual data
items is the same as the specific wall-clock time;
[E] for each respective one of the one or more first
individual selected data items, determining, with one or more
physical processors, a corresponding past circadian time;
[F] determining, with one or more physical processors, a
reference circadian time from the one or more corresponding
past circadian times, wherein the reference circadian time is
determined based on an average of the one or more
corresponding past circadian times;
[G] generating, with one or more physical processors, a
first contribution to the information based on a difference
between the specific circadian time and the reference circadian
time;
[H] selecting, with one or more physical processors, from
the memory one or more second individual ones of the one or
more data items, each respective one of the one or more second
individual data items being selected such that a past circadian
time for the respective one of the one or more second individual
data items selected from the one or more second individual data
items is the same as the specific circadian time;
[I] for each respective one of the one or more second
individual selected data items, determining a corresponding
past wall-clock time;
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[J] determining, with one or more physical processors, a
reference wall-clock time from the one or more corresponding
past wall-clock time, wherein the reference wall-clock time is
determined based on an average of the one or more
corresponding past wall-clock times;
[K] generating, with one or more physical processors, a
second contribution to the information based on a difference
between the reference wall-clock time and the specific
wall-clock time; and
[L] displaying the information about the person’s
circadian time cycle in the graphical user-interface on a one-
dimensional scale, the one-dimensional scale indicating: (i)
both magnitude and polarity of the difference between the
specific circadian time and the reference circadian time, and/or
(ii) indicating both magnitude and polarity of the difference
between the specific wall-clock time and the reference wall-
clock time.
Appeal Br. 31‒32 (Claims Appendix).
LEGAL PRINCIPLES
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. Pty. Ltd. 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. See Alice, 573 U.S. 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
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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 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, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); 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 187; 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
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commonplace that an application of a law of nature or mathematical formula
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 (quotation marks 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. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[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. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (USPTO Jan. 7, 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) (9th ed. Rev.
08.2017, Jan. 2018)).
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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 are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
ANALYSIS
Claim Grouping
Appellant argues claims 1‒18 as a group. Appeal Br. 8‒21. We
select claim 1 as representative of the group, and claims 2‒18 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Step One: Does Claim 1 Fall within a Statutory Category of § 101?
We first examine whether the claim recites one of the enumerated
statutory classes of subject matter, i.e., process, machine, manufacture, or
composition of matter, eligible for patenting under 35 U.S.C. § 101. Claim
1 is directed to a method, which is one of the statutory classes (i.e., a
process) under 35 U.S.C. § 101.
Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception?
We next look to whether the claim recites any judicial exceptions,
including certain groupings of abstract ideas, i.e., mathematical concepts,
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certain methods of organizing human activity such as a fundamental
economic practice, or mental processes.
Step A of claim 1 recites “determining . . . a specific circadian time of
the person that is representative of a specific circadian phase of the person’s
circadian time cycle.” The Specification describes that this step can be
performed “using a numerical model” as discussed in prior art publications
referenced in the background section. Spec. 4:12‒14. Specifically, the
Specification describes in the background section that “data about the light
exposure can be used to make an estimation of the circadian phase of the
person exposed to the light” and that this “estimation uses a mathematical
model of the human circadian clock” which “comprises a set of differential
equations, derived from the ‘van der Pol’-oscillator.” Id. at 1:27‒2:5; see
also id. at 2:6‒23 (listing background non-patent literature discussing
mathematical modeling of the human circadian system). Based on this
background knowledge, the Specification describes that “[i]t is possible to
compute an estimation of a person’s circadian phase, i.e.[,] an arbitrary, but
well-defined, reference point in the person’s circadian rhythm.” Id. at 2:24‒
25. We understand step A to involve mathematical calculations, i.e., using a
set of known differential equations, to determine a specific circadian time.
Mathematical calculations fall within the abstract idea exception
subgrouping of mathematical concepts. See Guidance, 84 Fed. Reg. at 52.
Thus, step A recites a mathematical concept, which is a judicial exception.
Step B recites “determining . . . a specific wall-clock time
corresponding to an occurrence of the specific circadian time.” The
Specification acknowledges in discussing the background of the invention
that the person’s circadian phase “can be used to calculate the alignment or
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misalignment of the circadian rhythm to the external night/day rhythm.”
Spec. 2:25‒26. “Within the field of physiology, the most common reference
points are the wall-clock time of the DLMO or the wall-clock time at which
the person’s core body temperature (CBT) is minimal, also referred to as the
CBT nadir.” Id. at 2:26‒29. We understand step B to refer to the act of
correlating the wall-clock time to the specific circadian time determined in
step A. This act can be performed in the human mind through observation.
Acts that can be performed in the human mind fall within the abstract idea
exception subgrouping of mental processes. See Guidance, 84 Fed. Reg. at
52. Thus, step B recites a mental process, which is a judicial exception.
Step C recites “storing . . . one or more data items, each respective one
of the one or more data items comprising a past circadian time of the person
and a past wall-clock time corresponding to the past circadian time.” We
understand step C to refer to the act of recording instances of data points that
have occurred in the past, where the data points indicate the past circadian
time and the corresponding past wall-clock time, to create a repository of
data points. This act can be performed through observation in the human
mind or on paper. Acts that can be performed in the human mind fall within
the abstract idea exception subgrouping of mental processes. See Guidance,
84 Fed. Reg. at 52. Thus, step C recites a mental process, which is a judicial
exception.
Step D recites “selecting . . . one or more first individual ones of the
one or more data items, each respective one of the one or more first
individual data items being selected such that a past wall-clock time for the
respective one of the one or more first individual data items selected from
the one or more first individual data items is the same as the specific wall-
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clock time.” We understand step D to refer to the act of choosing data
points from the data points stored in step C, so that the selected data points
have past wall-clock times that match the specific wall-clock time
determined in step B. This act can be performed in the human mind through
observation and evaluation of past wall-clock times as compared to the
specific wall-clock time. Acts that can be performed in the human mind fall
within the abstract idea exception subgrouping of mental processes. See
Guidance, 84 Fed. Reg. at 52. Thus, step D recites a mental process, which
is a judicial exception.
Step E recites “for each respective one of the one or more first
individual selected data items, determining . . . a corresponding past
circadian time.” We understand step E to refer to the act of determining, for
each data point selected in step D, the circadian time for that data point.
This act can be performed in the human mind through observation and
evaluation of historical data points, i.e., by looking up the past circadian
time for each selected past wall-clock time. Acts that can be performed in
the human mind fall within the abstract idea exception subgrouping of
mental processes. See Guidance, 84 Fed. Reg. at 52. Thus, step E recites a
mental process, which is a judicial exception.
Step F of claim 1 recites “determining . . . a reference circadian time
from the one or more corresponding past circadian times, wherein the
reference circadian time is determined based on an average of the one or
more corresponding past circadian times.” The Specification describes that
this step can be performed, for example, by averaging the past circadian
times, possibly using weighting factors. Spec. 5:23‒25; see also id. at 14:5‒
14 (describing deriving a reference circadian time by taking an average of
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past circadian times). Thus, we understand step F as referring to a
mathematical calculation, i.e., averaging a set of numbers, to determine a
reference circadian time. Mathematical calculations fall within the abstract
idea exception subgrouping of mathematical concepts. See Guidance, 84
Fed. Reg. at 52. Thus, step F recites a mathematical concept, which is a
judicial exception. Alternatively, we find that the act of averaging numbers
can be performed through human evaluation in the human mind or on paper.
Acts that can be performed in the human mind fall within the abstract idea
except subgrouping of mental processes. See id. Thus, step F also recites a
mental process, which is a judicial exception.
Step G of claim 1 recites “generating . . . a first contribution to the
information based on a difference between the specific circadian time and
the reference circadian time.” We understand step G to recite a
mathematical calculation, i.e., subtracting the reference circadian time from
the specific circadian time, to determine a difference between these two
times. Mathematical calculations fall within the abstract idea exception
subgrouping of mathematical concepts. See Guidance, 84 Fed. Reg. at 52.
Thus, step G recites a mathematical concept, which is a judicial exception.
Alternatively, we find that the act of subtracting numbers can be performed
through human evaluation in the human mind or on paper. Acts that can be
performed in the human mind fall within the abstract idea except
subgrouping of mental processes. See id. Thus, step G also recites a mental
process, which is a judicial exception.
Step H of claim 1 recites “selecting . . . from the memory one or more
second individual ones of the one or more data items, each respective one of
the one or more second individual data items being selected such that a past
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circadian time for the respective one of the one or more second individual
data items selected from the one or more second individual data items is the
same as the specific circadian time.” We understand step H to refer to the
act of choosing data points from those data points stored in step C so that the
selected data points have circadian times that match the specific circadian
time determined in step B. This act can be performed in the human mind
through observation and evaluation of past circadian times as compared to
the specific circadian time. Acts that can be performed in the human mind
fall within the abstract idea exception subgrouping of mental processes. See
Guidance, 84 Fed. Reg. at 52. Thus, step H recites a mental process, which
is a judicial exception.
Step I recites “for each respective one of the one or more second
individual selected data items, determining a corresponding past wall-clock
time.” We understand step I to refer to the act of determining, for each data
point selected in step H, the wall-clock time for that data point. This act can
be performed in the human mind through observation and evaluation of
historical data points i.e., by looking up the past wall-clock time for each
selected past circadian time. Acts that can be performed in the human mind
fall within the abstract idea exception subgrouping of mental processes. See
Guidance, 84 Fed. Reg. at 52. Thus, step I recites a mental process, which is
a judicial exception.
Step J of claim 1 recites “determining . . . a reference wall-clock time
from the one or more corresponding past wall-clock time, wherein the
reference wall-clock time is determined based on an average of the one or
more corresponding past wall-clock times.” This claim language recites that
the reference wall-clock is determined by an average one or more of the past
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wall-clock times determined in step I. Thus, we understand step J as reciting
a mathematical calculation, i.e., averaging a set of numbers, to determine a
reference wall-clock time. Mathematical calculations fall within the abstract
idea exception subgrouping of mathematical concepts. See Guidance, 84
Fed. Reg. at 52. Thus, step J recites a mathematical concept, which is a
judicial exception. Alternatively, we find that the act of averaging numbers
can be performed through human evaluation in the human mind or on paper.
Acts that can be performed in the human mind fall within the abstract idea
except subgrouping of mental processes. See id. Thus, step J also recites a
mental process, which is a judicial exception.
Step K of claim 1 recites “generating, with one or more physical
processors, a second contribution to the information based on a difference
between the reference wall-clock time and the specific wall-clock time.”
We understand step K to recite a mathematical calculation, i.e., subtracting
the reference wall-clock time from the specific wall-clock time, to determine
a difference between these two times. Mathematical calculations fall within
the abstract idea exception subgrouping of mathematical concepts. See
Guidance, 84 Fed. Reg. at 52. Thus, step K recites a mathematical concept,
which is a judicial exception. Alternatively, we find that the act of
subtracting numbers can be performed through human evaluation in the
human mind or on paper. Acts that can be performed in the human mind fall
within the abstract idea except subgrouping of mental processes. See id.
Thus, step K also recites a mental process, which is a judicial exception.
Step L of claim 1 recites “displaying the information about the
person’s circadian time cycle . . . on a one-dimensional scale, the one-
dimensional scale indicating: (i) both magnitude and polarity of the
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difference between the specific circadian time and the reference circadian
time, and/or (ii) indicating both magnitude and polarity of the difference
between the specific wall-clock time and the reference wall-clock time.”
We understand step L to refer to the act of displaying information in a
particular format. This act can be performed in by a human with pen and
paper through observation and evaluation of the information obtained in the
previous steps. Acts that can be performed by a human with pen and paper
fall within the abstract idea exception subgrouping of mental processes. See
Guidance, 84 Fed. Reg. at 52 n.14. Thus, step L recites a mental process,
which is a judicial exception.
Considered as a whole, steps A through L discussed above, under
their broadest reasonable interpretation, contribute to the process of
displaying information about a person’s circadian time cycle and recite
processes that people can perform mentally or by hand. These steps are
similar to other processes that courts have determined are mental processes.
See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372
(Fed. Cir. 2011) (determining that a claim whose “steps can all be performed
in the human mind” is directed to an unpatentable mental process). This is
true even though claim 1 recites that step A is performed “with a circadian
engine,” step B is performed “with a clock,” steps D through H, J, and K are
performed “with one or more physical processors,” and step L is performed
“in the graphical user-interface.” Id. (holding a method for verifying the
validity of a credit card transaction over the Internet is an abstract idea
capable of being performed in the human mind or by a human using pen and
paper); see also id. at 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
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holding of the Supreme Court in Gottschalk v. Benson.”). “Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.” Versata Dev. Grp. v. SAP America, Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015). See also Guidance, 84 Fed. Reg. at 52 n.14 (“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.”). We therefore determine that claim 1 recites the
abstract ides of mathematical concepts and mental processes, which are
judicial exceptions to patent-eligible subject matter.
Step 2A, Prong Two: Does Claim 1 Recite Additional Elements that
Integrate the Judicial Exceptions into a Practical Application?
Following our Office guidance, having found that claim 1 recites a
judicial exception, we next determine whether the claim recites “additional
elements that integrate the exception into a practical application” (see MPEP
§§ 2106.05(a)–(c), (e)–(h)). See Revised Guidance, 84 Fed. Reg. at 54.
Step A further recites that the specific circadian time is determined
“with a circadian engine.” The Specification describes that “[t]he circadian
engine is known in the art and comprises, e.g., a numerical model as
specified in the publications referred to above.” Id. at 7:16‒18. Figure 1
depicts circadian engine 102 as a black box, and the Specification describes
this element as encompassing hardware, i.e., a generic computer processor,
to perform a known algorithm:
The circadian engine 102 is a module of known functionality,
and implemented in hardware, or in software, or in a
combination of hardware and software. The circadian engine
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102 runs a circadian model of a person. The circadian model
comprises, e.g., the circadian model disclosed in M.A. St
Hilaire et al., 2007, “Addition of a Non-Photic Component to a
Light-Based Mathematical Model of the Human Circadian
Pacemaker[,]” Journal of Theoretical Biology 24 7, pp. 583-
599, mentioned above, that has, for example a numerical
integrator.
Id. at 12:4‒9. Based on this description in Appellant’s Specification, we
agree with the Examiner that the claimed “circadian engine” is a generic
processor for performing the known differential equations used in the
mathematical modeling of the person’s circadian phase. See Spec. 1:27‒
2:25, 4:12‒14; Ans. 7.
Step B further recites that the specific wall-clock time is determined
“with a clock.” The Specification describes that “[t]he feature ‘wall-clock
time’ refers to the time indicated by an ordinary instrument or time-piece
that is used to indicate the time of the day in the time-zone wherein the clock
resides, e.g., the time indicated by the clock of the Big Ben clock tower in
London, UK.” Spec. 3:1‒3. The clock is recited in claim 1 at a high level of
generality, i.e., as a generic clock performing a generic function of being
used to determine time.
Step C further recites that the one or more data items are stored “with
a memory.” Figure 1 depicts memory 106 as a black box, and the
Specification describes that “the memory maintains a history log of
circadian time samples of the person, which have been time-stamped with
the wall-clock times of their occurrences.” Spec. 4:19‒20; see also id. at
7:20‒23 (describing that “[t]he memory is configured for storing one or
more data items.”). The memory is recited at a high level of generality, i.e.,
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as a generic memory capable of storing data items. This step is not specific
as to how the data items are stored in the generic memory.
Steps D through H, J, and K further recite that these steps are
performed “with one or more physical processors.” Figure 1 depicts data
processor 108 as a black box, and the Specification describes that “[t]he data
processor is configured for performing at least one of a first series of steps or
a second series of steps” and that “data processor 108 is a general-purpose
data processor running dedicated control software 109.” Spec. 7:23‒24,
13:15‒16. The one or more physical processors also are recited at a high
level of generality, i.e., as a generic processor capable of performing the
functions of selecting data items, determining corresponding past circadian
time(s), determining a reference circadian time, generating a first
contribution based on a difference between the specific circadian time and
the reference circadian time, selecting additional data items, determining a
reference wall-clock time, and generating a second contribution based on a
difference between the specific wall-clock time and the reference wall-clock
time.
Step L further recites that the information is displayed “in the
graphical user-interface.” Figure 1 depicts graphical user-interface 112 as a
black box that is part of a user-interface sub-system 110, which also is
depicted as a black box.
Thus, the mathematical algorithm and mental process steps of claim 1
are recited as being performed with generic components of a computer
system that do not result in an improvement in the functioning of a computer
or other technology or technical field. The recitations of the generic
structures with which the recited steps are performed are merely instructions
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to use a computer system as a tool to perform the abstract idea. Thus, the
claims do not apply, rely on, or use the mathematical algorithm or mental
process steps in a manner that imposes a meaningful limit on those steps.
Rather, the claim is simply a drafting effort designed to monopolize the
mathematical algorithm and mental process steps of claim 1.
Under step one of the Alice inquiry, “we evaluate the focus of the
claimed advance over the prior art to determine if the character of the claim
as a whole, considered in light of the specification, is directed to excluded
subject matter.” Trading Technologies Int’l, Inc. v. IBG LLC, 921 F.3d
1084, 1092 (Fed. Cir. 2019) (citations and internal quotation marks omitted).
In step L, the graphical user-interface is claimed as displaying the results “on
a one-dimensional scale” that indicates “both magnitude and polarity” of the
result of either step G or step K. Thus, this step is specific as to the type of
information displayed (i.e., either the difference between the specific
circadian time and the reference circadian time or the difference between the
specific wall-clock time and the reference wall-clock time) and the way that
it is displayed (i.e., on a one-dimensional scale that indicates both magnitude
and polarity). This asserted improvement to the manner in which circadian
time information is displayed does not reflect an improvement in the
functioning of a computer, or an improvement to other technology or
technical field. We find the court’s discussion in Trading Technologies
instructive on this point.
The court in Trading Technologies held that method steps directed to
receiving market information and specific ways to display that market
information recited an abstract idea. Id. (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). The court also held the
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claim limitation that recites selecting and moving an order icon to a location
along the price axis, i.e., placing an order based on displayed market
information, is “a fundamental economic practice.” Id. The court stated,
“[t]he fact that the claims add a degree of particularity as to how an order is
placed in this case does not impact our analysis as step one.” Id. at 1092‒93
(citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)).
The court explained that the “computer-based method” recited in the claims
does not render the claims non-abstract because the patent specification
indicates that the claimed GUI is displayed on any computing device. Id. at
1093. “As a general rule, ‘the collection, organization, and display of two
sets of information on a generic display device is abstract.’” Id. (quoting
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018)).
The court decided that the claims did not improve the functioning of the
computer, and instead recited “a purportedly new arrangement of generic
information that assists traders in processing information more quickly.” Id.
at 1093 (holding that the claims are “directed to the abstract idea of graphing
bids and offers to assist a trader to make an order”).
As in Trading Technologies, claim 1 before us on appeal adds
particularity as to how the circadian information is displayed so as to
“present[] the information about a person’s circadian time in a more
ergonomic way” to allow for “a more intuitive grasping of the semantic
meaning of the circadian time and its usefulness to the person.” Spec. 4:6‒9.
Just as the new arrangement of information to assist traders in processing
information more quickly was determined to be abstract in Trading
Technologies, so, too, is the new arrangement of information to assist
persons to readily understand circadian time information likewise abstract.
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Thus, the additional elements do not add meaningful limits to the
mathematical algorithm and mental process steps recited in claim 1. Instead,
the generic computer system limitations are no more than instructions to
apply the judicial exception (i.e., a mental process) using generic computer
elements. See MPEP § 2106.05(f) (“Use of a computer or other machinery
in its ordinary capacity for . . . tasks (e.g., to receive, store, or transmit data)
or simply adding a general purpose computer or computer components after
the fact to an abstract idea . . . does not provide significantly more.”).
In short, the additional elements discussed above: (1) do not improve
the functioning of a computer or other technology; (2) are not applied with
any particular machine; (3) do not effect a transformation of a particular
article to a different state; and (4) are not applied in any meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Consequently, the claimed invention does not integrate the abstract idea into
a “practical application.”
Appellant contends that claim 1 recites “a particular technical solution
that uses specific ‘rules in a process specifically designed to achieve an
improved technological result in conventional industry practice’ (e.g.,
medical industry practice) and, ‘therefore, is not directed to an abstract
idea.’” Id. at 20 (quoting McRO, Inc. v. Bandai Nameco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016)) (identifying specifically steps F, G, J,
K, and L); see also Reply Br. 17 (the claimed invention “improves the
accuracy of circadian time determinations systems using specific
rules/conditions/parameters” and “involves displaying the information about
the person’s circadian time cycle in the graphical user-interface on a
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one-dimensional scale that indicates both magnitude and polarity of the
difference between the specific circadian time and the reference circadian
time” to provide “a more intuitive grasping of the semantic meaning of the
circadian time”) (quoting Spec. 3:23‒28). Appellant analogizes between
claim 1 and the claims found to be patent-eligible in McRO, Thales Visionix
Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), and BASCOM Global
Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).
Appeal Br. 18‒20.
In McRO, a case involving claims directed to computer animation
software, the court explained that at step one “of the Alice test, in
determining the patentability of a method, a court must look to the claims as
an ordered combination, without ignoring the requirements of the individual
steps.” 837 F.3d at 1313. The court in McRO determined that the computer
animation claims were “limited to rules with specific characteristics” and
that “[t]he specific, claimed features of these rules allow for the
improvement realized by the invention.” Id. In order to determine whether
the claimed process raised a preemption concern, the court examined
whether the claims “focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invok[ing] generic processes and machinery.”
Id. at 1314. The court determined that the claims do not simply use a
computer as a tool to automate conventional activity, finding no evidence
that the process previously used by animators is the same as the process
required by the claims. Id. Instead, the court found that “[t]he computer
here is employed to perform a distinct process to automate a task previously
performed by humans.” Id. The court in McRO explained that “it [was] the
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incorporation of the claimed rules, not the use of the computer, that
‘improved [the] existing technological process’ by allowing the automation
of further tasks.” Id. at 1313 (alteration in original) (quoting Alice, 573 U.S.
at 223–24).
The court also determined that “the automation goes beyond merely
organizing existing information into a new form or carrying out a
fundamental economic practice.” Id. at 1315 (citations and internal
quotation marks omitted). Instead, the court found that “the claimed process
uses a combined order of specific rules that renders information into a
specific format that is then used and applied to create desired results: a
sequence of synchronized, animated characters.” Id.
The claims in Thales and Bascom involved improvements to the
functioning of the computer. Thales, 850 F.3d at 1349‒50 (involving use of
inertial sensors in a non-conventional manner to reduce errors in measuring
relative position and orientation of a moving object on a moving reference
frame); and Bascom, 827 F.3d at 1348, 1350 (involving filtering content on
the Internet through “installation of a filtering tool at a specific location,
remote from the end-users, with customizable filtering features specific to
each end user filtering content on the Internet”).
By contrast, claim 1 before us on appeal is directed to a result, a
format for displaying specific circadian time cycle information that itself is
the abstract idea and merely invokes generic processes, i.e., determining a
specific circadian time using a circadian engine, and generic machinery, i.e.,
a clock, a memory, one or more physical processors, and a graphical
user-interface, to achieve the result. The claim does not focus on a specific
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means or method that improves the relevant technology and does not go
beyond merely organizing existing information into a new form.
For these reasons, the additional elements of claim 1 do not integrate
the judicial exception into a practical application. Thus, claim 1 is directed
to an abstract idea, which is a judicial exception to patent eligible subject
matter under 35 U.S.C. § 101.
Step 2B: Does Claim 1 Recite an Inventive Concept?
We next consider whether claim 1 recites any elements, individually
or as an ordered combination, that transform the abstract idea into a patent-
eligible application, e.g., by providing an inventive concept. Alice, 573 U.S.
at 217–18. The additional elements include generic recitations of a clock, a
memory, one or more physical processors, and a graphical user-interface.
Ans. 7 (citing Spec., Fig. 1 (showing “elements as generic black boxes in a
conventional arrangement”). The claim also recites a well-known circadian
engine. Ans. 7 (citing Spec. 7:16‒18). These additional elements do not
provide, either individually or as a combination, improvements to another
technology or technical field or the functioning of the computer itself.
Appellant argues “there is no evidence to show that the claims . . .
simply automate a well-understood, routine, conventional activity.” Appeal
Br. 21 (citing McRO); see also Reply Br. 12 (arguing the rejection “is
improper because the Examiner failed to provide any evidence
demonstrating how the claimed invention as a whole is well-understood,
routine, and conventional”); see also id. at 14 (citing Bascom). Appellant
argues that “the Examiner merely asserted that the additional elements of the
claims are a ‘generic recitation’ of various hardware and software
component[s]’ . . . and, thereafter, disregarded all other claim limitations as
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allegedly being abstract and failed to provide evidence for each claim’s
inventive concept as a whole.” Reply Br. 12. According to Appellant,
“[t]he ‘inventive concept’ may include one or more allegedly abstract
elements that, in combination with the additional elements, form the claim’s
inventive concept.” Id. Appellant argues that “the inventive concept of the
independent claims involves generating a first contribution to the
information based on a difference between a specific circadian time and a
reference circadian time (where the reference circadian time is determined
based on an average of the one or more corresponding past circadian
times), generating a second contribution to the information based on a
difference between a reference wall-clock time and a specific wall-clock
time (where the reference wall-clock time is determined based on an
average of the one or more corresponding past wall-clock time), and
displaying the information about the person’s circadian time cycle in the
graphical user-interface on a one-dimensional scale that indicates both
magnitude and polarity of the difference between the specific circadian time
and the reference circadian time.” Reply Br. 13.
According to guidance, under Step 2B, “examiners should . . .
evaluate the additional elements individually and in combination . . . to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
See Guidance 84 Fed. Reg. at 56 (emphasis added). Thus, the second step of
the inquiry (Step 2B) looks at the additional elements in combination. See,
e.g., Examples accompanying Guidance (Example 37 (claim 3 analysis) and
Example 40 (claim 2 analysis)). See also BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice
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that a claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.”)
The circadian engine, clock, memory, processors, and graphical user-
interface are invoked as conventional tools. The circadian engine is recited
for its conventional function of modeling a circadian phase of a person’s
circadian time cycle. The clock is recited for its conventional function of
being used to determine a wall-clock time. The memory is recited for its
conventional function of storing data. The one or more physical processors
are recited for their conventional function of being used to access,
manipulate, and output data. And the graphical user-interface is recited for
its conventional function of displaying information to a user on a computer
display. Apart from being used to perform the abstract idea itself, these
generic computer system components only serve to perform well-understood
functions (e.g., storing, selecting, analyzing, and outputting data). See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (“the use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter”).
In our view, claim 1 fails to add a specific limitation beyond the
judicial exception that is not ‘well-understood, routine, conventional” in the
field, but instead “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.” See Guidance, 84 Fed. Reg. at 56.
That is, we are not persuaded that claim 1 is directed to a specific application
designed to achieve an improved technological result, as opposed to being
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directed to merely ordinary functionality of the above-recited additional
elements to apply an abstract idea. For the reasons discussed above, we find
no element or combination of elements recited in claim 1 that contains any
“inventive concept” or adds anything “significantly more” to transform the
abstract concept into a patent-eligible application. See Alice, 573 U.S. at
221.
For these reasons, we find no error in the Examiner’s rejection of
claim 1, and claims 2‒18 falling therewith, under 35 U.S.C. § 101.
DECISION
The decision of the Examiner rejecting claims 1‒18 is affirmed.
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