TEZUKA, Shinji

Patent Trials and Appeals Board

Feb 24, 2020

12888709 - (D) (P.T.A.B. Feb. 24, 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.
12/888,709 09/23/2010 Shinji TEZUKA Q120963 4944
65565 7590 02/24/2020
SUGHRUE-265550
2000 PENNSYLVANIA AVE. NW
SUITE 900
WASHINGTON, DC 20006
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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):
PPROCESSING@SUGHRUE.COM
SUGHRUE265550@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHINJI TEZUKA
____________

Appeal 2018-004965
Application 12/888,709
Technology Center 3600
____________

Before BRUCE T. WIEDER, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1 and 4–11, which are all the
pending claims.2 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. The Appellant identifies the real party in interest as Nihon
Kohden Corporation. Appeal Br. 2.
2 We note that the Appellant waived the oral hearing. See Waiver of
Hearing, Jan. 27, 2020.
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CLAIMED SUBJECT MATTER
The Appellant’s invention
relates to a biological information monitor that includes a display
portion in which biological information obtained by processing
a biological signal detected from a living body is displayed, and
that is provided with a timer displaying function in which the
reason of temporary room leaving of the patient, the return time,
and the like are displayed on a display screen.
Spec. 1, ll. 5–11.
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal, and is reproduced below (with
added paragraphing and bracketing for reference):
1. A biological information monitor which receives,
directly or via a network, biological information of a patient
which is measured by a unit attached to the patient, the biological
information monitor comprising:
[(a)] a display portion on which the biological information
is displayed; and
[(b)] a controlling portion configured to:
[(b1)] control the display of the biological
information of the patient,
[(b2)] receive a signal that indicates measurement
of the biological information of the patient is stopped, a
period of time for restarting the measurement of the
biological information of the patient, and a reason that the
measurement of the biological information of the patient
is stopped, and
[(b3)] control the display portion to suspend display
of the biological information and display the period of
time for restarting the measurement and the reason, in
response to receiving the signal; and
[(c)] a first inputting portion displayed on the display
portion in which the reason and the period of time for restarting
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the measurement are input, wherein the first inputting portion
comprises a graphical user interface comprising a first plurality
of user interface (UI) elements corresponding to a plurality of
reasons and a second plurality of UI elements corresponding to
periods of time for restarting the measurement,
[(d)] wherein the controlling portion is configured to
receive selection of the reason corresponding to a UI element
from among the first plurality of UI elements and receive
selection of the period of time for restarting the measurement
corresponding to a UI element from among the second plurality
of UI elements,
[(e)] wherein an elapsed time period after the period of
time for restarting the measurement is input through the first
inputting portion is displayed on the display portion, and [sic]
[(f)] a button displayed on the display portion that, when
pressed, causes the signal to be sent to the controlling portion;
and
[(g)] wherein the controlling portion is configured to
control the display portion so that biological information
substantially covers the entirety of the display portion, and the
controlling portion is further configured to compress a
representation of the biological information so that the display
simultaneously displays both [sic] the biological information, the
first plurality of UI elements, and the second plurality of UI
elements.
Appeal Br. 34–35 (Claims App.).
THE REJECTION
Claims 1 and 4–11 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more.

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OPINION
35 U.S.C. § 101 Framework
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. 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. 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
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, 67 (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
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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 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 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 (internal 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.
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In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); 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)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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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, under
Step 2B, 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, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Claims 1 and 4–10
Step One of the Mayo/Alice Framework
Reciting a Judicial Exception
Under the first step of the Mayo/Alice framework and Step 2A,
Prong 1 of the 2019 Revised Guidelines, 84 Fed. Reg. at 54, the Examiner
determines that claim 1
recite[s] the abstract idea of: controlling a display to suspend the
display of biological information, and to display the period of
time for restarting the measurement of biological information
and the reason, related to a patient temporarily leaving their
room, in response to entry of the period of time and the reason in
a GUI and pressing a button which sends a signal that includes
the entered information.
Final Act. 3 (emphases omitted). The Examiner determines that “[t]he plain
focus of the claims when considered as a whole, is on ‘an idea of itself’ – a
mental process as in Cybersource.” Id. When viewed through the lens of
the 2019 Revised Guidance, the Examiner’s analysis depicts the claimed
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subject matter as a “[m]ental process[]—[a] concept[] performed in the
human mind (including an observation, evaluation, judgment, opinion).”
2019 Revised Guidance, 84 Fed. Reg. at 52 (footnote omitted).
The Appellant contends that the Examiner’s “characterization is
devoid of the structural elements present in claim 1, such as the biological
information monitor, the display, and the controlling portion.” Appeal
Br. 14. The Appellant argues that
claim 1 is directed to a biological information monitor with a
controller and a display that receives biological information from
a sensor, controls the display to display the biological
information, and controls the display to suspend the display of
biological information and instead display a reason for the
suspension, a time period by which the patient should return to
bed, and an overtime period if the patient is overdue for returning
to bed.
Id. at 13. The Appellant characterizes the claim as “describ[ing] a
new and useful biological information monitor.” Id. at 15.
Before determining whether the claim at issue is directed to an
abstract idea, we first determine to what the claim is directed. The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, and the claim language, that the
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focus of claim 1 is on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification provides for a “BIOLOGICAL INFORMATION
MONITOR HAVING FUNCTION OF DISPLAYING TEMPORARY
ROOM LEAVING TIMER.” Spec., Title. In the “Background of the
Invention” section, the Specification discusses that by nurses or helpers
patrolling rooms to check whether patients are in their beds, “the nursing
home or the hospital know sleeping, wandering, and the like of hospital
patients[;] however it is difficult to monitor all of elderly persons or hospital
patients.” Id. at 2, ll. 16–22. Prior art monitors can display information of
eight patients, but when only four patients’ information is displayed, the
person monitoring the patients does not know whether information for the
other four patients is not shown because they “temporarily leave respective
beds because of a reason such as inspection (this state is referred to as
temporary room leaving), or the biological information cannot be displayed
because of drop off of measuring means for measuring biological
information from the patients or failures of measuring apparatuses.” Id. at 3,
l. 23–4, l. 8. It is further “impossible to know when the patients return to the
beds, and hence there is a possibility that the medical person forgets to
restart the measurement,” whereas if the times when the patients return to
the beds are known, “the medical person can perform a work in preparation
for returning.” Id. at 4, ll. 12–17. Thus, the invention aims to overcome one
or more of these problems by
provid[ing] a biological information monitor having a function
of displaying a temporary room leaving timer which, when a
patient temporarily leaves the room because of a reason such as
inspection, displays the reason of the temporary room leaving
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accompanied by stoppage of measurement of biological
information of the patient, the period for leaving the room, the
scheduled time for restarting the measurement, and present
progress information, in a display area for the patient, thereby
preventing restart of measurement of biological information
when the patient returns to the room (enters the bed), from being
forgotten.
Id. at 4, l. 20–5, l. 5.
Consistent with the disclosure, claim 1 recites “[a] biological
information monitor which receives, directly or via a network, biological
information of a patient which is measured by a unit attached to the patient,
the biological information monitor comprising:” (a) a display portion to
display information; and (b) a controlling portion configured to perform
certain functions. Appeal Br. 34 (Claims App.). The display portion
displays: (d) a first inputting portion comprising graphical user interface
(“UI”) elements corresponding to data of a plurality of reasons and of
periods of time; (e) data of “an elapsed time period after the period of time
for restarting the measurement is input through the first inputting portion”;
and (f) a button that, when pressed, causes a measurement signal to be sent
to the controlling portion. Id. at 34–35. The functions the controlling
portion are configured to perform comprise: (b1) “control[ling] the display
of the biological information of the patient”; (b2) receiving a signal
indicating: the measurement of the patient’s information is stopped, a period
of time for restarting the measurement, and a reason the measurement is
stopped; (b3) in response to receiving the signal, “control[ling] the display
portion to suspend display of the biological information and display the
period of time for restarting the measurement and the reason”; (d) receiving
selection of the reason corresponding to the UI elements of reasons and
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time; and (g) “control[ling] the display portion so that biological information
substantially covers the entirety of the display portion, and . . .
compress[ing] a representation of the biological information so that the
display simultaneously displays both the biological information” and the
plurality of UI elements. Id. The limitations are recited functionally without
any implementation details.
When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 1 recite an apparatus for displaying
and suspending display of biological and time information,5 which is an
abstract idea of a mental practice of collecting, organizing, and displaying
information. The courts have held similar concepts to be abstract. For
example, our reviewing court has held abstract the concepts of “graphing
bids and offers to assist a trader to make an order” in Trading Techs. Int’l,
Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (“Trading Techs. I”),
“providing information to traders in a way that helps them process
information more quickly” in Trading Techs. Int’l, Inc. v. IBG LLC, 921
F.3d 1378, 1384 (Fed. Cir. 2019) (“Trading Techs. II”), “providing someone
an additional set of information without disrupting the ongoing provision of
an initial set of information” in Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1344–45 (Fed. Cir. 2018), “collecting, analyzing, manipulating,
and displaying data” in Univ. of Florida Research Foundation, Inc. v.
General Eletric Co., 916 F.3d 1363, 1368 (Fed. Cir. 2019), and “configuring

5 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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and transmitting hospitality menu related information using a system that is
capable of synchronous communications and automatic formatting” in
Ameranth, Inc. v. Domino's Pizza, LLC, No. 2019-1141, 2019 WL 5681315,
at *5 (Fed. Cir. Nov. 1, 2019) (non-precedential).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, in determining whether the claim is directed to this abstract
idea, we next consider whether the claim recites additional elements that
integrate the judicial exception into a practical application
Integration into a Practical Application
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to whether the claim “appl[ies], rel[ies] on, or use[s] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception,” i.e., “integrates a judicial exception
into a practical application.” In particular, we look to see if, for example,
any additional elements of the claim (i) reflect an improvement in the
functioning of a computer or to another technological field, (ii) implement
the judicial exception with, or by use of, a particular machine, (iii) effect a
transformation or reduction of a particular article to a different state or thing,
or (iv) use the judicial exception in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Here, the additional elements recited in claim 1 beyond the abstract
idea are a biological monitor with a display portion and a controlling portion
— elements that, as the Examiner observes (Final Act. 6; Ans. 7, 10), are
described in the Specification as generic computing elements. See, e.g.,
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Spec. 5, ll. 6–19, Fig. 5. We find no indication in the Specification, nor does
the Appellant direct us to any indication, that the operations recited in
claim 1 require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, invoke any asserted
inventive programming, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”). Rather, the Appellant simply describes a monitor with
generic display and controlling portions.
The Specification provides no specific description of the technical
elements of the monitor, instead predominately describing the monitor’s
elements in purely functional terms. See Univ. of Fla., 916 at 1368 (citing In
re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016)).
Limitations (b2), (d), and (f) of receiving and transmitting data are extra-
solution activities (see In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en
banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593). The limitations of
controlling the display to display information and to suspend the display of
information, limitations (b1) and (b3) are recited functionally without
technical or technological details on how, i.e., by what algorithm or on what
basis/method, the controller controls the display or suspension of display of
information, and as such can comprise displaying information, a post-
solution activity of outputting of the results of analyses or organization (see
id.; Bilski, 561 U.S. at 610–11 (“Flook stands for the proposition that the
prohibition against patenting abstract ideas ‘cannot be circumvented by
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attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant postsolution activity.”’) (quoting
Diehr, 450 U.S. at 191–92). Similarly, limitations (e), (f), and (g) of
displaying information are recited functionally without technical or
technological details on how, i.e., by what algorithm or on what
basis/method, the display is compressed, and as such comprise some display
of resulting data, a post-solution activity.
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology and/or functionality to the claimed
invention or that otherwise indicates that the claimed invention integrates the
abstract idea into a “practical application,” as that phrase is used in the
2019 Revised Guidance.
The Appellant contends that claim 1: (1) “describe[s] a solution to a
specific problem” (Appeal Br. 19 (citing Thales Visionix Inc. United States,
850 F.3d 1343 (Fed. Cir. 2017)); see also Reply Br. 11–12); (2) “is directed
to a specific improvement in patient monitoring that is useful in healthcare
facilities that treat multiple patients” (Appeal Br. 22 (citing McRO v. Bandai
Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016)); see also Reply Br. 12–
13); and (3) “describe[s] a solution to a particular technical problem”
(Appeal Br. 27 (citing DDR Holdings); see also Reply Br. 9, 15–16). When
viewed through the lens of the 2019 Revised Guidance, the Appellant
contends that under Prong 2, the elements of the claim integrate the abstract
idea into a practical application because the combination of the elements
“reflects an improvement in the functioning of a computer, or an
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improvement to other technology or technical field.” 84 Fed. Reg. at 55
(citing DDR Holdings, 773 F.3d at 1258–59). We disagree.
In DDR Holdings, the Federal Circuit determined that the claims
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host’s website after clicking on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit, thus, held that the claims were directed to statutory
subject matter because they claim a solution “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Id. The court cautioned that “not all claims
purporting to address Internet-centric challenges are eligible for patent.” Id.
at 1258. And the court contrasted the claims to those at issue in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), in that, in
DDR Holdings, the computer network was not operating in its “normal,
expected manner” and the claims did not “recite an invention that is . . .
merely the routine or conventional use of the Internet.” Id. at 1258–59.
Here, the Appellant states that the invention addresses the problem of
“it [being] difficult and time-consuming for healthcare providers to keep
track of multiple patients, some of whom are in bed and some of whom are
out of bed for appropriate reasons, and some of whom may be missing or
improperly located.” Appeal Br. 27. However, the Appellant does not
address how this problem specifically arises in the realm of computer
networks. Rather, the Specification discusses that this problem existed prior
to the Internet and existed generally in nursing homes, hospitals, or the like
where a nurse or helper patrols rooms to check on patients. See Spec. 2,
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ll. 16–24. These are problems regarding patient monitoring and care that
existed prior to the Internet, and do not arise from or are specifically related
to computer technology.
Further, the purported solution of “a biological information monitor as
claimed [that] permits healthcare providers to conduct fewer patrols and
determine when specific patients are out of bed for an acceptable reason, and
at what time each specific patient should return” (Appeal Br. 27–28) is not
rooted in computer technology. The purported solution provides the
advantages for healthcare providers “to more efficiently track the location
and status of multiple patients in a facility,” to “spend less time patrolling
and investigating the status of individual patients,” “to determine why
patients are not located in their beds,” and to be able to “readily determine
that a patient who is not in bed is not missing or improperly located.” Id.
at 19–20. But, the purported solution requires the use of a generic monitor
comprising generic display and controlling portions. See supra.
The Appellant does not, and cannot, claim to have invented the use of
the monitor to receive, organize, and display data. The “focus” of the claim
is not “on the specific asserted improvement in computer capabilities”
(Enfish, 822 F.3d at 1336), but rather on using the monitor as a tool to
implement the abstract idea in the particular field of patient monitoring. See
Appeal Br. 22. That the claim recites structural elements of a monitor with
display and controlling elements (see id. at 20, 28), limiting the invention to
a computer environment, does not make the claim less abstract. See Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016)
(“The Supreme Court and [the Federal Circuit] have repeatedly made clear
that merely limiting the field of use of the abstract idea to a particular
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existing technological environment does not render the claims any less
abstract.”). Any improvement “in patient monitoring that is useful in
healthcare facilities that treat multiple patients” (Appeal Br. 22) lies in the
process itself. There are no directions on how the controlling of the display
is performed such that there would be an improvement to any technological
element. Rather, the improvement is in the display of specific information –
an improvement in the abstract idea itself and not to “improve the
functioning of the [monitor], make it operate more efficiently, or solve any
technological problem.” Trading Techs. I, 921 F.3d at 1093; see also BSG
Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018);
Trading Tech. II, 921 F.3d at 1385; Interval Licensing, 896 F.3d at 1345.
Regarding the Appellant’s contention that the claim is similar to those
of Thales, we note that in Thales, the improvement was to a physical
tracking system that used mathematical equations that were “dictated by the
placement of the inertial sensors and application of laws of physics” to
determine the orientation of a tracked object relative to a moving platform.
Thales, 850 F.3d at 1348. Thus, the claims were directed to “systems and
methods that use inertial sensors in a non-conventional manner to reduce
errors in measuring the relative position and orientation of a moving object
on a moving reference frame.” Id. at 1348–49. In other words, the
improvement was to the technology in a physical tracking system. Here,
however, as discussed above, the focus of the claim is not to the
improvement in the technology of the monitor, but in the specific
information displayed and the way the information is displayed.
For similar reasons, we disagree with the Appellant’s contention that
the claim is similar to those of McRO. In McRO, the claims were directed to
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a specific improvement in computer animation and used rules to automate a
subjective task of humans to create a sequence of synchronized, animated
characters. See McRO, 837 F.3d at 1314–15. Unlike Flook, Bilski, and
Alice, it was not the use of the computer but the incorporation of the rules
that improved an existing technological process. Id. at 1314. Here, as
discussed above, there is no such improvement to technology or a
technological process. The Appellant also does not direct our attention to
anything in the Specification to indicate that the invention provides a
technical improvement in the monitor or in the receiving, transmitting,
displaying, or controlling the displaying of information or that it
incorporates rules to automate a subjective task of humans, as in McRO.
The Appellant also argues that, like McRO, claim 1 “do[es] not
preempt all ways of achieving similar goals.” Appeal Br. 21. Although the
Supreme Court has described “the concern that drives this exclusionary
principle[, i.e., the exclusion of abstract ideas from patent eligible subject
matter,] as one of pre-emption” (see Alice, 573 U.S. at 216), characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. “The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id.
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We are further not persuaded of Examiner error by the Appellant’s
argument that claim 1 is not directed to an abstract idea because, like
hypothetical claim 1 of Example 23 of the USPTO’s “July 2015 Update
Appendix 1: Examples,” claim 1 here “describe[s] particular methods of
displaying information on a display, without reciting any abstract idea such
as a mathematical equation.” Appeal Br. 23. Hypothetical claim 1 of
Example 23 is directed to a computer-implemented method for dynamically
relocating information on a graphical user interface (“GUI”) if a window
overlap condition exists. The July 2015 Update explains, at page 9 of
Appendix 1, that the example’s claim 1 is patent eligible because it is not
directed to an abstract idea (e.g., it “does not recite any mathematical
concept or a mental process such as comparing or categorizing
information”), but instead is “necessarily rooted in computer technology to
overcome a problem [i.e., overlapping windows and obscured text in GUIs]
specifically arising in graphical user interfaces.” Here, there is no such
improvement in computer technology that overcomes a problem specifically
arising in monitors.
The Appellant also contends that claim 1 is similar to the claims held
patent-eligible in Core Wireless Licensing v. LG Electronics, 880 F.3d 1356
(Fed. Cir. 2018), because “claim 1 provides a system that permits healthcare
providers to more effectively track the location and status of multiple
patients, especially patients who are out of bed and undergoing tests or other
procedures.” Reply Br. 7–8, 11, 13–15. In Core Wireless, the claims were
directed to “an improved user interface for electronic devices, particularly
those with small screens.” Core Wireless, 880 F.3d at 1363. The
specification described that “prior art interfaces had many deficits relating to
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the efficient functioning of the computer, requiring a user ‘to scroll around
and switch views many times to find the right data/functionality’” and
disclosed that the claimed invention improved the “efficiency of using the
electronic device by bringing together ‘a limited list of common functions
and commonly accessed stored data,’ which can be accessed directly from
the main menu.” Id. The specification also disclosed that “[t]he speed of a
user’s navigation through various views and windows” was improved
because it “saves the user from navigating to the required application,
opening it up, and then navigating within that application to enable the data
of interest to be seen or a function of interest to be activated” — disclosure
that the Federal Circuit concluded “clearly indicates that the claims are
directed to an improvement in the functioning of computers, particularly
those with small screens.” Id. The Appellant asserts here that, as in Core
Wireless, the claim “describe[s a] particular and specific type[] of user
interface[].” Reply Br. 7. But, as discussed above, we find no indication in
the Specification, nor does the Appellant direct us to any indication, that
claim 1 is directed to an improved interface analogous to the one in Core
Wireless that provides an improvement in computer functionality.
Accordingly, we conclude claim 1 does not contain an element that
imposes a meaningful limit on the abstract idea that integrates the abstract
idea into a practical application.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Mayo/Alice framework (corresponding to
Step 2B of the 2019 Revised Guidance), we find supported the Examiner’s
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determination that the limitations of claim 1, taken individually and as an
ordered combination, do not amount to significantly more than the judicial
exception and “do not include additional functional or structural elements
that are sufficient to amount to significantly more than the judicial
exception.” Final Act. 5; see also Ans. 12.
We note that the claim simply recites the functional results to be
achieved by the components. The claim “provides only a result-oriented
solution[] with insufficient detail for how a computer accomplishes it. Our
law demands more.” Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1342 (Fed. Cir. 2017). Taking the claimed elements
separately, the functions performed by the display and controller portions of
the monitor are purely conventional. The claimed generic components
operate in their ordinary and conventional capacities to perform the well-
understood, routine, and conventional functions of receiving and
transmitting data (i.e., limitations (b2), (d), and (f)), organizing data (i.e.,
limitation (g)), and displaying data (i.e., limitations (b1), (b3), (e), (f), and
(g)). See, e.g., Spec. 5, ll. 6–19, Fig. 5 (describing a generic monitor);
Trading Techs. I, 921 F.3d at 1093 (data gathering and displaying
information are well-understood, routine, conventional activities); Trading
Techs. II, 921 F.3d at 1385 (displaying calculated values did not recite an
inventive concept); Univ. of Florida, 916 F.3d at 1367–68 (receiving,
interpreting, and displaying data were well-understood, routine,
conventional activities).
Considered as an ordered combination, the components of the
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of receiving and transmitting data,
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organizing data, and displaying is equally generic and conventional or
otherwise held to be abstract. See Elec. Power, 830 F.3d at 1354–56
(holding that the sequence of gathering, analyzing, and displaying in real-
time was abstract); Trading Techs. I, 921 F.3d at 1093 (ordered combination
of data gathering and displaying information “did not transform the claim
into a patent eligible application of the abstract idea”); Trading Techs. II,
921 F.3d at 1385 (combination of elements of receiving, identifying,
computing, and displaying data, and moving visual indicators of the data not
recite an inventive concept); Univ. of Florida, 916 F.3d at 1367–68
(receiving, interpreting, and displaying data did not provide an inventive
concept.).
The Appellant argues that the claim’s elements amount to
significantly more than the abstract idea because, like BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016),
“the inventive concept can be found in the synergy resulting from a
combination of known technological components.” Appeal Br. 28; see also
Reply Br. 8, 16. Specifically, the Appellant argues “[e]ven if one assumed
arguendo that some of the components in Appellant’s claims were
conventional, it is the particular arrangement and advantages offered by
Appellant’s apparatus that shows why at least claim[] 1 . . . here do[es] not
describe abstract ideas.” Appeal Br. 29. However, it is not clear how the
features of the components of a display portion and a controlling portion of
the monitor are similar to BASCOM’s “non-conventional and non-generic
arrangement of known, conventional pieces.” BASCOM, 827 F.3d at 1350.
In BASCOM, the Federal Circuit determined that “its particular arrangement
of elements is a technical improvement over prior art ways of filtering such
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content.” Id. The patent at issue “claim[ed] a technology-based solution
(not an abstract-idea-based solution implemented with generic technical
components in a conventional way) to filter content on the Internet that
overcomes existing problems with other Internet filtering systems.” Id.
at 1351. The court determined that “[b]y taking a prior art filter solution
(one-size-fits-all filter at the ISP server) and making it more dynamic and
efficient (providing individualized filtering at the ISP server), the claimed
invention represents a ‘software-based invention[ ] that improve[s] the
performance of the computer system itself.’” Id. Here, there is no such
improvement to the claimed monitor components themselves. And, the
Appellant provides no further arguments how the claim’s particular
arrangement and/or integration of elements is a technical improvement or is
otherwise similar to BASCOM.
To the extent the Appellant argues that the invention is not directed to
an abstract idea and effects an improvement to technology because it is
novel over the prior art (see Appeal Br. 28; Reply Br. 9), an abstract idea
does not transform into an inventive concept just because the prior art does
not disclose or suggest it. See Mayo, 566 U.S. at 78. Further,
“[g]roundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, “[t]he ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–
89; see also Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to
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substitute §§ 102, 103, and 112 inquiries for the better established inquiry
under § 101”).
The Appellant argues that claim 1 is similar to Diehr because it
“describe[s] specific machines with advantages for healthcare providers.”
Appeal Br. 26. However, as we noted repeatedly above, the “specific
machine” of a monitor is a generic device which is not being technologically
improved nor is it transforming an article into a different state or thing, as
was done in Diehr, 450 U.S. at 184, 192–93.
The Appellant also argues that “there is insufficient evidence of
record that shows that the claimed subject matter is conventional, well-
understood, and routine.” Reply Br. 10 (emphasis omitted). However, the
Examiner cites to non-patent literature/applications (Final Act. 5–6) and to
the Appellant’s Specification (Ans. 11) as evidence. In doing so, the
Examiner followed “Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO
Memorandum, Robert W. Bahr, Deputy Commissioner for Patent
Examination Policy, April 19, 2018 (the “Berkheimer Memo”)). And, we
have provided additional support above.
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 1 do not transform the claim into significantly
more than the abstract idea.
We therefore sustain the Examiner’s rejection under 35 U.S.C. § 101
of independent claim 1 and of dependent claims 4–10, for which separate
argument is not provided.
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Claim 11
Claim 11 recites a system comprising: (a) a sensory unit; (b) a display;
(c) a controller configured to control display of information on the display;
(d) a visual alarm to generate a visual signal upon expiry of a selected period
of time and information is not received from the sensory unit; and (e) an
audio alarm to generate an audio signal upon expiry of a selected period of
time and information is not received from the sensory unit. See Appeal
Br. 36–37 (Claims App.). The controller is configured to control the display
to: (1) stop displaying information, (2) display a plurality of UI elements,
(3) display an overtime period based on expiration of a selected time period
and information not being received from the sensory unit. Id. at 37. The
Examiner makes the same determinations for claim 11 as for claim 1, and
the Appellant makes the same arguments. However, we will address the
differences between the structural elements of claims 1 and 11.
Regarding Mayo/Alice step one, when considered collectively and
under the broadest reasonable interpretation, the limitations of claim 11
recite an apparatus for displaying biological and time information,6 which is
an abstract idea of a mental practice of collecting, organizing, and displaying
information. As discussed above with respect to claim 1, the courts have
held similar concepts to be abstract.
The additional elements recited in claim 11 beyond the abstract idea
are “a sensory unit,” a biological monitor with a display and a controller, “a

6 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. 842 F.3d at 1240. The Board’s “slight
revision of its abstract idea analysis does not impact the patentability
analysis.” Id. at 1241.
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visual alarm”, and “an audio alarm” — elements that, as the Examiner
observes (Final Act. 6; Ans. 7, 10), are described in the Specification as
generic computing elements. The Specification does not include the term
“sensory” or “sensory unit.” At page 9 of the Appeal Brief, the Appellant
directs attention to the Specification at page 5, lines 6–10, and Figures 1
and 2 as support, that provide for receiving “biological information of a
patient which is measured by a unit attached to the patient.” In light of the
Specification, the sensory unit is a generic measuring device that measures
or collects information in a conventional manner. See Automated Tracking
Sols., LLC v. Coca-Cola Co., 723 F. App’x 989, 993–95 (Fed. Cir. 2018)
(claims tracking objects by collecting data from sensors did not use
“conventional RFID components in a non-conventional combination or
arrangement”). As discussed above with regards to claim 1, the biological
monitor is a generic monitor. The Specification does not provide any
structure for the alarms, but indicates that the monitor outputs a visual alarm
comprising some visual indicator/data displayed on the monitor and an audio
alarm that is not a structural element. See Spec. 5, l. 24–6, l. 3; 9, ll. 2–9; 12,
ll. 12–15. As with claim 1, we find no indication in the Specification, nor
does the Appellant direct us to any indication, that the operations recited in
claim 11 require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, invoke any asserted
inventive programming, or that the claimed invention is implemented using
other than generic components to perform generic functions.
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
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improvement in computer technology and/or functionality to the claimed
invention or that otherwise indicates that the claimed invention integrates the
abstract idea into a “practical application,” as that phrase is used in the
2019 Revised Guidance.
We find the Appellant’s arguments presented in the Appeal Brief at
pages 14 through 28 and the Reply Brief at pages 7 and 8 (arguing claims 1
and 11 together) unpersuasive for the reasons discussed above regarding
claim 1.
Regarding Mayo/Alice step two, we find supported the Examiner’s
determination that the limitations of claim 11, taken individually and as an
ordered combination, do not amount to significantly more than the judicial
exception and “do not include additional functional or structural elements
that are sufficient to amount to significantly more than the judicial
exception.” Final Act. 5; see also Ans. 12.
We find the Appellant’s arguments presented in the Appeal Brief, at
pages 26–28, and the Reply Brief, at pages 9 and 10, (arguing claims 1
and 11 together) unpersuasive for the reasons discussed above regarding
claim 1.
We find unpersuasive of error the Appellant’s arguments that claim 11
is similar to the apparatus of BASCOM for the reasons discussed above
regarding claim 1. See Appeal Br. 28–30; Reply Br. 8–9. Although
claim 11 recites “an even more specific apparatus than claim 1” (Appeal
Br. 30), there is no technical improvement to the claimed sensory unit and
monitor components themselves. And, the Appellant provides no further
arguments how the claim’s particular arrangement and/or integration of
elements is a technical improvement or is otherwise similar to BASCOM.
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Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 11 do not transform the claim into significantly
more than the abstract idea.
We therefore sustain the Examiner’s rejection under 35 U.S.C. § 101
of independent claim 11.
CONCLUSION
The Examiner’s decision to reject claims 1 and 4–11 is sustained.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–11 101 Eligibility 1, 4–11
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)(l)(iv).

AFFIRMED