Ulrik Darling. Larsen

Patent Trials and Appeals Board

Jul 30, 2019

12918860 - (D) (P.T.A.B. Jul. 30, 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.
12/918,860 10/22/2010 Ulrik Darling Larsen 2008P01901WOUS 1379
24737 7590 07/30/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
SKIBINSKY, ANNA
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
07/30/2019 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 ULRIK DARLING LARSEN1
________________

Appeal 2019-001253
Application 12/918,860
Technology Center 1600
________________

Before JEFFREY N. FREDMAN, JOHN G. NEW, and
JAMIE T. WISZ, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellant identifies Koninklijke Philips, N. V. as the real party-in-interest.
App. Br. 4.
Appeal 2019-001253
Application 12/918,860
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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 24–43 as unpatentable under 35 U.S.C.
§101 as being directed to nonstatutory subject matter.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to a method of determining
pulse height distribution by using an apparatus comprising: an analogue to
digital pulses height categorization unit comparing the pulse to analogue
threshold voltages and counting each event within each pulse height
category using a microcontroller. Abstr.
REPRESENTATIVE CLAIM
Claim 24 is representative of the claims on appeal and recites:
24. A method of diagnosing diseases and monitoring
treatment based on determining a size distribution of cells within
an electrolyte that comprises the cells, the method comprising:

passing the electrolyte from a first chamber through an
aperture and into a second chamber;

generating a flow of electrical current between a first
electrode disposed within the first chamber and in contact with
the electrolyte and a second electrode disposed within the second
chamber and in contact with the electrolyte;

detecting, for the cells, voltages developed between the
first and second electrodes due to the cells displacing the
electrolyte as the cells pass through the aperture, respectively;

performing a measurement comprising comparing each of
the detected voltages to an Nth set of threshold voltages, the
threshold voltages of the Nth set differing from each other, to
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determine whether the detected voltage exceeds one or more of
the Nth set of threshold voltages;

shifting values of the Nth set of threshold voltages to
generate an Nth+l set of threshold voltages based at least in part
on the threshold voltages of the Nth set of threshold voltages, the
threshold voltages of the Nth+1 set of threshold voltages differing
from each other;

performing another measurement comprising comparing
each of the detected voltages to the Nth+1 set of threshold
voltages to determine whether the detected voltage exceeds one
or more of the Nth+1 set of threshold voltages;

determining the size distribution of the cells within the
electrolyte based upon the measurements using the Nth and
Nth+1 sets of threshold voltages using counts of the detected
voltages for the cells that meet the Nth set of threshold voltages
and counts of detected voltages for the cells that meet the Nth+l
set of threshold voltages, wherein a size of each cell is identified
by the threshold voltages exceeded by the voltage detected for
the cell, and

at least one of diagnosing a disease and monitoring
treatment for a diagnosed disease based on the size distribution
of the cells.

App. Br. 19–20.
ISSUES AND ANALYSES
We decline to adopt the Examiner’s findings, reasoning, and
conclusion that the claims on appeal are directed to nonstatutory subject
matter. We address the arguments raised by Appellant below.
Issue
Appellant argues that the Examiner erred in finding that claims 24–43
are directed to a judicial exception to Section 101 (i.e., an abstract idea)
without adding significantly more. App. Br. 10.
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Analysis
The Examiner finds that Claims 24–43 are directed to the abstract idea
of comparing numerical voltages to categories of voltages denoted by sets of
numerical threshold voltages, modifying one set of numerical voltages to
arrive at a second set of numerical threshold voltages, and determining a
particle size distribution from the comparison of numerical voltages to the
sets of numerical threshold voltages. Final Act. 3. The Examiner finds that
the claimed method further requires diagnosing a disease and monitoring
treatment for a diagnosed disease based on the size distribution of the cells,
which is also an abstract idea. Id. The Examiner finds that, taken as a
whole, the claims recite a method that relies on the abstract ideas of
comparing information, categorizing, organizing and organizing information
through mathematical correlations. Id.
The Examiner acknowledges that the claims also recite elements that
are not part of the abstract idea, viz.: (1) passing the electrolyte from a first
chamber through an aperture and into a second chamber; (2) generating a
flow of electrical current between a first electrode disposed within the first
chamber and in contact with the electrolyte and a second electrode disposed
within the second electrolyte; and (3) detecting for each of the cells, a
voltage developed between the first and second electrodes. Final Act. 4.
However, the Examiner finds, these additional elements are directed to
taking measurements using standard a Coulter counter. Id. (citing Coulter
US 2,656,508, October 20, 1953 (“Coulter”); Larsen (US 2008/0031780 A1,
February 7, 2008) (“Larsen”) ¶¶ 2–3). As such, the Examiner finds,
the claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception, because it is routine and
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conventional to pass an electrolyte through an aperture from a first chamber
with an electrode to a second chamber with an electrode and generate a flow
of electrical current between two electrodes.
Id.
The Examiner additionally finds that the claims recite additional
elements including a microprocessor, which can be a generic computer that
performs generic computer functions that are well-understood, routine, and
conventional activities previously known in the art. Final Act. 4. The
Examiner concludes that, viewed as a whole, these additional claim
element(s) do not provide meaningful limitation(s) that transform the
abstract idea into a patent eligible application of the abstract idea such that
the claims amount to significantly more than the abstract idea itself. Id.
Appellant argues that, under the current case law of our reviewing
courts, abstract ideas, as a judicial exception, can generally be placed in one
or more of three categories: (1) math (i.e., algorithms); (2) mechanisms for
reducing monetary losses; and (3) conventional handling of specified
conventional data. App. Br. 12. Appellant contends that the Examiner is
classifying the claims on appeal in category (3). Id.
According to Appellant, the precedents of our reviewing courts have
found claims ineligible when the claims include: (a) conventional
information (i.e., that is preexisting at a minimum); (b) as specified
information (i.e., that reflects the underlying meaning or format of the
information); or (c) conventional handling of the conventional specified
information. App. Br. 12. Appellant contends that the pending claims do
not meet two of three criteria of category (3) noted above and, specifically,
the pending claims include both unconventional (new) data and
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unconventional (practical) handling based on the data being handled. Id. at
13.
Appellant argues that, in the claims on appeal, the voltages that are
detected involve “new” information in that the voltages are being measured
based on cells displacing an electrolyte as the cells pass through an aperture.
App. Br. 15. This dynamic process results in the generation of “new”
information that will vary over time as much as the cells vary, and is not
analogous to preexisting information sitting in a database before the data
handling in the claims. Id. This differs from the “known” information
present in claims found ineligible in precedential decisions in this category,
and is consistent with the varying “new” information in Finjan, Inc. v. Blue
Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), in which the claims
were found to be patent eligible. Id. Therefore, Appellant contends, the
claims of the present application do not merely involve conventional
(known) specified information and the generic handling thereof. Id.
Appellant argues further that, even if, arguendo, claims 24–43 are
found to be directed to an abstract idea, the claims nevertheless include
significantly more than just the abstract idea and are therefore patent
eligible. App. Br. 16. Appellant asserts that the claims require the use of
one or more specific devices, and are not method claims performable in a
human mind as a mental process. Id. Furthermore, argues Appellant, the
requirement that the claimed combinations be used to diagnose a disease or
monitor treatment of a diagnosed disease touches on a specific utility of the
claims. Id.
In performing an analysis of patentability under Section 101, we
follow the framework set forth by the Supreme Court in Mayo Collaborative
Servc’s v. Prometheus Labs., Inc., 566 U.S. 66 (2012). We are also mindful
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of, and guided by, the USPTO’s 2019 Revised Patent Subject Matter
Eligibility Guidance, 84(4) Fed. Reg. 50–57 (January 7, 2019) (the “2019
Guidance”).
Appellant’s claim 24 recites, inter alia: “A method of diagnosing
diseases and monitoring treatment based on determining a size distribution
of cells within an electrolyte that comprises the cells, the method
comprising….” Following the first step of the Mayo analysis, we find that
the claims are directed to a method or “process” and therefore fall into one
of the broad statutory categories of patent-eligible subject matter under 35
U.S.C. § 101.
In the next step of the Mayo analysis, we determine whether the
claims at issue are directed to a nonstatutory, patent-ineligible concept, i.e., a
law of nature, a phenomenon of nature, or an abstract idea. Mayo, 566 U.S.
at 70–71. If the claims are so directed, we next consider the elements of
each claim both individually and “as an ordered combination” to determine
whether additional elements “transform the nature of the claim” into a
patent-eligible application. Id. at 78–79; see also Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015). Specifically, the
Supreme Court considered this second step as determining whether the
claims recite an element or combination of elements that is “sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.” Mayo, 566 U.S. at 72–73.
More specifically, in this second step of the Mayo analysis, we look to
whether the claim recites one of the judicially-created exceptions to Section
101, i.e., an abstract idea, a law of nature, or a natural phenomenon. See
2019 Guidance 54 (step 2A, prong 1). In the case of claims reciting an
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abstract idea, these exceptions comprise mathematical concepts, certain
methods of organizing human activity, and mental processes. Id.
If we determine that the claim is directed to a judicial exception, we
then determine whether the limitations of the claim reciting the judicial
exception are integrated into a practical application. Id. (step 2A, prong 2).
Finally, if we determine that the claim is directed to a judicially-
created exception to Section 101, we evaluate the claims under step two of
the Mayo analysis, considering the elements of each claim both individually
and “as an ordered combination” to determine whether additional elements
“transform the nature of the claim” into a patent-eligible application. Mayo,
566 U.S. at 78–79; 2019 Guidance at 56 (step 2B).
Claim 24 recites, in relevant part:
performing a measurement comprising comparing each of
the detected voltages to an Nth set of threshold voltages, the
threshold voltages of the Nth set differing from each other, to
determine whether the detected voltage exceeds one or more of
the Nth set of threshold voltages;

shifting values of the Nth set of threshold voltages to
generate an Nth+l set of threshold voltages based at least in part
on the threshold voltages of the Nth set of threshold voltages, the
threshold voltages of the Nth+1 set of threshold voltages differing
from each other;

performing another measurement comprising comparing
each of the detected voltages to the Nth+1 set of threshold
voltages to determine whether the detected voltage exceeds one
or more of the Nth+1 set of threshold voltages;

determining the size distribution of the cells within the
electrolyte based upon the measurements using the Nth and Nth+1
sets of threshold voltages using counts of the detected voltages
for the cells that meet the Nth set of threshold voltages and counts
of detected voltages for the cells that meet the Nth+l set of
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threshold voltages, wherein a size of each cell is identified by the
threshold voltages exceeded by the voltage detected for the
cell….

These limitations are thus directed to comparing the voltages
measured by the claimed device and comparing them against a first (Nth) and
second (Nth+1) set of thresholds, and then: “determining the size distribution
of the cells within the electrolyte based upon the measurements using the
Nth and Nth+1 sets of threshold voltages using counts of the detected
voltages.” As such, we find that these steps, at the heart of Appellant’s
invention, constitute the manipulation of data or symbols that could be
performed on a generic computer. Consequently, we agree with the
Examiner that these limitations recite a judicial exception to Section 101,
specifically, an abstract idea.
Having found that the claims recite, at least in part, a mental process
(see 2019 Guidance, step 2A, prong 1), we must next determine whether the
limitations of the claim reciting the judicial exception are integrated into a
practical application. Id. (step 2A, prong 2). We determine that they are.
Claim 24 also recites limitations claiming, in detail, the apparatus in
which the voltage measurements are to be made:
passing the electrolyte from a first chamber through an
aperture and into a second chamber;

generating a flow of electrical current between a first
electrode disposed within the first chamber and in contact with
the electrolyte and a second electrode disposed within the second
chamber and in contact with the electrolyte;

detecting, for the cells, voltages developed between the
first and second electrodes due to the cells displacing the
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electrolyte as the cells pass through the aperture,
respectively….2

In other words, the voltages generated are proportional to the diameter
(or size) of the cells passing through the aperture between the first and
second chambers of the device. The voltages thus acquired are, as the
subsequent limitations recite, compared against multiple thresholds sets,
which are then compared against each other to determine a frequency
distribution of the sizes of the various cells as they pass from the first to the
second chamber.
We find that the use of the abstract idea by the recited device in the
determination of the frequency distributions of cell sizes is analogous to the
integration of an abstract idea into an apparatus described in Diamond v.
Diehr, 450 U.S. 175 (1981). In Diehr, the Supreme Court held that the
integration of the Arrhenius equation (an algorithm and, hence, an abstract
idea) into a device that used the equation to determine the curing time for
rubber was a patent eligible invention. Diehr, 450 U.S. at 188. Specifically,
the Court held that: “Arrhenius’ equation is not patentable in isolation, but
when a process for curing rubber is devised which incorporates in it a more
efficient solution of the equation, that process is at the very least not barred
at the threshold by § 101.” Id.
Similarly, in the appeal before us, the claims recite a series of
computational steps (the abstract idea) that are applied to measurements
made directly by the device from which they are derived, and are used to
calculate a frequency distribution of the size of the cells in the sample

2 We note that this device, a Coulter counter, has been well-known in the art
for many years, as admitted by Appellant’s Specification. See Spec. 1.
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passing through the aperture of the device between the first and second
chambers. We therefore conclude that the abstract idea to which the claims
are directed are integrated by the claims into a practical application, viz.,
determining the frequency distribution of the cell sizes in the sample being
measured by the device. In so concluding, our analysis stops at this step
(Guidance step 2A, prong 2), and we reverse the Examiner’s rejection of the
claims.

DECISION
The Examiner’s rejection of claims 24–43 under 35 U.S.C. § 101 is
reversed.
REVERSED