University of Newcastle Upon Tyne

Patent Trials and Appeals Board

Jan 26, 2022

2021002821 (P.T.A.B. Jan. 26, 2022)

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. 14/902,028 12/30/2015 Alan Murray SECE-55499US0 2327 164048 7590 01/26/2022 Praedcere Law 123 Institute St. #1640 Mooresville, NC 28115 EXAMINER AGAHI, PUYA ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 01/26/2022 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): jlicata@praedcere.com pserbinowski@praedcere.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALAN MURRAY and DINGCHANG ZHENG ____________ Appeal 2021-002821 Application 14/902,028 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and TARA L. HUTCHINGS, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4, 25-27, 29, and 30. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as University of Newcastle Upon Tyne (Appeal Br. 1). Appeal 2021-002821 Application 14/902,028 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to a sphygmomanometer which is able to calculate the quality of a blood pressure reading and display information to a user (Spec., page 1, lines 4-6). Claim 1, reproduced below with the italics added, is representative of the subject matter on appeal. 1. A sphygmomanometer and a quality indicator device, said quality indicator device including a microprocessor able to digitally capture and record pressure readings obtained from a manual sphygmomanometer and an automated said sphygmomanometer and operable to evaluate oscillometric pressure data obtained from said sphygmomanometer, said quality indicator device including a display that shows a value indicative of a quality result, wherein said microprocessor determines a quality of said oscillometric pressure data by: determining a pulse amplitude of each pulse to provide an envelope of oscillometric pressure data; identifying a top of the envelope of oscillometric pressure data; normalising the pulse amplitudes associated with the envelope of oscillometric pressure data; computing and including a plurality of theoretical lower end points; identifying data points leading up to the top of the envelope of oscillometric pressure data; fitting said theoretical lower end points and said identified data points to a polynomial curve with smooth increasing and decreasing gradients; calculating an error for at least some of empirical readings associated with the identified data points; and expressing said quality result directly to said display; wherein said display shows said quality result as a number or said display shows said quality result by comparing the error to one or more predetermined ranges to determine the quality of the data; and wherein the number quality result or said quality result by comparing the error with predetermined ranges shown on Appeal 2021-002821 Application 14/902,028 3 said display to a user of the quality indicator device, thereby improves patient health by leading to accepting the quality result as sufficient, retaking the oscillometric pressure data, ensuring medication is correct, or recognizing irregular heart beats. THE REJECTION The following rejection is before us for review: Claims 1, 2, 4, 25-27, 29, and 30 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.2 ANALYSIS Rejection under 35 U.S.C. § 101 The Appellant argues first that the rejection of claim 1 is improper because the claim is integrated into a “practical application” (Appeal Br. 8- 14, 17-26). The Appellant argues further that the claim is “significantly more” than the alleged abstract idea (Appeal Br. 26, 27, 30- 32). In contrast, the Examiner has determined that the rejection of record is proper (Non-Final Action 3-7; Ans. 3-7). We agree with the Examiner. An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-002821 Application 14/902,028 4 matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 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 water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). Appeal 2021-002821 Application 14/902,028 5 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. (internal citation omitted) (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.”). In January 2019, the USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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, i.e., evaluate 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.” (see Guidance, 84 Fed. Reg. at 54; see also MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)-(c), (e)-(h)). Appeal 2021-002821 Application 14/902,028 6 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (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 Specification at page 1, lines 4-6, states that the invention generally relates a sphygmomanometer which is able to calculate the quality of a blood pressure reading and display information to a user. Here, the Examiner has determined that the claim sets forth a mathematical calculation and steps that can be performed in a mental assessment after looking at measurements and plotted data (Non-Final Act. 3-4). We substantially agree with the Examiner. We determine that the claim sets forth the subject matter in italics above which sets forth the concept of: [1] “determining a pulse amplitude of each pulse to provide an envelope of oscillometric Appeal 2021-002821 Application 14/902,028 7 pressure data;” [2] “identifying a top of the envelope of oscillometric pressure data;” [3] “normalising the pulse amplitudes associated with the envelope of oscillometric pressure data;” [4] “computing and including a plurality of theoretical lower end points;” [5] “identifying data points leading up to the top of the envelope of oscillometric pressure data;” [6] “fitting said theoretical lower end points and said identified data points to a polynomial curve with smooth increasing and decreasing gradients;” [7] “calculating an error for at least some of empirical readings associated with the identified data points;” [8] “expressing said quality result directly to said display;” [9] “wherein said display shows said quality result as a number or said display shows said quality result by comparing the error to one or more predetermined ranges to determine the quality of the data;” and [10] “wherein the number quality result or said quality result by comparing the error with predetermined ranges shown on said display to a user of the quality indicator device”, which is a mathematical concept or mental process, i.e., a judicial exception. A method, like the claimed method, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea. We next determine whether the claim recites additional elements in the claim to integrate the judicial exception into a practical application. See Appeal 2021-002821 Application 14/902,028 8 Guidance, 84 Fed. Reg. at 54-55. The Revised Guidance references the MPEP §§ 2106.05(a)-(c) and (e)-(h). Here, the claims do not improve computer functionality, improve another field of technology, utilize a particular machine, or effect a particular physical transformation. Rather, we determine that nothing in the claims imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort to monopolize the judicial exception. For example, in the claim, the additional elements beyond the abstract idea are the recited microprocessor and display. The claimed limitations of the microprocessor “determining,” “identifying,” “normalizing,” “computing,” “fitting,” “calculating,” and “expressing said quality of result directly to said display,” as recited do not purport to improve the functioning of the computer itself, do not improve the technology of the technical field, and do not require a “particular machine.” Rather, they are performed using generic computer components. Further, the claim as a whole fails to effect any particular transformation of an article to a different state. The recited steps in the claim fail to provide meaningful limitations to limit the judicial exception. In this case, the claim merely uses the claimed computer elements as a tool to perform the abstract idea. Considering the elements of the claim both individually and as “an ordered combination,” the functions performed by the computer system at each step of the process are purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application as set forth in the Appeal 2021-002821 Application 14/902,028 9 Revised Guidance which references the MPEP §§ 2106.05(a)-(c) and (e)-(h). Turning to the second step of the Alice and Mayo framework, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. Considering the claim both individually and as an ordered combination, the claim fails to add subject matter beyond the judicial exception that is not well-understood, routine, and conventional in the field. Rather, the claim uses well-understood, routine, and conventional activities previously known in the art and they are recited at a high level of generality. Here, the claim has not been shown to be “significantly more” than the abstract idea. We note that the Declaration filed by co-inventor Alan Murray to demonstrate that the claim “integrates a judicial exception into a practical application” has been fully considered but not deemed persuasive (Decl. 2). While the Declaration states the elements and benefits of the claim, it fails to show that the claim integrates the judicial exception into a practical application in light of the analysis above in regard to claim 1. The Appellant at pages 22-26 of the Appeal Brief attempts to analogize claim 1 to the claims at issue in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). However, the claims in that case are distinguished from this case in being directed to a technological improvement in 3-D animation techniques using rules for lip sync and facial expression animation. McRO, 837 F.3d at 1313, 1316. No such technological improvement is seen here. Appeal 2021-002821 Application 14/902,028 10 For these above reasons, the rejection of claim 1 is sustained. The remaining claims are directed to similar subject matter and the rejection of these claims is sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1, 2, 4, 25-27, 29, and 30 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 25- 27, 29, 30 101 Eligibility 1, 2, 4, 25- 27, 29, 30 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED