CARDIAC PACEMAKERS, INC.

Patent Trials and Appeals Board

Nov 2, 2021

2021002072 (P.T.A.B. Nov. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/763,941 02/11/2013 Viktoria Averina 279.N13US3 1007
45458 7590 11/02/2021
SCHWEGMAN LUNDBERG & WOESSNER/BSC
PO BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
TOTH, KAREN E
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
11/02/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VIKTORIA AVERINA, YI ZHANG,
and YOUSUFALI DALAL
____________

Appeal 2021-002072
Application 13/763,941
Technology Center 3700
____________

Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–5, 7, 9, and 17–21 as directed to a judicial exception to
patentable subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Cardiac Pacemakers, Inc. as the
Applicant and real party in interest. Appeal Br. 2.
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THE INVENTION
Appellant’s invention relates to monitoring a patient’s health.
Spec. 1. Claim 1, reproduced below with paragraph indentation added, is
illustrative of the subject matter on appeal.
1. A medical status assessment method, comprising:
detecting patient respiration using one or more sensors
connected to a medical device;
determining a measure of patient respiration and a plurality
of respiration rates based on the detected patient respiration;
determining a distribution of the plurality of respiration
rates, wherein the distribution indicates a frequency of
occurrence of different respiration rates;
generating a trend parameter based on a measure of spread
of the respiration rate distribution and the measure of patient
respiration using a processing unit; and
discriminating between a stable heart failure status and a
decompensated heart failure status of the patient using the trend
parameter.
OPINION
Eligible Subject Matter
Appellant argues all pending claims as a group. Appeal Br. 7–10. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
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, courts recognize judicial exceptions to Section 101, namely:
(1) laws of nature, (2) natural phenomena, and (3) abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71 (2012).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
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from those that claim patent-eligible applications of those concepts.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo, 566 U.S.
at 72–73). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts.
Id. If so, we must secondly “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id.
In situations where an abstract idea is implemented on a computer, the
first step in the Alice/Mayo analysis asks whether the focus of the claims is
on a specific improvement in computer capabilities or, instead, on a process
that qualifies as an “abstract idea” for which computers are invoked merely
as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016).
The Supreme Court characterizes the second step of the analysis as “a
search for an ‘inventive concept’ — i.e., 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.”’
Alice, 573 U.S. at 217–18 (brackets in original) (quoting Mayo, 566 U.S.
at 72). Where the claim is directed to an abstract idea that is implemented
on a computer, merely stating the abstract idea while adding the words
“apply it” is not enough to establish such an inventive concept. See
Alice, 573 U.S. at 223.
[I]f that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
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Id. at 224.
The PTO has published guidelines on the application of Section 101.
See 84 Fed. Reg. 50 (Jan. 7, 2019) (the “Guidelines”). Under the
Guidelines, in conducting step one of the Alice framework, we first look to
whether the claim recites:
(1) any judicial exceptions; and
(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
In other words, under prong 1 of an abstract idea analysis, we look to
whether the claim recites an abstract idea. Then, if it does, under prong 2,
we look at the claim, as a whole, and determine whether the claim is
“directed to” the abstract idea or, instead, is “directed to” a “practical
application” of the abstract idea.
Step 1, Prong 1
The Guidelines identify three key concepts identified as abstract
ideas: (a) mathematical concepts;  (b) methods of organizing human
activity, and (c) mental processes. Guidelines, 84 Fed. Reg. at 52.
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea. Final Act. 2. According to the Examiner,
the steps are directed to an abstract idea in the form of data analysis, which
qualifies as a “mental process.” Id. Appellant does not challenge the
Examiner’s determination that the claims recites an abstract idea. See
generally Appeal Br.
There is little question here that claim 1 recites an abstract idea.
Appellant’s Specification explains that the invention detects patient
respiration and computes a respiration rate based thereon. Spec. 2. A
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distribution of the rate is calculated, and a trend parameter based on the rate
distribution is generated. Id. An output signal indicating the patient's heart
failure status may be generated based on the trend parameter. Id. This
concept is captured in the recitations of claim 1. Claims App.
“Information as such is an intangible.” Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Courts treat collecting
information as well as analyzing information by steps people go through in
their minds as essentially mental processes within the abstract-idea category.
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed.
Cir. 2016). Claim 1 here monitors a medical patient by collecting data,
processing the data, and generating a data output. Claims App. As such, the
method recites an abstract idea under FairWarning.
Step 1, Prong 2
Under Prong 2 of Step 1 of the Guidelines, we do not assume that
such claims are directed to patent ineligible subject matter because “at some
level, all inventions embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas. In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) quoting Alice. Instead, “the
claims are considered in their entirety to ascertain whether their character as
a whole is directed to excluded subject matter.” McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016). If the
claims are not directed to an abstract idea, the inquiry ends. Guidelines. If
the claims are “directed to” an abstract idea, then the inquiry proceeds to the
second step of the Alice framework. Id.
Consequently, we consider whether the claimed patient monitoring
method includes additional elements that integrate the judicial exception into
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a practical application. A claim that integrates a judicial exception into a
practical application will apply, rely on, or use 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. Guidelines.
Appellant argues that claim 1 is directed to a practical application.
Appeal Br. 8. Appellant argues that the claim provides a clear and distinct
improvement to existing technology in the field of respirator and cardiac
monitoring. Id. Appellant touts several alleged advantages in providing
physicians with information. Id. “Appellant submits that discriminating
between a stable heart failure status and a decompensated heart failure status
of the patient using the trend parameter is a practical application.” Id. at 9.
Appellant attempts to analogize the instant case to that of CardioNet, LLC v.
InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020). Appeal Br. 9. According
to Appellant:
[I]n CardioNet, the independent claims did not include a
specific “automatic adjustment of therapy” step. Rather, the
Court stated that the subject matter was patent eligible because
“the claims ‘focus on a specific means or method that
improves’ cardiac monitoring technology.” Id. at p. 13, citing
McRO. The court relied on the patentee's written description to
confirm the conclusion, noting that the description included
reference to advantages and improvements. Id. at p. 8 and
p. 13. Likewise, as noted above, Appellant's specification and
drawings provides reference to advantages, enhancements and
increased effectiveness and reliability of the present subject
matter for monitoring and therapy management of HF patients.
Id. at 10–11 (emphasis omitted). Appellant characterizes CardioNet as
“controlling” case law.
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As correctly pointed out by the Examiner, Appellant’s recited abstract
idea can be performed manually. Final Act. 2–3. Although automating
tasks that humans are capable of performing may be patent eligible if
properly claimed (See McRO, 837 F.3d at 1313), we are not persuaded by
Appellant’s effort to characterize its monitoring method as a “practical
application” that is analogous to CardioNet. Here, the method of claim 1
generally comprises five functional steps, namely: (1) detecting,
(2) determining a measure, (3) determining a distribution, (4) generating a
parameter, and (5) discriminating based on the parameter. Claims App. The
method collects data, processes it, and generates output information. Such is
properly characterized as mental activity which is entirely abstract.
FairWarning, 839 F.3d at 1093 (explaining that courts treat collecting and
analyzing information by steps people go through in their minds as
essentially mental processes within the abstract-idea category).
Appellant’s reliance on CardioNet is misplaced. The CardioNet court
determined that the claim at issue was directed to an improved cardiac
monitoring device and not to an abstract idea. CardioNet, 955 F.3d at 1368.
The court determined that the claims “focus on a specific means or method
that improves” cardiac monitoring technology and were not “directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery.” Id. citing McRO, 837 F.3d at 1314. In contrast,
Appellant’s claim 1 is directed to a result or effect that is the abstract idea
itself.
The prospect that Appellant’s method uses a computerized “tool” does
not render the claims less abstract. An abstract idea does not become non-
abstract by limiting the invention to a particular technological environment.
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Intellectual Ventures I, 792 F.3d at 1367; see also Affinity Labs of Texas,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (merely
limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract); see
also Alice, 573 U.S. at 224 (the fact a computer exists in the physical realm
is beside the point). The advantages of the invention touted by Appellant
(Appeal Br. 8–9) lie entirely within the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm. An
advance of that nature is ineligible for patenting. SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). Unlike Enfish, the focus of the
claim 1 is not on improving computing equipment, but rather on a process
for which computing equipment is invoked as a tool. See Enfish, 822 F.3d
at 1335–36.
Appellant apparently operates under the misconception that, because
computer equipment and software accomplish some objective, like
computing the sum of two numbers, such accomplishment is “practical,”
because it is, in some sense, useful to the user. That is not how the term
“practical” is applied under our Guidelines. Data collection and analysis is
considered “abstract,” not “practical” under our Guidelines. Claim 1 fails to
integrate the judicial exception into a practical application and, therefore, is
“directed to” an abstract idea.
Step 2
Turning to step 2 of the Alice/Mayo analysis, we look more precisely
at what the claim elements add in terms of whether they identify an
“inventive concept” in the application of the ineligible matter to which the
claim is directed to. SAP Am., 898 F.3d at 1167. “A claim that recites an
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abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’”
Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 77–78). Those
“additional features” must be more than well-understood, routine,
conventional activity. Mayo, 566 U.S. at 79.
Under step two of the Alice/Mayo framework, the Examiner
determines:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the claim only requires the use of generic
sensors which happen to be connected to a non-specific device,
which is a recitation of the insignificant extrasolution activity of
data gathering recited at a high level of generality.
Final Act. 2.
Appellant does not appear to traverse the Examiner’s determination
under Step 2 of Mayo/Alice analysis. See generally Appeal Br.; Reply Br.
Appellant’s traverse of the rejection appears to be limited to the “practical
application” aspects of Step 1 – Prong 2 of the analysis, which we discuss
above and find unpersuasive.
Apart from the abstract idea itself, claim 1 recites the “additional
elements” of: (1) sensors; that are connected to (2) a medical device.
Claims App. Appellant does not identify a single “additional” element in the
claim that it characterizes as more than what is well-understood, routine, or
conventional. See generally Appeal Br.
Appellant’s Specification describes a cardiac monitor, cardiac
stimulator, or “other” medical device. Spec. 6. Appellant further states that
a methodology for generating a trend parameter can be performed by a
“wide variety of medical devices.” Id. Such devices may be configured
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with a “variety of electrode arrangements.” Id. The Specification makes
repeated references to “computed” and “computing,” but otherwise provides
no indication that Appellant has achieved an advancement or improvement
in patient monitoring equipment technology or in computing technology.
All of the data processing, sensing, and input-output devices, as well
as their interconnections, are described at a high level of generality that
presumes familiarity on the part of the reader. Id. A patent applicant is
required to submit a specification that contains a written description of the
invention in “full, clear, concise, and exact terms.” 35 U.S.C. § 112(a). For
purposes of the Alice/Mayo analysis, a specification demonstrates the well-
understood, routine, conventional nature of step 2 “additional elements”
when it describes them in a manner that indicates they are sufficiently well-
known that they need not be described with particularity to satisfy 35 U.S.C.
§ 112(a). That is the case here.
Essentially, all Appellant has done here is use conventional patient
monitoring and computing technology to perform what Appellant’s believe
to be a new form of patient monitoring data analysis. In short, claim 1 is
directed to an abstract idea that is implemented on computing equipment in a
manner that merely states the abstract idea while adding the words “apply
it.” See Alice, 573 U.S. at 223. This is not sufficient for patent eligibility.
Id.
We have considered Appellant’s remaining arguments and find them
to be without merit. Accordingly, for the above reasons, the recited
elements of claim 1, considered individually and as an ordered combination,
do not constitute an “inventive concept” that transforms independent claim 1
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into patent-eligible subject matter. On this record, we affirm the Examiner’s
Section 101 rejection of claims 1–5, 7, 9, and 17–21.
CONCLUSION
Claims
Rejected
35
U.S.C. §
Basis Affirmed Rev’d
1-5, 7, 9, 17-21 101 Eligibility 1-5, 7, 9, 17-21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED