Baumgart, John et al.

Patent Trials and Appeals Board

Dec 12, 2019

14480825 - (D) (P.T.A.B. Dec. 12, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/480,825 09/09/2014 John Baumgart 2013P21499US01 4552
28524 7590 12/12/2019
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
EXAMINER
AUGUSTINE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/12/2019 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN BAUMGART, SOROOSH KARGAR,
PRIYENDU SUBASHCHANDRAN and ABDUL SALIM
VAHABUDEEN
____________

Appeal 2019-002057
Application 14/480,825
Technology Center 3600
____________

Before ERIC B. GRIMES, JOHN G. NEW, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to medical workflow systems and methods, which have been rejected
for indefiniteness and as being directed to patent-ineligible subject matter.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Siemens Healthcare GMBH as the
real party in interest. Appeal Br. 4.
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STATEMENT OF THE CASE
According to the Specification,
Conventional medical workflow associated with medical
procedure typically includes multiple steps. These steps may
include preparation and planning for a patient and setting up scan
program parameters and other variables, such as an angle of a C-
arm of the patient imaging device. Performing each task affects
the turnaround time of each procedure, thereby impacting
efficiency in the examination room.
Spec. ¶ 3. Appellant’s Specification purports to describe “a more efficient
medical workflow system” that “reduce[s] the turnaround time of medical
procedures that incorporate scanning of a patient.” Id. ¶ 33.
Claims 1–3 and 5–23 are on appeal, and can be found in the Claims
Appendix filed on June 19, 2018. Claim 1 is representative and reads as
follows:
1. A medical workflow system comprising:
at least one database configured to store one or more
programs that are executable to operate a patient imaging
device, patient data corresponding to one or more patients,
medical procedure data corresponding to a type of patient
medical procedure, and user data identifying a user to
conduct a medical procedure using the medical procedure
data;
a workflow processor electrically connected to
communicate with the at least one database and configured
to determine which of the one or more programs to retrieve
from the at least one database to provide to the user based on
at least one of the patient data, the medical procedure data
and the user data, wherein the workflow processor
determines an additional one of the one or more programs to
provide to the user that are likely to be used by a current
physician for a current procedure, wherein the workflow
processor automatically selects image acquisition parameters
of at least one of the determined programs based on other
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parameters set by the current physician; and
at least one user interface configured to provide a
plurality of user selectable options comprising the
determined programs by the workflow processor,
wherein the workflow processor is further operative
with a selected program that is selected from the provided
programs to automatically position and control the patient
imaging device for an image acquisition.
Appeal Br. (filed June 19, 2018) 2.
Appellant seeks review of the following grounds of rejection made by
Examiner:
I. Claims 1–3 and 5–23 under 35 U.S.C. § 112(b) for
indefiniteness; and
II. Claims 1–3 and 5–23 under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.
ANALYSIS
I. Indefiniteness
Examiner determines that the term “likely,” which is recited in claim
1 as well as the other independent claims, “is a relative term which renders
the claim indefinite” because it is “not defined by the claim” and “the
specification does not provide a standard for ascertaining the requisite
degree.” Final 2.
Appellant argues that the term is definite in light of the description in
the Specification. See Appeal Br. 13–14.2 In particular, Appellant contends
that “[o]ne of ordinary skill in the art would readily understand, based on the
Specification, how the programs likely to be used by a current physician for
a current procedure are identified” and therefore one “would readily

2 Unless otherwise noted, we cite to Appellant’s brief filed May 15, 2018.
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appreciate the scope of the claimed invention.” Id. at 14 (citing Spec. ¶¶ 53,
55–56).
“[W]e apply the approach for assessing indefiniteness approved by
the Federal Circuit in Packard, i.e., ‘[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.”’ Ex parte McAward, No.
2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir.
2014)). “Put differently, ‘claims are required to be cast in clear-as opposed
to ambiguous, vague, indefinite-terms.”’ Id. (quoting Packard, 751 F.3d at
1313). “At the same time, this requirement is not a demand for unreasonable
precision.” Packard, 751 F.3d at 1313.
Using this approach to analyze the rejection here, we agree with
Appellant that Examiner’s rejection should be reversed. Claim 1 states that
the “workflow processor determines an additional one of the one or more
programs to provide to the user that are likely to be used by a current
physician for a current procedure.” The Specification explains these
programs are the physician’s “preferred programs,” which the processor may
identify “based on frequency of use” by tracking the user’s prior selections.
Spec. ¶ 55. In light of this description, the term “likely,” as recited in claim
1 and the other independent claims, is not “ambiguous, vague, incoherent,
opaque, or otherwise unclear in defining the claimed invention.” See In re
Packard, 751 F.3d at 1312. Accordingly, we reverse Examiner’s rejection
of claims 1–3 and 5–23 under 35 U.S.C. § 112(b).
II. Subject Matter Eligibility
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit judicial 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 Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In Alice step one, we ask whether the claims
are directed to an exception to patent eligibility, such as an abstract idea or
law of nature. Alice, 573 U.S. at 218. In Alice step two, we examine the
elements of the claims to determine whether they contain an inventive
concept sufficient to transform the claimed judicial exception into a patent-
eligible application. Mayo, 566 U.S. at 71–72 (quoting Alice, 134 S. Ct. at
2355).
The Office published revised guidance on the application of the
Supreme Court’s Alice analysis in January 2019. USPTO’s January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50–57 (“Guidance”). According to the Guidance, we look to
whether the claim recites: (1) a judicial exception, including certain
groupings of abstract ideas such as mathematical concepts and mental
processes (Guidance Step 2A, prong 1); and (2) additional elements that
integrate the judicial exception into a practical application (Guidance Step
2A, prong 2). Only if the claim recites a judicial exception and does not
integrate that exception into a practical application, do we then examine
whether the claim adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field (Guidance
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Step 2B). See Guidance at 54–56. An update to the Guidance further
elaborating on this analysis was recently published. USPTO’s October 17,
2019 Memorandum, October 2019 Update: Subject Matter Eligibility,
available at https://www.uspto.gov/sites/default/files/documents/peg_oct
_2019 _update.pdf (“Guidance Update”).
Examiner’s Findings and Conclusions
Regarding Alice step one (Guidance Step 2A), Examiner determines
that claim 1 recites “the concept of comparing new patient data with
previously stored patient data to determine which option (program) is
suitable for the patient, which corresponds to the concept identified as
abstract ideas by the courts, such as comparing new and stored information
and using rules to identify options in SmartGene.” Final 4 (citing
SmartGene, Inc. v. Advanced Biological Labs., SA, No. 2013–1186 SA, 555
Fed. Appx. 950 (Fed. Cir. Jan. 24, 2014). For Alice step two (Guidance Step
2B), Examiner finds that the “claim does not include additional elements
that are sufficient to amount to significantly more than the judicial
exception” because it merely recites “[g]eneric computer components recited
as performing generic computer functions that are well-understood, routine
and conventional activities [that] amount to no more than implementing the
abstract idea with a computerized system.” Id. at 5. Examiner makes
similar findings for Appellant’s other claims. See id. at 6–13.
Appellant’s Contentions
Appellant disputes Examiner’s rejection at both Alice steps. See
Appeal Br. 13–24.3 In particular at Alice step one, Appellant contends that

3 Unless otherwise noted, all citations to Appellant’s brief refer to the
Appeal Brief filed on May 15, 2018.
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the present claims are “directed to an improved user interface” with a
“workflow processor” that, inter alia, “automatically selects image
acquisition parameters” and “is further operative with a selected program . . .
to automatically position and control the patient imaging device for image
acquisition.” Id. at 18. Thus, Appellant urges its claims are not directed to
an “abstract idea of ‘comparing new and stored information and using rules
to identify options’ or ‘collecting data and processing data for display’ as
asserted by the Examiner.” Id. (quoting Final 4); see also Reply Br. 6
(arguing that a combination of elements including that requiring the
workflow processor to be “further operative with a selected program that is
selected from the provided programs to automatically position and control
the patient imaging device for an image acquisition” integrates the judicial
into a practical application).
Our Review
Applying the Supreme Court’s Alice framework as explained in the
Office’s Guidance, we agree with Examiner that, given their broadest
reasonable interpretation, the claims recite a mental process of analyzing
patient, medical procedure, and user data to determine one or more programs
likely to be used for imaging of a patient (Guidance Step 2A, Prong 1).4
However, as explained more fully below, we are persuaded by Appellant’s
arguments that the judicial exception is integrated into a practical application
that provides a specific improvement over prior systems (Guidance Step 2A,

4 It is undisputed that Appellant’s claims are directed to one of the statutory
classes of patentable subject matter, i.e., a method or “process,” recited in
35 U.S.C. § 101. Thus, we begin our analysis at Step 2A, prong 1 of the
Guidance.
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Prong 2). Therefore, Appellant’s claims are not directed to the judicial
exception itself and are patent eligible.
Guidance Step 2A, Prong 1
Claim 1 recites a workflow processor connected to a database
containing programs for operating a patient imaging device as well as
patient, procedure, and user data. The workflow processor is configured to
“determine which of the one or more programs to retrieve” based on that
data and “determine[] an additional one of the one or more programs to
provide to the user that are likely to be used by a current physician for a
current procedure” and “automatically select[] image acquisition parameters
of the determined programs based on other parameters set by the current
physician.” The above-quoted limitations recite the automation of a mental
process, that is, analyzing patient, medical procedure, and user data to
determine one or more programs likely to be used for imaging a patient.
Indeed, the Specification suggests the same processes are performed in the
mind in the “conventional medical workflow” where one manually
“prepar[es] and plan[s] for a patient and set[s] up scan program parameters
and other variables, such as an angle of a C-arm of the patient imaging
device.” Spec. ¶ 3. That claim 1 further includes generic computer
components (e.g., a database and processor) to automate what is otherwise a
manual process does not remove the exception recited here from the mental
process category. See Guidance 52, n. 14 (“If a claim, under its broadest
reasonable interpretation, covers performance in the mind but for recitation
of generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”)
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(citing cases). For these reasons, we conclude Appellant’s claims recite an
abstract idea––a mental process.
Guidance Step 2A, Prong 2
Having determined that the claims recite a judicial exception, our
analysis now turns to determining whether there are additional elements that
integrate the judicial exception into a practical application such that the
claim is not directed to the exception itself (Guidance Step 2A, prong 2).
“Integration into a practical application” requires that the claim recite an
additional element or a combination of elements, that when considered
individually or in combination, “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.” Guidance at 54. One consideration “indicative that an
additional element (or combination of elements) may have integrated the
exception into a practical application” is where it “reflects an improvement
in the functioning of a computer, or an improvement to other technology or
technical field” or “applies or uses the judicial exception in some other
meaningful way.” Id. at 55.
Here, we determine that claim 1 recites additional elements that
integrate the judicial exception into a practical application by applying the
result of the recited mental process in a meaningful way. Specifically, claim
1 recites that the processor and the selected program are operative to
“automatically position and control the patient imaging device for an image
acquisition.”5 Thus, Appellant’s claims require more than just the

5 The other independent claims, claims 10 and 17, recite the same element.
See App. Br. 22–23.
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comparison of data and the display of the results of that analysis. Here, the
program selected through the recited mental process is used to position and
control the medical imaging equipment according to the particular imaging
parameters of that program.
It is this additional element that distinguishes Appellant’s claims from
those in the cases cited by Examiner. In SmartGene, the claimed method
“for guiding the selection of a therapeutic treatment regimen” ended with the
generation of a “ranked listing” and “advisory information” for available
regimens. 555 Fed. Appx. at 952. It is true, as Examiner determined, that an
analogy can be drawn between the generation of this ranked listing and the
determination of a program in Appellant’s claims. See Final 4. But unlike
the claim in SmartGene, Appellant’s claims include an additional element
that executes that program to “position and control” the medical imaging
equipment to acquire an image. It is this element that integrates the mental
process recited in Appellant’s claims into a practical application.
In this regard, Appellant’s claims are similar to claim 2 of the
example 45 in Appendix 1 to the Guidance Update.6 Claim 1 of example 45
includes elements that recite a mental process, i.e., performance of a
particular mathematical calculation––the Arrehenius equation, which can be
performed in the human mind. Guidance Update App. 21. But claim 2 is
patent eligible because it recites an additional element that “send[s] control
signals instructing the apparatus to open the mold” based on that calculation.

6 Appendix 1 to the October 2019 Update: Subject Matter Eligibility Life
Sciences & Data Processing Examples, available at https://www.uspto.gov/
sites/default/files/documents/peg oct_2019_app1.pdf (“Guidance Update
App.”).
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Id. at 24. This element “adds a meaningful limitation in that it employs the
information provided by the judicial exceptions . . . to control the operation
of the injection molding apparatus.” Id. So too, the “automatically position
and control” element of Appellant’s claims applies the recited mental
process in a meaningful way by controlling operation of the patient imaging
device to acquire an image. Accordingly, Appellant’s claims are directed to
a practical application of that judicial exception.
For these reasons, we conclude that Appellant’s independent claims
are not directed to an abstract idea. We therefore reverse Examiner’s
rejection of those claims without proceeding to Alice step 2 to determine
whether the claims also provide an inventive concept (USPTO Guidance
Step 2B). See Guidance at 56. Examiner’s rejection of dependent claims 2,
3, 5–9, 11–16, and 18–23 is premised on the same rationale as the rejection
of claim 1 and we reverse the rejection as to those claims for the same
reasons.
SUMMARY
We reverse the rejection of claims 1–3 and 5–23 for indefiniteness
under 35 U.S.C. § 112(b). We reverse the rejection of claims 1–3 and 5–23
under 35 U.S.C. § 101 as being directed to patent ineligible subject matter.
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–23 112(b) Indefiniteness 1–3, 5–23
1–3, 5–23 101 Eligibility 1–3, 5–23

REVERSED