Eric Thelen et al.

Patent Trials and Appeals Board

Mar 23, 2020

14482544 - (D) (P.T.A.B. Mar. 23, 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.
14/482,544 09/10/2014 Eric Thelen 2013P00146US 2907
24737 7590 03/23/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/23/2020 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):
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 ERIC THELEN and FRANK WARTENA
Appeal 2018-005794
Application 14/482,544
Technology Center 3600
Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and
IFTIKHAR AHMED, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–7 and 9–15, which are all of the claims pending
in the application. 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 the real party in interest as
Koninklijke Philips Electronics N.V. Appeal Br. 2.
Appeal 2018-005794
Application 14/482,544
2
TECHNOLOGY
The claims relate to a healthcare system “adjusting a personalized care
plan of a user.” Spec. 1:7–8. Claim 1 is illustrative and reproduced below:
1. A system for dynamically adjusting a care plan for a user, the
care plan defining a plurality of prescribed care plan tasks to be
adhered to by the user, the system comprising:
one or more processors configured by machine-readable
instructions to:
measure a user’s adherence to an individual prescribed
care plan task during a first period;
compare the user’s adherence to the individual
prescribed care plan task to an expected adherence to the
individual prescribed care plan task during the first period;
calculate the user’s compliance score indicating the
user’s compliance to the individual prescribed care plan task
based on the comparison of the user’s adherence and the
expected adherence;
determine a compliance score threshold for the
individual prescribed care plan task during the first period;
compare the user’s compliance score for the individual
prescribed care plan task to the compliance score threshold
for the individual prescribed care plan task during the first
period; and
dynamically adjust the user’s care plan based on the
comparison of the user’s compliance score and the
compliance score threshold during the first period, wherein
adjusting the user’s care plan includes:
dynamically adjusting the compliance score
threshold for the individual prescribed care plan task based
on the comparison of the user’s compliance score and the
compliance score threshold during the first period such
that the compliance score threshold changes from a first
threshold value at a first time during the first period to a
second threshold value at a second time during a second
period subsequent to the first period.
Appeal 2018-005794
Application 14/482,544
3
REJECTION
Claims 1–7 and 9–15 stand rejected under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter without significantly more. Final Act. 3.
ANALYSIS
Framework for § 101
In 2019, the U.S. Patent & Trademark Office published revised
guidance on the application of § 101. USPTO, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”);
USPTO, October 2019 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (“Oct. Update”). Under that guidance, we look to the following steps to
determine whether the claim recites the following items:
USPTO
Step Does the claim recite ___? MPEP §
1 A process, machine, manufacture, or composition of matter 2106.03
2A, Prong 1
A judicial exception, such as a law of nature or
any of the following groupings of abstract
ideas:
1) Mathematical concepts, such as
mathematical formulas;
2) Certain methods of organizing human
activity, such as a fundamental
economic practice; or
3) Mental processes, such as an observation
or evaluation performed in the human
mind.
2106.04
2A, Prong 2 Any additional limitations that integrate the judicial exception into a practical application
2106.05(a)–
(c), (e)–(h)
2B
Any additional limitations beyond the judicial
exception that, alone or in combination, were
not “well-understood, routine, conventional”
2106.05(d)
Appeal 2018-005794
Application 14/482,544
4
See Guidance 52, 55, 56. Here, there is no dispute with respect to USPTO
Step 1, so we proceed to the remaining steps.
USPTO Step 2A, Prong 1
Prong 1 asks whether the claim recites an abstract idea, such as a
mental process. Here, the claims recite dynamically adjusting a patient’s
future care plan based upon how compliant the patient was in the past.
Thus, “with the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.” Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Other than the
generic “processor” and “instructions,” a human mind can “measure” a
patient’s adherence, “compare” that measured adherence to the expected
adherence, “calculate” compliance, “compare” that calculated compliance to
a “determine[d]” threshold, and “dynamically adjust” the plan going
forward. This is exactly what happens mentally when, for example, a
dentist—who previously told you to floss every day—hears that you have
not been flossing at all and thereafter lowers her expectations for you to floss
at least once a week. Similarly, if a doctor told you to exercise at least twice
a week and you at your next visit announced that you had been exercising
every day, the doctor could mentally determine that your compliance was in
excess of the previous recommendation and dynamically adjust her new
recommendation to be that you keep up the exercise going forward. Thus,
this case is similar to SmartGene, in which the Federal Circuit held a claim
was directed to a mental process because “[c]laim 1 does no more than call
on a ‘computing device,’ with basic functionality for comparing stored and
Appeal 2018-005794
Application 14/482,544
5
input data and rules, to do what doctors do routinely.” SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 F. App’x 950, 954 (Fed. Cir. 2014).
Other than dependent claim 4 (which we discuss below under prong
2), the dependent claims merely specify which information is used for
various calculations (e.g., claim 2) or provide further mental processes (e.g.,
claim 6 reciting a further “determine” and “calculate” step based on
“adherence deviations”). But these do not change that the processes can be
performed in the human mind.
As the Federal Circuit has said, “we continue to treat analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146 (Fed. Cir. 2016) (quotation omitted). Thus, the claims recite
mental processes, which are abstract ideas.
USPTO Step 2A, Prong 2
Prong 2 asks whether the claim recites any additional limitations that
integrate the judicial exception into a practical application.
The only limitation in claim 1 beyond the abstract ideas noted above
recites that the steps are to be performed by “one or more processors
configured by machine-readable instructions.” However, the Supreme Court
is clear that “the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.” Alice Corp.
v. CLS Bank Int’l, 573 U.S. 208, 223 (2014).
Dependent claim 4 also recites a “user interface”; “vital sign
measurement units”; “camera”; “medication intake monitoring unit”; and
“multimedia unit.” However, the claim does not further utilize any of these
Appeal 2018-005794
Application 14/482,544
6
components. Instead, claim 4 itself expressly states that each of these
components is “for” its ordinary usage (e.g., “one or more vital sign
measurement units for measuring one or more vital signs of the user”).
Thus, these generic components are insufficient for the same reasons. E.g.,
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–
25 (Fed. Cir. 2016) (“generic computer components such as an ‘interface’
. . . do not satisfy the inventive concept requirement”).
Although Appellant argues that the claims are “technical,” Appellant
fails to identify any limitation outside of the mental processes, alone or in
ordered combination, that improves the technology or is tied to a particular
machine. E.g., Appeal Br. 16. Appellant’s reliance on the “dynamically
adjust” limitations is misplaced because “[t]he abstract idea itself cannot
supply the inventive concept, no matter how groundbreaking the advance.”
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019)
(quotation omitted).
Thus, the claims do not integrate the recited abstract idea into a
practical application.
USPTO Step 2B
This step asks whether the recited additional limitations beyond the
judicial exception were not “well-understood, routine, conventional.”
As noted above, the Supreme Court is clear that a “processor” without
more does not provide significantly more than the abstract idea. Alice, 573
U.S. at 223. The Federal Circuit likewise has held that generic components
such as the “user interface” in claim 4 do not provide an inventive concept.
E.g., Mortg. Grader, 811 F.3d at 1324–25 (“generic computer components
such as an ‘interface’ . . . do not satisfy the inventive concept requirement”).
Appeal 2018-005794
Application 14/482,544
7
Appellant argues that “a Section 101 rejection requires some
evidence” that “the claimed process was previously done by humans” and
hence that “at least a non-computer-implemented version of a claimed
process was a well-understood, routine, conventional activity.” Reply Br. 9
(emphasis omitted). However, this misstates the test. The “well-understood,
routine, conventional” portion of the test applies only to additional
limitations beyond the abstract idea. E.g., Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79–80 (2012) (“any additional steps
consist of well-understood, routine, conventional activity already engaged in
by the scientific community; and those steps, when viewed as a whole, add
nothing significant beyond the sum of their parts taken separately”
(emphasis added)). As noted above, “[t]he abstract idea itself cannot supply
the inventive concept, no matter how groundbreaking the advance.” Trading
Techs., 921 F.3d at 1093 (quotation omitted).
Accordingly, we sustain the rejection of claims 1–7 and 9–15.
DECISION
The following table summarizes the outcome of each rejection:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–7, 9–15 101 Eligibility 1–7, 9–15
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.36(a)(1)(iv).
AFFIRMED