Ex Parte Vdovjak et al

Patent Trial and Appeal Board

Dec 19, 2017

13133395 (P.T.A.B. Dec. 19, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/133,395 06/08/2011 Richard Vdovjak 2008P00734WOUS 3021
24737 7590 12/21/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD VDOVJAK,
ANCA10 ANA DANIELA BUCUR,
and JOHAN GERHARD HERMAN REUZEL
Appeal 2016-001623
Application 13/133,395
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Richard Vdovjak, Anca Ioana Daniela Bucur, and Johan Gerhard
Herman Reuzel (“Appellants”) seek review under 35 U.S.C. § 134 from a
final rejection of claims 1—3, 5—8, 10-18, and 20, the only claims pending in
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 23, 2015) and Reply Brief (“Reply Br.,” filed November 23,
2015), and the Examiner’s Answer (“Ans.,” mailed September 23, 2015),
and Final Action (“Final Act.,” mailed February 4, 2015).
Appeal 2016-001623
Application 13/133,395
the application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We affirm.
The Appellants invented a form of distributed patient registries for
federated Picture Archiving Communication Systems (PACS).
Specification, Title.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A system, comprising:
[1] a local image storage device storing patient studies,
each patient study being indexed by a local patient
identifier;
[2] a local identity storage device storing a local identity list
including
(i) a global patient identifier corresponding to each of a
plurality of patients having studies stored on the local
image storage device
and
(ii) one or more of the local patient identifiers
corresponding to each of the plurality of patients,
wherein the local identity list is a subset of a global
identity list, the global identity list being stored remotely
from the local identity storage device;
and
[3] a local location storage device storing a local index of the
patient studies stored on the local image storage device and
further patient studies stored on further local image storage
devices for each of the plurality of patients,
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the local index including a pointer to the storage location
of each study and the corresponding global patient
identifier,
wherein the local index is a subset of a global index, the
global index being stored remotely from the local
location storage device,
wherein the local identity storage device receives a query
from the local image storage device
and
wherein, if the query includes a local patient identifier
not included in the local identity list, the local image
storage device redirects the query to the global identity
list and receives a response including a corresponding
one of the global patient identifiers.
Claims 1—3, 5—8, 10-18, and 20 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
ISSUES
The issues of eligible subject matter turn primarily on whether there are
sufficient findings to show the ordered combination and arrangement of the
recited elements does not provide a particular technical advantage.
ANALYSIS
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First,. . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. ... If so, we then ask, “[wjhat
else is there in the claims before us? ... To answer that
question,. . . consider the elements of each claim both
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Application 13/133,395
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The Court]
described step two of this 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 Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to determining the storage location of data. Final Act. 3.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to claim 1 does not recite what it is directed to, but the
components in claim 1 result in storing data including patient studies, patient
identifiers, and indices to the studies. System claim 14 is similar but stores
such data in plural locations. Software claim 7 results in using the indices to
retrieve patient studies. The Specification at paragraph 3 recites that the
invention relates to a system storing patient studies, each patient study being
indexed by a local and global patient identifiers. Thus, all this evidence
shows that the independent claims 1,7, and 14 are directed to storing
indexed data, i.e. data storage.
Claims involving data collection, analysis, and display are directed to an
abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
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Application 13/133,395
(Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent-ineligible concept”); see also In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claims 1, 7, and 14, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data storage, and
indexing and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claims 1, 7, and 14, unlike the claims found non-abstract in prior
cases, are directed to the abstract idea of data storage and indexing data.
The remaining claims merely describe the content of the data stored. We
conclude that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two:
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
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ubiquity of computers, . . . wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea ... on a generic
computer.” Id. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to store and index data amounts to electronic data query and
retrieval—one of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the industry. In short, each step does no more than
require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of storing and indexing data as performed by a
generic computer. To be sure, the claims recite doing so by advising one to
use plural sets of identifiers to resolve ambiguity and let one know when the
ambiguity is resolved. But this is no more than abstract conceptual advice
on the parameters for such data storage and indexing and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
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The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. More than 14 pages of Specification
spell out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of data storage and indexing under
different scenarios. They do not describe any particular improvement in the
manner a computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of storing
and indexing data using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
Although all claims are nominally structural, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting
§ 101“in ways that make patent eligibility ‘depend simply on
the draftsman’s art.’”
Id.
We are not persuaded by Appellants’ argument that “claim 1 is directed
to a system for storing and locating patient studies across various hospital
sites to provide data sharing across the entire organization.” App. Br. 6.
This is consistent with our finding supra that the claims are directed to data
storage. Appellants go on to argue that claimed subject matter differs from
claims the Courts found to recite abstract ideas. Id. at 7. This is inaccurate
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as Elec. Power Grp. is squarely on point. The Federal Circuit has more
recently made this point more firmly that claims directed to the collection,
storage, and recognition of data are directed to an abstract idea under Alice
step one. Smart Systems Innovations, LLC v. Chicago Transit Authority,
873 F.3d 1364, 1372 (Fed. Cir. 2017). That Court said that claims that
invoke computers in the collection and arrangement of data do not escape
the abstract idea exception under Alice step one. Id. at 1373. That case is
particularly pertinent as the claims recite processing data using redundant
data much as the instant claims to, presumably to speed processing. The
Dissent in that case opined that this was sufficient to overcome the abstract
nature of the claims, but the panel majority held otherwise because data
collection and analysis by itself is an abstract idea.
We are not persuaded by Appellants’ argument that
independent claim 1 recites a system that stores studies locally
at various PACS sites while storing indexes at a central
location, which provides a very efficient data sharing system
that is scaleable to large systems including tens or hundreds of
hospitals and allows a physician at any participating hospital to
retrieve images located at any other hospital within the system
while minimizing network usage at peak times. . . . Thus, claim
1 provides improvements to a technological field and
meaningful limitations that go beyond generally linking the use
of an abstract idea to a particular technological environment;
claim 1 is more than an abstract idea implemented on a general-
purpose computer.
App. Br. 9. The problem for Appellants is that claim 1 stores data. That the
data may be useful outside the scope of claim 1 is not pertinent to the
analysis. “When claims like the Asserted Claims are ‘directed to an abstract
idea’ and ‘merely requir[e] generic computer implementation,’ they do[ ] not
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move into section 101 eligibility territory. Smart Systems Innovations, 873
F.3d at 1374.
Appellants further argue that the asserted claims are akin to the claims
found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014). App. Br. 9-10. In DDR Holdings, the Court
evaluated the eligibility of claims “address [ing] the problem of retaining
website visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host’s website after ‘clicking’ on an advertisement and activating a
hyperlink.” Id. at 1257. There, the Court found that the claims were patent
eligible because they transformed the manner in which a hyperlink typically
functions to resolve a problem that had no “pre-Internet analog.” Id. at
1258. The Court cautioned, however, “that not all claims purporting to
address Internet-centric challenges are eligible for patent.” Id. For example,
in DDR Holdings the Court distinguished the patent-eligible claims at issue
from claims found patent-ineligible in Ultramercial. See id. at 1258—59
(citing Ultramercial, 772 F.3d at 715—16). As noted there, the Ultramercial
claims were “directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 714, 715-
lb). Nevertheless, those claims were patent ineligible because they “merely
recite[d] the abstract idea of ‘offering media content in exchange for viewing
an advertisement, ’ along with ‘routine additional steps such as updating an
activity log, requiring a request from the consumer to view the ad,
restrictions on public access, and use of the Internet. ’” Id.
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Appellants’ asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” Ultramercial, 112 F.3d at 712. Similarly, Appellants’ asserted
claims recite data collection and analysis. This is precisely the type of
Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellants’ argument that the claims solve a
technological problem. App. Br. 10—11. The claims solve a clerical
problem that predated computer technology, viz. the ambiguity present in
having plural identifiers for the same entity. In the case of people, this
historically has been solved by also storing a social security number, which
is a global identifier for a person. An instruction to do so is no more than
conceptual advice to solving a clerical rather than technological problem.
We are not persuaded by Appellants’ argument that the claims would not
preempt the idea. Id. at 12—13. “Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo [/Alice]
framework, as they are in this case, preemption concerns are fully addressed
and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015).
The remaining arguments are variations on the above.
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CONCLUSIONS OF LAW
The rejection of claims 1—3, 5—8, 10-18, and 20 under 35 U.S.C. § 101
as directed to non-statutory subject matter is proper.
DECISION
The rejection of claims 1—3, 5—8, 10-18, and 20 is affirmed.
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)(l)(iv) (2011).
AFFIRMED
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