Ex Parte Wall

Patent Trial and Appeal Board

Nov 15, 2016

13035030 (P.T.A.B. Nov. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/035,030 02/25/2011
47478 7590 11/17/2016
IBM (ROC-KLS)
c/o Kennedy Lenart Spraggins LLP
8601 Ranch Road 2222
Ste. 1-225
AUSTIN, TX 78730
FIRST NAMED INVENTOR
David A. Wall
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ROC920100350US1 1999
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
11/17/2016 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):
office@klspatents.com
kate@klspatents.com
hanna@klspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. WALL
Appeal2014-005276
Application 13/035,030
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-22 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM-IN-PART.
Appeal2014-005276
Application 13/035,030
THE INVENTION
The Appellants' claimed invention is directed to administering
medical digital images in a distributed medical digital image computing
environment (Spec. 1, lines 12-14 ). Claim 1, reproduced below with the
numbering in brackets added, is representative of the subject matter on
appeal.
1. A method of administering medical digital images in a
distributed medical digital image computing environment, the method
compnsmg:
[1] receiving a request for an image processing transaction to
process the medical digital image, the request containing a medical
image to be processed, metadata describing the medical image, and a
type of service request for the image;
[2] storing the medical image in one or more of the medical
image caches;
[3] creating, in dependence upon transaction parsing rules and
the contents of the request, a medical image business object
representing the image processing transaction;
[ 4] wherein the medical image business object also includes a
ticket to access the medical image in the cache and wherein the ticket
includes a symbolic representation of the location of the medical
image in the cache, the symbolic representation including the location
of the medical image in the cache, an identification of a protocol to be
used to access the medical image, and an identification of a type of
storage upon which the cache is implemented;
[5] selecting, in dependence upon workflow selection rules and
the attributes of the medical image business object, one or more
clinical workflows to process the medical image; and
[ 6] processing the medical image of the request with the clinical
workflows, thereby creating a resultant business object and resultant
medical image including accessing the medical image in the cache
using the ticket.
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Application 13/035,030
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-12 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1, 7, 13, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Falchuk et al. (US 6,256,613 Bl, issued July 3, 2001),
Konig (US 2007/0192408 Al, published Aug. 16, 2007), and Appellants
admission of the prior art.
3. Claims 2---6, 8-12, 14--17, and 19-22 are rejected under 35
U.S.C. § 103(a) as unpatentable over Falchuk, Konig, Appellants admission
of the prior art, and Official Notice.
4. Claims 1, 7, 13, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Falchuk, Konig, and Dinh et al. (US 2005/0028079 Al,
published Feb. 3, 2005).
5. Claims 2---6, 8-12, 14--17, and 19-22 are rejected under 35
U.S.C. § 103(a) as unpatentable over Falchuk, Konig, Dinh, and Official
Notice.
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 evidence1.
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-005276
Application 13/035,030
ANALYSIS
Re} ection under 3 5 U.S. C. § 101
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as "an ordered
combination" to determine assess whether the additional elements
"transform the nature of the claim" into a patent-eligible application of the
abstract idea. Id. This is a search for an "inventive concept" an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. The Court also stated
that "the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention". Id at 2358.
Here, we find that the claim is directed to the concept of storing and
retrieving data, which in this case, are images. This is a fundamental
economic practice long prevalent in our system of commerce, and is an
abstract idea beyond the scope of § 101. Many long prevalent economic
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Appeal2014-005276
Application 13/035,030
practices have stored data and images and retrieved them when needed. The
process is directed to the abstract idea of merely storing data and creating a
way to retrieve it.
We next consider whether additional elements transform the nature of
the claim into a patent-eligible application of the abstract idea, e.g., whether
the claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Appellant argues that the claims recite a distributed medical digital
image computing environment and medical image caches, which are both
computer hardware machinery (Appeal Br. 7-8). However, considering
each of the claim elements in tum, the function performed in the computer
environment at each step of the process is purely conventional. Each step of
the claimed method does no more than require a generic computer to
perform a generic computer function. For these reasons this rejection of
claim 1 and its dependent claims is sustained. Claim 7 contains similar
subject matter and the rejection of this claim and its dependent claims is
sustained as well.
Rejection under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 1 under 35 U.S.C.
§ 103(a) under Falchuk, Konig, and the Appellant's admission of prior art is
improper because the cited prior art fails to disclose or render obvious claim
limitation [4], as listed in the claims above (Appeal Br. 8-11).
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Appeal2014-005276
Application 13/035,030
In contrast, the Examiner has determined that the cited claim
limitation is found in Falchuk at column 4, lines 36-52, and that the cited
combination would have been obvious (Final Rej. 5; Ans. 3, 4).
We agree with the Appellant. Claim limitation [ 4] requires:
[ 4] wherein the medical image business object also includes a ticket to
access the medical image in the cache and wherein the ticket includes
a symbolic representation of the location of the medical image in the
cache, the symbolic representation including the location of the
medical image in the cache, an identification of a protocol to be used
to access the medical image, and an identification of a type of storage
upon which the cache is implemented.
(Claim 1, emphasis added). Here, the citation to Falchuk at col. 4, lines 36-
42 fails to specifically disclose the entirety of the cited claim limitation. The
Examiner has determined that the claimed "medical image business object"
is shown by Falchuk's "case file history" and that "ticket" is disclosed by the
"pointer" to the database (Ans. 3, 4). However, the above cited recitation in
the claim also requires the ticket, which includes the symbolic
representation, to include also the "identification of a protocol to be used to
access the medical image" and an "identification of the type of storage upon
which the cache is implemented." Here, there is no specific disclosure that
those elements are specifically in the pointer of Falchuk. Further, the
rationale for further modifying the teachings of Falchuk including the data
pointer of the database in the manner by Konig and the citation to
Appellant's disclosure claimed lacks articulated reasoning with rational
underpinnings without impermissible hindsight. Therefore, the rejection of
claim 1 under Falchuk, Konig, and the Appellant's disclosure is not
sustained.
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Application 13/035,030
Claim 1 has also been rejected under 35 U.S.C. § 103(a) under
Falchuk, Konig, and Dinh (Final Rej. 9-12). In order to meet the
requirements of the same cited claim limitation above, this rejection also
cites to Dinh at paragraph 68 as disclosing a symbolic representation in a
hyperlink, and sets forth that the cited combination would have been obvious
in order to allow for effective processing (Final Rej. 12). We have reviewed
this rejection and determine that the rationale for modifying Falchuk
including the data pointer of the database in the manner by Konig and Dinh
also lacks articulated reasoning with rational underpinnings without
impermissible hindsight. The remaining claims contain a similar limitation
and the rejection of these claims is not sustained for the same reasons given
above. For this reason, the rejection of claim 1 under Falchuk, Konig, and
Dinh is also not sustained.
The remaining claims contain limitations similar to those addressed
above, and the rejection of those claims is not sustained for the same reasons
given above.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 101 as listed in the Rejections
section above.
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a) as listed in the Rejections
section above.
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Application 13/035,030
DECISION
The Examiner's rejection of claims 1-12 is sustained. The
Examiner's rejection of claims 13-22 is reversed.
AFFIRMED-IN-PART
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