KONINKLIJKE PHILIPS N.V.Download PDFPatent Trials and Appeals BoardApr 24, 202014572984 - (D) (P.T.A.B. Apr. 24, 2020) Copy Citation 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. 14/572,984 12/17/2014 Qin Zhu 2013P01911US 9805 24737 7590 04/24/2020 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus Avenue Suite 340 Valhalla, NY 10595 EXAMINER LE, LINH GIANG ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 04/24/2020 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 QIN ZHU, YIHUI FAN, ZUOFENG LI, and RICHARD VDOVJAK Appeal 2019-003800 Application 14/572,984 Technology Center 3600 Before J. JOHN LEE, DANIEL J. GALLIGAN, and DAVID J. CUTITTA II, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–11 and 14–22, which constitute all the claims pending in this application. Claims 12 and 13 have been cancelled. 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 N.V. Appeal Br. 2. Appeal 2019-003800 Application 14/572,984 2 CLAIMED SUBJECT MATTER The present invention relates generally to scheduling healthcare for a patient, e.g., making an appointment for a patient to visit a doctor, using clinical knowledge about that patient. Spec. 1:8–9, Abstract. Independent claim 1 is illustrative of the claims on appeal and is reproduced below with bracketed lettering added for discussion purposes: 1. A method of healthcare scheduling, the method comprising the steps of: [a] receiving, with one or more processors, a request to generate an appointment for a target user, the request indicating identification of the target user, a desired appointment time for the target user, and health conditions associated with the target user; [b] determining, with the one or more processors, based on a follow-up protocol associated with the target user, a permissible time difference to the desired appointment time; [c] obtaining, with the one or more processors, clinical knowledge associated with the target user, the clinical knowledge indicating (i) time constraints corresponding to the health conditions and (ii) at least one required resource for the appointment; [d] generating, with the one or more processors, a group of prioritized candidate appointments based on (i) the desired appointment time, (ii) the permissible time difference, and (iii) the time constraints indicated by the clinical knowledge, each candidate appointment of the group of prioritized candidate appointments being represented at least by appointment time and a priority; and [e] selecting, with the one or more processors, at least one recommended appointment from the group of prioritized candidate appointments based on availability of the at least one required resource. Appeal 2019-003800 Application 14/572,984 3 REJECTION ON APPEAL The Examiner rejected claims 1–11 and 14–22 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 3–8. We limit our review in this appeal to the above rejection and the issues raised by Appellant. Arguments not made are waived. See MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(1)(iv), 41.39(a)(1). ANALYSIS Appellant appeals the Examiner’s rejection of claims 1–11 and 14–22 as ineligible subject matter under § 101. Appeal Br. 4–22. Appellant’s arguments address limitations recited in claim 1 and do not otherwise address any particular limitation recited in any other claim. As such, we select independent claim 1 as representative of all rejected claims in this appeal. 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, the Supreme Court has held that § 101 includes implicit exceptions—laws of nature, natural phenomena, and abstract ideas—which are not patent-eligible. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In January 2019, the Office issued the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“January 2019 Guidance”), which addresses the manner in which § 101 case law is to be applied by the Office. In October 2019, the Office issued an update to explain further the manner in which the January 2019 Guidance should be implemented. See October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55,942 (Oct. 18, 2019); October 2019 Update: Subject Matter Appeal 2019-003800 Application 14/572,984 4 Eligibility, available at https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf (“October 2019 Update”). The Board is required to adhere to these guidance documents as a matter of Office policy. See January 2019 Guidance 51.2 The January 2019 Guidance sets forth a four- part analysis for determining whether a claim is eligible subject matter under § 101; the four parts are denominated Step 1, Step 2A Prong 1, Step 2A Prong 2, and Step 2B. See id. at 53–56. January 2019 Guidance Step 1 First, under “Step 1,” we consider whether the claimed subject matter falls within the four statutory categories set forth in § 101, namely “[p]rocess, machine, manufacture, or composition of matter.” January 2019 Guidance 53–54; see 35 U.S.C. § 101. Independent claim 1 recites a “method” and claim 11 recites a “system for healthcare scheduling” (an “apparatus”). As such, the claims are each directed to a statutory class of invention within § 101, i.e., processes and machines. Consequently, we proceed to the next step of the analysis. January 2019 Guidance Step 2A Prong 1 Second, under “Step 2A Prong 1,” we evaluate “whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon.” 2019 Guidance 54; see Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216–17 (2014). 2 Although the Office Action at issue occurred before the 2019 Guidance was issued, the 2019 Guidance “applies to all applications . . . filed before, on, or after January 7, 2019.” January 2019 Guidance 50. Appeal 2019-003800 Application 14/572,984 5 The Examiner determined that claim 1 recites a judicial exception— specifically, an abstract idea. Ans. 3–4; Final Act. 3. According to the Examiner, the claim recites steps in a “process of making an appointment for a patient to visit a doctor or hospital with specific healthcare resources at a specific time,” which is “a method of managing interactions between a patient and his or her healthcare provider.” Final Act. 3; Ans. 3. As a result, the Examiner determined that such steps may be categorized as certain methods of organizing human activity constituting an abstract idea, or as mental processes. Ans. 3–4; Final Act. 5. Both are groupings of abstract ideas identified by the January 2019 Guidance. January 2019 Guidance 52. Appellant contends the “claims do not recite matter that falls within the” groupings of abstract ideas described in the January 2019 Guidance. Reply Br. 4. In particular, Appellant argues that “[s]imply because a claim ‘allows’ one or more interactions to occur,” i.e., appointment scheduling between a patient and his or her healthcare provider, “does not mean the claim recites such interactions.” Reply Br. 4–5. Additionally, Appellant argues the Examiner “overgeneralized the claims to identify an abstract idea” and “ignored and stripped away a number of requirements of the individual claimed steps.” Appeal. Br. 7–8. We are not persuaded the Examiner erred. Rather, we agree with the Examiner’s determination that claim 1 recites an abstract idea. Aside from reciting “with one or more processors” (considered below in later steps of analysis), claim 1 recites steps focused on a process for scheduling a healthcare appointment. Agreeing to a time to meet, i.e., scheduling an appointment, is a long-practiced human activity. In particular, limitations [a]–[c] involve identifying and gathering information about the Appeal 2019-003800 Application 14/572,984 6 requirements necessary for the appointment, e.g., the patient’s identity, the urgency of the appointment, and what medical resources are necessary for the appointment. Identifying, gathering, and determining appointment requirements, e.g., time constraints and resource requirements, have long been common steps in scheduling appointments. Limitation [d] involves determining possible appointments based on the appointment requirements. Determining when an appointment can be scheduled in consideration of timing and resources also is common in appointment scheduling. Indeed, the examples of time constraints disclosed by the Specification are commonly-considered timing constraints, e.g., that an appointment must be scheduled as soon as possible, or urgently, or can be postponed. Spec. 8:1–4. Limitation [e] involves selecting one of the possible appointment times. Accordingly, the steps recited in the claims are all steps in a process to schedule an appointment. Further, the process includes steps of gathering information, evaluating potential appointment times based on that information, and selecting one of those appointment times, all of which can be performed entirely in the human mind, or with the aid of a pen and paper. Although Appellant identifies limitations on the types of data used in the claimed process (Appeal Br. 8), such limitations do not make the mental process of gathering and evaluating that information any less abstract. That the steps involve gathering and evaluating information specific to the healthcare environment adds certain details to the appointment scheduling, but does not change the nature of the claimed process. The Specification further supports the Examiner’s determination that the “process of making an appointment for a patient to visit a doctor or Appeal 2019-003800 Application 14/572,984 7 hospital with specific healthcare resources at a specific time” recites a certain method of organizing human activity constituting an abstract idea, or an abstract mental process. Final Act. 3; Ans. 3. The Specification describes that the purpose of the invention is “healthcare scheduling,” which is “the process of making an appointment for a patient to visit a doctor or hospital with specific healthcare resources at a specific time.” Spec. 1:2–9. The Specification also describes that healthcare scheduling is a human interaction that “traditionally” has been “done manually by healthcare practitioners such as nurses.” Id. at 1:14–16. As the January 2019 Guidance provides, certain methods of organizing human activity constituting abstract ideas include “business relations,” as well as “managing personal behavior or relationships or interactions between people.” January 2019 Guidance 52. In addition, abstract mental processes include “concepts performed in the human mind,” including “observation, evaluation, judgment, opinion.” Id.; see October 2019 Update 7 (indicating that a claim to collecting and analyzing information that can be practically performed in the human mind recites a mental process, citing Elec. Power Grp., LLC v. Alston, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)).3 Consequently, we agree with the Examiner that claim 1 recites an abstract idea in the form of a “certain method of organizing human activity” and a “mental process,” as provided in the January 2019 Guidance. 3 Additionally, requiring such steps to be performed by a generic computer does not indicate that the claim fails to recite a mental process. October 2019 Update 8. Appeal 2019-003800 Application 14/572,984 8 Additionally, Appellant’s argument that the Examiner “overgeneralized” the claims (Appeal. Br. 7–8) also is unpersuasive. The level of abstraction at which the Examiner describes the invention does not change the accuracy of the Examiner’s determination. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction.”). Moreover, the Examiner explained which claim limitations were considered, and why, to determine that claim 1 recites an abstract idea. See Final Act. 4–5. Thus, we agree with the Examiner that claim 1 recites an abstract idea, and we discern no error in that aspect of the Examiner’s rejection. January 2019 Guidance Step 2A Prong 2 Having determined that claim 1 recites an abstract idea, we proceed to “Step 2A Prong 2” of the January 2019 Guidance, which requires that we evaluate whether “the claim as a whole integrates the recited judicial exception into a practical application of the exception.” January 2019 Guidance 54. “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.” Id.; see Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012). The January 2019 Guidance specifies that this evaluation is conducted by first “[i]dentifying whether there are any additional elements recited in the claim beyond the judicial exception(s),” and then “evaluating those additional elements individually and in combination to determine Appeal 2019-003800 Application 14/572,984 9 whether they integrate the exception into a practical application.” January 2019 Guidance 54–55. Appellant contends that “the claims integrate any such abstract idea into a practical application.” Reply Br. 5–7. Specifically, Appellant argues that “the claimed invention improves upon existing patient scheduling systems by reducing the number of calculations and data retrievals needed to select an appointment with available resources.” Reply Br. 5 (emphasis omitted); see Appeal Br. 11–12, 20–22. Appellant further argues that generating appointments based on (i) a desired appointment time of a target user, (ii) a permissible time difference to the desired appointment time determined based on a follow-up protocol associated with the target user, and (iii) time constraints indicated by clinical knowledge associated with the target user and indicating time constrains corresponding to health conditions associated with the user and at least one required resource of the appointment recites limitations “impos[ing] a meaningful limit on automated healthcare scheduling in a way that does not monopolize such healthcare scheduling in general.” Reply Br. 6 (emphasis omitted). Still further, Appellant argues that generating the group of prioritized candidate appointments based on (i) a desired appointment time [obtained from the received request], (ii) the permissible time difference [determined based on the desired appointment time, which is obtained from the received request], and (iii) time constraints [determined based on (i) a follow-up protocol for the target user identified by the received request and (ii) health conditions associated with the target user identified by the received request] recites “additional limitations” that integrate the exception into a practical application, because those limitations enable “the generation of the group of Appeal 2019-003800 Application 14/572,984 10 prioritized candidate appointments, which facilitates the reduction in computational complexity when generating appointment recommendations.” Reply Br. 7 (alterations in original). Further, Appellant argues “the claimed solution transforms the impacts or constraints of the clinical knowledge (e.g., time constraints corresponding to the target user’s health conditions) into appointment prioritization.” Appeal Br. 12 (emphasis omitted). We are not persuaded that the claims integrate an abstract idea into a practical application. Although Appellant argues “the claimed invention improves upon existing patient scheduling systems” (Reply Br. 5; Appeal Br. 11–12, 21–22), any such improvement provided by the claimed invention is an improvement to the recited abstract idea, which generally does not confer patent-eligibility. See Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1363–65 (Fed. Cir. 2020) (collecting cases). As the Examiner points out, improvements in patient scheduling are “improvement[s] to a known concept” rather than “an improvement to a technology or technical field.” Ans. 4–5. That is, the improvement recited by the claims is an improvement to an abstract idea, not a technological improvement. Indeed, the Specification states that the invention aims to solve the non-technological problems of “match[ing] a great variety of patient needs with the available [medical] resources,” the “time consuming and inconvenient” nature of manual appointment scheduling, and selecting “not optimal” appointments due to medical considerations. Spec. 1:14–2:4. Although Appellant argues that “reducing the number of calculations and data retrievals needed to select an appointment with available resources” is an improvement to computing technology (Reply Br. 5–7), such a reduction results from the abstract idea improving the way potential Appeal 2019-003800 Application 14/572,984 11 appointments are identified and thereby using the computer less, not because the computer itself has been improved. As such, the claims do not recite a patent-eligible improvement to computer functionality. Customedia Techs., 951 F.3d 1359, 1365 (“[T]o be directed to a patent-eligible improvement to computer functionality, the claims must be directed to an improvement to the functionality of the computer or network platform itself.”) Further, the limitations reciting receiving/determining/obtaining information used to generate candidate appointments also do not integrate the abstract idea into a practical application. See Reply Br. 6–7. Identifying and gathering information about the requirements for an appointment—e.g., the patient’s identity, the urgency of the appointment, and pertinent medical resources—are part of the recited abstract idea, as discussed above. Thus, we do not consider them as “additional elements” serving to integrate the abstract idea into a practical application. Moreover, even if we were to consider those limitations as separate from the abstract idea, we would agree with the Examiner that receiving and determining appointment requirement information are insignificant extra-solution activity to the judicial exception. Ans. 4. The focus of the invention is the generation of potential candidate appointment times based on various appointment requirements. Spec. 2:12– 14, 3:13–34. Merely gathering and identifying data (e.g., appointment requirements) for analysis typically is insignificant extra-solution activity. January 2019 Guidance at 55 n.31 (citations omitted). Aside from the recited abstract idea, the only “additional elements” recited in claim 1 are the “one or more processors” that perform each of the steps of the process. As the Specification makes clear, however, these processors are generic computer components that do not meaningfully limit Appeal 2019-003800 Application 14/572,984 12 the claim such that the abstract idea is integrated into a practical application. See Spec. 16:9–18 (indicating the claimed invention “may be implemented, as non-limiting examples, in hardware, software, firmware, special purposes circuits or logic, general purpose hardware or controller or other computing devices, or some combination thereof”). Thus, the “one or more processors” recited in claim 1 merely invoke a generic computer used as a tool to perform the recited abstract idea. See January 2019 Guidance 55; Customedia Techs., 951 F.3d at 1364. Additionally, although Appellant argues “the claimed solution transforms the impacts or constraints of the clinical knowledge (e.g., time constraints corresponding to the target user’s health conditions) into appointment prioritization” (Appeal Br. 12 (emphasis omitted)), the transformation Appellant identifies is only a transformation of information. That is, the claimed process does not transform any tangible object or matter and instead transforms intangible concepts into other intangible concepts, i.e., transforming scheduling requirements into potential scheduling times. As such, the claims do not recite a “[t]ransformation and reduction of an article ‘to a different state or thing.’” See Bilski, 561 U.S. 593, 604 (2010); MPEP § 2106.05(c). None of the other indicia of integration set forth in the January 2019 Guidance are present in the claim. January 2019 Guidance 55; see MPEP § 2106.05(a)–(c), (e). For example, the claims do not recite a particular machine and, instead, recite a generic “method” or “system for healthcare scheduling” with only generic components, as discussed above. Therefore, we determine that claim 1 is not directed to a specific asserted technological improvement or otherwise integrated into a practical application. Appeal 2019-003800 Application 14/572,984 13 Consequently, we conclude the claim is “directed to” an abstract idea. January 2019 Guidance 54. 2019 Guidance Step 2B Having concluded that claim 1 is “directed to” an abstract idea, we finally turn to whether the claims provide an “inventive concept,” i.e., whether the additional elements, individually and as an ordered combination, amount to “significantly more” than the exceptions themselves. January 2019 Guidance 56. The Examiner determined that “taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).” Final Act. 7. Specifically, the Examiner noted that claim 1 essentially amounts to a judicial exception and instructions to “apply it” by implementing it on a generic computer. See id. at 6–7. Additionally, the Examiner determined that “[l]ooking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.” Id. at 7. Appellant contends that “the claims include additional elements that are not well-understood, not routine, and not conventional” and, so, are patent eligible. Reply Br. 7–14. According to Appellant, “the unconventional use of clinical knowledge constitutes an unconventional step — making the claims patent eligible.” Appeal Br. 13 (emphasis omitted). In a similar vein, Appellant argues “the claimed invention includes a non- conventional and non-generic combination of elements.” Reply Br. 13; Appeal Br. 13–14. Still further, Appellant argues that “there is no evidence Appeal 2019-003800 Application 14/572,984 14 that the claimed invention (or the inventive concept as a whole) was well- understood, routine, and conventional.” Appeal Br. 14, 17; Reply Br. 10. We do not find Appellant’s arguments persuasive. Appellant’s arguments wrongly rely on the novelty of the ineligible concept to confer patent-eligibility. Our reviewing court has stated that it is not enough for eligibility that “the techniques claimed are ‘[g]roundbreaking, innovative, or even brilliant,’” or are “novel and nonobvious” because “a claim for a new abstract idea is still an abstract idea.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (citations omitted). The Specification describes that using certain scheduling information, e.g., “clinical knowledge,” to schedule healthcare is the “unconventional” aspect of the invention. See Spec. 1:8–2:14. Using scheduling and clinical information to schedule healthcare, however, is part of the abstract idea, even if using that information is “unconventional.” Thus, Appellant’s argument that the Examiner failed to present evidence that these aspects of the claimed invention are “well-understood, routine, and conventional” (Appeal Br. 14, 17) is inapposite because the conventionality of the abstract idea is irrelevant. See SAP Am., Inc., 898 F.3d at 1163. Likewise, we are not persuaded by Appellant’s arguments that “one or more allegedly abstract elements . . . in combination with the additional elements form the claim’s inventive concept.” See Appeal Br. 15; Reply Br. 10–11. Appellant does not identify any such “additional elements” that would form such an inventive concept, whether combined with “abstract elements” or not. As discussed above, the only “additional elements” in claim 1 beyond the recited abstract idea are the “one or more processors” performing each step of the claimed healthcare scheduling process. Again, the Specification Appeal 2019-003800 Application 14/572,984 15 describes that those processors may be generic computing components such as “general purpose hardware or controller or other computing devices.” Spec. 16:15–18. As the Examiner noted, merely implementing an abstract idea on a general-purpose computer does not provide significantly more than the abstract idea itself. Final Act. 6–7; see Customedia Techs., 951 F.3d at 1366 (citing Alice, 573 U.S. at 226). For similar reasons, we also agree with the Examiner that the claim elements do not provide significantly more than the recited abstract idea when considered as an ordered combination. Final Act. 7. Although Appellant asserts that the Examiner erred by failing to adequately consider the claim “as a whole” or its elements “as an ordered combination,” Appellant does not persuasively explain how or why the claim elements provide significantly more as an ordered combination. See Reply Br. 9–11. Thus, we are not persuaded of error. For the above reasons, we conclude that claim 1 does not set forth an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception, whether the claim elements are considered individually or as an ordered combination. Accordingly, we are not persuaded that claim 1 recites patent-eligible subject matter. As noted above, Appellant does not separately argue any specific aspect of any other rejected claim. Although Appellant asserts that the Examiner failed to adequately consider the dependent claims (Appeal Br. 17–18; Reply Br. 11–12), the Examiner explained that the dependent claims “seek only to further limit the abstract idea, or present only additional structures which are considered to be generic computers, which, when considered both singly and as an ordered combination, do not add significantly more to the abstract idea” (Final Act. 7). We agree. Moreover, Appeal 2019-003800 Application 14/572,984 16 Appellant has not identified any particular aspect of the dependent claims, or explained why any such aspect would result in a different analysis or conclusion with respect to patent eligibility. Therefore, we sustain the rejection of claims 1–11 and 14–22 under § 101 as being directed to patent- ineligible subject matter. CONCLUSION In Summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–11, 14–22 101 Patent eligibility 1–11, 14–22 Overall Outcome 1–11, 14–22 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation