Lilla Boroczky et al.Download PDFPatent Trials and Appeals BoardSep 2, 20212020002771 (P.T.A.B. Sep. 2, 2021) 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. 13/993,419 06/12/2013 Lilla Boroczky 2010P01174WOUS 1087 24737 7590 09/02/2021 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 1600 Summer Street 5th Floor Stamford, CT 06905 EXAMINER RAYYAN, SUSAN F ART UNIT PAPER NUMBER 2167 NOTIFICATION DATE DELIVERY MODE 09/02/2021 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 LILLA BOROCZKY, MARK R. SIMPSON, YE XU, and MICHAEL CHUN-CHIEH LEE ___________ Appeal 2020-002771 Application 13/993,419 Technology Center 2100 ____________ Before ERIC B. CHEN, JEREMY J. CURCURI, and DAVID J. CUTITTA II, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2020-002771 Application 13/993,419 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 10–14, 21, and 23–30, which constitute all the claims pending in this application. Claims 4–9, 15–20, and 22 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to instructions operable to receive a current patient set of data relating to a current patient, comparing the current patient set of data to previous patient sets of data, selecting one of the previous patient sets of data based on a level of similarity between the selected previous patient set of data and the current patient set of data, and provide the selected previous patient set of data to a user. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject matter, with disputed limitations in italics, and bracketing added: 1. A non-transitory computer-readable medium that includes a program that, when executed by a processing system, causes the processing system to: [i] receive a current patient set of data relating to a current patient; [ii] receive a plurality of previous patient sets of data; each of the previous patient sets of data corresponding to a previous patient; [iii] determining a first numerical value associated with each data element of the current patient set of data and a second 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 2020-002771 Application 13/993,419 3 numerical value associated with a corresponding data element of each of the previous patient sets of data; [iv] compare the current patient set of data to each of the plurality of previous patient sets of data by determining a set of differences between the first numerical value associated with each data element of the current patient set of data and the second numerical values of each data element of each of the previous patient sets of data; [v] determine a level of similarity for each of the plurality of previous patients based on the determined set of differences of each of the plurality of previous patient sets of data relative to the current patient set of data; [vi] select a plurality of the previous patient sets of data based on the level of similarity between the selected plurality of previous patient sets of data and the current patient set of data; [vii] generate a method of treatment plan based on corresponding treatment plans of a subset of the plurality of selected previous patient data sets; wherein a first element of the method of treatment plan is copied from a first treatment plan of a first patient of the subset of the plurality of selected previous patients, wherein a second element of the method of treatment plan is copied from a second treatment plan of a second patient of the subset of the plurality of selected previous patients, wherein the second element is an element that is: related to an attribute of the current patient that differs from a corresponding attribute of the first patient, and related to an attribute of the current patient that is similar to a corresponding attribute of the second patient. Appeal 2020-002771 Application 13/993,419 4 REJECTIONS Claims 1–3, 10–14, 21, and 23–30 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. OPINION We are unpersuaded by Appellant’s arguments (Appeal Br. 8–11; see also Reply Br. 2–5) that independent claims 1, 12, and 26 are directed to patent-eligible subject matter under 35 U.S.C. § 101. With respect to independent claims 1, 12, and 26, the Examiner determined that “[t]hese claim limitations recite an abstract idea and fall within the enumerated group of a Mental Process.” (Final Act 3; see also Ans. 5.) In particular, the Examiner determined the following: The claim limitations provide the steps of receiving current/previous patient data, determining first value associated with current data and second value associated with previous data and comparing it to previous patient data to select previous patient data based on similarity, a treatment plan is then generated based on the attributes of the patient and attributes of treatment plans of the previous patients which is a mental process (for example a doctor determines an appropriate treatment plan for a patient based at least in part with previous treatment plans) and thus grouped as a mental process, specifically of observation and evaluation. (Ans. 5–6.) [A] doctor in the process of determining a treatment plan would compare the current patient’s type of disease with a prior group of previous patients and determine which have the same disease and selecting those that match. The Doctor mentally performs the assigning numeric values of 1 or 0 for a yes or no determination. The Doctors may compare the current patients with previous patients to determine which are similar in real time during the current patient appointment. Appeal 2020-002771 Application 13/993,419 5 (Id. at 7.) In addition as the Doctor progresses through the process of determining the best treatment plan for his current patient he necessarily would consider various previous patient with same or similar features/data elements and the doctor has the option of determining which elements of the previous treatment plans to include with the current treatment plan. (Id. at 10.) Moreover, the Examiner determined that “the additional elements in the claim elements of the computer and processor evaluated individually and in combination do not amount to significantly more.” (Ans. 15.) We agree with the Examiner’s determinations and ultimate conclusion that the claims are directed to patent-ineligible subject matter. 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 long interpreted 35 U.S.C. § 101 to include implicit 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 Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Appeal 2020-002771 Application 13/993,419 6 Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. at 191 (citing Benson and Flook); see also, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). Appeal 2020-002771 Application 13/993,419 7 If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO published revised guidance on the application of § 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019 Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. 2019)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or Appeal 2020-002771 Application 13/993,419 8 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 84 Fed. Reg. 56. Are the claims at issue directed to a patent-ineligible concept? Step One Claim 1 is a computer-readable medium claim, which falls within the “manufacture” category of 35 U.S.C. § 101. Claim 12 is a system claim, which falls within the “machine” category of 35 U.S.C. § 101, and claim 26 is a method claim, which fall within the “process” category of 35 U.S.C. § 101. Therefore, each of claims 1, 12, and 26 falls within one of the four statutory categories of patentable subject matter identified by 35 U.S.C. § 101. Although claims 1, 12, and 26 fall within the statutory categories, we must still determine whether the claims are directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 216. Thus, we must determine whether the claims recite a judicial exception and whether the exception is integrated into a practical application. See 84 Fed. Reg. at 52– 55. If a claim recites a judicial exception without integrating the judicial exception into a practical application, the claim is directed to a judicial exception under the first step of the Alice/Mayo test. See id. Step 2A, Prong One Independent claim 1 is a computer-readable medium claim, which includes programming to execute the following steps: “[i] receive a current Appeal 2020-002771 Application 13/993,419 9 patient set of data relating to a current patient,” “[ii] receive a plurality of previous patient sets of data; each of the previous patient sets of data corresponding to a previous patient,” “[iii] determining a first numerical value associated with each data element of the current patient set of data and a second numerical value associated with a corresponding data element of each of the previous patient sets of data,” and “[iv] compare the current patient set of data to each of the plurality of previous patient sets of data by determining a set of differences between the first numerical value associated with each data element of the current patient set of data and the second numerical values of each data element of each of the previous patient sets of data.” Thus, the steps of claim 1 involve mental processes. In particular, the steps of claim 1 can be performed either by human thought alone, by a human using pen and paper, or by humans without a computer. For example, a physician who has treated two previous patients, treats a current patient by taking the current patient’s vital signs, including temperature, pulse, and blood pressure. The physician diagnoses the current patient as having high blood pressure, but with no other medical conditions. The physician recalls that two of the previous patients were also diagnosed with high blood pressure—one previous patient has no other medical conditions, while the other previous patient has asthma. Independent claim 1 further executes the following steps: “[v] determine a level of similarity for each of the plurality of previous patients based on the determined set of differences of each of the plurality of previous patient sets of data relative to the current patient set of data,” “[vi] select a plurality of the previous patient sets of data based on the level of Appeal 2020-002771 Application 13/993,419 10 similarity between the selected plurality of previous patient sets of data and the current patient set of data,” and “[vii] generate a method of treatment plan based on corresponding treatment plans of a subset of the plurality of selected previous patient data sets.” Likewise, these remaining method steps of claim 1 involve mental processes. For example, the physician compares the high blood pressure diagnosis of the current patient with the high blood pressure diagnosis of the two previous patients—the one difference being that one of the previous patients has asthma. The physician recalls that the previous patient without asthma was prescribed either a diuretic or a beta blocker, while the patient with asthma was prescribed a diuretic, because the beta blocker can worsen asthma symptoms. Similar to the previous patient without asthma, the physician prescribes either a diuretic or beta blocker to the current patient. Because steps of claim 1 can be performed either by human thought alone, by a human using pen and paper, or by humans without a computer, claim 1 recites at least one mental process, which is an abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (“[U]npatentable mental processes” include “steps [that] can be performed in the human mind, or by a human using a pen and paper”); see also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) (“[t]he series of steps covered by the asserted claims . . . could all be performed by humans without a computer”). Accordingly, claim 1 recites a judicial exception. Claims 12 and 26 recite limitations similar to those discussed with respect to claim 1. Thus, claims 12 and 26 also recite a judicial exception. Appeal 2020-002771 Application 13/993,419 11 Step 2A, Prong Two Because claims 1, 12, and 26 recite a judicial exception, we next determine if the claims recite additional elements that integrate the judicial exception into a practical application. The preamble of independent claim 1 recites “[a] non-transitory computer readable medium that stores program code that is configured to, when executed by a computing system” (emphases added) to perform multiple steps. Independent claim 12 recites the following: “a database that stores a plurality of previous patient sets of data,” and “a processing system, including a processor and memory, that includes: a user interface that receives a current patient set” (emphases added). Independent claim 26 does not recite additional element in the form of computer hardware. The recited additional elements, including “computer readable medium,” “computing system,” “database,” “processing system,” “memory,” and “user interface” are merely tools for performing the recited abstract idea. See Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“[T]he claims are directed not to an improvement in cellular telephones but simply to the use of cellular telephones as tools in the aid of a process focused on an abstract idea.”). Accordingly, claims 1, 12, and 26 do not recite additional elements that integrate the judicial exception into a practical application. Appeal 2020-002771 Application 13/993,419 12 Is there something else in the claims that ensures that they are directed to significantly more than a patent ineligible concept? Step 2B Because claims 1, 12, and 26 are directed to a judicial exception, we next determine, according to Alice, whether these claims recite an additional element, or combination of elements that is enough to ensure that the claim is directed to significantly more than a judicial exception. The preamble of independent claim 1 recites “computer readable medium” and “computing system.” Similarly, independent claim 12 recites “a database,” “a processing system,” “a processor,” a “memory,” and “a user interface.” With respect to the claimed additional elements, Appellant’s Specification discloses the following: A non-transitory computer-readable storage medium stores a set instructions executable by a processor. (Spec. 1:20–21; see also Abstract.) The current patient information 110 is provided to a treatment planning workstation 120, which is a computing system (e.g., a combination of hardware and software) used by a doctor or other medical professional to plan treatment for the current patient. The treatment planning workstation 120 is similar to known systems presently used by medical professionals, except as will be described hereinafter. (Spec. 4:19–25.) Those of skill in the art will understand that the similarity search engine 130, the previous patient database 140, and the plan generation system 150 may be implemented in various ways, including as hardware and/or software elements of the treatment planning workstation 120, or as separate hardware and/or software components, without impacting their functions. Appeal 2020-002771 Application 13/993,419 13 For example, previous patient database 140 can be embodied as any form of known hierarchical or relational database stored on any type of known computer-readable storage device. (Spec. 5:24 to 6:1.) For example, the current patient information 110 is generated contemporaneously with the performance of the exemplary method 200 (e.g., medical images taken at this time); in another alternative situation, the current patient information 110 may have been generated previously, and may be stored in any suitable manner (e.g., in hardcopy, in a computer database, etc.). (Spec. 6:12–18.) Figure 3 illustrates an exemplary graphical user interface 300 by which results may be presented to a doctor (e.g., on a display of the treatment planning workstation 120). The graphical user interface 300 includes current patient information 310; the specific information shown may be customizable by the user (e.g., doctor). (Spec. 9:8–13.) Those skilled in the art will understand that the above- described exemplary embodiments may be implemented in any number of manners, including, as a separate software module, as a combination of hardware and software, etc. For example, the similarity search engine 130 may be a program containing lines of code that, when compiled, may be executed on a processor. (Spec. 14:18–23.) The generalized functional terms by which the additional elements are described reasonably indicate that Appellant’s Specification discloses: (i) a conventional storage medium; (ii) a conventional processor; (iii) conventional treatment planning workstation 120 (or computing system); (iv) conventional previous patient database 140 (or a computer-readable Appeal 2020-002771 Application 13/993,419 14 storage device); (v) a conventional processor, which include a memory2; and (v) conventional graphical user interface 300. Moreover, Figure 1 of Appellant’s Specification illustrates system 110, which included treatment planning workstation 120 (i.e., the claimed “processing system” (or “computing system”), “processor,” “memory,” and “user interface”) and previous patient database 140 (i.e., the claimed “database”) functioning as an ordered combination. In view of Appellant’s Specification, the claimed “computer readable medium,” “computing system,” “a database,” “a processing system,” “a processor,” a “memory,” and “a user interface” reasonably may be determined to be generic, purely conventional additional elements. Thus, claims 1, 12, and 26 do no more than require generic additional elements to perform generic computer functions, rather than improve computer capabilities. First, Appellant argues that [o]f particular note, doctors do not assign numeric values to each attribute of the current patient and each of the attributes of a plurality of prior patients, and do not identify prior patients having similar attributes to the current patient based on a comparison of these sets of numeric values. (Appeal Br. 8; see also Reply Br. 4.) Contrary to Appellant’s arguments, as found by the Examiner, a physician routinely diagnoses certain diseases (i.e., assigns a value of “1”) or, conversely, excludes certain diseases (i.e., assigned a value of “0”) based upon symptoms. (Ans. 7.) Moreover, as 2 One relevant definition of “processor” (or “CPU”) is “[t]he computational and control unit of a computer,” such that “the term [CPU] encompasses both the processor and the computer’s memory.” MICROSOFT® COMPUTER DICTIONARY 132 (5th ed. 2002). Appeal 2020-002771 Application 13/993,419 15 found by the Examiner, the physician can mentally perform comparison of the current patient to previous patients. (Id.) Appellant has provided insufficient arguments or evidence as to why the Examiner’s findings are in error. Second, Appellant argues the following: Of particular note, the doctor’s mental process of determining which prior patient best matches the current patient is not an algorithmic process; it is a mental process that is mostly subjective and/or intuitive. The applicants respectfully maintain that the applicants’ claimed method of identifying prior patients that most closely resemble the current patient is very specific, and does not correspond to the mental process conventionally performed by doctors. (Appeal Br. 9; see also Reply Br. 5.) However, Appellant’s arguments are not commensurate in scope with claims 1, 12, and 26, because such claims do not recite an “algorithm.” Moreover, even if the claims could be construed as implicitly reciting an algorithm, a physician’s mental process for diagnosing a disease can be characterized a series of steps—i.e., an “algorithm.”3 (See Spec. 1:9–17.) Third, Appellant argues the following: the conventional mental process of determining a treatment plan for a current patient does not include identifying two prior patients having similar attributes to the current patient, wherein one of these prior patients has a particular attribute that matches the current patient’s attribute and the other prior patient’s particular attribute does not match the current patient’s attribute. The conventional mental process also does not include 3 One ordinary definition of “algorithm” is “a step-by-step procedure for solving a problem.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 28 (10th ed. 1999.) Similarly, another definition of “algorithm” is “[a] finite sequence of steps for . . . performing a task.” MICROSOFT® COMPUTER DICTIONARY 23 (5th ed. 2002). Appeal 2020-002771 Application 13/993,419 16 selecting elements from the treatment plan of each of these identified prior patients having opposing attributes. (Appeal Br. 9.) However, even if Appellant is correct that the claims are patentable over the prior art, Appellant improperly conflates the requirements for eligible subject matter with the independent requirements of novelty and non-obviousness. “The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89. Last, Appellant argues that “applicants’ specification clearly indicates that the creation of a treatment plan that is based on the treatment plans of multiple prior patients is an improvement in the field of computer-aided medical diagnostic and planning treatment systems.” (Appeal Br. 11; see also Reply Br. 2.) However, Appellant has not adequately explained why the claim “purport[s] to improve the functioning of the computer itself” or “any other technology or technical field.” Alice, 573 U.S. at 225. In particular, Appellant has not explained why a decision about medical treatment, which is a mental process, improves the function of a computer or other technology. Thus, we agree with the Examiner that claims 1, 12, and 26 are directed towards patent-ineligible subject matter. Accordingly, we sustain the rejection of independent claims 1, 12, and 26 under 35 U.S.C. § 101. Claims 2, 3, 10, 11, 13, 14, 21, 23–25, and 27–30 depend from independent claims 1, 12, and 26, and Appellant has not presented any additional substantive arguments with respect to these claims. We sustain the rejection of claims 2, 3, 10, 11, 13, 14, 21, 23–25, and 27–30 under 35 Appeal 2020-002771 Application 13/993,419 17 U.S.C. § 101 for the same reasons discussed with respect to independent claims 1, 12, and 26. CONCLUSION We affirm the Examiner’s decision rejecting claims 1–3, 10–14, 21, and 23–30 under 35 U.S.C. § 101. DECISION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 10–14, 21, 23–30 101 Eligibility 1–3, 10–14, 21, 23–30 Overall Outcome 1–3, 10–14, 21, 23–30 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation