Lilla Boroczky et al.

Patent Trials and Appeals Board

Jun 10, 2020

2018005795 (P.T.A.B. Jun. 10, 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.
12/747,615 09/21/2010 Lilla Boroczky 2007P01827WOUS 7670
24737 7590 06/10/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
SPIELER, WILLIAM
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
06/10/2020 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 LILLA BOROCZKY, LALITHA AGNIHOTRI, LUYIN ZHAO,
and MICHAEL CHUN-CHIEH LEE
____________

Appeal 2018-005795
Application 12/747,615
Technology Center 2100
____________

Before ALLEN R. MACDONALD, JOHN A. JEFFERY, and TERRENCE
W. MCMILLIN, Administrative Patent Judges.

MCMILLIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 2, 8, and 10–16, which constitute all
of the claims pending in this application.1 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. Appellant identifies the real party in interest as Koninklijke
Philips N.V. Appeal Br. 1.
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INTRODUCTION
Appellant’s Specification describes the invention as relating to “a
method and apparatus of hierarchical searching for case-based decision
support in medical applications.” Spec. 1.2 As background, Appellant’s
Specification provides:
Research has demonstrated the potential of case-based
systems for computer-aided diagnosis (CADx) and computer-
aided therapy management (CATM) to aid physicians in
improving diagnosis and therapy. By retrieving cases in an
inductive manner similar to the cognitive processes employed
by experienced physicians, such systems are a natural fit for use
in clinical circumstances. Therefore, case-based CADx systems
will help physicians improve their diagnostic accuracy and
reduce both unnecessary interventions and delays in treatment.
In the CATM field, case-based systems could improve patient
outcome and shorten treatment time by applying better
treatment planning based on past similar cases.

Spec. 1. The Abstract of the Specification states:
The invention relates to search for cases in a database.
According to the proposed method and apparatus, similarity
matching is performed between an input case and a set of cases
in an initial search to receive similar cases by using a given
matching criterion. Then statistics on image and/or non-image-
based features associated with the similar cases are calculated
and presented to the user with the similar cases. In a search
refinement the similar cases arc refined by additional features
that are determined by the user based on the statistics. The
search refinement can be iterative depending on the user's need.

2 We refer to the Specification filed June 6, 2010 (“Spec.”); the Final Office
Action mailed Sept. 1, 2017 (“Final Act.”); the Appeal Brief filed Jan. 26,
2018 (“Appeal Br.”); the Examiner’s Answer mailed Apr. 2, 2018 (“Ans.”);
and the Reply Brief filed May 17, 2018 (“Reply”).
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter (emphasis and formatting added):
1. A method of searching cases in a database, said
method comprising:
a first step of performing similarity matching between an
input case and cases in the database by using a first matching
criterion that includes at least one image-based feature to
identify a set of cases similar to said input case, the at least one
image-based feature including at least one of shape of a tumor
in an image, texture of the tumor, and size change of the tumor,
the cases in the database including a plurality of images
classified according to different imaging modalities, the first
step of similarity matching between an input case and cases in
the database being performed for each imaging modality to
identify a plurality of respective sets of similar cases by using
said first matching criterion;
calculating statistics on features associated with the set of
similar cases, wherein the statistics describe non-image-based
clinical information;
presenting the set of similar cases and the statistics to a
user;
receiving a user input including a second matching
criterion that includes at least one non-image-based feature that
is derived from clinical information and based on said statistics,
the clinical information including at least one of relevant
previous or current diseases, lifestyle facts, genetic profiles,
family medical history, a physician's particular knowledge and
information of a patient to be diagnosed or treated, weight,
allergies, and vital statistics;
a second step of performing similarity matching between
the input case and the set of similar cases by using said second
matching criterion; and
display the set of similar cases;
wherein the features associated with the set of similar
cases are at least one of image-based features and non-image
based features; and
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wherein the user input further comprises a numerical
value given to each feature in the criterion, and the second step
of performing similarity matching includes calculating a
similarity metric by using the numerical values; and
wherein the steps of performing similarity matching
include calculating a similarity value for each case to be
compared, for indicating the degree of similarity between the
input case and the case to be compared, the similarity value
being a weighted combination of a Euclidean distance and
Mahalanobis distance.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Zhou II US2005/0210015 A1 Sept. 22, 2005
Zhou I US 2006/0034508 A1 Feb. 16, 2006
Nakamura US 2006/0189843 A1 Aug. 24, 2006
Yoshii US 2006/0241978 A1 Oct. 26, 2006
Castelli US 7,272,593 B1 Sept. 18, 2007
Zahlmann US 7,860,287 B2 Dec. 28, 2010

REJECTIONS3
A.
The Examiner rejects claims 1, 2, 8, and 10–16 under 35 U.S.C. § 101
because “the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more” i.e., the claimed invention is directed to patent-ineligible subject
matter. Final Act. 5.

3 The Examiner’s statement of rejection includes claim 17, which has been
canceled. See Final Act. 5. We find this to be a harmless typographical
error.
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We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Except for an argument that dependent claims by their nature add
“something more,” which we address below, Appellant does not separately
argue claims 2, 8, and 10–16.
B.
The Examiner rejects claims 1, 2, 8, and 10 under 35 U.S.C. § 103(a)
as being unpatentable over Castelli, Zahlmann, Nakamura, Yoshii, Zhou I,
and Zhou II. Final Act. 10.
We select independent claim 1 as representative. Appellant does not
present separate arguments regarding claims 2, 8, and 10. Except for our
ultimate decision, we do not discuss the 35 U.S.C. § 103(a) rejection of
claims 2, 8, and 10 further herein.
C.
The Examiner rejects claims 11–16 under 35 U.S.C. § 103(a) as being
unpatentable over Castelli and Zahlmann. Final Act. 17.
We select independent claims 11 and 16 as representative. Appellant
does not present separate arguments regarding claims 12–15. Except for our
ultimate decision, we do not discuss the 35 U.S.C. § 103(a) rejection of
claims 12–15 further herein.

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OPINION
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner has erred. We concur with the conclusions reached by the
Examiner. We highlight the following points.
A. Section 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.
However, the U.S. 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. Pty. Ltd. v. CLS Bank
International, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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.”).
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; see also 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
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(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 waterproof cloth,
vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267–68 (1853))); 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
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 187, 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 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.” See, 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.”), and 191
(citation omitted) (citing Benson and Flook).
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. “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.
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(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.
B. USPTO
35 U.S.C. 101 Guidance

In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of 35 U.S.C. § 101. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“2019 Revised Guidance”). “All USPTO personnel are, as a matter
of internal agency management, expected to follow the guidance.” Id. 2019
Revised Guidance, 84 Fed. Reg. 51; see also October 2019 Update 1.4
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
rev. 08.2017 Jan. 2018)) (“Step 2A, Prong Two”).5

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (“October 2019
Update”) (available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
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2019 Revised Guidance, 84 Fed. Reg. 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. 52–56.

C. Examiner’s 35 U.S.C. § 101 Rejection — Alice/Mayo —Steps 1 and 2
C.1. 2019 Revised Guidance, Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines that
claims 1, 11, and 16 recite an abstract idea:
Independent claims 1, 11 and 16 recite, in part, steps for
retrieving similar cases with visually-similar tumors to a input
case, calculating statistics based on non-image based clinical
information of the similar cases, presenting the similar cases
and the statistics to a user, matching the input case to the
similar cases based on a user selected clinical information
criterion, wherein the features are weighted based on user input,
where the similarity is measured by a weighted combination of
Euclidean and Mahalanobis distances. These steps describe the
concept of querying a database, which corresponds to concepts

determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance, 84 Fed. Reg. 54–55,
Section III(A)(2).
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identified as abstract ideas by the courts, such as collecting
information, analyzing it, and displaying certain results of the
collection and analysis in Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016), searching and retrieving
data in Intellectual Ventures I, LLC v. Erie Indemnity Co., No.
2016-1128 (Fed. Cir. March 7, 2017), and organizing
information through mathematical correlations in Digitech
Image Technologies, LLC v. Electronics for Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014). All of these concepts, like the
concept of the instant claims, is directed to starting with data,
adding an algorithm, and ending with a new form of data. See
RecogniCorp, LLC v. Nintendo Co., Ltd., No. 2016-1499, slip
op. at 9 (Fed. Cir. April 28, 2017). The concept described in
the independent claims is not meaningfully different than those
concepts found by the courts to be abstract ideas. As such, the
description in the independent claims of retrieving information.
Final Act. 6.
C.2. 2019 Revised Guidance, Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
the claims are directed to an abstract idea:
The additional steps recited do not meaningfully add
limitations to the idea of “retrieving information” beyond
generally linking the system to a particular technological
environment. The Applicant’s claimed invention does not solve
a technological problem, nor does it present a technological
solution. The above claimed features are not significant more
than the abstract idea because they do not recite an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment.
Applicant did not persuasively pose the claims as a technical
solution to a technical problem since it is neither a technical
problem nor a technical solution; they are business solutions to
the identified business process problem (i.e. not a technical
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problem). The inventive concept is thus neither addressing any
"technical" problem nor “necessarily rooted in computer
technology in order to a problem specifically arising in the
realm of computer[s].” See DOR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); Intellectual
Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1371
(Fed. Cir. 2015). The instant invention does not purport to be
an improvement to how a query is performed, but merely a type
of query. As such, it is not a technological solution but rather a
business solution. The problem — identifying similar clinical
cases to a patient's case — is a business problem, not a
technical problem.
Final Act. 8–9.
C.3. 2019 Revised Guidance, Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
The [S]pecification, pg. 13, describes a generic computer
performing the claimed invention. The claims at issue “simply
instruct the practitioner to implement the abstract idea of
[generating a query from an analysis workflow] on a generic
computer.” See Alice Corp. v. CLS Bank Int'l, 134 S.Ct. 2347,
2359 (2014); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1332 (Fed. Cir. 2015). However, claims 1 and 16 appear
to, on their face, not require a computer at all, and appear to
be directed to purely mental steps. Furthermore, the
particular means of measuring similarity is not significantly
more than the abstract idea itself. “A claim directed to an
abstract idea does not automatically become eligible merely by
adding a mathematical formula.” RecogniCorp, slip op. at 10.
The underlying concept - that of providing a quantifiable
measure of similarity between one clinical case and another - is
a mental process that the claimed invention merely purports to
incidentally require the use of the computer to carry out.
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered
both individually and as an ordered combination do not
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amount to significantly more than the abstract idea. Claim 11
recites a computer-readable medium and units. The “medium”
and “units” - which are software units - are recited at a high
level of generality and are recited as performing generic
computer functions routinely used in computer applications.
Generic computer components recited as performing generic
computer functions that are well-understood, routine and
conventional activities amount to no more than implementing
the abstract idea with a computerized system. Thus, taken
alone, the additional elements do not amount to significantly
more than the above-identified judicial exception (the abstract
idea). Looking at the limitations as an ordered combination
adds nothing that is not already present when looking at the
elements taken individually. There is no indication that the
combination of elements improves the functioning of a
computer or improves any other technology. Their collective
functions merely provide conventional computer
implementation. The instant claims recite the use of such a
computer, but do not recite an improvement in another
technology or technical field, nor do they purport to perform the
functioning of the computer itself. The specification states that
the system requires no more than a generic computer to
perform generic functions that are well-understood, routine,
and conventional activities previously known in the industry.
Final Act. 6–8 (emphasis added).
D. Appellant’s 35 U.S.C. § 101 Arguments & Board Analysis
In arguing that the claims were improperly rejected under 35 U.S.C.
§101, Appellant does not make specific reference to any recited limitation
and does not explain how or why the language of any claim defines a patent-
eligible invention. See Appeal Br. 7–13; see also Reply 3–5. As a result,
Appellant’s 35 U.S.C. § 101 arguments are not supported by any cited claim
language and are, therefore, substantially weak. We have fully considered
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Appellant’s arguments and conclude that the claims were properly rejected
under 35 U.S.C. § 101.
First, Appellant contends that the claims are not directed to an abstract
idea. See Appeal Br. 7 (“[T]he Examiner alleges that claims 1, 2, 8, 10-16
are drawn to []abstract ideas. . . . Applicants respectfully traverse and submit
that all pending claims are directed to statutory subject matter.”).
Specifically, Appellant argues:
It is submitted that the present claims do not claim an end
result, but rather claim only a limited and specific apparatus or
method for achieving the end result, hence are not directed to an
abstract idea.
For example, claim 11 performs similarity matching to
identify previous case similar to a current case with hardware
and computer operations. Claim 11 does not protect the end
result, i.e., performing similarity matching to identify previous
case similar to a current case with hardware and computer
operations by any apparatus, means, or steps whatsoever.
Rather, it only would provide protection for one who achieves
this result through the combination of hardware and computer
operations set forth in claim 11.
Claims 1 and 16 call for a method for performing
similarity matching to identify previous case similar to a current
case with hardware and computer operations. Claims 1 and 16
do not perform similarity matching to identify previous case
similar to a current case with hardware and computer operations
regardless by what method they are generated. Rather, it only
protects the specific combination of steps set forth in claims 1
and 16.

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Appeal Br. 9–10. We do not find this argument persuasive as it misdirected
and not supported by the claim language. The Examiner did not reject the
claims as directed to an abstract idea because they “claim an end result.”
And, we do not agree that the claims are not directed to an abstract
idea because “only a limited and specific apparatus or method for achieving
the end result” and specific “hardware and computer operations” are
claimed. Appeal Br. 9. With regard to claims 1 and 16, the Appellant is
wrong that these claims “call for a method for performing similarity
matching to identify previous case similar to a current case with hardware
and computer operations.” Id. We agree with the Examiner that “claims 1
and 16 appear to, on their face, not require a computer at all, and appear to
be directed to purely mental steps” and “[t]he underlying concept — that of
providing a quantifiable measure of similarity between on clinical case and
another — is a mental process that the claimed invention merely purports to
incidentally require the use of the computer to carry out.” See Final Act. 7.
There are no steps recited in claims 1 and 16 that limit the scope of the
claimed methods to any particular apparatus or hardware and computer
operations. And, we agree with the Examiner’s response to this argument
stating: “Using Appellant’s characterization of the invention, that specific
steps are claimed to identify previous cases similar to the current case does
not detract from a conclusion that the claims are directed to an abstract idea,
such as ‘identifying previous cases similar to a current case.’” Ans. 19.
With regard to claim 11, the preamble recites that it is directed to an
apparatus but the only clearly recited structure is “a non-transitory
computer-readable medium that stores computer-executable instructions”
and a “database” that the “instructions” act upon. The “instructions”
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comprise a set of “units” for performing functions. No hardware or
computer elements are expressly recited in claim 11. Claim 11 does not
expressly recite that the recited functions are performed by any specific
structure or apparatus. In the Specification, Figure 3, reproduced below, is
described as “a block diagram showing an exemplary embodiment of an
apparatus.” Spec. 6.

Figure 3 depicts this apparatus as five units connected by internal bus 305 to
a database, DB 303, and controller 360. See also Spec. 14. However, claim
11 does not recite an internal bus or a controller. Each unit in Figure 3 is
depicted as a labeled, rectangular box and, in the detailed description, is
described as a “unit” for performing a function (just as in claim 11). See
Spec. 13. No structure or apparatus is depicted or described for performing
the functions. With regard to claim 11, the Examiner states:
Claim 11 recites a computer-readable medium and units.
The "medium" and "units" — which are software units — are
recited at a high level of generality and are recited as
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performing generic computer functions routinely used in
computer applications. Generic computer components recited
as performing generic computer functions that are well-
understood, routine and conventional activities amount to no
more than implementing the abstract idea with a computerized
system. Thus, taken alone, the additional elements do not
amount to significantly more than the above-identified judicial
exception (the abstract idea). Looking at the limitations as an
ordered combination adds nothing that is not already present
when looking at the elements taken individually. There is no
indication that the combination of elements improves the
functioning of a computer or improves any other technology.
Their collective functions merely provide conventional
computer implementation. The instant claims recite the use of
such a computer, but do not recite an improvement in another
technology or technical field, nor do they purport to perform the
functioning of the computer itself. The specification states that
the system requires no more than a generic computer to perform
generic functions that are well-understood, routine, and
conventional activities previously known in the industry.

Final Act. 7–8. We find that the Examiner’s analysis is well-founded and
agree that claim 11 is directed to an abstract idea. Appellant does not refer
to any language in claim 11 in support of its argument that it is not directed
to an abstract idea and we discern none.6
Appellant argues that the claims are directed to a “complex process”
not a “mental process.” Appeal Br. 11; see also Reply 4. Specifically,
Appellant states:
[T]he present claims are not directed to a mental process, but
rather to systems and methods for comparing multiple, unique

6 If prosecution continues, we respectfully suggest that it be considered
whether claim 11 and its dependents are indefinite as invoking 35 U.S.C.
§ 112 (f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, as expressing
elements as means for performing a specified function but failing to describe
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criteria of a plurality of cases to find similar historical cases to a
current case. This is not a mental process, but rather a complex
process in which multiple studies must be analyzed to find this
similar set of cases.

Appeal Br. 11. The purported distinction between a “complex process” and
a “mental process” lacks merit. Appellant does not persuasively show that
comparing multiple, unique criteria to find similar cases cannot be
performed mentally even accepting that such a process may be complex.
And, Appellant argues that “common sense” shows the claims are not
directed to an abstract idea. Appeal Br, 11. Specifically, Appellant states:
In the present claims, medical records are collected and
analyzed to find similar historical records for a current patient.
This cannot be performed without the help of computer
technology, and would require specific processes and programs
to analyze these cases and perform the similarity matching
operations. Thus, “common sense” dictates that the claims are
directed to “significantly more” than an abstract idea.

Appeal Br. 11. We find this argument to be unsound and not persuasive.
Appellant has not shown that the claims cannot be performed “without the
help of computer technology” or that the claimed invention “would require
specific processes and programs.” Appeal Br. 11. The Appellant does not
point to any specific language in the claims that supports limiting the claims

any corresponding structure for performing the function. See Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (In the
absence of the word “means,” the presumption that means-plus-function
does not apply may be overcome if “the claim fails to ‘recite sufficiently
definite structure’ or else recites ‘function without reciting sufficient
structure for performing that function.’”); see also Manual of Patent
Examining Procedure § 2181 (9th ed. Rev. 08.2017, Jan. 2018) (identifying
“unit for” as a non-structural generic placeholder).
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as Appellant argues. To the contrary, the claims define the invention in
broad terms and Appellant has not shown why the claims should be so
limited.
With regard to the dependent claims, Appellant argues:
The Examiner has failed to make any showing that any of
the dependent claims fail to set forth significantly more. By
definition, every dependent claim further refines its parent
claim(s), i.e., adds something more. Thus, every dependent
claim must be analyzed individually to determine whether all of
the limitations of the dependent claim and its parent claim(s) as
an ordered combination is something more. In addition, In Re
Abele 684 F.2d 902 (CCPA 1982), in which parent claim 5 was
held by the Federal Circuit to be patent ineligible under 35
U.S.C. §101, but dependent claim 6 which depends from claim
5 was held to be patent-eligible.

Appeal Br. 10. With regard to the dependent claims, the Examiner found
“[t]he generic computer functions of claims 2, 8, 10 and 12-15 recited
therein are those that courts have recognized as well-understood, routine,
and conventional activities such as receiving data, determining data,
calculating data, selecting and sending data.” Final Act. 9. The mere fact
that the dependent claims are directed to further limitations and further
refine the parent claims does not support a finding that the dependent claims
define a patent-eligible invention. Appellant does not point to any language
in any of the pending dependent claims that would support a finding that the
dependent claims are not directed to an abstract idea. Dependent claims that
merely narrow an abstract idea “add nothing outside the abstract realm.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1169 (Fed. Cir. 2018).
Adding “a degree of particularity” does not save a claim from abstraction.
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see
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also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir.
2018) (explaining that “a claim is not patent eligible merely because it
applies an abstract idea in a narrow way”).
Conclusion on Section 101 Rejection
In light of the above, and consistent with the Examiner’s
determinations, we conclude that the claims are directed to an abstract idea
and do not contain an “inventive concept” or additional features that
transform that abstract idea into a patent-eligible invention. Hence, we
sustain the 35 U.S.C. § 101 rejection.
E. Examiner’s 35 U.S.C. § 103(a) Rejection
Regarding independent claim 1, the Examiner found the combination
of Castelli, Zahlmann, Nakamura, Yoshii, Zhou I, and Zhou II teaches or
suggests all the limitations of claim 1 and that there existed a motivation to
combine the relevant teachings or suggestions. Final Act. 10–16. The
Examiner also found that this combination teaches or suggests all the
limitations of dependent claims 2, 8, and 10. Final Act. 16–17. The
Examiner further found that the combination of Castelli and Zahlmann
teaches or suggests all the limitations of claims 11–16 and that there existed
a motivation to combine the relevant teachings or suggestions. Final Act.
17–25.
F. Appellant’s 35 U.S.C. § 103(a) Arguments & Board’s Analysis
Appellant argues that the 35 U.S.C. § 103(a) rejection was improper
because “[t]he cited combination of references fails to describe each and
every aspect set forth in the subject claims.” Appeal Br. 11. Appellant
argues limitations recited in independent claims 1, 11, and 16. Appeal Br.
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14–23. We conclude that the Examiner properly rejected all the pending
claims under 35 U.S.C. § 103(a).
With regard to independent claims 1, 11, and 16, Appellant argues that
Castelli does not disclose “the cases in the database including a plurality of
images classified according to different imaging modalities, the first step of
similarity matching between an input case and cases in the database being
performed for each imaging modality to identify a plurality of respective sets
of similar cases by using said first matching criterion” as recited in claims 1
and 16 and similarly recited in claim 8. Appeal Br. 14–15, 18, 22. However,
the Examiner cited Zhalmann as teaching these elements. Final Act. 12–13
(claim 1), 19–20 (claim 11), 24–25 (claim 24–25). Thus, Appellant argued
the wrong reference. The Examiner’s Answer stated: “Castelli is not relied
on to teach classifying images according to their respective imaging
modality, Zhalmann is” and “Castelli is not relied on to teach performing
similarity matching for each imaging modality; Zahlmann is (e.g., where the
size of a tumor in an MRI scan is compared to the size of the tumor in a CT
scan).” Ans. 20. We find Appellant’s argument not to be persuasive because
it is misdirected.
In the Reply, Appellant presents an entirely new argument. The
Reply states:
In the Examiner’s Answer, the Examiner alleges that
Zahlmann discloses classifying images by modality.
Zalhlmann merely discloses that images include metadata
including the type of modality used to obtain the image.
However, Zahlmann does not disclose classifying the images by
modality, in particular for performing similarity matching
between the images based on modality, as recited in the present
claims.

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Reply 5. As discussed above, the showing by the Examiner that Zahlmann
taught the disputed limitations was not raised for the first time in the Answer
but was set forth in the Final Action. Appellant has not established good
cause for not including this argument in the Appeal Brief and presenting it
for the first time in the Reply. This argument will not be considered. See 37
C.F.R. §§ 41.37(c)(1)(iv) (“Except as provided for in §§ 41.41, 41.47 and
41.52, any arguments or authorities not included in the appeal brief will be
refused consideration by the Board for purposes of the present appeal.”),
41.41(b)(2) (“Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the examiner’s
answer, including any designated new ground of rejection, will not be
considered by the Board for purposes of the present appeal, unless good
cause is shown.”).
Appellant argues that the Examiner has not shown that Castelli
teaches or suggests, “wherein the user input further comprises a numerical
value given to each feature in the criterion, and the second step of
performing similarity matching includes calculating a similarity metric by
the using the numerical values” as recited in independent claims 1, 11, and
16. Appeal Br. 14–15 (claim 1), 18–19 (claim 11), and 22–23 (claim 16).
The Examiner cited the following passage in Castelli as teaching this
limitation (Final Act. 13, 20):
Query reformulation: Content-based retrieval systems can use
image clip to find “all images with features similar to the
clip[.]” In this case, the features extracted from the example
will be used as the initial query. The reformulated query
could contain a feature vector which is derived from a set of
examples and counterexamples provided by the user. Note
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that different iterations of the user feedback may have
different weights in calculating the “composite queries.”

Castelli 8:4–12. Appellant argues:
There is nothing cited in this cited portion of Castelli that
discloses a numerical value given to each feature in the
criterion. Rather, this cited portion only discloses an initial
query and a reformulated query, but does not describe what
these queries include. The Examiner alleges that the user input
is a yes or no if a document is similar. However, this cited
portion does not disclose a “yes” or “no” option. Regardless, a
yes/no query does not constitute a numerical value given to
each feature in the criterion, as recited in claim 1. In addition,
Castelli does not disclose performing similarity matching
includes calculating a similarity metric by using the numerical
values.

Appeal Br. 15, 19, 22–23. The Examiner responds:
Appellant argues that Castelli does not teach user input
including a numerical value given to each feature in the
criterion. Examiner respectfully disagrees. The portion of
Castelli cited by both Examiner and Appellant teaches deriving
a feature vector from user input (both a feature vector from the
initial clip, as well as an refined derived feature vector from the
iterations of user feedback using examples and
counterexamples). A feature vector is a collection of numerical
values for each feature in the feature vector. Therefore the user
input gives a numerical value to each feature.

Ans. 21. Thus, the Examiner relies on the description of a “feature vector”
in Castelli as teaching “a collection of numerical values for each feature.”
The Applicant replies:
In the Examiner's Answer, the Examiner alleges that
Castelli discloses including a numerical value give to each
feature in a matching criterion. The alleged numerical value is
in the form from a feature vector. As noted by the Examiner, a
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feature vector is a collection of numerical values (i.e., more
than one). This is different from the present claims, which
recite a numerical value for each feature.

Reply 5. We do not find Appellant’s argument to be persuasive. Appellant
does not dispute that “a feature vector is a collection of numerical values
(i.e., more than one).” Appellant asserts, in a conclusory fashion, that “[t]his
is different from the present claims, which recite a numerical value for each
feature” but provides no reasoning or explanation that supports such a
conclusion. See 37 C.F.R. § 41.47 (c)(1)(iv) (“The arguments shall explain
why the examiner erred as to each ground of rejection contested by
appellant.”). The Appellant has not shown how or explained why the
Examiner erred.
Appellant argues that the Examiner has failed to show Castelli teaches
or suggests “user input” as recited in the independent claims. Appeal Br. 15.
However, Appellant fails to identify the specific finding made by the
Examiner that is disputed, the specific portions of Castelli that support its
assertions, or the specific language or limitations in the claims that are relied
upon. As such, this argument is unsupported and not explained.
Nonetheless, the Examiner does show that Castelli teaches “user input.” In
rejecting claims 1, 11, and 16, the Examiner cites the following passage in
Castelli as teaching user input (Final Act. 11 (claim 1), 18 (claim 11), 23
(claim 16)):
An example of a method for generating indexes having
features of the present invention includes the steps of: (1)
initial retrieval of feature vectors that are “similar” to the
specification of the user query; (2) user input specifying the
quality of the returned results (in the simplest case, the user
indicates whether a retrieved result is similar or not similar)
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Castelli 5:46–51 (emphasis added). We do not find this argument
persuasive.
Finally, with regard to the independent claim 1, Appellant argues:
[C]laim 1 recites that the steps of performing similarity
matching include calculating a similarity value for each case to
be compared, for indicating the degree of similarity between the
input case and the case to be compared, the similarity value
being a weighted combination of a Euclidean distance and
Mahalanobis distance. Castelli discloses a similarity value that
is a Euclidean distance, and Zhou II discloses a similarity value
that is a Mahalanobis distance, but neither reference discloses
that the similarity value is a weighted combination of a
Euclidean distance and Mahalanobis distance, as recited in
claim 1. None of the secondary references disclose these
features of claim 1.

Appeal Br. 15–16. With regard to this limitation, the Examiner found:
It would have been obvious for one of ordinary skill in
the art at the time of the invention to combine the teachings of
Zhou II with those of Castelli, Zahlmann, Nakamura, Yoshii,
and Zhou I to measure the similarity value of Castelli as a
weighted Euclidian distance and Mahalanobis distance as in
Zhou II in order to provide an accurate query-by-example
system directed to clinical cases.

Final Act. 16. The Examiner relied on a combination of Castelli and Zhou II
and never contended that any reference alone taught the disputed limitation.
Thus, Appellant fails to address the rejection the Examiner made and, for
this reason, we do not find this argument persuasive.
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Conclusion on Section 103 Rejections
In light of the above, and consistent with the Examiner’s
determinations, we conclude that the claims would have been obvious in
view of the cited art. Hence, we sustain the 35 U.S.C. § 103(a) rejections.

CONCLUSION
The Examiner has not erred in rejecting claims 1, 2, 8, and 10–16
under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter.
The Examiner has not erred in rejecting claims 1, 2, 8, and 10–16 as
being unpatentable under 35 U.S.C. §103(a).
The Examiner’s rejection of claims 1, 2, 8, and 10–16 under 35 U.S.C.
§ 101, as being directed to patent-ineligible subject matter, is affirmed.
The Examiner’s rejection of claims 1, 2, 8, and 10–16 as being
unpatentable under 35 U.S.C. §103(a) is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)Basis/ Affirmed Reversed
1, 2, 8,
10–16
101 Eligibility 1, 2, 8, 10–
16

1, 2, 8,
10
103(a) Castelli,
Zahlmann,
Nakamura,
Yoshii, Zhou I,
Zhou II
1, 2, 8, 10
11–16 103(a) Castelli,
Zahlmann
11–16
Overall
Outcome
1, 2, 8, 10–
16

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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