Ex Parte Abraham-Fuchs et al

Patent Trial and Appeal Board

Sep 13, 2017

10589537 (P.T.A.B. Sep. 13, 2017)

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.
10/589,537 08/16/2006 Klaus Abraham-Fuchs 32860-001069/US 8506
30596 7590 09/15/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O.BOX 8910
RESTON, VA 20195
EXAMINER
SEOH, MINNAH L
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/15/2017 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):
dcmailroom@hdp.com
siemensgroup@hdp.com
pshaddin@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS ABRAHAM-FUCHS, EVA RUMPEL,
MARKUS SCHMIDT, HORST SCHREINER,
GUDRUN ZAHLMANN, and SIEGFRIED SCHNEIDER
Appeal 2016-0029601
Application 10/589,5372
Technology Center 3600
Before ANTON W. FETTING, AMEE A. SHAH, and
MATTHEW S. METERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
August 12, 2015) and Reply Brief (“Reply Br.,” filed January 18, 2016), the
Examiner’s Answer (“Ans.,” mailed December 30, 2015), and Final Office
Action (“Final Act.,” mailed March 13, 2015).
2 Appellants identify Siemens Aktiengesellschaft as the real party in interest
(Appeal Br. 3).
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Application 10/589,537
CLAIMED INVENTION
Appellants’ claims relate generally “to a method for selecting a
potential participant for a medical study on the basis of a selection criterion”
(Spec. 12).
Claims 1 and 19 are the independent claims on appeal. Claim 1,
reproduced below with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
1. A method for selecting a potential participant for a
medical study based on a selection criterion, the method
comprising:
[a] storing patient data for a plurality of patients in an
electronic database that includes unstructured documents;
[b] determining, using a processor, a first potential
participant for a medical study by evaluating the patient data of
the plurality of patients stored in the database using the selection
criterion, the selection criterion representing a qualifying or
disqualifying patient parameter for participation in the medical
study;
[c] assigning a first selection measure representing one of
a qualifying or a disqualifying patient parameter based on the
patient data of the first potential participant;
[d] assessing the first potential participant based on the
first selection measure representing the qualifying or
disqualifying patient parameter;
[e] selecting the first potential participant for the medical
study if the qualifying parameter is assigned and not selecting the
first potential participant when the non-qualifying parameter is
assigned; then,
[f] determining, using the processor, a second, previously
unselected, potential participant for the medical study by
evaluating the patient data of the plurality of patients stored in
the database using a secondary criterion representing terms
related to, but different from, the selection criterion when a
determination of a qualifying or disqualifying patient parameter
cannot be made from the selection criterion;
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[g] assigning a second selection measure representing a
likelihood of a qualifying patient parameter to the secondary
criterion based on patient data of the second potential participant;
[h] assessing whether to select the second potential
participant based on the selection measure of the secondary
criterion; and
[i] selecting the potential participant for the medical study
if the second selection measure represents a qualifying patient
parameter and assigning the second potential participant to a list
of potential participants to be further evaluated when the second
selection measure does not represent a qualifying patient
parameter.
REJECTION
Claims 1—19 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
Independent claims 1 and 19, and dependent claims 2—5, 7—11, and 15—18
Appellants argue claims 1—5, 7—11, and 15—19 as a group (see Appeal
Br. 14—18; see also Reply Br. 2—9). We select independent claim 1 as
representative. Claims 2—5, 7—11, and 15—19 stand or fall with independent
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
The “directed to” inquiry [jcannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
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routinely patent-eligible claim involving physical products and
actions involves a law of nature and/or natural phenomenon—
after all, they take place in the physical world. See Mayo, 132 S.
Ct. at 1293 (“For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas.”) Rather, the “directed to” inquiry applies a stage-
one filter to claims, considered in light of the specification, based
on whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016) (inquiring
into “the focus of the claimed advance over the prior art”).
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
“The ‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of
the claimed advance over the prior art’ to determine if the claim’s ‘character
as a whole’ is directed to excluded subject matter.’” Affinity Labs of Texas,
LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citingElec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see
also Enfish, 822 F.3d at 1335.
In rejecting independent claims 1 and 19, the Examiner finds the
claims are “directed to an abstract idea akin to comparing new and stored
information and using rules to identity options” (Final Act. 2). More
particularly, the Examiner finds independent claim 1 merely “requires that
data be stored, the stored data [are] compared against a new criterion, the
stored data [are] compared against a second new criterion, and the potential
options are presented” (id.).
Appellants argue that the Examiner errs in rejecting independent
claims 1 and 19 as directed to ineligible subject matter because the
Examiner’s characterization “is an overly broad simplification of the claims”
(Appeal Br. 15; see also Reply Br. 4—5). Instead, Appellants argue “the
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claimed method of selecting a potential participant for a medical study [and]
does not fit into any of the ‘abstract ideas’ identified by the courts” (Final
Act. 15). We are not persuaded by Appellants’ argument.
At the outset, we note that the Supreme Court in Alice did not rigidly
define or otherwise restrict the universe of abstract ideas to one or more of:
a building block of human ingenuity, a fundamental economic practice, and
an algorithm. See Alice, 134 S. Ct. at 2357 (“we need not labor to delimit
the precise counters of the ‘abstract ideas’ category”). And, here the
Examiner does not find that the claims are directed a building block of
human ingenuity, a fundamental economic practice, or an algorithm.
Furthermore, “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016).
Under step one of the framework set forth in Alice, we agree with the
Examiner that the invention is broadly “directed to an abstract idea akin to
comparing new and stored information and using rules to identify options”
(Final Act. 2). And based on our review of independent claim 1, we find
that independent claim 1 involves nothing more than accessing data,
determining/evaluating data, and selecting data; all steps that may be
performed manually. See CyberSource, 654 F.3d 1366, 1373 (Fed.Cir.
2011) (“[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.”). We also
determine that independent claim 1 is similar to claims that our reviewing
court has found patent ineligible in Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed.Cir. 2016) (collecting information and “analyzing
information by steps people go through in their minds, or by mathematical
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algorithms, without more, [are] essentially mental processes within the
abstract-idea category.”), Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1333 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 2510 (2016) (using
organizational and product group hierarchies to determine a price), and
Parker v. Flook, 437 U.S. 584 (1978) (mathematical algorithm used for
adjusting an alarm limit).
Accordingly, we find that independent claim 1 involves nothing more
than accessing and determining/evaluating data to select potential
participants for a medical study, without any particular inventive technology
— activities squarely within the realm of abstract ideas. See, e.g., Elec.
Power Grp., LLC, 830 F.3d at 1353—54 (when “[t]he focus of the asserted
claims” . . . “is on collecting information, analyzing it, and displaying certain
results of the collection and analysis,” the claims are directed to an abstract
idea). See also Accenture Global Servs., GmbHv. Guidewire Software, Inc.,
728 F.3d 1336, 1344^45 (Fed. Cir. 2013) (claims reciting “generalized
software components arranged to implement an abstract concept [of
generating insurance-policy-related tasks based on rules to be completed
upon the occurrence of an event] on a computer” not patent eligible).
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in original) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
And, similar to the situation in Electric Power, we find nothing
sufficient to remove the claims from the class of subject matter ineligible for
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patenting. As the court explained in Electric Power, “merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.” Elec. Power Grp., 830 F.3d at 1355.
Here, Appellants argue that the claims amount to significantly more
than the abstract idea because
the claims recite assigning a first selection measure that
represents one of a disqualifying or a disqualifying patient
parameter based on patient data of a first potential medical study
participant. The potential participant is then assessed based on
the selection measure and a determination is made of whether the
potential participant qualifies for the medical study or does not
qualify for the medical study. However, the claimed process
does not end there. Rather, the process continues to further
process patient data for potential participants based on yet other
qualifying criteria that that may not have been selected as a result
of the first criteria.
(Appeal Br. 16; see also Reply Br. 8). However, Appellants’ argument does
not establish that the argued limitations add inventiveness, as opposed to the
application of conventional, well-known analytical steps. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“[T]he claimed
sequence of steps comprises only ‘conventional steps, specified at a high
level of generality,’ which is insufficient to supply an ‘inventive concept.’”)
(Citing Alice, 134 S. Ct. at 2357) (internal citations omitted). And, there is
no indication in the record that any specialized computer hardware or other
“inventive” computer components are required. In this regard, we note that
the Specification discloses that “[t]he search for participants can take place
automatically, for example by computer, without personnel being needed to
search through the patient data” (see Spec. 119). Thus, independent claim 1
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merely employs generic computer components to perform generic computer
functions, i.e., storing, and determining/evaluating, which is not enough to
transform an abstract idea into a patent-eligible invention. Also, considered
as an ordered combination, we are unclear as to how these computer
components add anything that is not already present when the steps of the
method are considered separately.
Appellants further argue that “the claimed invention provides
improvements to the technical field at issue by locating and making
available patients for medical studies that could not have been otherwise
found” (Appeal Br. 15—16; see also Reply Br. 6—7). However, Appellants
have not provided evidence that the programming related to these
“improvements” would entail anything atypical from conventional
programming. Instead, the Specification discloses using a “computer”
(Spec. 119) that includes “[a] suitable classification algorithm, for example
a computer-based ontology or a Bayes classification, can then search for
terms synonymous with the selection criterion, in a manner comparable to a
medical thesaurus” (id. 125). And, as the Federal Circuit has stated, “after
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.” DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
Appellants also argue that the pending claims recite significantly more
than an abstract idea and are analogous to the claims that the Supreme Court
upheld as valid in Diamond v. Diehr, 450 U.S. 175 (1981) because “the
patient data . . . stored in the database is transformed into a selected medical
study participant or, in the case of a potential participant that is not
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specifically excluded, added to a list of potential participants for further
evaluation” (Appeal Br. 15—17; see also Reply Br. 6—8).
However, unlike the process claimed in Diehr, which was directed to
a specific industrial process, i.e., “a physical and chemical process for
molding precision synthetic rubber products . . (id. at 184), the present
claims merely recite “[a] method for selecting a potential participant for a
medical study based on a selection criterion.” Here, there is no indication
that the present claims are an improvement to statutory subject matter, such
as a process for curing rubber. Nor do any of Appellants’ claims effectuate
an actual physical process.
Appellants last argue that the claims are not directed to an abstract
idea because “the claims do not ‘tie up’ the judicial exception of ‘comparing
new and stored information using rules to identify options’ such that other
cannot practice the judicial exception” (Appeal Br. 15; see also Reply Br. 5—
6). Appellants’ argument is not persuasive.
Although the Supreme Court has described “the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption,” Alice, 134 S. Ct. at 2354,
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). Although “preemption may signal
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patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Id.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2—5, 7—11, and 15—19,
which fall with independent claim 1.
Dependent claims 6 and 12—14
Appellants separately argue that dependent claims 6 and 12—14
“recite [] additional limitations that amount to significantly more that the
judicial exception of ‘comparing new and stored information using rules to
identify options’” (see Appeal Br. 19-21). We find, however, that
dependent claims 6 and 12—14 merely describe further rules to identity
options of the underlying concept and lack additional elements that would
render the claims patent-eligible. In particular, dependent claims 6 and 12—
14 recite what essentially amount to rules for selecting or not selecting a
potential participant for a medical study, which we discern sits squarely
within, and does not alter appreciably, the broader concept of “comparing
new and stored information using rules to identify options.” Thus, we also
sustain the rejection under § 101 of these dependent claims on the same
basis as the independent claim from which they depend.
DECISION
The Examiner’s rejection of claims 1—19 under 35 U.S.C. § 101 is
affirmed.
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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)(l)(iv).
AFFIRMED
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