Ex Parte Alsafadi

Patent Trial and Appeal Board

Jun 28, 2018

11572669 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/572,669 01/25/2007 Yasser Alsafadi
24737 7590 07/02/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2004P01493WOUS 1266
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y AS SER ALSAF ADI
Appeal2016-008129
Application 11/572,669
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and MICHELLE
R. OSINSKI, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-16 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2016-008129
Application 11/572,669
THE INVENTION
The Appellant's claimed invention is directed to a decision support
system for use in healthcare (Spec. 1 :3-5) 1. Claim 12, reproduced below, is
representative of the subject matter on appeal.
12. A method for exchanging data between an executable
guideline decision support system and a local information storage
system, comprising:
executing with a processor at least one guideline of a plurality
of guidelines stored in an executable guideline storage system of a
decision support system, and executing includes processing data
associated with a second data element, and corresponding data is
associated with a plurality of first data elements stored in a local
information storage system, and the corresponding data of the
plurality of first data elements include at least one of an imaging result
by an imaging device or a lab result by a lab device; and
generating a request to exchange data between the local
information system and the decision support system, wherein the data
being exchanged is included in the data associated with the second
data element and generating includes:
determining a first data element of the plurality of first data
elements that corresponds to the second data element, and at least one
interoperability parameter defining how the first and second data
elements correspond and establishing semantic interoperability;
processing the data associated with the second data element
being exchanged in accordance with the determined at least one
interoperability parameter which modifies the data associated with the
second data element to the corresponding data associated with the first
data element; and
transmitting the processed data being exchanged between the
first and second data elements to the local information storage system.
1 We herein refer to the Specification, filed Jan 25, 2007 ("Spec."); Final
Office Action, mailed Oct. 21, 2015 ("Final Act."); Appeal Brief, filed Feb.
1, 2016 ("App. Br."); Examiner's Answer, mailed July 1, 2016 ("Ans."). A
Reply Brief, filed Aug. 25, 2016 was not cited in this Decision.
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Appeal2016-008129
Application 11/572,669
THE REJECTION
The following rejection is before us for review:
Claims 1-16 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
ANALYSIS
Re} ection under 3 5 US. C. § 101
The Appellant argues that the rejection of claim 12 is improper
because the claim is not directed to an abstract idea, and is also more than
the alleged abstract idea (App. Br. 2-5, Reply Br. 2-5).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2, 3, Ans. 2-5).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/572,669
In judging whether claim 12 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as "an ordered
combination" to determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention". Id. at 2358.
Here, we determine that the claim is directed to comparing new and
stored data using guidelines to identify options for decision making. This is
an idea in itself or a method of organizing human activities and is an abstract
idea beyond the scope of§ 101. The claim preamble is directed to
"exchanging data between an executable decision support system and local
information storage system". The Specification states that the invention is
directed to a "decision support system" in paragraph 1. See Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting
information, analyzing it, and displaying certain results of the collection and
analysis was held to be an abstract idea.
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Appeal2016-008129
Application 11/572,669
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea over using generic computer components. We conclude that it
does not. The Specification at page 4 states the method uses generic
components including a processor, LAN and WAN networks, CD-ROM,
and the Internet to operate.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
We note the point about pre-emption (App. Br. 7). While pre-emption
"might tend to impede innovation more than it would tend to promote it,
'thereby thwarting the primary object of the patent laws'" (Alice, 134 S. Ct.
at 2354 (quoting Mayo, 132 S. Ct. at 1293), "the absence of complete
preemption does not demonstrate patent eligibility" (Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015)("[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.").
For these above reasons, the rejection of claim 12 and its dependent
claims which were not separately argued is sustained.
We reach the same conclusion as to independent system claim 1 and
its dependent claims. Here, as in Alice, "the system claims are no different
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Appeal2016-008129
Application 11/572,669
in substance from the method claims. The method claims recite the abstract
idea implemented on a generic computer; the system claims recite a handful
of generic computer components configured to implement the same idea."
Alice 134 S. Ct. at 2351. "[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea 'while adding the words "apply it'" is not
enough for patent eligibility." Id. at 2358 (quoting Mayo, 132 S. Ct. at
1294).
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-16 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1-16 is sustained.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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