Ex Parte Andrie et al

Patent Trial and Appeal Board

Sep 24, 2018

13603452 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/603,452 09/05/2012
21125 7590 09/26/2018
NUTTER MCCLENNEN & FISH LLP
SEAPORT WEST
155 SEAPORT BOULEVARD
BOSTON, MA 02210-2604
FIRST NAMED INVENTOR
Matthew J. Andrie
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.
101896-1267
(DEP6424USNP)
CONFIRMATION NO.
3313
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
docket@nutter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW J. ANDRIE, TIMOTHY A. BEARDSLEY,
BETH BISSONNETTE, BRETT PATRICK KNICKERBOCKER,
ADAM LAW ARE, BRADLEY MOORE, DAVID O'BRIEN,
and CHRISTOPHER RIGSBY
Appeal2017-004284
Application 13/603,452
Technology Center 3600
Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and
JASON M. REPKO, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-8, 10, 13-24, 62, and 64, which are all the
claims pending in this application. 2 We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify DePuy Products, Inc. and DePuy Synthes Products,
Inc., both Johnson & Johnson companies, as the real party in interest. App.
Br. 1.
2 Claims 9, 11, 12, 25---61 have been previously canceled.
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Application 13/603,452
STATEMENT OF THE CASE
Appellants' invention relates to "supporting and managing surgeries
that involve medical devices ( e.g., medical implants and instruments)."
Spec. ,r 2.
Exemplary Claim
Claim 1 is exemplary and illustrative of the invention and reads as
follows:
1. A surgical support and management system,
compnsmg:
at least one processor; and
at least one computer readable storage device coupled to
the at least one processor, the at least one storage device storing
program instructions executable by the at least one processor to
implement a plurality of modules for surgical support and
management;
the plurality of modules comprising:
a scheduling module that maintains a first database of
scheduled surgeries, the scheduling module being configured to
schedule a surgery by receiving information indicative of a type
of the surgery and a time of the surgery and storing the
information in the first database;
an inventory module that maintains a second database of
an inventory of medical devices and determines based on the
type of the surgery whether a medical device required for the
surgery is available in the inventory; and
a planning module configured to receive medical images
of a patient uploaded by a user and to display the uploaded
medical images to other users, wherein the planning module
presents a graphical user interface on an electronic display
coupled to the at least one processor through which an image of
at least one inventory item is displayed as an overlay on at least
one of the medical images of the patient such that the at least
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one inventory item can be selected and sized for the surgery
based on said medical images, and wherein the planning
module communicates with the inventory module to reserve the
at least one inventory item selected and sized through the
graphical user interface based on said medical images;
wherein, if the medical device required for the surgery is
available in the inventory, the inventory module marks the
medical device as being reserved for the surgery in the second
database; and if the medical device required for the surgery is
not available in the inventory, the inventory module at least one
of (i) orders the medical device and (ii) issues a notification that
the medical device is not available for the surgery.
Claims 1-8, 10, 13-24, 62, and 64 stand rejected under 35 U.S.C.
§ 101 for being directed to patent-ineligible subject matter. See Final Act.
2-3; Ans. 2-5.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the briefs that the Examiner has erred. We are unpersuaded by
Appellants' contentions and concur with the findings and conclusions
reached by the Examiner as explained below.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. That provision "contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354
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(2014) ( quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). According to the Supreme Court:
[W]e set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those
concepts. First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts .... If so, we
then ask, "[ w ]hat else is there in the claims before us?" ... To
answer that question, we consider the elements of each 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 .... We have described
step two of this analysis as 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 Corp., 134 S. Ct. at 2355. The Federal Circuit has described the Alice
step-one inquiry as looking at the "focus" of the claims, their "character as a
whole," and the Alice step-two inquiry as looking more precisely at what the
claim elements add-whether they identify an "inventive concept" in the
application of the ineligible matter to which the claim is directed. See
Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016); and Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015).
The Rejection
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 2, Ans. 2-3.
The Examiner specifically finds the claims are directed to the abstract idea
of scheduling inventory for surgery. See id. The Examiner further finds the
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claimed system for scheduling a surgery "determines whether a medical
device is required, presents an image of inventory, display inventory as an
overlay, selects and size inventory item, and marks the medical device as
reserved or not available" and performs steps that can be performed
mentally. Ans. 2. Additionally, the Examiner determines the claims use "a
generic computer component that performs functions (i.e., maintains a first
database, maintains a second database, receive medical images of a patient,
and marks the medical device as being reserved) that are well-understood,
routine, and conventional activities previously known to the industry." Final
Act. 2, see also Ans. 3. The Examiner refers to Paragraphs 49, 51, and 55 of
Appellants' Specification and concludes the recited limitations do not
amount to significantly more than the underlying abstract idea nor they
improve the functioning of a computer or any other technology. See Final
Act. 2-3, Ans. 3--4. Appellants argue the Examiner erred. See App. Br. 3-
10; see also Reply Br. 1-3.
Alice Step 1
Regarding Alice step one, the Federal Circuit has "treated collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas."
Electric Power, 830 F.3d at 1353 (emphasis added); see also Internet
Patents, 790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015); and Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir.
2014). "In a similar vein, we have treated analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category."
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Electric Power, 830 F.3d at 1354 (emphasis added); see also In re TL!
Commc'ns. LLC Patent Litig., 823 F.3d 607,613 (Fed. Cir. 2016). "And we
have recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis." Electric Power, 830 F.3d at 1354 (emphasis
added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15
(Fed. Cir. 2014).
Appellants' assertion that claim 1 recites "a surgical support and
management system" and is directed to a machine rather than an abstract
idea is not persuasive. See App. Br. 4. Similarly, Appellants' assertion that
the rejection fails to consider whether claim 1 's "character as a whole is
directed to excluded subject matter," is not persuasive either. See App. Br.
5-7 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
The "directed to" inquiry asks not whether "the claims involve a patent-
ineligible concept," but instead whether, "considered in light of the
specification, ... 'their character as a whole is directed to excluded subject
matter."' Enfish, 822 F.3d at 1335 (internal citations omitted). In that
regard, we determine whether the claims "focus on a specific means or
method that improves the relevant technology" or are "directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
Here, the Examiner determines claim 1 is directed to a patent-
ineligible concept - an abstract idea "for performing the steps of schedule a
surgery, determines whether a medical device is required, presents an image
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of inventory, display inventory as an overlay, selects and size inventory
item, and marks the medical device as reserved or not available." Ans. 2. In
fact, the claim limitations focus on: (a) a scheduling module that maintains
a first database of scheduled surgeries; (b) an inventory module that
maintains a second database of an inventory of medical devices; ( c) a
planning module configured to receive medical images of a patient ... and
to display the uploaded medical images to other users, wherein the planning
module presents a graphical user interface on an electronic display and
marks the device reserved if available or orders the device if unavailable.
We agree with the Examiner that the focus of these features are on
"comparing information and using rules to schedule inventory for surgery,"
which is an abstract idea performed by using an algorithm or mathematical
formula and general purpose computing devices. Id. It is well established
that data analysis and algorithms are abstract ideas. See, e.g., Alice, 134 S.
Ct. at 2355; Parker v. Flook, 437 U.S. 584, 589, 594--95 (1978) ("Reasoning
that an algorithm, or mathematical formula, is like a law of nature, Benson
applied the established rule that a law of nature cannot be the subject of a
patent"); Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972). Thus, claim 1 is
directed to an abstract idea because it is focused on collecting information,
processing the information by mathematical algorithms, and presenting the
results. See Electric Power, 830 F.3d at 1353-54 ("The advance they
purport to make is a process of gathering and analyzing information of a
specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.").
Appellants overlook that "the focus of the claims is not on such an
improvement in computers as tools, but on certain independently abstract
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ideas that use computers as tools." Electric Power, 830 F.3d at 1354. In this
case, as in Electric Power, the claims do not even require a new source or
type of information. Id. at 1355.
Consistent with the Examiner's findings, we also note that the steps
recited in claim 1 could be performed by a human with pen and paper. For
example, the recited steps of maintaining a list of scheduled surgeries and a
list of an inventory of medical devices, presenting images of the available
devices, and marking the device reserved if available or ordering the device
if unavailable represent steps that could be performed by a person with pen
and paper. In that regard, our reviewing court has held that "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category." Electric Power, 830 F.3d at 1354; see also
Synopsys, 839 F.3d at 1146. "[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter." Bancorp Servs., LLC v. Sun
Life Assurance Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). 3
Alice Step 2
Regarding Alice step two, we agree with the Examiner that the
operations recited in claim 1 involve nothing more than "use of conventional
or generic technology in a nascent but well-known environment, without any
claim that the invention reflects an inventive solution to any problem
presented by combining the two." Ans. 6. As stated above, claim 1 recites a
3 See also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375
(Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even
when performed by a computer, was precisely the holding of the Supreme
Court in Gottschalk v. Benson").
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system for scheduling a surgery including a processor which comprises
modules that "determines whether a medical device is required, presents an
image of inventory, display inventory as an overlay, selects and size
inventory item, and marks the medical device as reserved or not available."
Ans. 2. Contrary to Appellants' assertion (App. Br. 8-10; see also Reply Br.
1-3), these activities are well-understood, routine, and conventional
activities of a computer, i.e., generic computer functions. Appellants do not
persuade us why the claims or Specification provide specific, technical
improvements. Rather, as the Examiner points out, the addition "one or
more processor, storage device, one or more modules, and database" do not
add meaningful limitations to the abstract idea. Ans. 5. As explained by the
Examiner (Ans. 3), Appellants' Specification describes the types of
processors or other components used in the claimed system as nothing more
than generic and conventional. See Spec. ,r,r 49, 51, 55. Additionally, we
note that the Federal Circuit, in accordance with Alice, has "repeatedly
recognized the absence of a genuine dispute as to eligibility" where claims
have been defended as involving an inventive concept based "merely on the
idea of using existing computers ... to carry out conventional processes,
with no alteration of computer functionality." Berkheimer v. HP, Inc., 890
F.3d 1369, 1373 (Fed. Cir. 2018) (denying petition for rehearing en bane)
(Moore, J., concurring) ( citations omitted).
Furthermore, we are unpersuaded by Appellants' argument that their
claims are not directed to an abstract idea because they are analogous to the
claims in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016). Reply Br. 1-3. Specifically, Appellants argue that similar
to the Federal Circuit's analysis in McRO, Appellants' claims focus on
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"'present[ing] a graphical user interface on an electronic display coupled to
the at least one processor through which an image of at least one inventory
item is displayed as an overlay on at least one of the medical images of the
patient such that the at least one inventory item can be selected and sized for
the surgery based on said medical images."' Reply Br. 3.
In McRO, the Federal Circuit found that "the claims themselves set
out meaningful requirements for the first set of rules: they 'define[] a morph
weight set stream as a function of phoneme sequence and times associated
with said phoneme sequence."' 837 F.3d at 1313 ( citation omitted). The
Federal Circuit further explained that "[t]he specific, claimed features of
these rules allow for the improvement realized by the invention." Id. The
present claims are distinguished from the patent-eligible claims in McRO in
that [t]he combination of "rules" of McRO in view of the claims as a whole
actually produces "lip synchronization and facial expression control of said
animated characters," whereas the functionality of rules results in actual,
visual "lip synchronization and facial expression control of the animated
characters," whereas the steps of Appellants' claim are used to present,
select, and adjust the layout of inventory item images, eventually resulting in
a final adjusted arrangement that is stored in memory and not to affect the
actual presentation and selection of the items.
The court in McRO found that claim 1 was patent eligible because it
incorporated the specific features of the rules into the claim by requiring
"that the rules be rendered in a specific way: as a relationship between sub-
sequences of phonemes, timing, and the weight to which each phoneme is
expressed visually at a particular timing ( as represented by the morph weight
set)." McRO, 837 F.3d at 1315. The Court further reasoned that the claims
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explicitly disclosed "obtaining a first set of rules that define output morph
weight set stream as a function of phoneme sequence and time of said
phoneme sequence" (Id. at 1307---08). In contrast, Appellants' claims are
fundamentally different from those in McRO because they do not recite rules
or policies, at least in the sense contemplated by McRO. Moreover, the
claims here, unlike the claims at issue in McRO, do not recite the application
of the recited calculations to effect a real-world result.
Preemption
We also are not persuaded by Appellant's arguments that claim 1 does
not seek to tie up or otherwise preempt an abstract idea. See App. Br. 8.
Reply Br. 3.
While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent
eligibility .... Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully
addressed and made moot.
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
13 59, 13 62---63 (Fed. Cir. 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.").
CONCLUSION
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 101. For the same
reasons, we sustain the rejection of dependent claims 2-8, 10, 13-24, 62,
and 64, which are not separately argued, under 35 U.S.C. § 101.
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DECISION
We affirm the Examiner's decision to reject claims 1-8, 10, 13-24,
62, and 64.
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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