Ex Parte Arnone et al

Patent Trial and Appeal Board

Oct 25, 2018

14069000 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/069,000 10/31/2013
69814 7590 10/29/2018
BROOKS, CAMERON & HUEBSCH , PLLC
1201 Marquette Avenue South
Suite 400
MINNEAPOLIS, MN 55403
FIRST NAMED INVENTOR
Robert Arnone
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.
1029.ALG.US.Cl.Cl.Cl 5282
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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):
Align.Docketing@bipl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT AMONE, ERIC KUO,
and DOUGLAS BUKATY
Appeal2017-007412
Application 14/069,000
Technology Center 3600
Before MAHSHID D. SAADAT, ERIC S. FRAHM, and
BETH Z. SHAW, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-007412
Application 14/069,000
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1---6, 8-19, and 21-23. Claims 7 and 20 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Independent claim 1, reproduced below with emphases added, is
illustrative of the claimed subject matter:
1. A method for characterizing a dentition of a patient,
compnsmg:
accessing a database including one or more reference
conditions in each of a plurality of dentition categories, each
reference condition including a corresponding first value;
determining, using a computer, a similar reference
condition to an initial patient condition in each of the plurality of
dentition categories by:
comparing the initial patient condition in each of the
plurality of dentition categories with the one or more reference
conditions in each of the plurality of dentition categories; and
receiving a selection, from a user interface input device,
of at least one reference condition in one or more of the plurality
of dentition categories that is similar to the initial patient
condition in a same dentition category;
generating, using the computer, a patient identifier matrix
including a plurality of positions, wherein:
each of the plurality of positions corresponds to one of the
plurality of dentition categories; and
each of the plurality of positions includes a second value
equal to the first value of the selected reference condition for the
corresponding one of the plurality of dentition categories;
comparing, using the computer, at least a portion of the
patient identifier matrix and a treatment goal with one or more
reference identifiers, wherein each of the one or more reference
identifiers includes an initial reference dentition, a treatment goal
reference identifier, and a final reference dentition; and
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determining, using the computer, a patient dentition goal
based on the final reference dentition corresponding to the
selected reference identifier and outputting the patient dentition
goal to a user interface output device.
REJECTION
The Examiner made the following rejection:
Claims 1-6, 8-19, and 21-23 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter,
i.e., a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more. Final Act. 2-5; Ans. 2-5.
ISSUE
Based on Appellants' arguments in the Appeal Brief (App. Br. 8-16)
and the Reply Brief (Reply Br. 2-5), the following issue is presented on
appeal:
Did the Examiner err in rejecting claims 1---6, 8-19, and 21-23 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter?
ANALYSIS
We disagree with Appellants' arguments (App. Br. 8-16; Reply Br.
2-5) as to the patent-eligibility of independent claims 1-6, 8-19, and 21-23.
We adopt as our own ( 1) the findings, conclusions, and reasons set forth by
the Examiner in the Final Office Action from which this appeal is taken
(Final Act. 2-5), and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to the Appellants' Appeal Brief (Ans. 2-5).
We provide the following for emphasis.
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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: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75-77 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first
step in that analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts" (id.), e.g., to an abstract idea. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 2355-57. If the
claims are not directed to a patent-ineligible concept, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered "individually and 'as an ordered combination"' to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. at 2355 (quoting Mayo,
566 U.S. at 78-9). For claims to pass muster, "at step two, an inventive
concept must be evident in the claims." RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
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or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
Alice Step One
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. We have considered all of
Appellants' arguments (App. Br. 8-13; Reply Br. 1-3), but find them
unpersuasive as to error in the rejection.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially-recognized exception-i.e., an abstract idea. Final Act. 3--4;
Ans. 3--4. In particular, the Examiner concludes the claims are directed to
the abstract ideas of "comparing stored and input data and rules, to do what
doctors do routinely" (Final Act. 3), classifying, categorizing, indexing
medical/dental data to produce a treatment goal (Final Act. 4 citing Spec.
2: 18-29; see also Ans. 3), and "using a numbering system" (Ans. 3), i.e., to
generate patient identifier matrices as claimed. We agree with the Examiner
(Final Act. 3--4; Ans. 3--4). The abstract ideas identified by the Examiner
pertain to organizing human activities in healthcare ( e.g., assisting a
caregiver in treating a patient by determining a dentition goal based on
dentition data), and using dentition data to identify a patient dentition goal
(i.e., comparing stored and input data and rules to make a recommendation).
The numerous claim limitations recite generally a method for
characterizing a dentition of a patient ( claims 1-6 and 22), a system for
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providing an orthodontic profile indexing system (claims 8-13 and 23), and
a computer readable medium storing instructions to perform a method of
determining a patient dentition goal ( claims 14--19 and 21 ).
We conclude that characterizing and indexing dentition (i.e., medical)
data, comparing the data, and using rules to produce a treatment ( e.g., patient
dentition) goal, as recited in claims 1---6, 8-19, and 20-23, are fundamental
healthcare or business practices, as well as the organization of human
activity in the healthcare field, and, therefore constitutes patent-ineligible
subject matter. See Alice, 134 S. Ct. at 2357; Bilski v. Kappas, 561 U.S. 593,
611 (2010); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) ("fundamental economic and conventional business practices are often
found to be abstract ideas, even if performed on a computer").
Instead of using a definition of an abstract idea, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea."). As part of this
inquiry, we must "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
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subject matter." Affinity Labs. of Texas, LLC v. DirecTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Here, Appellants' claims generally relate to a method, system, and
computer program for performing the method, of assisting a caregiver in
treating a patient by producing a treatment goal or patient dentition goal
based on collected and stored dentition data, and are similar to ideas
previously concluded by our reviewing court to be abstract. See, e.g.,
Content Extraction, 776 F.3d at 1347; Electric Power, 830 F.3d at 1353;
Intellectual Ventures I, 850 F.3d at 1340.
Our reviewing court has said that abstract ideas include the concepts
of collecting and compiling patient health data. See HealthTrio LLC v.
Aetna, Inc., 2017 WL 192962 (mem.) (Fed. Cir. 2017) (affirming district
court decision holding "collection of data from various sources with the goal
of compiling a single, comprehensive, patient health record" is patent
ineligible, and stating that "[ t ]he normalization patents are directed to a
method of transforming the data collected from various sources from one or
more disparate formats into an integrated format. Although the patent
describes a method by which the program determines the meaning of data,
that task arguably is one within the capacity of the human mind to perform,
and therefore ineligible for patent"); EResearchTechnology, Inc. v. CRF,
Inc., 2017 WL 1033672 (mem.) (Fed. Cir. 2017) (affirming district court
ruling that "using an electronic device to obtain clinical trial data that would
otherwise be collected by pen-and-paper diary, and analyzing the data to
decide whether to prompt action" and "[ c ]lassifying clinical trial results by
obtaining data using a portable electronic device and comparing same to a
norm" are patent ineligible).
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Our reviewing court has also said that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014).
Additionally, the collection of information and analysis of information ( e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power, 830 F.3d at 1353. Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Financial Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
Here, the processor-implemented method of determining a patient
dentition or treatment goal based on collected and stored dentition data is
similar to ideas previously concluded by our reviewing court to be abstract.
See, e.g., Content Extraction, 776 F.3d at 1347; Electric Power, 830 F.3d at
1353; Intellectual Ventures I, 850 F.3d at 1340.
Moreover, we agree with the Examiner that the claims are directed to
the abstract idea of "comparing new and stored information and using rules
to identify options." (Ans. 3); see SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 Fed. Appx. 950 (Fed. Cir. 2014), cert. denied, 135 S.Ct. 58
(2014). In SmartGene, the Federal Circuit found claims patent ineligible
because they did "no more than call on a 'computing device,' with basic
functionality for comparing stored and input data and rules, to do what
doctors do routinely." SmartGene, 555 Fed. Appx. at 954. In the instant
case, the recited dentition data and patient identifier matrix are nothing more
than data used in an algorithm process that uses a processor to receive,
generate, and compare data using mathematical comparisons and rule-based
processes. The claims at issue in SmartGene relied upon "expert rules" for
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"'evaluating and selecting' from a stored 'plurality of different therapeutic
treatment regimens."' Id. at 951-52. The "expert rules" in SmartGene are
analogous to the steps performed in claims 1, 8, and 14 to determine a
"patient dentition goal" ( claims 1, 8, 14 ).
Further, to the extent the Examiner determines that the instant claims
comprise a combination of abstract ideas, combining several abstract ideas
( such as the organization of human activity in the healthcare field and a
fundamental business practice) does not render the combination any less
abstract. RecogniCorp, 855 F.3d at 1327 ("Adding one abstract idea ... to
another abstract idea ... does not render the claim non-abstract."); see also
FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) ( determining the pending claims were directed to a combination of
abstract ideas). Thus, we determine no error in the Examiner's conclusion
that the claims 1---6, 8-19, and 21-23 are directed to patent-ineligible subject
matter.
Appellants' contention (Reply Br. 3) that because there is no prior art
rejection for the pending claims, the Examiner has not shown the claimed
process could be accomplished by a human with a pencil and paper, is
unpersuasive. The Supreme Court guides: "[ t ]he 'novelty' of any element
or steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diehr, 450 U.S. at 188-89
( emphasis added). Our reviewing court further emphasizes that "[ e ]ligibility
and novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016)
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(holding that "even assuming" that a particular claimed feature was novel
does not "avoid the problem of abstractness"). Therefore, we find
Appellants' argument (Reply Br. 3) is not persuasive.
Appellants' arguments as to dependent claims 21-23 (App. Br. 14--
15), that these claims are sufficient to transform the subject matter of the
independent claims from which they depend into a patent-eligible concept,
are unpersuasive. Even if, as Appellants contend, these claims tie the claims
to a treatment product ( e.g., an appliance) in order to implement a patient
dentition goal, identifying a treatment product (i.e., data) to implement a
goal is just more data collection and recognition, and is still directed to the
abstract ideas of the organization of human activity in the healthcare field
and a fundamental business practice.
Alice Step Two
We have considered all of Appellants' arguments (App. Br. 14; Reply
Br. 4), but find them unpersuasive as to error in the rejection.
The Examiner concludes, and we agree, the pending claims do not
include limitations that are "significantly more" than the abstract idea
because the claims do not include 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. See Final Act. 4--5; Ans. 4--5.
Here, we agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent
eligible application. Final Act. 4--5; Ans. 4--5. Specifically, we agree with
the Examiner (Final Act. 5 citing Spec. 4:13-33) that Appellants' "claimed
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elements are simply appending well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception" (Final Act. 4--5). Appellants have not
shown otherwise, either with persuasive evidence or argument.
Summary
In view of the foregoing, we are not persuaded of Examiner error and
we sustain the Examiner's rejection under 35 U.S.C. § 101 of claims 1---6, 8-
19, and 21-23.
CONCLUSION
The Examiner did not err in rejecting claims 1---6, 8-19, and 21-23
based upon claimed patent-ineligible subject matter under 35 U.S.C. § 101.
DECISION
For the above reasons, we sustain the Examiner's rejection of claims
1---6, 8-19, and 21-23 under 35 U.S.C. § 101.
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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