Ex Parte Backhaus et al

Patent Trial and Appeal Board

Dec 20, 2018

14079284 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/079,284 11/13/2013
21186 7590 12/25/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Brent Backhaus
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.
3403.010US3 5764
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENT BACKHAUS, LORNA BAKCHAUS,
DEAN EBESU, TOM J. GLEESON, and DEKE WEINBLATT
Appeal2017-005310
Application 14/079,284
Technology Center 3600
Before ELENI MANTIS MERCADER, LINZY T. McCARTNEY, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 2-9, 11-16, 18-23, and 25-27. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Virtual Radiologic Corporation as the real party in
interest. App. Br. 2. Virtual Radiologic Corporation identifies that it is
wholly owned by American Radiology, LLC, which is wholly owned by
MEDNAX Services, Inc., which is wholly owned by MEDNAX, Inc. Id.
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STATEMENT OF THE CASE
Introduction
Appellants describe the disclosed and claimed invention as follows:
Enhanced techniques for the extraction and use of metadata from
medical images are disclosed herein. Based on the information
in the metadata, specific processing may be performed within an
image order management system, radiology information system
(RIS), or like system. A radiology read order may be created,
pre-populated, and transmitted via a processing system (e.g., a
teleradiology image order management system) based on the
metadata within the radiology image. For example, this metadata
may exist within the header of a DICOM-formatted image data
file or a DICOM communication protocol transmission. The
processing system may then provide the prepopulated read order
back to the source of the medical images for verification and
submission. Other processing actions may also occur based on
information extracted from the image metadata, such as custom
workflows and handling based on an originating facility, or
transferring the images to a particular radiologist or location.
Abstract. 2
Claim 18 is representative and reproduced below:
18. A method for processing medical data in a workflow
through use of a data processing system, the data processing
system comprising at least one hardware processor performing
electronic operations, the electronic operations including:
processing electronic imaging data, wherein the electronic
imaging data includes metadata and a plurality of digital
medical images that originate from a medical imaging
2 Our Decision refers to the Final Office Action mailed June 9, 2016 ("Final
Act."); Appellants' Appeal Brief filed Nov. 9, 2016 ("App. Br.") and Reply
Brief filed Feb. 13, 2017 ("Reply Br."); the Examiner's Answer mailed Dec.
12, 2016 ("Ans."); and the original Specification filed Nov. 13, 2013
("Spec.").
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procedure performed by a medical imaging modality, wherein
the plurality of digital medical images provide digital
representations of at least a
portion of a human subject captured by the medical imaging
modality;
processing electronic order data, wherein the electronic order
data is correlated to the plurality of digital medical images
based on the metadata in the electronic imaging data, and
wherein the electronic order data specifies characteristics of a
diagnostic evaluation of the plurality of digital medical images
to be performed;
processing medical imaging procedure characteristics included
in the electronic order data, to determine at least one
requirement of an evaluator for the diagnostic evaluation of the
plurality of digital medical images to be performed, wherein the
determination of the at least one requirement of the evaluator is
based on the medical imaging procedure characteristics
included in the electronic order data;
maintaining electronic worklists associated with respective
evaluators of a plurality of evaluators, the electronic worklists
for the respective evaluators providing a listing of one or more
pending diagnostic evaluations designated for performance
by the respective evaluators, wherein the electronic worklists
for the respective evaluators include an electronic worklist for a
particular evaluator;
designating the particular evaluator for performance of the
diagnostic evaluation, the particular evaluator designated from
among the plurality of evaluators, and the particular evaluator
designated based on a corresponding match of at least one
qualification of the particular evaluator with the at least one
requirement of the evaluator for the diagnostic evaluation;
updating the electronic worklist for the particular evaluator in
response to designating the particular evaluator, wherein the
electronic worklist for the particular evaluator is updated to
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include a pending evaluation for the performance of the
diagnostic evaluation of the plurality of digital medical images
in the listing of the one or more pending diagnostic evaluations
designated for performance by the particular evaluator; and
transmitting the plurality of digital medical images to a
computing device associated with the particular evaluator,
wherein the plurality of digital medical images are
viewable at the computing device associated with the particular
evaluator in response to acceptance of the diagnostic evaluation
of the plurality of digital medical images from the electronic
worklist for the particular evaluator.
App. Br. 36-37 (Claims App'x).
Rejections on Appeal
Claims 2-9, 11-16, 18-23, and 25-27 stand rejected on the ground of
nonstatutory double patenting over claims 1-24 of US 8,515,778 B2. 3
Claims 2-9, 11-16, 18-23, and 25-27 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to patent-ineligible subject
matter.
Claims 2, 5-9, 11, 13-16, 18, and 20-23 4 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Pinsky et al. (US 5,469,353;
3 Appellants state that the Examiner's nonstatutory double patenting
rejection of claims 2-9, 11-16, 18-23, and 25-27 "is not being appealed."
App. Br. 13 (emphasis omitted); Reply Br. 1. Because Appellants are
required to present arguments with respect to each ground of rejection, but
do not do so with respect to the nonstatutory double patenting rejection, we
summarily sustain the rejection of claims 2-9, 11-16, 18-23, and 25-27 on
the ground of nonstatutory double patenting over claims 1-24 of U.S. Patent
8,515,778 B2. See 37 C.F.R. § 4I.37(c)(l)(iv).
4 Although there is no pending claim 24, the Examiner erroneously includes
claim 24 in this rejection.
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issued Nov. 21, 1995) ("Pinsky") and Gropper et al. (US 2003/0126148 Al;
published July 3, 2003) ("Gropper").
Claim 4 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Pinsky, Gropper, Rothschild et al. (US 2002/0016718 Al;
Feb. 7, 2002) ("Rothschild"), and Official Notice. 5
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Briefs and are not persuaded the Examiner erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final
Act. 2-25) and in the Examiner's Answer (Ans. 2-21), and we concur with
the conclusions reached by the Examiner. For emphasis, we consider and
highlight specific arguments as presented in the Briefs.
Rejection of Claims 2-9, 11-16, 18-23, and 25-27 under§ 101
Applicable Law
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 35
U.S.C. § 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) (citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
5 The Examiner takes Official Notice that the HL-7 communication format is
old and well known. Final Act. 19-20.
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Laboratories, 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 the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. 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. 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,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (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) (citation omitted).
If, at the first stage of the Alice analysis, we conclude that the claim is
not directed to a patent-ineligible concept, it is considered patent eligible
under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v. CellzDirect,
Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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." Alice, 134 S.Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
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In other words, the second step is to "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."' Id. (brackets in original) ( quoting Mayo, 566
U.S. at 72-73). The prohibition against patenting an abstract idea "'cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (internal citation omitted).
Appellants' Arguments 6
Appellants argue the Examiner failed to establish a prima facie case of
subject matter ineligibility because the Examiner (1) did not fully articulate
the abstract idea, (2) did not establish that the respective elements of the
claims are directed to an abstract idea, and (3) "failed to provide proper
evidence that the claims do not amount to significantly more than an abstract
idea." App. Br. 21. According to Appellants, even assuming that the claims
are directed to a judicial exception, the elements of the claims "amount to
significantly more" than an abstract idea or an ineligible method of doing
business under the principles confirmed in the Enfzsh, BASCOM, McRO, and
Amdocs cases. Id. at 21-22.
In particular, Appellants argue the Examiner failed to articulate how
the claimed invention is directed to a judicial exception by identifying
certain claim elements or concepts individually and not in the context in
6 Appellants argue claims 2-9, 11-16, 18-23, and 25-27 as a group. See
App. Br. 17-25; Reply Br. 2-8. We consider method claim 18 to be
representative of the claimed subject matter on appeal and, therefore, we
decide the§ 101 rejection of claims 2-9, 11-16, 18-23, and 25-27 on the
basis of representative claim 18. See 37 C.F.R. § 4I.37(c)(l)(iv).
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which these operations are conducted in the claims. Id at 22. Appellants
also argue the Examiner erred in finding the claims recite the concept of
"designating an evaluator based on a match between the evaluator's
qualifications and a requirement for diagnostic evaluation" because this
ignores multiple computer-implemented claim elements and actions. Id. at
23 ( emphasis omitted). Appellants further argue that the combination of
elements in the claims is not directed to any ineligible concept and "[ s ]imply
because the claims have a relationship to information, rules and tasks does
not prove the claims are directed to abstract business methods or concepts."
Id. In the Reply Brief, Appellants further argue the Examiner oversimplified
the claims into seven features, failed to cite any authority for why each
feature is well-understood, routine, or conventional, and failed to consider
the claims as a whole. Reply Br. 5---6. Appellants also argue that the
Examiner's finding that the ordered combination of steps is "an abstract
'method of organizing human activity' assumes [] the claim can be rewritten
and recharacterized to remove the actual technical context and limitations."
Id. at 6. Appellants also argue the Examiner's oversimplification and
comparison of the claims to those in SmartGene, Cybeifone, In re Meyer,
and Accenture "might be relevant if the appealed claims actually recited any
of these concepts[]," but "[t]hey do not." Id. at 6-7.
Regarding Appellants' contention that the Examiner failed to establish
that the claimed subject matter is abstract, Appellants argue that based on the
decisions in Eefzsh and Amdocs,7 the Examiner's findings of abstractness
cannot be sustained as a matter of law. App. Br. 24--26. Appellants also
7 Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300, 1302
(Fed. Cir. 2016).
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argue "[t]he involvement of specific computer elements and data processing,
transmission, and actions in the claims to achieve this designation [ of an
evaluator] calls the entire premise of abstractness into question." Id. at 26.
Appellants further argue that the "claims are directed to an improvement in
computer technology; the claims result in an improvement to the functioning
of the computer network and computer system itself even before an
interpretation (e.g., a radiological read) is performed." Id. Appellants
dispute the characterization that the claims might be "a method of organizing
human activity." Id. In that regard, Appellants argue "[t]he recited
operations are performed electronically and in a computer, excluding any
possibility that the claims are directed to human activities or mental ideas by
themselves." Id. Appellants also argue that the Examiner's characterization
of the claims as a "distributed architecture" ignores the point of Amdocs,
which held that claims, which even involve "generic components [that]
operate in an unconventional manner to achieve an improvement in
computer functionality" are non-abstract and patent-eligible. Reply Br. 8.
Appellants further argue that "[ e ]ven the Examiner recognizes that 'the
specification describes improving the speed or efficiency of known manual
or automated image routing systems' but errs in concluding that this is
performed [] 'using generic computers and known transmission networks."'
Id. (citing Ans. 18).
Regarding Appellants' contention that the Examiner failed to establish
the claimed subject matter is not "significantly more" than a judicial
exception, Appellants argue the Examiner's conclusion is based on the
oversimplification of individual claim elements, rather than an evaluation of
elements in the claim as a whole. App. Br. 27. Appellants also argue that,
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"[ e ]ven so, the remaining claims are significantly more than the alleged
judicial exception, and invoke elements that are not well-understood,
routine, or conventional in the art." Id. Citing McRO, Appellants argue that
"the use of a computer-driven mechanism to automatically transfer data in a
network, manage an electronic worklist, and process medical data
characteristics cannot be excluded from subject matter eligibility even if
they are simplified down to 'tasks."' Id. at 27-28. Appellants further argue
BASCOM8 held that "a claim can recite 'known, conventional pieces"' but
still result in "'significantly more' than an abstract idea" and that the claims
here "provide meaningful limits, with anything but a conventional or generic
arrangement." Id. at 28. In the Reply Brief, Appellants argues the Examiner
erred by not considering "all claim elements as a whole for significantly
more." Reply Br. 9. Appellants also argue that the Examiner errs in finding
the claims involve only "one rule" and dispute that the rules, as applied in
the present claims, were "widely known." Id. at 10.
Prima Facie Case
Before substantively analyzing claim 18 under the two-step Alice test,
we address Appellants' contention that the Examiner failed to establish a
prima facie case of subject matter ineligibility. See App. Br. 21. Here, the
Examiner stated the statutory basis for the rejection, namely, "under 35
U.S.C. [§] 101 because the claimed invention is directed to a judicial
exception ... without significantly more." Final Act. 4. The Examiner also
performed the two-step Alice test. Id. at 4--7; Ans. 9-16. Thus, we conclude
the Examiner provided an adequate explanation of the rejection under§ 101
8 BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016).
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and met the notice requirement of 35 U.S.C. § 132. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011).
In view of the Examiner's findings and conclusions in the Answer and
Final Office Action, we also are not persuaded by Appellants' argument that
the Examiner did not fully articulate the abstract idea (see App. Br. 21 ),
particularly in view of the Examiner's finding that "[t]he plain focus of the
claims, when considered as a whole, is on 'a method of organizing human
activity." Ans. 13 (emphasis omitted). Furthermore, we are not persuaded
by Appellants' argument the Examiner failed to establish a prima facie case
of ineligibility because the Examiner "failed to provide proper evidence" or
citation to any authority in the record that the claims do not amount to
significantly more than an abstract idea. See App. Br. 21; Reply Br. 5. We
disagree that the Examiner failed to provide evidence or authority in the
record because the Examiner cited portions of the Specification as evidence
that the claims amount to no more than a recitation of generic computer
structure that serves to perform generic computer functions that are well-
understood, routine, and conventional activities. See Final Act. 4--7; Ans.
10-14. Appellants have not persuasively rebutted the Examiner's findings
in this regard. We also find that Appellants' argument is conclusory and
fails to identify any device, component, system or process recited in the
claims that Appellants contend is not well-understood, routine, and
conventional in the art, much less present any arguments in support of such
contention. Thus, although our reviewing court recently held that "[ t ]he
patent eligibility inquiry may contain underlying issues of fact" (see
Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)), we determine
that Appellants' argument is insufficient to raise an issue of fact requiring
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the Examiner to present additional evidence showing that any aspect of the
claims is well-understood, routine, and conventional in the art.
Step One of Alice
Regarding claim 18, the preamble recites "[a] method for processing
medical data in a workflow through use of a data processing system,"
comprising at least one hardware processor performing 7 operations or steps.
Claim 18 then recites the following 7 steps (which are described in the cited
portions of the Specification): (1) processing electronic image data,
including metadata, that originate from an imaging modality, wherein the
images provide digital representations of at least a portion of a human
subject (see Spec. ,r,r 33, 51-55); (2) processing electronic order data that is
correlated to the medical images and specifies characteristics of a diagnostic
evaluation of the images to be performed (see Spec. ,r,r 27-29, 33); (3)
processing medical image procedure characteristics included in the
electronic order data to determine at least one requirement of an evaluator
for the diagnostic evaluation of the medical images to be performed (see
Spec. ,r,r 11, 68); (4) maintaining worklists associated with evaluators,
wherein the worklists include a worklist for a particular evaluator (see Spec.
,r,r 136, 149, 182); (5) designating an evaluator for performance of the
evaluation based on a match between an evaluator qualification and a
diagnostic evaluation requirement (see Spec. ,r,r 145-146); ( 6) updating the
worklist for the evaluator in response to designating the particular evaluator
(see Spec. ,r 149); and (7) transmitting the digital images to a computing
device associated with the particular evaluator, wherein the images are
viewable in response to acceptance of the diagnostic evaluation from the
worklist for the particular evaluator (see Spec. ,r,r 30, 147-148).
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Considering the focus of claim 18 as a whole, in view of Appellants'
Specification, we agree with the Examiner that claim 18 is directed to an
abstract idea-a method of organizing human activity, i.e., managing the
performance of diagnostic evaluations by assigning them to qualified
evaluators, as well as maintaining and updating worklists. See Ans. 13. As
discussed infra, claim 18 is directed to a combination of features that we
conclude are similar or analogous to claims in other cases that courts have
found are directed to an abstract idea. See Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) ("The concept of data collection, recognition, and storage is
undisputedly well-known."); Electric Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353-54 (Fed. Cir. 2016) (claims focus on the abstract idea of
collecting information, analyzing it, and displaying certain results of the
collection and analysis); Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (holding that the claimed
invention is directed "to the abstract idea of collecting, displaying, and
manipulating data of particular documents"); SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 F. App'x 950,954 (Fed. Cir. 2014) (claims recite
comparing new and stored information and using rules to identify options).
In particular, we determine step ( 1) of "processing electronic image
data, including metadata, that originate from an imaging modality," step (2)
of "processing electronic order data that is correlated to the medical images
and specifies characteristics of a diagnostic evaluation of the images to be
performed," and step (3) of "processing medical image procedure
characteristics included in the electronic order data to determine at least one
requirement of an evaluator for the diagnostic evaluation of the medical
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images to be performed" are directed to collecting and analyzing
information, which courts have held are in the realm of abstract ideas. See
Electric Power, 830 F.3d at 1353-54. We also conclude that step (4) of
"maintaining worklists associated with evaluators, wherein the worklists
include a worklist for a particular evaluator," step (5) of "designating an
evaluator for performance of the evaluation based on a match between an
evaluator qualification and a diagnostic evaluation requirement," and step
( 6) of "updating the worklist for the evaluator in response to designating the
particular evaluator," could be performed by a human 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, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016). "[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., L.L.C. v. Sun Life Assurance Co. of Can.
(US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
We also conclude that step ( 5) of "designating an evaluator. .. based
on a match" of a qualification of the evaluator and a diagnostic evaluation
requirement is directed to "using rules to identify options as in SmartGene."
Ans. 14 ( emphasis omitted). We further conclude that step (7) of
"transmitting the digital images to a computing device associated with the
particular evaluator" where they are viewable in response to acceptance of
the diagnostic evaluation from the worklist "is an ancillary part of such
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collection and analysis" of infonnation as set forth in steps (1 }-( 6) of claim
18. See Electric Power, 830 F.3d at 1354.
Appellants argue the Examiner failed to articulate how the claimed
invention is directed to a judicial exception by identifying certain claim
elements or concepts individually and not in the context in which these
operations are conducted in the claims. See App. Br. 22. We do not agree.
As reflected in the foregoing analysis of claim 18, it is directed to a
combination of features, as set forth in steps (1 }-(7). Thus, it was necessary
for the Examiner to consider these various features, individually or as
groups, and in doing so, the Examiner properly considered all of the
limitations of claim 18. For these same reasons, we are not persuaded by
Appellants' arguments that the Examiner oversimplified the claims and
failed to consider the claims as a whole. See Reply Br. 5-6. We also are not
persuaded by Appellants' argument that the Examiner's finding that the
combination of steps of claim 18 is directed to "an abstract method of
organizing human activity" assumes the claim can be rewritten to remove
"the actual technical context and limitations" because claim 18 recites
generic components and functions, without reciting technical details and
limitations. See id. at 6.
As discussed supra, we conclude, as does the Examiner, that the
various features of claim 18 are directed to abstract ideas. See Final Act.
4--6. In that regard, we note that merely combining several abstract ideas
does not render the combination any less abstract. RecogniCorp, LLC v.
Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one
abstract idea ... to another abstract idea ... does not render the claim non-
abstract. "); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
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1094 (Fed. Cir. 2016) (determining the pending claims were directed to a
combination of abstract ideas). Thus, for these same reasons, we also are
not persuaded by Appellants' argument that the Examiner did not establish
that the respective elements of claim 18 are directed to an abstract idea. See
App. Br. 23.
We also are not persuaded by Appellants' arguments that the
Examiner failed to establish that the claimed subject matter is abstract. See
App. Br. 24--26. First, we are not persuaded by Appellants' argument that
based on Enfish and Amdocs, the Examiner's finding of abstractness cannot
be sustained as a matter of law because Appellants have not shown that the
claims in these cases are similar or analogous to claim 18. Regarding
Enfzsh, Appellants have not demonstrated that claim 18 "improve[ s] the way
a computer stores and retrieves data in memory," as the claims in Enfish did
via a "self-referential table for a computer database." See Erifish, 822 F.3d
at 1336, 1339. With respect to Amdocs, and contrary to Appellants'
argument that even claims with "generic components [that] operate in an
unconventional manner" are non-abstract (see Reply Br. 8), Appellants have
not demonstrated that claim 18 provides an "unconventional technological
solution ... to a technological problem" that "improve[ s] the performance of
the system itself," as explained in Amdocs. See Amdocs, 841 F.3d at 1300,
1302.
Second, we are not persuaded by Appellants' argument that the claims
are directed to an improvement in computer technology. App. Br. 26.
Although Appellants argue that the claims are directed to "an improvement
to the functioning of the computer network and computer system itself,"
even before a radiological read is performed (see id.), this argument is not
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convincing because it is conclusory and unsupported by the claim language.
See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
1336, 1345 (Fed. Cir. 2013) (admonishing that "the important inquiry for a
§ 101 analysis is to look to the claim"; "the complexity of the implementing
software or the level of detail in the specification does not transform a claim
reciting only an abstract concept into a patent-eligible system or method").
As the Examiner finds, "Appellant[ s] do[] not indicate what basic computer
function is improved, or how it is improved." See Ans. 18. Nor have
Appellants identified any portion of the Specification, or provided any
evidence or technical reasoning, demonstrating that claim 18 achieves a
technical advance or improvement to the computer network and computer
system. Regarding the Specification, the Examiner finds, and we agree, that
"the specification is devoid of any disclosure, or even a suggestion, that the
claimed invention improves any basic computer function. Rather, the
specification describes improving the speed or efficiency of known manual
or automated image routing systems, as disclosed in the Background, using
generic computers and known transmission networks." Id.; see also id. at
20. Thus, we agree with the Examiner's finding that "the claims do not
recite an asserted improvement to the functioning of the computer itself, but
rather recite using a computer to lend speed and efficiency to an abstract
idea." Id. at 18; see also id. at 21.
Step Two of Alice
Regarding step two of the Alice analysis, based on the Examiner's
findings and reasons, we agree with the Examiner's determination that the
elements of the claims do not provide "significantly more" than the abstract
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idea. See Final Act. 6-7; see also Ans. 2-9, 20-24. We also are not
persuaded by Appellants' arguments that the Examiner erred.
First, we are not persuaded by Appellants' argument that the
remaining claims are "significantly more" than the alleged judicial exception
and "invoke elements that are not well-understood, routine, or conventional
in the art" because it is conclusory and unsupported by any citation to the
Specification, claims, or other evidence. App. Br. 27. Second, Appellants'
arguments that McRO involved the "use of rules" and shows that the use of a
computer-driven mechanism to automatically transfer data, manage an
electronic worklist, and process medical data characteristics cannot be
excluded from subject matter eligibility are unpersuasive because Appellants
have failed to show that claim 18 recites a "technological improvement" as
Appellants assert. App. Br. 27-28. Unlike the claims in McRO, claim 18
does not "focus on a specific means or method that improves the relevant
technology," but is "directed to a result or effect that itself is the abstract
idea and merely invoke[s] generic processes and machinery." McRO, 837
F.3d at 1314 ( citation omitted). This is not enough to transform an abstract
idea into patent-eligible subject matter. See, e.g., Alice, 134 S. Ct. at 2360
( explaining that claims that "amount to 'nothing significantly more' than an
instruction to apply the abstract idea ... using some unspecified, generic
computer" "is not 'enough' to transform an abstract idea into a patent-
eligible invention" (quoting Mayo, 566 U.S. at 77, 79)); Intellectual
Ventures, 850 F.3d at 1342 ("[T]he claim language here provides only a
result-oriented solution, with insufficient detail for how a computer
accomplishes it. Our law demands more."). Furthermore, we are
unpersuaded by Appellants' arguments that the Examiner erred by finding
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the claims involve only "one rule" and that the claimed rules were "widely
known" (see Reply Br. 10) because they are conclusory and unsupported by
any reference to the claims, the Specification, or other evidence.
Third, Appellants' arguments that BASCOM held that a claim can
recite "known, conventional pieces" and still result in "significantly more"
and that the claims here "provide meaningful limits, with anything but a
conventional or generic arrangement" are unpersuasive. App. Br. 28. In
BASCOM, the court held that an inventive concept can be found in a
non-conventional and non-generic arrangement of known, conventional
pieces. See BASCOM, 827 F.3d at 1350. Here, as the Examiner finds, the
claims are distinguishable from those in BASCOM. Ans. 20-21. In
BASCOM, the system claims were directed to a "content filtering system for
filtering content retrieved from an Internet computer network," which the
court held were directed to an abstract idea. Id. at 1348--49. The court
further held the claims included an inventive concept in the ordered
combination of system components, including a local client computer and a
remote ISP server connected to the client computer and Internet computer
network providing for "the installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user." Id. at 1350. Appellants have failed to show that
claim 18 includes a similar or analogous arrangement or "ordered
combination" of components. Instead, Appellants make only the conclusory
statement that Appellants "ha[ ve] referred to numerous technical advantages
that occur in processing and bandwidth resources of computer networks,
data processing, and computer systems as a result of the claimed invention."
Reply Br. 10 ( citing App. Br. 24--26).
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Thus, we see nothing in the limitations of claim 18, considered both
"individually and 'as an ordered combination,"' that transforms the claimed
abstract idea into patent-eligible subject matter.
Accordingly, we sustain the Examiner's rejection of claim 18 under
§ 101. For the same reasons, we sustain the rejection of independent claims
2 and 11, and dependent claims 3-9, 12-16, 19-23, and 25-27, which are
not separately argued, under § 101.
Rejection of Claims 2, 5-9, 11, 13-16, 18, and 20-23 under§ 103(a)9
First, Appellants contend that Pinsky does not teach "processing
medical imaging procedure characteristics included in the electronic order
data" or "determination of the at least one requirement[] based on the
diagnostic evaluation characteristics included in the electronic order data,"
as recited in claim 18. App. Br. 16. In particular, Appellants argue that the
claimed "order data" is separate from the claimed "imaging data," even if
they have some overlapping data fields or characteristics, and under the
Examiner's interpretation, any distinction between them is erased. Id. at
16-1 7. According to Appellants, the cited portions of Pinsky refer to
processing "study routing parameters" independent of any electronic order
data, and Pinksky does not process characteristics included in the electronic
order data, as claimed. Id. at 17 (citing Pinsky 2:29-33 and 42-51; 4:5-26).
9 Appellants argue claims 2, 5-9, 11, 13-16, 18, and 20-24 as a group. See
App. Br. 16-19; Reply Br. 2--4. We consider method claim 18 to be
representative of the claimed subject matter on appeal and, therefore, we
decide the§ 103(a) rejection of claims 2, 5-9, 11, 13-16, 18, and 20-24 on
the basis of representative claim 18. See 37 C.F.R. § 4I.37(c)(l)(iv).
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We are not persuaded by Appellants' arguments that the Examiner
erred. The Examiner finds, and we agree, that Pinsky teaches both "imaging
data" and "associated study information." Ans. 6 (citing Pinsky 3:54--4:4).
The Examiner also finds, and we agree for the reasons stated by the
Examiner, that it is reasonable to interpret the "associated study
information" as the claimed "electronic order data." Id. In addition, the
Examiner finds, and we agree, that Pinsky teaches or at least suggests
processing characteristics included in the electronic order data because
Pinksy teaches processing of the study information, such as the suspected
pathology, the modality, the anatomy, and patient-identifying data, to
determine a set of parameters, which characterize the study. Id.; see also
Pinsky 3:58--4:8.
Second, Appellants contend that Gropper does not teach "maintaining
electronic worklists associated with respective evaluators of a plurality of
evaluators," as recited in claim 18. App. Br. 17. Appellant argues that
Gropper refers to a worklist shared among an entire group of users and the
worklist in Gropper "does not provide the ability to differentiate 'pending'
diagnostic evaluations, or having such evaluations being 'designated for
performance' as claimed." Id. at 17-18. We are not persuaded by
Appellants arguments. The Examiner finds, and we agree, that Gropper
teaches maintaining "both worklists unique to an individual and worklists
that may overlap individuals" because Gropper discloses that "[ e Jach
worklist is associated with one or more user[ s]." Ans. 4 ( citing Gropper
,r 8). The Examiner also finds, and we agree, that Gropper teaches "worklist
items are 'assigned' to a radiologist or a group of radiologists." Ans. 4
( citing Gropper ,r,r 67, 68). Thus, we agree with the Examiner that the
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claimed "evaluations designated for performance by the respective
evaluators" reads on Gropper's teaching of the worklist item being "assigned
to a radiologist." Id.; see Gropper ,r 67.
Third, Appellants contend that Groper does not teach "updating the
electronic worklist for the particular evaluator in response to designating the
particular evaluator," as recited in claim 18. App. Br. 18. We are not
persuaded by this argument because, as discussed supra, Gropper teaches
worklists are maintained for a particular evaluator and worklist items are
assigned to a radiologist. Ans. 4 ( citing Gropper ,r,r 18, 67); see also id. at 7
(citing Gropper ,r,r 67, 114--119). Furthermore, the Examiner finds, and we
agree, that "Gropper provides 'real-time updates' of the worklist sent
immediately after the worklist is assembled." Id. at 7 ( citing Gropper ,r,r 11,
46).
Fourth, Appellants argue Gropper does not teach or suggest
"'acceptance of the diagnostic evaluation' from a worklist" or "'transmitting
the plurality of digital medical images' in any way that would make the
images 'viewable ... in response to acceptance."' App. Br. 19; Reply Br.
2-3. This argument is not persuasive because it is not commensurate with
the scope of claim 18. The Examiner concludes, and we agree, claim 18 and
the Specification makes it clear "that the images are transmitted to the doctor
computer without any interaction of the doctor with the worklist." Ans. 3.
That is, contrary to Appellants' argument, claim 18 does not require that the
medical images are transmitted to a doctor's computing device "in response
to acceptance of the diagnostic evaluation." Instead, as the Examiner also
concludes, and we agree, claim 18 is properly construed to mean that the
"images are viewable at the computing device associated with the particular
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evaluator in response to acceptance of the diagnostic evaluation of the ...
images from the electronic worklist." Id. ( emphasis omitted). The
Examiner also concludes, and we agree, the term "acceptance" means
"selection." Ans. 4. The Examiner further finds, and we agree, that Gropper
teaches or suggests that "the plurality of ... images are viewable at the
computing device associated with the particular evaluator in response to
acceptance [ or selection] of the diagnostic evaluation of the plurality of
digital medical images from the electronic worklist for performance by the
particular evaluator." See Final Act. 13 ( citing Gropper ,r,r 11, 12, 18-20, 22,
68, 94--96) ( emphasis omitted); Ans. 4 ( citing Gropper ,r,r 67---68).
Accordingly, we sustain the Examiner's rejection of claim 18 under
§ 103(a). For the same reasons, we also sustain the Examiner's rejection of
independent claims 2 and 11, as well as dependent claims 5-9, 13-16, and
20-23, under§ 103(a).
Rejection of Claims 3, 12, and 19 under§ 103(a)1°
Appellants contend that Rothschild does not teach all the limitations
of "electronically transmitting the electronic order data to a medical facility
that performed the medical imaging procedure for verification of an
evaluation order indicated in the electronic order data, and electronically
receiving the verification of the evaluation order from the medical facility,"
as recited in claim 19. App. Br. 19-20. In particular, Appellants argue that
10 Appellants argue claims 3, 12, and 19 as a group. See App. Br. 19-20;
Reply Br. 4--5. We consider method claim 19 to be representative of the
claimed subject matter on appeal and, therefore, we decide the§ 103(a)
rejection of claims 3, 12, and 19 on the basis of representative claim 19. See
37 C.F.R. § 4I.37(c)(l)(iv).
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"Rothschild does not teach verification of an 'evaluation order indicated in
the electronic order data' or transmission of the order data 'to a medical
facility for verification' as claimed." Id. at 20. We agree with Appellants'
arguments regarding Rothschild.
The Examiner finds, however, that Appellants' Specification discloses
it is old and well known for radiology read orders to be validated by the
imaging center. Final Act. 19 (citing Spec. 6, 10, 21, 34, 43, 50, 54--58, 72);
see also Ans. 8. The Examiner also finds that the "[ v ]alidation or
verification is described as a manual process-a technician or doctor
reviews the populated order for accuracy." Final Act. 19; Ans. 9. The
Examiner further finds that "it appears that the limitation is automating a
known manual process." Final Act. 19. We agree with the Examiner.
A claimed invention is not patentable if it merely automates a prior art
process. Broadly providing an automatic way to replace a manual activity
accomplishing the same result is not sufficient to distinguish an automated
process over the prior art. In re Venner, 262 F.2d 91, 95 (CCPA 1958) ("it
is well settled that it is not 'invention' to broadly provide a mechanical or
automatic means to replace manual activity which has accomplished the
same result"). An improved product in the art is obvious if that "product [is]
not [one] of innovation but of ordinary skill and common sense." KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). Here, the Examiner has
shown that it would have been obvious to automate the manual validation or
verification process disclosed in the Specification to accomplish the claimed
result. Appellants do not dispute the Examiner's findings that the process is
"old and well known," but merely assert this is proof of hindsight used to
create a missing element in the prior art. We do not agree with Appellants'
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hindsight assertion because the Examiner's obviousness finding is based on
the prior art manual process, even though it is disclosed in the Specification,
rather than Appellants' invention. Thus, we sustain the Examiner's rejection
of claim 19, as well as claims 3 and 12, under 35 U.S.C. § 103(a).
Rejection of Claim 4 under§ 103 (a)
Appellants' contend that the rejection of claim 4 is in error because
none of the references, including Rothschild, or the Examiner's Official
Notice, teach "electronic order data being transmitted to the medical facility
for verification." App. Br. 20. This is the same argument made by
Appellants with respect to claim 19. Thus, for the same reasons stated supra
regarding the rejection of claim 19, we sustain the Examiner's rejection of
claim 4.
DECISION
We proforma affirm the rejection of claims 2-9, 11-16, 18-23, and
25-27 on the ground of nonstatutory double patenting over claims 1-24 of
US 8,515,778 B2.
We affirm the Examiner's decision rejecting claims 2-9, 11-16,
18-23, and 25-27 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 2-9, 11-16,
18-23, and 25-27 under 35 U.S.C. § 103(a).
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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 ). See 37 C.F.R.
§ 1.I36(a)(1)(iv)(2016).
AFFIRMED
26