Ex Parte Backhaus et al

Patent Trial and Appeal Board

Jun 21, 2018

14079307 (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/079,307 11113/2013
21186 7590 06/25/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
UNITED ST A TES OF AMERICA
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.
3403.001US6 5026
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/25/2018 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 LUSIC, and
DEAN EBESU
Appeal2017-002622
Application 14/079,307
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
Non-Final Rejection of claims 2-9, 12-17, 19-24, and 26-28. 2 Claims 11,
18, and 25 are cancelled. 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.
2 Claims 6, 15, and 22 are objected to as being dependent upon a rejected
base claim and are not before us. Ans. 16.
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STATEMENT OF THE CASE
Introduction
Appellants describe the disclosed and claimed invention as follows:
A system for managing remote doctor medical request
workflow may include a workflow module that optimizes
assignments of medical requests to remote doctors based on
parameterized doctor and scheduling information and may
further include a forecasting module that predicts the hospital
credentials, state licenses or doctors needed to fulfill a projected
volume of future medical requests. In one embodiment,
radiologists are parameterized and then matched with requests
for radiological readings based on information extracted from
DICOM image headers and merged with associated information
contained in a medical work order. In this embodiment, the
radiologists are parameterized based on their locations,
schedules, hospital credentials, state licensing, compensation
metrics, and performance metrics and incoming requests for
review of CT scans and the like are filtered based on the
parameterized radiologist information to identify one or more
radiologists who are to fulfill the medical request.
Abstract. 3
Claim 19 is representative and reproduced below (with the disputed
limitations emphasized in italics):
19. 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:
3 Our Decision refers to the Non-Final Office Action mailed Feb. 8, 2016
("Non-Final Act."); Appellants' Appeal Brief filed Aug. 9, 2016 ("App.
Br.") and Reply Brief filed Dec. 5, 2016 ("Reply Br."); the Examiner's
Answer mailed Oct. 4, 2016 ("Ans."); and the original Specification filed
Nov. 13, 2013 ("Spec.").
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processing electronic imaging data to obtain evaluation
characteristics from metadata of the electronic imaging data,
wherein the electronic imaging data includes the metadata and a
plurality of digital medical images that originate from a medical
imaging procedure performed by a medical imaging modality:
determining at least one requirement for a diagnostic evaluation
of the plurality of digital medical images using the evaluation
characteristics indicated in the metadata, 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;
determining, from an electronically stored data record,
parameterized qualification characteristics for a plurality of
evaluators including a particular evaluator, the particular
evaluator associated with at least one qualification that is
tracked by the parameterized qualification characteristics;
maintaining electronic worklists associated with respective
evaluators of the plurality of evaluators, the electronic
worklists for the respective evaluators providing a listing of one
or more pending diagnostic evaluations designated for
peiformance by the respective evaluators, wherein the
electronic worklists for the respective evaluators include an
electronic worklist for the 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 the at least one
qualification of the particular evaluator with the at least one
requirement 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
include a pending evaluation for the performance of the
diagnostic evaluation of the plurality of digital medical images
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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. 31-32 (Claims App'x).
Rejections on Appeal
Claims 2-10, 4 12-17, 19-24, and 26-28 stand rejected on the ground
ofnonstatutory double patenting over claims 1-24 of U.S. Patent 8,515,778
B2. 5
Claims 2-10, 6 12-17, 19-24, and 26-28 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to patent-
ineligible subject matter.
4 Although the Examiner did not mention claim 10 in this rejection, we have
included claim 10 because we conclude the Examiner's omission was an
inadvertent error.
5 Appellants state that the Examiner's nonstatutory double patenting
rejection of claims 2-9, 12-17, 19-24, and 26-28 "is not being appealed
presently." App. Br. 11. 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 2-10, 12-17, 19-24, and 26-28 on the ground of
nonstatutory double patenting over claims 1-24 of U.S. Patent 8,515,778
B2. See 37 C.F.R. § 41.37(c)(l)(iv).
6 Although the Examiner failed to include claim 10 in the introductory
portion of the rejection (see Non-Final Act. 4), claim 10 is specifically
referred to in the latter portion of the rejection (see id. at 6). Thus, we
conclude claim 10 is included in the Examiner's§ 101 rejection.
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Claims 2-5, 7-10, 12-14, 16, 17, 19-21, 23, 24, and 26-28 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Pinsky et al.
(US 5,469,353; issued on Nov. 21, 1995) ("Pinsky") and Gropper et al. (US
2003/0126148 Al; published July 3, 2003) ("Gropper").
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the Briefs. For the reasons discussed infra, we are not
persuaded by Appellants' arguments that the Examiner erred in rejecting ( 1)
claims 2-10, 12-17, 19-24, and 26-28 under 35 U.S.C. § 101 or (2) claims
2-5, 7-10, 12-14, 16, 17, 19-21, 23, 24, and 26-28 under 35 U.S.C.
§ 103(a).
Rejection 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§ 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
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
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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."' Enfzsh,
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).
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
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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 7
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. 16. According to Appellants, even assuming arguendo that
the claims are directed to an abstract idea, the elements of the claims
"amount to significantly more" as confirmed by the recent Enfzsh and
BASCOM cases. Id.
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
which these operations are conducted in the claims. Id. at 17. Appellants
argue the Examiner appears to be applying a "shotgun" approach to
identifying an alleged abstract idea, with the hope that one characterization
sticks. Id. Appellants also argue the Examiner erred in finding the claims
7 Appellants argue claims 2-10, 12-17, 19-24, and 26-28 as a group. See
App. Br. 15-23; Reply Br. 4--10. We consider method claim 19 to be
representative of the claimed subject matter on appeal and, therefore, we
decide the§ 101 rejection of claims 2-10, 12-17, 19-24, and 26-28 on the
basis of representative claim 19. See 37 C.F.R. § 41.37(c)(l)(iv).
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recite the concept of "designating an evaluator based on a match between the
evaluator's qualifications and a requirement for diagnostic evaluation"
because this is "a rewording of one recitation from the pending claims." Id.
(emphasis omitted). Appellants further argue "the Examiner has not
provided the necessary support to maintain the rejection." Id. at 18. In the
Reply Brief, Appellants further argue the Examiner improperly dissected the
claims and failed to consider the claims as a whole. Reply Br. 4--5.
Appellants also argue the Examiner's oversimplification and comparison of
the claims to those in SmartGene, Cyberfone, In re Meyer, and Accenture
"might be relevant if the appealed claims actually recited any of these
concepts[]," but "[t]hey do not." Reply Br. 5.
Regarding Appellants' contention that the Examiner failed to establish
that the claimed subject matter is abstract, Appellants argue "[t]he
involvement of specific computer elements and data processing,
transmission, and actions in the claims calls the entire premise of
abstractness into question." App. Br. 19. Appellants argue that, like Enfzsh,
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 also argue that the claims cannot be
characterized as "a method of organizing human activity" or "An Idea 'Of
Itself."' Id. at 20. 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 further argue that, based on Amdocs, in which
the claims were found patent eligible where "generic components [operated]
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in an unconventional manner" to achieve "an improvement in computer
functionality," and the computer functionality recited in the claims, "the
Examiner's findings of abstractness cannot be sustained as a matter of law."
Reply Br. 6-7.
Regarding Appellants' contention that the Examiner failed to establish
that the claimed subject matter is not "significantly more" than a judicial
exception, Appellants argue the Examiner's analysis is brief and needs to be
fully performed because of "the Examiner's own concession that at least
some of the claims include novel features over the prior art of record." App.
Br. 21. Appellants assert they do not understand how some claims can be
considered novel and nonobvious, and yet still be "characterized as abstract
and 'well understood, routine, and conventional' in light of the same art."
Id. Appellants also argue that, "[ 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.
Appellants further argue BASCOMheld 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 22. Appellants also argue
that McRO shows that "the use of a computer-driven performance of a
process---even a process that could be performed with rules on a generic
computer---cannot be automatically excluded from subject matter
eligibility." Reply Br. 9.
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Prima Facie Case
Before substantively analyzing claim 19 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. 16. 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." Non-Final Act. 4. The Examiner
also performed the two-step Alice test. Id. at 4---6; Ans. 8-15. Thus, we
conclude the Examiner provided an adequate explanation of the rejection
under§ 101 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
Non-Final rejection, we also are not persuaded by Appellants' argument that
the Examiner did not fully articulate the abstract idea (see App. Br. 16),
particularly in view of the Examiner's finding that the claims may also be
considered "a method of organizing human activity (i.e. managing human
behavior - managing tasks by assigning them to qualified radiologists as
well as maintaining and updating worklists)." Non-Final Act. 5-6 (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" that the claims do not amount
to significantly more than an abstract idea. See App. Br. 16. We disagree
that the Examiner failed to provide evidence because the Examiner cited to
the claims and the Specification in finding that the claims here are
implemented on generic computers and "known systems." See Ans. 13-14,
16, 18. We also find that Appellants' argument is conclusory and fails to
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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.,
881F.3d1360, 1365 (Fed. Cir. 2018)), we find that Appellants' argument is
insufficient to raise an issue of fact requiring the Examiner to present
evidence showing that any aspect of the claims is well-understood, routine,
and conventional in the art.
Step One of Alice
Regarding claim 19, the preamble recites "[a] method for processing
medical data in a workflow through use of a data processing system." Claim
19 recites the steps of: ( 1) processing electronic image data to obtain
evaluation characteristics from metadata of the imaging data; (2)
determining at least one requirement for a diagnostic evaluation of the
medical images using the characteristics in the metadata; (3) determining,
from an electronically stored data record, parameterized qualification
characteristics for a plurality of evaluators, including a particular evaluator;
( 4) maintaining electronic worklists associated with respective evaluators
providing a listing of pending diagnostic evaluations for the particular
evaluator; ( 5) designating the particular evaluator for performance of the
diagnostic evaluation based on a match of at least one qualification of the
evaluator with at least one requirement for evaluation; ( 6) updating the
electronic worklist for the particular evaluator in response to designating the
particular evaluator; and (7) transmitting the medical images to a computing
device associated with the particular evaluator where they are viewable in
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response to acceptance8 of the evaluation from the worklist for the particular
evaluator
Considering the focus of claim 19 as a whole, we agree with the
Examiner's conclusion that claim 19 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. Non-Final Act. 5---6. As discussed
infra, claim 19 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'! 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, consistent with the Examiner's conclusions, we conclude
step (1) of "processing electronic imaging data" to obtain evaluation
8 As discussed infra regarding the rejection under§ 103, the Examiner
concludes, and we agree, the term "acceptance" means "selection." See Ans.
3.
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characteristics from metadata of the imaging data, step (2) of "determining
at least one requirement for a diagnostic evaluation" of the medical images
using the characteristics indicated in the metadata, and step (3) of
"determining, from an electronically stored data record, parameterized
qualification characteristics for a plurality of evaluators[,] including a
particular evaluator," of claim 19, 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 (3) of "determining, from an electronically
stored data record, parameterized qualification characteristics for a plurality
of evaluators[,] including a particular evaluator," step ( 4) of "maintaining
electronic worklists associated with respective evaluators" providing a
listing of pending diagnostic evaluations for the particular evaluator, step ( 5)
of "designating the particular evaluator for performance of the diagnostic
evaluation ... based on a corresponding match" of at least one qualification
of the evaluator with at least one requirement for evaluation, and step ( 6) of
"updating the electronic worklist" 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).
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We also conclude, as does the Examiner, that step ( 5) of "designating
the particular evaluator ... based on a corresponding match" of at least a
qualification of the evaluator and one requirement for evaluation is directed
to "using rules that select an evaluator based on which one best matches the
requirements of the study." Ans. 10 (citing SmartGene ). We further
conclude that step (7) of "transmitting" the medical images to a computing
device associated with the particular evaluator where they are viewable is
abstract "as an ancillary part of such collection and analysis" of information
as set forth in steps (1}-(6) of claim 19. 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 ( 1) identifying certain claim
features individually and out of context, (2) using a "shotgun" approach, (3)
rewording one recitation from the claims, and (4) improperly dissecting the
claims. See App. Br. 16-18; Reply Br. 4--5. We do not agree. As reflected
in the foregoing analysis of claim 19, 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
19.
As discussed supra, we conclude, as does the Examiner, that the
various features of claim 19 are directed to abstract ideas. 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
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FairWarning IP, 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, for these same reasons, we also are not persuaded by
Appellants' argument that the Examiner did not establish that the respective
elements of claim 19 are directed to an abstract idea. See App. Br. 16, 19-
20.
Although Appellants argue that the claims are directed to an
improvement to the functioning of the computer network and computer
system, even before a radiological read is performed (see App. Br. 19), this
argument is not 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"). Nor have Appellants identified any portion of the
Specification, or provided any evidence or technical reasoning,
demonstrating that claim 19 achieves a technical advance or improvement to
the computer network and computer system. Contrary to Appellants'
arguments that the claims are similar to those in Enfzsh and Amdocs (see
App. Br. 19; Reply Br. 6-7), Appellants have not demonstrated that their
claims "improve 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. Appellants have also not
demonstrated that their claims provide an "unconventional technological
solution ... to a technological problem" that "improve[ s] the performance of
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the system itself," as explained in Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841F.3d1288, 1300, 1302 (Fed. Cir. 2016). 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." Ans. 14--15. Furthermore,
Appellants' argument that the claims cannot be characterized as a method of
organizing human activity because the recited operations are performed
electronically and in a computer (see App. Br. 20) is unpersuasive because it
is conclusory and unsupported and because it is well known that computers
are often used in managing transactions involving people. Accordingly, we
agree with the Examiner that managing the performance of diagnostic
evaluations by assigning them to qualified evaluators is a method of
organizing human activities constituting an abstract idea. See, e.g., July
2015 Update: Subject Matter Eligibility to 2014 Interim Guidance on
Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014)
("[C]ases have found concepts relating to managing relationships or
transactions between people abstract.").
Step Two of Alice
Regarding step two of the Alice analysis, even though the Examiner's
analysis is brief, as Appellants note (see App. Br. 21 ), for the reasons stated
by the Examiner, we agree with the Examiner's conclusion that the elements
of the claims do not provide "significantly more" than the abstract idea. See
Non-Final Act. 6; see also Ans. 13-15. We are not persuaded by
Appellants' arguments that the Examiner erred.
First, we not persuaded by Appellants' argument that they do not
understand how the Examiner can find some of the claims are novel and
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non-obvious, and still be characterized as abstract and well-understood,
routine, and conventional in light of the same art. App. Br. 21. A finding of
novelty or non-obviousness does not automatically lead to the conclusion
that the claimed subject matter is patent-eligible. Although the second step
in the Mayo/Alice framework is termed a search for an "inventive concept,"
the analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "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
(quoting Mayo, 566 U.S. at 72-73). "Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry." Ass 'n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A
novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981) ("The '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").
Second, we are not persuaded by Appellants' argument that the
remaining claims are "significantly more" 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. 21. Third, Appellants' arguments that BASCOMheld 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. Id. at 22. We
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agree with Appellants that the court in Bascom noted 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. However, the
claims here are distinguishable from those in Bascom. 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 establish that claim 19 includes a
similar or analogous arrangement or "ordered combination" of components
and instead make only the conclusory statement that the claims here provide
"anything but a conventional or generic arrangement."
Fourth, Appellants' argument that McRO shows that even a process
that could be performed with rules on a generic computer cannot be
automatically excluded from eligibility is unpersuasive. Reply Br. 9.
Unlike the claims in McRO, claim 19 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 ...
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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.").
Thus, we see nothing in the limitations of claim 19, 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 19 under
§ 101. For the same reasons, we sustain the rejection of independent claims
2 and 12, and dependent claims 3-10, 13-17, 20-24, and 26-28, which are
not separately argued, under § 101.
Rejection Under§ 103(a)
The Examiner finds that Gropper teaches the disputed "maintaining,"
"updating," and "transmitting" limitations of claim 19. Non-Final Act. 9-10
(citing Gropper i-fi-19, 11, 14, 16, 18 (regarding the "maintaining" limitation),
i-fi-19-11, 13, 14 (regarding the "updating" limitation), i-fi-f 11, 12, 18, 20, 22
(regarding the "transmitting" limitation)). Although Appellants argue the
Examiner's findings are in error (see App. Br. 13-15), we do not agree.
Regarding the "maintaining" limitation, Appellants argue Gropper
teaches a worklist "shared among an entire group of users," rather than
associated with "respective evaluators." App. Br. 13-14 (citing Gropper
i-fi-19, 18). This argument is not persuasive because, as the Examiner finds,
Gropper teaches "[ e Jach worklist is associated with one or more user[ s]."
Ans. 4 (citing Gropper i-f 18). Appellants also argue Gropper does not teach
that the pending diagnostic evaluation is "designated for performance by the
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particular evaluator." App. Br. 14; Reply Br. 3--4. This argument is not
persuasive either because, as the Examiner finds, Gropper teaches worklist
items are "assigned" to a radiologist or a group of radiologists. Ans. 4
(citing Gropper i-fi-1 67, 68). We agree with the Examiner that the claimed
"evaluations designated for performance by the respective evaluators" reads
on Gropper's teaching of the worklist item, i.e., "images and associated
study information," being "assigned to a radiologist." See Gropper i167.
Regarding the "updating limitation," Appellants argue that because
Gropper does not teach maintaining an electronic worklist for a particular
evaluator, Gropper does not teach "updating of the electronic worklist for
this particular evaluator in the manner claimed." App. Br. 14. 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 i-fi-f 18, 67); see also id. at 5
(citing Gropper i-fi-12, 3, 14, 46, 56). 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 5 (citing Gropper i-fi-f 11,
46).
Regarding the "transmitting" limitation, Appellants argue Gropper
does not teach or suggest "'acceptance of the diagnostic evaluation' from a
worklist" or "'transmitting data . .. in response to acceptance."' App. Br.
14--15. This argument is not persuasive because it is not commensurate with
the scope of claim 19. The Examiner concludes, and we agree, claim 19 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
(citing Spec. 9:16-31, 12:12-18, 17:5-12, 18:23-19:2, 21:23-30). That is,
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contrary to Appellants' argument, claim 19 does not require that the medical
images are transmitted to a doctor's computing device "in response to
acceptance of the diagnostic evaluation." Instead, the Examiner also
concludes, and we agree, claim 19 is properly construed to mean that the
"images are viewable at the computing device associated with the particular
evaluator in response to acceptance of the diagnostic evaluation of the ...
images from the electronic worklist." Id. (emphasis added). The Examiner
also concludes, and we agree, the term "acceptance" means "selection."
Ans. 3. The Examiner further finds, and we agree, that Gropper teaches
"acceptance [or selection] of the diagnostic evaluation of the [images]." See
Non-Final Act. 10 (citing i-fi-f 11, 12, 18, 20, 22) (emphasis omitted); Ans. 4
(citing Gropper i-fi-1 67---68). In the Reply Brief, Appellants do not respond to
the Examiner's conclusions or findings regarding the "transmitting"
limitation. Thus, we are not persuaded of Examiner error with respect to this
limitation.
Accordingly, we sustain the Examiner's rejection of claim 19 under
§ 103(a). For the same reasons, we also sustain the Examiner's rejection of
independent claims 2 and 12, as well as dependent claims 3-5, 7-9, 13, 14,
16, 17, 20, 21, 23, 24, and 26-28, under§ 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 2-10, 12-17, 19-
24, and 26-28 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 2-5, 7-10, 12-14,
16, 17, 19-21, 23, 24, and 26-28 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.
§ 1.136(a)(l)(iv)(2016).
AFFIRMED
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