Ex Parte Baronov et al

Patent Trial and Appeal Board

Jan 24, 2018

13826441 (P.T.A.B. Jan. 24, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/826,441 03/14/2013 Dimitar V. Baronov 3816/1006 1992
2101 7590 01/26/2018
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
EXAMINER
GO, JOHN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
01/26/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptomail @ sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIMITAR V. BARONOV, EVAN J. BUTLER, JESSE M. LOCK,
and MICHAEL F. MCMANUS
Appeal 2016-0056631
Application 13/826,4412
Technology Center 3600
Before KENNETH G. SCHOPFER, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the decision entered October 20, 2017
(“Decision”), which affirmed the Examiner’s rejection of claims 1,2,4, 6—
11, 13, 14, 16—19, 26, 28, and 31 as directed to ineligible subject matter
1 Our decision references the Appellants’ Request for Rehearing (“Req.
Reh’g,” filed Dec. 20, 2017), Appeal Brief (“Appeal Br.,” filed Oct. 5, 2015)
and Reply Brief (“Reply Br.,” filed May 4, 2016), and the Examiner’s
Answer (“Ans.,” mailed Mar. 4, 2016) and Final Office Action (“Final
Act.,” mailed Nov. 12, 2014). The record includes a transcript of the oral
hearing held September 21, 2017.
2 According to Appellants, the real party in interest is Etiometry Inc. Appeal
Br. 3.
Appeal 2016-005663
Application 13/826,441
under 35 U.S.C. § 101. Appellants contend that we misapprehended or
overlooked several points of law or fact related to our analysis under Alice
Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). Req.
Reh’g 4. We find no point of law or fact that we overlooked or
misapprehended in arriving at our Decision.
DISCUSSION
Appellants raise several issues related to our application of the two-
step Alice framework in the Decision. We address each in turn below.
First, Appellants assert that we gave only superficial treatment to the
limitations of the claims in characterizing the claims with respect to Alice
step one, and, Appellants assert that we “failed to produce a record sufficient
to enable a court to conduct a meaningful review of how the Board reached
its conclusions.” Req. Reh’g 5—10. Thus, Appellants contend that we erred
in “overlooking the language of the claims and the requirements of [Federal
Circuit precedent and] failed to identify any limitation in the claims to
support [our] conclusions that the claims are directed to the alleged abstract
idea[s]” set forth in the Decision. Id. We disagree that the Decision
overlooks any language in the claim in arriving at the conclusion that claim
1 is directed to an abstract idea. Rather, we characterized each step of the
claim in arriving at our Decision. Specifically, the Decision discusses that
“claim 1 generates probability densities based on the formula provided in the
claim, measures physiological data, and uses the probability densities and
measured data to generate probability densities based on another
mathematical relationship (Bayes theorem)” and that the results are used to
generate “probabilities of a possible patient state.” Decision 7.
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Second, Appellants argue that the Decision inaccurately describes or
oversimplifies the claims in addressing Alice step one. Req. Reh’g 10—14.
In support, Appellants first assert that the Decision oversimplifies the
claims by stating they are directed to predicting health risks and providing
diagnosis. However, our Decision addresses this concern, stating:
To the extent Appellants assert that the claims do not embody a
prediction of patient health risks and diagnoses, but rather are
directed to generating probabilities of a possible patient state
(see App. Br. 30), this distinction fails to apprise us of
Examiner error. At the end of the day, both concepts take
physiological data from the patient and provide a probability of
the patient’s health status.
Decision 7. Similarly, Appellants assert that the Decision mischaracterizes
the claims as related to providing “a probability of the patient’s health
status.” Req. Reh’g 11. However, Appellants do not persuade us of any
meaningful distinction between “the patient’s health status” as used in the
Decision and “patient states” used in the claim.
Next, Appellants assert that the Decision oversimplifies the claims by
stating they are directed to a mathematical formula or relationship and
ignores the transformation of data required by the claim. Id. at 11—12.
Further, Appellants find fault in the Decision’s various descriptions of the
alleged abstract idea. Id. at 12—13. However, we find these arguments
unpersuasive for the reasons provided above, i.e. because the Decision
addresses each of the claim limitations in arriving at the conclusion
regarding Alice step one. Furthermore, we note that the discussion of the
claims at various levels of abstraction is not inconsistent with precedent. See
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction,”
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Application 13/826,441
and “[t]he Board's slight revision of its abstract idea analysis does not impact
the patentability analysis.”)
Third, Appellants argue that the Decision does not consider the claims
at the level required by our precedent and that doing so would show that the
claims define a transformation. Req. Reh’g 14. Appellants assert that the
claims define a transformation of raw measured physiological data into
“meta-information that cannot be measured” in the form of patient state data.
Id. Appellants further assert that “[s]uch a transformation transcends
ordinary computer processing of data . . . constituting an improvement in the
operation of computers, and accordingly the subject matter is patent
eligible.” Id. at 14—15. We disagree that the analysis and conclusions in the
Decision are inconsistent with precedent. Rather, the transformation of data
alone is not sufficient to show that the claims are eligible, and Appellants do
not adequately explain how the transformation here is an improvement in the
operation of the computer or something that is not within the capacity of the
human mind to perform.
Finally, Appellants argue with respect to Alice step two that the
transformation of data into possible patient states, each with its own
probability, and performed at successive moments in time amounts to
significantly more than the alleged abstract ideas presented in the Decision.
Req. Reh’g 16. More specifically, Appellants assert that the Decision
misapplied precedent in finding the claims analogous to those found
ineligible in Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016). Id. at 17. Rather, Appellants assert that the claims are more similar
to those found eligible in DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245
(Fed. Cir. 2014). We are not persuaded of any error of law or fact in the
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Application 13/826,441
Decision by this argument. In particular, we are not persuaded that the
claims here are similar to the claims found eligible in DDR Holdings. The
claims in DDR Holdings were found eligible because “the claimed solution
is necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings, 773
F.3datl257. In contrast, Appellants’ claims do not appear to be related to
any specific problem arising in the realm of computer networks and only use
computers as a tool for deriving probabilities for patient states.
CONCLUSION
We have carefully reviewed the original Decision in light of
Appellants’ request, but we find no point of law or fact that we overlooked
or misapprehended in arriving at our decision. Therefore, Appellants’
request for rehearing is denied.
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).
DENIED
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