Ex Parte Cohen-Solal et al

Patent Trials and Appeals Board

Jun 21, 2018

13818103 - (D) (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/818,103 02/21/2013 Eric Cohen-Solal
24737 7590 06/25/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
201 OP00890WOUS 2993
EXAMINER
TIEDEMAN, JASON S
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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC COHEN-SOLAL and MICHAEL LEE
Appeal 2016-007350
Application 13/818, 103 1
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-14, 16-18, and 20. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Koninklijke Philips
N.V. (Appeal Br. 2.)
2 Claims 19 and 21 were cancelled in an Amendment filed
November 24, 2015, which was entered by the Advisory Action mailed
December 11, 2015.
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Application 13/818, 103
CLAIMED SUBJECT MATTER
Appellants' claimed invention "relates to clinical informatics and
more particularly to assigning cases to be evaluated to one or more case
evaluators." (Spec. 1.)
Claims 1, 12, and 20 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method, comprising:
assigning, using a configured processor, cases to be
evaluated by a plurality of case evaluators based on
corresponding case profiles for the cases and a plurality of
dynamic evaluator profiles for the plurality of evaluators,
wherein a dynamic evaluator profile for each evaluator includes
information mined from a set of case evaluation reports produced
by each corresponding evaluator.
REJECTIONS
Claims 1-14, 16-18, and 20 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claim 9 is rejected under 35 U.S.C. § l 12(b) as indefinite. 3
Claims 1--4, 7, 8, 10-14, 16, 17, and 20 are rejected under 35 U.S.C.
§ 102(b) as anticipated byNekrich (US 2008/0292152 Al, pub.
Nov. 27, 2008).
Claims 5 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nekrich and Jones (US 6,516,324 Bl, iss. Feb. 4, 2003).
Claims 6 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nekrich and Evertsz (US 2002/0194019 Al, pub. Dec. 19, 2002).
3 The rejection of claims 6 and 18 under 35 U.S.C. § l 12(b) was withdrawn.
(Answer 3.)
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ANALYSIS
The § 1 OJ rejection of claims 1-14. 16-18. and 20
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(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.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if "the elements of the
claim ... contain[] an 'inventive concept' sufficient to 'transform' the
claimed abstract idea into a patent-eligible application." Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that the abstract idea in independent claims 1 and 12 is
"assigning cases to be evaluated based on case profiles and evaluator
profiles, the evaluator profiles including information mined from case
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evaluation reports." (Final Action 3--4, emphasis omitted.) The Examiner
also determines that the abstract idea in claim 20 is "assigning cases to be
evaluated based on case profiles and radiologist profiles, the radiologist
profiles including information mined from case evaluation reports which
include statistical information about cases corresponding to the radiologist."
(Id. at 4, emphasis omitted.)
Appellants argue that "the courts have declined to define abstract
ideas, other than by example" and that "[t]he Office Action offers no
comparison by example." (Appeal Br. 7.) Moreover, Appellants argue,
"[ t ]he case studies, the case reports, the mined information from the case
reports, are not abstract ideas." (Id.)
We are not persuaded of error. Under step one of the Alice
framework, we "look at the 'focus of the claimed advance over the prior art'
to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention
"relates to clinical informatics and more particularly to assigning cases to be
evaluated to one or more case evaluators." (Spec. 1.) Claim 1 recites
"assigning ... cases to be evaluated by a plurality of case evaluators based
on ... case profiles ... and ... evaluator profiles."
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
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Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241. Indeed, the Examiner's inclusion of particular content, i.e.,
limiting claim 20 to radiology related content, in describing the abstract idea
of claim 20 (Final Action 4), does not change our analysis. See Elec. Power
Grp., 830 F.3d at 1353 ("[W]e have treated collecting information, including
when limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.").
The Examiner analogizes to the abstract idea in SmartGene, Inc. v.
Advanced Biological Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014).
(Answer 4--5.) SmartGene involved the abstract idea of generating advisory
information for a therapeutic treatment regimen based on patient information
and a knowledge base of expert rules for evaluating and selecting a
treatment regimen. SmartGene, 555 F. App'x at 951-52. Like SmartGene,
the claims here, involving assignment of cases based on case profiles and
evaluator profiles, are claims to a process that can be performed entirely in
the human mind. "[W]e have treated analyzing information by steps people
go through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Elec. Power
Grp., 830 F.3d at 1353. Additionally, "we have recognized that merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis."
Id. at 1354.
Appellants also argue that the claims are not directed to an abstract
idea because they "do not 'tie up' the assignment of cases nor do they tie up
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the mining of information." (Appeal Br. 7.) We understand this to be an
argument that the claims are patent-eligible because they do not preempt
every application of the abstract idea. We do not find this argument
persuasive of error.
Preemption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
"significantly more" to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73].
CLS Bankint'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), aff'd, 134 S. Ct. 2347 (2014). Moreover,
"[ w ]here a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, "preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility." Id.
In view of the above, we are not persuaded that the Examiner erred in
determining that the claims are directed to an abstract idea.
Step two of the Alice framework has been described "as a search for
an ' "inventive concept" '-i.e., an element or combination of elements that
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is 'sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72-73).
The Examiner determines that
[t]he claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements . . . amount to no more than a
recitation of ... generic computer structure that serves to perform
generic computer functions ... and functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry (i.e., assigning, updating,
generating, storing).
(Final Action 4--5, emphasis omitted.)
Appellants disagree and argue that "[a]ssigning cases based on actual
experience is not a well-understood, routine or conventional activity
previously known to the industry." (Appeal Br. 8.)
We do not find this argument persuasive of error. Appellants appear
to argue that the abstract idea itself was not well-understood, routine or
conventional. But the inquiry at step two of Alice goes to whether the claim
contains an "inventive concept." Alice, 134 S. Ct. at 2357. That is, "[a]
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id., quoting Mayo, 566 U.S. at 77. The
Examiner found that the functions that the processor performs, not the
abstract idea, "are well-understood, routine, and conventional activities
previously known to the pertinent industry (i.e., assigning, updating,
generating, storing)." (Final Action 5, emphasis omitted.) See also
Berkheimer v. HP Inc., 881F.3d1360, 1368 (Fed. Cir. 2018). Appellants do
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not persuasively argue that there is a dispute regarding whether operation of
the claimed processor was well-understood, routine, or conventional.
Indeed, the Specification discloses use of generic "processors, computers,
workstations, or the like." (Spec. 4.)
Regardless, Appellants seek to analogize the claimed invention to the
claims in Diamond v. Diehr, 450 U.S. 175 (1981). Appellants argue that in
Diehr, the claims were directed to patent-eligible subject matter because the
claimed "improvement used software fed by actual temperatures measured
inside the device feed to recalculate the [rubber] cure time." (Appeal Br. 8.)
Appellants argue that this is analogous to the present application "because
the software replaces a predefined fixed static process that includes a general
domain of expertise, availability, and preferences [0004] with a process,
which receives information of the actual experience of an evaluator reading
cases." (Id. at 8-9.)
We disagree. The claims in Diehr were directed to "a process for
curing synthetic rubber." Diehr, 450 U.S. at 187. Unlike Appellants'
claims, the claimed steps in Diehr included "installing rubber in a press,
closing the mold, constantly determining the temperature of the mold [at a
location closely adjacent to the molding cavity], constantly recalculating
... , and automatically opening the press at the proper time." Id. In view of
the above, we do not find Appellants' argument persuasive of error.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under§ 101. Claims 2-14, 16-18, and 20 are not
separately argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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The§ l 12(b) rejection of claim 9
Claim 9 recites: "The method of any of claim 1, further comprising:
assigning a case to the corresponding evaluator based on a highest frequency
of cases of a type previously worked on by the corresponding evaluator
between the plurality of evaluators, and the type corresponds to the assigned
case."
The Examiner concludes that "[t]he claim is unclear and thus
indefinite because the Examiner cannot tell what the claim is attempting to
state." (Final Action 11.) Appellants do not argue in response to this
rejection. Therefore, we summarily affirm this rejection.
The§ 102(b) rejection of claims 1-4. 7. 8. 10. and 11
"[A Jn invention is anticipated if the same device, including all the
claim limitations, is shown in a single prior art reference. Every element of
the claimed invention must be literally present, arranged as in the claim."
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
If the prior art reference does not expressly set forth a
particular element of the claim, that reference may still anticipate
if that element is 'inherent' in its disclosure. To establish
inherency, the extrinsic evidence "must make clear that the
missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by
persons of ordinary skill." Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed. Cir.
1991). "Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient."
Id. at 1269, 948 F.2d 1264, 20 U.S.P.Q.2d at 1749 (quoting In re
Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. 323, 326 (C.C.P.A.
1981)).
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In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
Appellants argue that "N ekrick [sic] does not disclose, suggest, or
imply profiles which include information mined from a set of case
evaluation reports." (Appeal Br. 10.)
Nekrich discloses systems and methods for processing radiology
images including "means for selecting an image analyst by comparing the
image information with the profile information" of analysts. (Nekrich i-f 57 .)
Nekrich discloses that the profile information of each analyst includes "Peer
reviewed evaluations," "Real-time data of case tum-around time for specific
examinations," and "Case log" information. (Id. i-f 54 and Table III.) In
view of the above, we agree with the Examiner's findings that:
The profile information includes "Quality assurance"
information such as "Peer reviewed evaluations" and "Case log"
as described in Table III and its accompanying paragraphs. This
is interpreted as mined information. Evaluations are reports
produced by radiologists [see Nekrich, Para. 0009], i.e., an
evaluation of the image by a radiologist embodied in a report.
This is what one skilled in the art would interpret as a report.
Thus peer reviewed evaluations are information mined from a set
of case evaluation reports produced by the radiologist
(evaluator).
(Answer 11.)
Nonetheless, Appellants argue that
Nekrich does not disclose definitions of peer reviewed
evaluations or quality assurance parameters . . . . An
interpretation that the Peer review [sic] evaluations parameter is
a flag that indicates that an analyst is board certified in the U.S.
and is willing to double check or peer review the case is a
reasonable interpretation consistent with the specification, and
with one that those ski 1 led in the art would reach. An
interpretation that the peer review [sic] evaluations parameter is
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mined from evaluation reports produced by an evaluation is not
a broadest reasonable interpretation.
(Reply Br. 7.)
We are not persuaded of error. As an initial matter, we note that
Appellants' argument is directed to "peer review evaluations." (Id.) But
Table III recites "Peer reviewed evaluations." Thus, Appellants' proposed
interpretation is for a term materially different from that disclosed in
Nekrich. For example, the term "peer review evaluations" arguably could
refer to a willingness to perform such evaluations in the future, while the
term "peer reviewed evaluations" refers to evaluations that have already
been performed. We also note that Table III ofNekrich includes under the
heading of "Radiologist demographics" a separate entry for "Board
certification." Also, Table III lists "Peer reviewed evaluations," i.e., a
plurality of such evaluations. Appellants do not persuasively argue why one
skilled in the art would understand this to refer to a singular flag indicating
Board certification and a willingness to double check a case, as opposed to
its plain meaning of "Peer reviewed evaluations."
Nor do Appellants persuasively argue why basing the assignment of
cases on information from a radiologist's profile, including taking into
consideration information from peer reviewed evaluations, is not reasonably
construed as basing the assignment of cases on information including
information mined from case evaluation reports. (See Nekrich i-f 57.)
Appellants also argue that "N ekrick [sic] is silent from where or how
any information is received." (Appeal Br. 10.) But claim 1 is also silent as
to where or how "case evaluation reports" are received. (See Claim 1.)
Claim 1 merely recites that case evaluation reports are "produced by each
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corresponding evaluator," i.e., that evaluation reports are produced by
evaluators.
Appellants further argue that Nekrich discloses use of static
information and that claim 1 recites "a plurality of dynamic evaluator
profiles." (Appeal Br. 10-11; see also Reply Br. 6.) But Appellants do not
persuasively argue why the Examiner erred in finding "that both the 'Peer
reviewed evaluations' and 'Case log' are dynamic (i.e, changing) variables."
(Answer 13.) Nor do Appellants persuasively argue why the Examiner erred
in finding that "a person having ordinary skill in the art would interpret peer
reviewed evaluations for quality assurance purposes to be an ongoing
process." (Id.)
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under § 102(b ). Claims 2--4, 7, 8, 10, and 11 depend from
claim 1 and are argued together with claim 1. Thus, for the reasons
discussed, we do not find the above arguments of Appellants persuasive of
error in the rejection of claims 2--4, 7, 8, 10, and 11.
The§ 102(b) rejection ofclaim 3
Appellants present an additional, separate argument regarding claim 3.
Claim 3 recites: "The method of claim 1, further comprising:
updating at least one case assignment in response to at least one of a change
in the case profiles, or a change in a dynamic evaluator profile."
Appellants argue that "Nekrich offers a radiologist a choice of two
cases in an assignment. The choice is not an update in assignment, rather an
initial assignment." (Appeal Br. 12.)
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The Examiner answers that "[ c ]ases are assigned to radiologists
(evaluators) and that is all that the claim requires." (Answer 14.) The
Examiner further answers that "Nekrich teaches that a radiologist's profile
may be updated [Nekrich Para. 0056, 0057, 0083]." (Id. at 15.)
Additionally, the Examiner answers that "Nekrich thereafter teaches that the
queue (the assignment) can be changed according to this information
[Nekrich, Para. 0057]. This is interpreted as updating an assignment based
on the radiologist's profile." (Id.)
Nekrich discloses that "[t]he user interface preferably only displays
cases for which the radiologist is qualified . . . . The user interface also may
permit the radiologist to establish or change their preferences for the types of
cases that they will receive, as described herein." (Nekrich i-f 83.)
Specifically, Nekrich discloses that "the system is configured so that the
radiologist still has access to the demographics of the remaining cases so
that the radiologist may change their profile to broaden or narrow their
selectivity." (Id. i-f 56.) In short, Nekrich discloses updating a radiologist's
profile. But, we are persuaded that the portions ofNekrich relied on by the
Examiner do not expressly or inherently disclose "updating at least one case
assignment in response to" a change in a case profile or a dynamic evaluator
profile.
Therefore, we will reverse the rejection of claim 3 under § 102(b ).
The§ 102(b) rejection ofclaim 4
Appellants present an additional, separate argument regarding claim 4.
Claim 4 recites: "The method of claim 1, further comprising:
updating a dynamic evaluator profile for at least one evaluator in response to
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a case evaluation report produced by the at least one evaluator becoming
available for mining."
The Examiner finds that Nekrich
teaches that the analyst profile information includes a Quality
Assurance portion which includes peer reviewed evaluations
(interpreted as information mined from a current set of case
evaluation reports) of the analyst. This is interpreted to be
continually updated based on evaluations completed by the
analyst . . . . The Examiner notes that the Applicant has provided
no timeframe with respect to the updating feature ....
(Final Action 14, citing Nekrich Table III and i-fi-153, 54.)
Appellants disagree and argue that "[t]he disclosures ofNekrich do
not relate profile information to produced case evaluation reports." (Appeal
Br. 12.)
However, as discussed above, Table III specifically lists "Peer
reviewed evaluations" as included in the profile information for the
radiologists. Thus, Nekrich relates evaluator profile information to
evaluations and the evaluator's profile is updated with the updated "Peer
reviewed evaluation." In view of the above, we are not persuaded that the
Examiner erred in rejecting claim 4 under § 102(b ).
The§ 102(b) rejection of claim 11
Appellants present an additional, separate argument regarding
claim 11.
Claim 11 recites: "The method of claim 1, further comprising:
generating an electronic schedule based on the case assignment, wherein the
schedule is employed by the evaluators to evaluate the cases."
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The Examiner finds that Nekrich "teaches that a queue (interpreted as
a schedule) is created for each radiologist and that the studies are placed
in/on the radiologist's docket based on the queue." (Final Action 16, citing
Nekrich i-fi-132 and 57.)
Nekrich discloses that "to determine the most appropriate analyst to
review [an] image[,] ... a docket, or caseload of the individual analyst can
be reviewed by the system." (Nekrich i157.) Appellants argue that
"[r]eviewing a docket or caseload is not generating a schedule." (Appeal
Br. 15.) But Appellants acknowledge that Nekrich discloses "means for
queuing the image information." (Nekrich i132; Appeal Br. 14.)
Regardless, Appellants further argue that "[i]nterpreting a queue as a
schedule is not reasonable even in a broadest reasonable interpretation."
(Reply Br. 12.)
Appellants' Specification discloses that "FIGURE 2 illustrate [sic] a
method for assigning cases to be evaluated to one or more evaluators .... "
(Spec. 2.) The Specification further discloses, with reference to Figure 2,
"[a]t 208, an electronic schedule mapping the cases to the assigned
radiologist is created" and that "[a ]t 210, the radiologists evaluate the
resulting images based on the schedule." (Id. at 6.) In view of this
disclosure, we agree with the Examiner that a broadest reasonable
interpretation of the term "schedule," as used in Appellants' Specification,
includes a queue of cases assigned to a radiologist.
Figure 3 ofNekrich further describes the "means for queuing the
image information" disclosed in paragraph 32. In relevant part, Figure 3
discloses that Nekrich's system matches image information received from a
medical facility to profile information from image analysts, and selects at
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least one analyst. If the image is considered urgent, the system places that
image information into an "Urgent Queue" and transmits the image to the
selected at least one analyst. (See Nekrich Fig. 3.) In other words, an
electronic queue mapping the cases to the assigned radiologist is created and
the radiologist evaluates the resulting images based on that queue.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 11 under § 102 (b).
The§ 102(b) rejection of claims 12-14. 16. and 17
Claim 12 recites:
12. A system, comprising:
a case profile repository that stores case profiles for cases
to be evaluated;
a dynamic evaluator profile repository that stores dynamic
evaluator profiles for evaluators available to evaluate the cases,
and the dynamic evaluator profiles for each evaluator includes
information mined from a set of case evaluation reports
previously evaluated by each corresponding evaluator; and
a processor configured to generate a signal indicative of
an assignment of the cases to the evaluators based on the case
profiles and the dynamic evaluator profiles.
As with claim 1, Appellants argue that "N ekrick [sic] is silent from
where or how any information is received, except for entry by the
Radiologist through the user interface." (Appeal Br. 16.) But claim 12, like
claim 1, is silent as to where or how "case evaluation reports" are received.
(See Claim 12.) Claim 12 merely recites that case evaluation reports are
"previously evaluated by each corresponding evaluator," i.e., that evaluation
reports were evaluated by evaluators.
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Appellants also argue that "Nekrich does not disclose any aspects of
data mining, rather only online entry by a user [0083], which is not data
mining." (Reply Br. 12.)
We are not persuaded of error. The online entry referred to in
paragraph 83 ofNekrich states that "[t]he user interface also may permit the
radiologist to establish or change their preferences for the types of cases that
they will receive .... " (Nekrich i-f 83.) Nekrich describes sorting
parameters for radiologists as including "license status, hospital privilege,
subspecialty, and radiologist preferences, among others." (Id. i-f 31.) Under
the heading "Analyst Preferences," Nekrich refers to the possibility that a
radiologist "has a preference for evaluating certain types of cases." (Id.
i-f 4 7.) N ekrich does not treat "Peer reviewed evaluations" as part of a
radiologist's preferences. Nor do Appellants persuasively argue why "Peer
reviewed evaluations" in a radiologist's profile should be considered a
"preference" that would be part of online entry by a user. (See Reply Br. 12;
see also Nekrich i-f 83.) It is the disclosure of "Peer reviewed evaluations,"
not preferences, that the Examiner relies on in finding that N ekrich discloses
information mined from evaluation reports. (See, e.g., Answer 25.)
Appellants also argue that "Nekrich does not disclose, suggest, or
imply information from produced reports. At best, Nekrich only considers
the number of cases not yet reviewed or backlog [0057]. Backlog cases are
not produced case. The information ofNekrich is not from produced
reports." (Appeal Br. 13.)
As an initial matter, we note that claim 12 does not refer to "produced
reports." Rather, it refers to "case evaluation reports previously evaluated
by each corresponding evaluator." Appellants do not persuasively argue
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why Nekrich's disclosure of "Peer reviewed evaluations" associated with a
radiologist does not disclose, suggest, or imply information from case
evaluation reports previously evaluated that have been peer reviewed.
Appellants present an additional argument with regard to claim 17.
Claim 1 7 recites: "The system of claim 12, wherein the signal represents an
electronic schedule." Appellants argue that "[r ]eceiving image information,
queuing the imaging information and receiving profile information is not
generating an electronic schedule." (Appeal Br. 17.) However, for the
reasons discussed above with regard to claim 11, we do not find this
argument persuasive of error.
The§ 102(b) rejection ofclaim 20
Independent claim 20 contains language similar to that in claim 1.
Appellants' arguments with regard to claim 20 are similar to, and a subset
of, the arguments made with regard to claim 1. Therefore, for the reasons
discussed above with regard to claim 1, we are not persuaded that the
Examiner erred in rejecting claim 20 under § 102(b ).
The§ 103(a) rejection ofclaim 5
Claim 5 recites: "The method of claim 1, wherein the cases are
assigned based on evaluator actual experience according to the mined
information which includes a frequency of cases worked on by each
corresponding evaluator."
The Examiner finds that
Nekrich teaches that the radiologist profile includes both
fellowship training (interpreted as actual experience) and quality
assurance information in the form of peer reviewed evaluations
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and case log information (both interpreted as mined information
... ). The queueing [sic] (assignment) of cases is based on both
these items of information. Thus the case is queued based on the
fellowship training (actual experience) according to the quality
assurance information (mined information).
(Answer 16-17.)
Appellants disagree and argue that "fellowship training does not
disclose, suggest, or imply information mined from a set of case evaluation
reports." (Appeal Br. 13.)
Claim 5 recites, in relevant part, that "the cases are assigned based on
evaluator actual experience according to the mined information."
(Emphasis added.) The term "according to" includes "1: in conformity
with[;] 2: as stated or attested by[; and] 3: depending on." According to,
Merriam-Webster.com, https://www.merriam-webster.com/ dictionary/
according%20to (last visited June 20, 2018). The Examiner, however, does
not sufficiently explain why the disclosure in Nekrich of assigning cases
based on actual experience and quality assurance information teaches
assigning cases based on actual experience according to quality assurance
information.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 5 under§ 103(a).
The § 103 (a) rejection of claims 6 and 18
Claim 6 recites: "The method of claim 1, wherein the cases are
assigned based on at least one of: a rate of the corresponding evaluator
reaching a positive finding, a likelihood of the corresponding evaluator
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arriving at a correct diagnosis, or an unseen type of case for the
corresponding evaluator."
The Examiner finds "studies are assigned to radiologists based on
certain factors" and that Evertsz teaches monitoring a radiologist's success
rate in the diagnosis. (Final Action 21.) Therefore, the Examiner
determines, it would have been obvious
to have modified the method of assigning studies to radiologists
based on a number of factors of N ekrich so as to have included
that one of the factors is the success rate of the radiologist in
diagnosing patients, in accordance with the teaching of Evertsz,
in order to provide for an efficient means to assign cases to
certain radiologists.
(Id. at 21-22.)
Appellants disagree and argue that "Evertsz does not disclose,
suggest, or imply assigning cases based on the infiltrated cases or in-service
monitoring statistics." (Appeal Br. 14.)
We are not persuaded of error. The test for obviousness is not what
any one reference would have suggested, but rather what the combined
teachings would have suggested to one of ordinary skill in the art. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981). The Examiner relies on Nekrich in
combination with Evertsz. (See Final Action 21-22.)
Appellants also argue that "modifying the peer reviewed evaluations
ofNekrich ... impermissibly modifies a principle of operation." (Appeal
Br. 14; see also Reply Br. 11.)
Evertsz discloses a method and system for "screening of medical
cases [where] known proven positive and/or known proven normal cases are
inserted in the flow of cases during the screening." (Evertsz, Abstract.) In
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particular, Evertsz discloses that "[t ]he in-service monitoring statistic is
indicative of the radiologist's performance." (Id. i-f 69.)
Simply including the statistical information of Evertsz in the multiple
factors listed in Table III ofNekrich, i.e., adding this information to the
profile information of the radiologists, does not change the principle of
operation of N ekrich, that is, "selecting an image analyst by comparing the
image information with the profile information" of analysts. (See Nekrich
i-f 57 .) Therefore, we are not persuaded that the Examiner erred in rejecting
claim 6 under§ 103(a).
Claim 18 contains similar language to claim 6 and Appellants make
similar arguments. (See Appeal Br. 18.) Therefore, for similar reasons, we
are not persuaded that the Examiner erred in rejecting claim 18 under
§ 103(a).
DECISION
The Examiner's rejection of claims 1-14, 16-18, and 20 under
35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claim 9 under 35 U.S.C. § 112(b) is
summarily affirmed.
The Examiner's rejection of claims 1, 2, 4, 7, 8, 10-14, 16, 17, and 20
under 35 U.S.C. § 102(b) is affirmed.
The Examiner's rejection of claim 3 under 35 U.S.C. § 102(b) is
reversed.
The Examiner's rejections of claims 6, 9, and 18 under 35 U.S.C.
§ 103(a) are affirmed.
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The Examiner's rejection of claim 5 under 35 U.S.C. § 103(a) is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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