Ex Parte Cohen-Solal et al

Patent Trials and Appeals Board

Apr 26, 2019

13981998 - (D) (P.T.A.B. Apr. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/981,998 07/26/2013 Eric Cohen-Solal
24737 7590 04/30/2019
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.
2011P00010WOUS 6662
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/30/2019 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 CHUN-CHIER LEE
Appeal2018-002025
Application 13/981,998
Technology Center 3600
Before ST. JOHN COURTENAY III, MARC S. HOFF, and
ELENI MANTIS MERCADER, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-8, 11-13, 15, and 41--46, which constitute all the
claims pending in this Application. Claims 9, 10, 14, and 16--40 are
cancelled. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Koninklijke Philips
N.V. App. Br. 2.
Appeal2018-002025
Application 13/981,998
STATEMENT OF THE CASE
Embodiments of Appellants' claimed invention relate to:
identifying missing medical concepts for selecting an imaging
protocol for an imaging procedure for a patient from medical
concepts for imaging procedures for other patients and/ or for
identifying medical concepts from medical information for a
patient in addition to an order prescribing an imaging procedure
for the patient for selecting an imaging protocol for the imaging
procedure.
Spec. 1.
Exemplary Claim
1. A method, comprising:
obtaining first electronically formatted medical
information about a patient scheduled for an imaging procedure
via an imaging system, wherein the electronically formatted
medical information includes a first set of medical concepts
corresponding to the imaging procedure;
obtaining second electronically formatted medical
information with a second set of medical concepts for one or
more imaging procedures for other patients previously scanned;
identifying cases of the other patients that correspond to
the second electronically formatted medical information
wherein the second set of medical concepts comprise the first
set of medical concepts;
identifying a third set of medical concepts in the second
set of medical concepts from identified cases of other patients
that are missing from the first set of medical concepts in the
first electronically formatted medical information of the patient
as missing medical concepts; and
selecting an imaging protocol for the imaging procedure
from imaging protocols recommended for the missing medical
concepts, and generating a signal indicative of the selected
imaging protocol that configures an imaging scanner to scan
the patient.
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App. Br. 14 (Claims Appendix) (emphasis added).
Rejection 2
Claims 1-8, 11-13, 15, and 41--46 are rejected under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more. Final
Act. 3.
Issue on Appeal
Did the Examiner err in rejecting claims 1-8, 11-13, 15, and 41--46
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Principles of Law-35 US.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.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "'[l]aws of nature, natural phenomena, and abstract
ideas"' are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
2 We herein refer to the Final Office Action, mailed May 10, 2017 ("Final
Act."); Appeal Brief, filed Sept. 28, 2017 ("App. Br."); Examiner's Answer,
mailed Nov. 2, 2017 ("Ans."); and the Reply Brief, filed Dec. 19, 2017
("Reply Br.").
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Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diehr, 450 U.S. at 191); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 183 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267---68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a
mathematical formula, but the Supreme Court held that "[a] claim drawn to
subject matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula." Diehr, 450 U.S. at 187; see also
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id. at 191 ("We view respondents' claims as nothing more than a process for
molding rubber products and not as an attempt to patent a mathematical
formula."). Having said that, the Supreme Court also indicated that a claim
"seeking patent protection for that formula in the abstract ... is not accorded
the protection of our patent laws, ... and this principle cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment." Id. (citing Benson and Flook); see, e.g., id. at
187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "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).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
Subject Matter Eligibility-2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised
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Guidance"). Under the 2019 Revised Guidance, we first look to whether the
claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, mental processes, or certain
methods of organizing human activity such as a fundamental
economic practice or managing personal behavior or relationships or
interactions between people); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
("MPEP") §§ 2106.05(a}-(c), (e}-(h)). 3 See 2019 Revised Guidance,
84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under § 101. Id.
Only if a claim: (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance at 56; Alice, 573 U.S. at 217-18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
3 All references to the MPEP are to the 9th ed., Revision 08-2017 (rev. Jan.
2018).
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( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. See 2019 Revised Guidance, 84
Fed. Reg. at 56.
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
2. Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
3. Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions
between people (including social activities, teaching, and
following rules or instructions).
According to the 2019 Revised Guidance, "claims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
(abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53.
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For example, limitations that are indicative of "integration into a
practical application" include:
1. Improvements to the functioning of a computer, or to any other
technology or technical field-see MPEP § 2106.05(a);
2. Applying the judicial exception with, or by use of, a particular
machine-see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article to
a different state or thing - see MPEP § 2106.05( c ); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception-see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1. Adding the words "apply it" ( or an equivalent) with the judicial
exception, or merely include instructions to implement an
abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea-see MPEP § 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception - see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
We note Appellants' Reply Brief was filed on December 19, 2017.
Therefore, neither the Examiner nor the Appellants had the benefit of the
2019 Revised Guidance.
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Rejection of Claims 1-8, 11-13, 15, and 41-46 under 35 USC§ 101
The Examiner concludes that claims 1-8, 11-13, 15, and 41--46 recite
the abstract idea of "selecting an imaging protocol for an imaging procedure
based on a combination of medical concepts from electronically formatted
medical information and identified missing medical concepts, and generating
a signal indicative of the selected imaging protocol." Final Act 4 ( emphasis
added). 4
The Examiner finds the claims do not include additional elements that
amount to significantly more than the judicial exception, because
the additional limitations of ( 1) generating/providing a signal
indicative of the selected imaging protocol that configures an
imaging scanner to scan the patient, (2) displaying/presenting
recommended protocols, medical concepts, or lists of protocols,
or (3) operating the imaging scanner to scan the patient
according to the selected imaging protocol[,] merely represent
insignificant, conventional extra-solution activities well-
understood in the industry of healthcare communication
systems or the application of the abstract idea (saying "apply
it").
Id. at 5.
The Examiner also finds "[ a ]n imaging scanner is claimed, which is
not [a] generic computer structure." Id. at 6. However, the Examiner finds:
the imaging scanner only serves as a device to which data is
sent ( extra-solution activity) and is only performing functions
that an imaging scanner generically performs. The
Specification does not provide a description of the imaging
scanner other than the functions it performs. For example the
Specification at Pg. 14, final paragraph describes an imaging
4 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340--41 (Fed.
Cir. 2013).
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scanner as a generic scanner which is used to perform generic
patient medical imaging, which is/are functions that the
imaging scanner generically performs. Therefore, the imaging
scanner in combination with the other recited structure does not
result in significantly more.
Final Act. 6 5
For the aforementioned reasons, the Examiner concludes that claims
1-8, 11-13, 15, and 41--46 are not patent eligible under 35 U.S.C. § 101.
We review this rejection de nova by applying the 2019 Revised Guidance.
The Judicial Exception
STEP 2A, PRONG ONE
Under the 2019 Revised Guidance ( 1 ), we identify the specific claim
limitations which recite an abstract idea, including certain groupings of
abstract ideas, in particular: (a) mathematical concepts, (b) mental steps,
and ( c) certain methods of organizing human activities.
We conclude that the first two "obtaining steps" of method clam 1
collect or gather information. However, courts have found such data
gathering to be insignificant extra-solution activity. See, e.g., In re Bilski,
5 See Spec. 14--15:
The user of the system 102 can select a candidate relevant
additional concept and employ and/or save the resulting
protocol for the patient. The protocol can be conveyed from the
computing system 102 to another system such as the imaging
scanner that will ... scan the patient using proprietary and/or
standard approaches such as by encoding the protocol as a RIS
Procedure ID and transmitting via the DICOM modality
worklist. The protocol can be automatically loaded and loaded
via user interaction. ( emphasis added).
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545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd sub nom Bilski v.
Kappas, 561 U.S. 593 (2010) (Characterizing data-gathering steps as
insignificant extra-solution activity.).
In contrast, we agree with the Examiner that the two steps of
"identifying" recite an abstract idea. Final Act. 4. Applying the 2019
Revised Guidance, we conclude such "identifying" falls within the category
of mental processes, i.e., concepts performed in the human mind (including
an observation, evaluation, judgment, or opinion).
Although the recited step of "selecting an imaging protocol for the
imaging procedure from imaging protocols recommended for the missing
medical concepts" could be performed as a mental step, courts have found
that selecting a particular data source or data type to be manipulated is also
insignificant extra-solution activity. See, e.g., Intellectual Ventures I LLC v.
Erie Indem. Co., 850 F.3d 1315, 1328-29 (Fed. Cir. 2017) (Using XML tags
to form an index is token extra-solution activity.); see also MPEP
§ 2106.05(g).
We particularly focus our analysis on the last "generating" step of
independent method claim 1: "generating a signal indicative of the selected
imaging protocol that configures an imaging scanner to scan the patient"
( emphasis added). We conclude that this last step could not reasonably be
performed as a mental step, because of the positively recited signal that
configures the imaging scanner.
As noted above, we conclude that the two steps of "identifying" recite
abstract ideas which could be performed as mental steps. See Claim 1.
Thus, method claim 1 recites an abstract idea (mental steps). Similarly, we
conclude the "identify" and "determine" functions of "computing system"
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independent claim 15 could be performed as mental steps. Therefore,
remaining independent claim 15 also recites an abstract idea.
To the extent Appellants advance arguments regarding Mayo/Alice
step one, which also fall under the 2019 Revised Guidance (2) (covering
MPEP §§ 2106.05(a}-(c) and (e}-(h)), we address these arguments infra.
Integration of the Judicial Exception into a Practical Application
STEP 2A, PRONG Two
Independent Method Claim 1 and
Dependent Method Claims 2---8, 11-13, 43, 44, and 46
In applying the 2019 Revised Guidance (2), and for the reasons which
follow, we conclude that Appellants' method claims 1-8, 11-13, 43, 44, and
46 integrate the judicial exception into a practical application. In particular,
for method claims 1-8, 11-13, 43, 44, and 46, an analysis under MPEP §
2106.05(b) ("Particular Machine") provides a useful and important clue.
See Bilski, 561 U.S. at 604. We emphasize that although the application of a
judicial exception by or with a particular machine provides an important
clue, it is not a stand-alone test for eligibility. Id.
Appellants contend:
The claims are directed to selecting an imaging protocol for the
imaging procedure based on a combination of the medical
concepts from the first electronically formatted medical
information and the missing medical concepts, and generating a
signal indicative of the selected imaging protocol that
configures an imaging scanner to scan the patient. The imaging
protocol, imaging scanner and electronically formatted medical
information are not abstract ideas. The claims are inherently
tied to an electronic environment with electronically formatted
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medical information (processor and instructions explicit in
independent claim 15) and to an imaging scanner (independent
claim 1 and dependent claim 43, and claims 41 and 42
dependent from independent claim 15).
App. Br. 5 ( emphasis added).
Appellants point to an alleged error by the Examiner: "The Office on
page 11 appears to confine the abstract idea to a general-purpose computer.
The imaging protocol selection viewed in light of the [S]pecification cannot
be confined to a general-purpose computer. The claims recite an imaging
scanner, which is not a general-purpose computer." App. Br. 9 (emphasis
added).
Appellants are correct that independent method claim 1, and claims 2-
8, 11-13, 43, 44, and 46, which variously depend from claim 1, "recite an
imaging scanner, which is not a general-purpose computer." Id. (emphasis
added). See supra, n.5, describing the claimed imaging scanner in the
Specification 14--15. We note that dependent method claims 2-8, 11-13, 43,
44, and 46 include the "imaging scanner" limitation by virtue of their
dependency from claim 1. 6 This issue is not in dispute, because the
Examiner expressly finds "[ a ]n imaging scanner is claimed, which is not [a]
generic computer structure," as indicated above. Final Act. 6.
As noted above, we conclude the last step of method claim 1
("generating a signal indicative of the selected imaging protocol that
configures an imaging scanner to scan the patient") could not reasonably be
performed as a mental step, because of the signal that is positively recited as
6 See Pre-AIA 35 U.S.C. § 112, fourth paragraph ("A claim in dependent
form shall be construed to incorporate by reference all the limitations of the
claim to which it refers.").
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configuring the imaging scanner.
Significantly, we find the recited "signal ... that configures an
imaging scanner" (id.) ties method claims 1-8, 11-13, 43, 44, and 46 to a
particular machine. 7 To the extent the "imaging scanner" recited in method
claim 1 might arguendo be construed as a generic "imaging scanner," we
find the "imaging scanner" becomes a particular machine when the
generated signal configures the imaging scanner to scan the (particular)
patient, within the scope of independent method claim 1, under a broad but
reasonable interpretation. 8
As emphasized above, the application of a judicial exception by a
particular machine provides an important clue for method (process) claims;
however, it is not a stand-alone test for eligibility, and is inapplicable to the
remaining "computing system" claims 15, 41, 42, and 45, which we address
separately, infra.
7 MPEP § 2106.05(b) provides further guidance regarding what constitutes a
particular machine: "[ A ]s described in MPEP § 2106.05(f), additional
elements that invoke computers or other machinery merely as a tool to
perform an existing process will generally not amount to significantly more
than a judicial exception. See, e.g., Versata Development Group v. SAP
America, 793 F.3d 1306, 1335 ... (Fed. Cir. 2015) (explaining that in order
for a machine to add significantly more, it must 'play a significant part in
permitting the claimed method to be performed, rather than function solely
as an obvious mechanism for permitting a solution to be achieved more
quickly')."
8 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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We additionally find that configuring the imaging scanner for a
patient (having individualized medical needs) as a result of "generating a
signal indicative of the selected imaging protocol" is a meaningful limitation
that goes beyond merely linking the use of the judicial exception to a
particular technological environment. See MPEP § 2106.05(e) ("Other
Meaningful Limitations"). As noted in the Specification:
The selection of the most adequate imaging protocol for a
given patient is based upon the available information from the
patient clinical record. The record includes the current imaging
order from a referring physician, which contains the "clinical
indications"' that caused the patient to be referred to imaging.
Spec. 2 ( emphasis added).
Thus, in accordance with method claim 1, the imaging scanner is
configured specifically for a patient having individualized medical needs, as
a result of "generating a signal indicative of the selected imaging protocol."
Therefore, we agree with Appellants' contention that at least method
claims 1-8, 11-13, 43, 44, and 46 are "subject matter eligible as the claims
are tied to 'an imaging scanner to scan the patient,"' i.e., a particular
machine. App. Br. 6. And the claimed "generating a signal" step of method
claim 1 provides a meaningful limitation under MPEP § 2106.05( e ).
Accordingly, we conclude that Appellants' method claims 1-8, 11-13,
43, 44, and 46 integrate the judicial exception into a practical
application.
For at least these reasons, we are constrained on this record to reverse
the Examiner's rejection under 35 U.S.C. § 101 of method claims 1-8,
11-13, 43, 44, and 46.
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STEP 2A, PRONG Two (CONTINUED)
Independent "Computing System" Claim 15, and
Dependent "Computing System" Claims 41, 42, and 45
For the reasons which follow, we conclude "computing system"
claims 15, 41, 42, and 45 do not integrate the judicial exception into a
practical application. See MPEP §§ 2106.05(a}-(c) and (e}-(h). Although
we have considered all of Appellants' arguments that may pertain to
"computing system" claims 15, 41, 42, and 45, we find that none of
Appellants' arguments that may be applicable under MPEP §§ 2106.05(a}-
( c) and ( e) are persuasive or dispositive for at least the following reasons:
In contrast to independent method claim 1, independent "computing
system" claim 15 is silent regarding any mention of "generating a signal
indicative of the selected imaging protocol that configures an imaging
scanner to scan the patient." Claim 1 ( emphasis added).
Instead, independent "computing system" claim 15 recites: "a display
configured to display the missing medical concept and the determined at
least one scan protocol." ( emphasis added). Merely displaying the "missing
medical concept" and the "determined" scan protocol on a display, without
more, is just the display of non-functional descriptive material (NFDM)
intended for human viewing.
The MPEP provides applicable guidance: "where the claim as a
whole is directed to conveying a message or meaning to a human reader
independent of the intended computer system, and/or the computer-readable
medium merely serves as a support for information or data, no functional
relationship exists." MPEP § 2111.05 (III.) (9th Ed., Rev. 08.2017, Last
Revised Jan. 2018); see also Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI
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2008) (precedential) ("[T]he nature of the information being manipulated
does not lend patentability to an otherwise unpatentable computer-
implemented product or process.").
Therefore, in applying the guidance of the aforementioned cited
MPEP section, and the controlling guidance of Nehls, we broadly but
reasonably construe the recited displayed "missing medical concept and the
determined at least one scan protocol," as non-functional descriptive
material merely intended for human perception. Independent Claim 15.
In contrast to method claims 1-8, 11-13, 43, 44, and 46, as discussed
above, we find none of Appellants' arguments that may be applicable under
MPEP §§ 2106.05(a}-(c) and (e) are persuasive regarding "computing
system" claims 15, 41, 4 2, and 4 5.
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellants' "computing system" claims 15, 41, 42,
and 45, considered as a whole, is directed to a patent-ineligible abstract idea
that is not integrated into a practical application.
STEP 2B -The Inventive Concept
"Computing System" Claims 15, 41, 42, and 45
The Examiner finds the claimed functions are "well-understood,
routine, and conventional activities previously known to the pertinent
industry (i.e., obtaining data, identifying data, selecting data, generating
data, determining data, comparing data, discarding data, sorting data,
displaying data, receiving data, providing data)." Final Act. 6 (emphasis
omitted). The Examiner further finds "[t]here is no indication that the
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combination of elements improves the functioning of a computer or
improves any other technology." Id. ( emphasis added).
Appellants disagree: "The claims are not routine or conventional
practice. As noted on page 1 of the [S]pecification, conventional practice is
for a radiologist to review an order and assign an imaging protocol for the
patient based on the specific clinical indications indicated in the order."
App. Br. 6. Appellants then attempt to distinguish the claims over the
previously cited Unger reference; however, there is no rejection over prior
art before us on appeal. Id.
The Examiner responds: "the Appellant[ s are] essentially making a
novelty/nonobviousness argument by arguing that: because the claimed
invention is not routinely performed (i.e., is novel/non-obvious),
'significantly more' must be present. This argument has been routinely held
by the courts to be non-persuasive." Ans. 7. The Examiner correctly cites to
Diehr, 450 U.S. at 188-89 in support. 9
Regarding Step 2B, the inventive concept, Appellants assert: "Said
specific and definite claim limitation subject matter is not 'well-understood,'
'routine' or 'conventional' in the field of medical informatics used in
selecting an imaging protocol for an imaging procedure." Reply Br. 6.
9 "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."
Diehr, 450 U.S. at 188-89 (emphasis added). Our reviewing court further
emphasizes that "[e]ligibility and novelty are separate inquiries." Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed.
Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016) (Holding that "even assuming" that a particular
claimed feature was novel does not "avoid the problem of abstractness.").
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Berkheimerv. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Under the 2019 Revised Guidance, only if a claim: ( 1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not "well-understood, routine, and
conventional" in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, and conventional activities previously known to
the industry, specified at a high level of generality, to the judicial exception.
We note that Berkheimer was decided by the Federal Circuit on
February 8, 2018. Appellants' Reply Brief was filed almost two months
earlier, on December 19, 2017. On April 19, 2018, the PTO issued the
Memorandum titled: "Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer Memorandum"). 10
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements ( or a
combination of elements) are well-understood, routine, and conventional. In
reviewing the prosecution history, we recognize that Appellants have not yet
had an opportunity to advance arguments based upon the change in the law
effected by Berkheimer.
However, regarding the use of the recited generic "computing system"
and "one or more processors" recited in independent claim 15, the Supreme
10 Robert W. Bahr, Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.), USPTO 1-5 (2018),
https ://www. uspto. gov/ sites/ default/files/
documents/memo-berkheimer-2018 0419. PDF.
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Court has held "the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice, 573
U.S. 208, 223. Our reviewing court provides additional guidance, including
in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) ("the use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter"); see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015) (claims reciting, inter alia, sending
messages over a network, gathering statistics, using a computerized system
to automatically determine an estimated outcome, and presenting offers to
potential customers found to merely recite "'well-understood, routine
conventional acti vit[ ies ]'" by either requiring conventional computer
activities or routine data-gathering steps (alteration in original, internal
citation omitted)).
Accordingly, on the record before us, Appellants have not shown
that "computing system" claims 15, 41, 42, and 45 add a specific limitation,
beyond the judicial exception, that is more than what was "well-understood,
routine, and conventional" in the field (see MPEP § 2106.05(d)).
We emphasize the Bilski machine-or-transformation test discussed
above (regarding method claim 1) is only applicable to process (method)
claims, and thus is inapplicable to independent claim 15, which recites a
system (apparatus): "A computer system, comprising .... " (Preamble,
claim 15).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellants' "computing system" claims 15, 41, 42,
and 45, considered as a whole, is directed to a patent-ineligible abstract idea
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that is not integrated into a practical application, and does not include an
inventive concept.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of independent "computing
system" claim 15, and claims 41, 42, and 45, which variously depend
therefrom. 11
CONCLUSIONS
The Examiner erred in rejecting method claims 1-8, 11-13, 43, 44,
and 46 under 35 U.S.C. § 101, as being directed to a judicial exception,
without significantly more.
The Examiner did not err in rejecting "computing system" claims 15,
41, 42, and 45 under 35 U.S.C. § 101, as being directed to a judicial
exception, without significantly more.
11 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
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DECISION
We reverse the Examiner's decision rejecting claims 1-8, 11-13, 43,
44, and 46 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 15, 41, 42, and 45
under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED-IN-PART
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