Ex Parte G. N. et al

Patent Trial and Appeal Board

Sep 29, 2017

12814564 (P.T.A.B. Sep. 29, 2017)

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.
12/814,564 06/14/2010 Harikrishna Rai G. N. 7277-97800-01 9616
24197 7590 10/03/2017
KLARQUIST SPARKMAN, LLP
121 SW SALMON STREET
SUITE 1600
PORTLAND, OR 97204
EXAMINER
PORTER, RACHEL L
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
docketing @klarquist.com
AS CChair @klarquist. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARIKRISHNA RAI G. N., ASHISH SUREKA,
SIVARAM V. THANGAM,
PRANAV PRABHAKAR MIRAJKAR,
and K. SAI DEEPAK
Appeal 2016-008389
Application 12/814,564
Technology Center 3600
Before HUNG H. BUI, JOYCE CRAIG, and AARON W. MOORE,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection2 of claims 1—3, 5—9, 11—15, 17—19, 21—25, 27—31, 33, 34,
1 According to Appellants, the real party in interest is Infosys Limited. App.
Br. 3.
2 See Final Rejection mailed June 18, 2015 (“Final Act.”); Appeal Brief filed
Dec. 22, 2012 (“App. Br.”); Examiner’s Answer mailed July 11, 2016
(“Ans.”); and Reply Brief filed Sept. 12, 2016 (“Reply Br.”).
Appeal 2016-008389
Application 12/814,564
36-40, 42-45, and 47-493, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellants’ invention relates to a method and system for performing
clinical data mining. Abstract. Claim 1 reads as follows:
1. A clinical data mining system for facilitating a user to derive
knowledge from data corresponding to a plurality of electronic
health records in a healthcare environment, the system
comprising:
a. a memory comprising program instructions
defining a workflow manager, an image mining module, a text
mining module, a data mining module, and a knowledge
generation module;
b. a processor configured to execute the program
instructions stored in the memory;
c. a repository storing data including the plurality of
electronic health records;
d. the workflow manager configured to:
create one or more workflows for executing one or
more specific data mining tasks of extracting information
from one or more electronic health records of the plurality
of electronic health records stored in the repository;
monitor the data stored in the repository in real-time
and generate an alert based on one or more criteria defined
in the one or more workflows created by the user; and
execute, in response to the generated alert, one or
more specific data mining tasks of extracting information
from one or more electronic health records of the plurality
of electronic health records stored in the repository based
on the one or more workflows created by the user;
3 The Final Action incorrectly lists claim 26 in the rejection. That claim
was cancelled in the Amendment dated May 15, 2015. The Examiner’s
Answer corrects this error, and we refer to the corrected information
hereinafter.
2
Appeal 2016-008389
Application 12/814,564
e. the image mining module in communication with
the workflow manager and configured to receive one or more
data elements as an input, the one or more data elements
comprising one or more regions associated with images, the
image mining module comprising:
an image search module configured to identify one
or more images based on the received one or more regions,
the one or more images being identified from a plurality
of images associated with the plurality of electronic health
records stored in the repository,
wherein the image mining module is further
configured to extract information from the identified one
or more images;
f. the text mining module in communication with the
workflow manager and configured to extract information from
one or more textual reports associated with the one or more
electronic health records, the information being extracted based
on the one or more data elements;
g. the data mining module in communication with the
workflow manager and configured to extract information from
structured data associated with the one or more electronic health
records; and
h. the knowledge generation module, in
communication with the image mining module, the text mining
module and the data mining module, configured to generate one
or more reports based on the extracted information, the one or
more reports being generated for facilitating the user to analyze
the information, wherein knowledge is derived based on the
analysis.
App. Br. 21 (Claims App’x).
REJECTION
Claims 1-3, 5-9, 11-15, 17-19, 21-25, 27-31, 33, 34, 36-AO, 42-A5,
and 47 49 stand rejected under 35U.S.C. § 101 because the claimed
invention is directed to patent-ineligible subject matter.
3
Appeal 2016-008389
Application 12/814,564
ANALYSIS
We have considered Appellants’ arguments, but do not find them
persuasive of error. We agree with and adopt as our own the Examiner’s
findings of facts and conclusions as set forth in the Answer and in the Action
from which this appeal was taken. We provide the following explanation for
emphasis.
Appellants contend the Examiner erred in rejecting the claims as
directed to patent-ineligible subject matter. App. Br. 8—12. Appellants first
argue that the Examiner has not established how the claim limitations of
Appellants’ invention are related to an abstract idea and, thus, the
Examiner’s analysis has not met the requirements of clearly and specifically
articulating a prima facie case of unpatentability. App. Br. 9—12; Reply Br.
3.
We are not persuaded by Appellants’ argument. In Alice, the
Supreme Court set forth an analytical “framework for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
first step is to “determine whether the claims at issue are directed to one of
those patent-ineligible concepts,” such as an abstract idea. Id. (citing Mayo,
566 U.S. at 77—78). If the claims are directed to a patent-ineligible concept,
the second step 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.” Id. (quoting Mayo, 566 U.S. at 78). In other words, the second
4
Appeal 2016-008389
Application 12/814,564
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.
(alterations in original) (quoting Mayo, 566 U.S. at 72—73). The prohibition
against patenting an abstract idea “‘cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment’ or
adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593,
610—11 (2010) (citation omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that limitations of the independent claims are directed a series of
computer executed steps for the development and execution of a workflow
program (Final Act. 2), and that the claims describe the concepts of
comparing new information with stored information and using rules to
identify options (limitations a.—d. of claim 1) and using categories to
organize, store, and transmit information (extracted text, identified images,
extracted structured data to generate a report). Ans. 12—13; Final Act. 2—3.
This is similar to the concept of comparing new and stored information and
using rules to identify options, which is an abstract idea. See SmartGene
Inc. v. Adv. Bio. Labs. SA, 555 Fed. Appx. 950 (Fed. Cir. 2014)).
Appellants argue that the claim at issue in SmartGene4 is different
from the claims at issue in the present case. Reply Br. 4—5. Appellants
4 Appellants also argue the Examiner erred because “the claims of Cyberfone
are entirely different from the Appellants’ claimed invention.” App. Br. 11
(citing Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 Fed. Appx.
988, 993 (Fed. Cir. 2014)); Reply Br. 5. The Examiner, however, did not
cite Cyberfone in rejecting the claims, and Appellants’ argument, therefore,
is not persuasive of error. See Final Act. 2; Ans. 12—13.
5
Appeal 2016-008389
Application 12/814,564
argue that, because “the claimed invention is related to technical limitations
for performing intelligent data mining tasks by dynamically monitoring
electronic health records based on a predefined criteria, alert generation
(e.g., for an outspreading epidemic), and workflow execution in order to
initiate extraction of suitable electronic data corresponding to the generated
alert, which clearly do not relate to a non-patentable ‘idea of itself’ as
provided in Cyberfone.” App. Br. 11.
We disagree. Referring to SmartGene, the Federal Circuit found the
claims patent ineligible because they did “no more than call on a ‘computing
device, ’ with basic functionality for comparing stored and input data and
rules, to do what doctors do routinely.” SmartGene, 555 Fed. Appx. at 954.
In the instant case, the recited information extracted from images, textual
reports, and data associated with electronic health records are nothing more
than data used in an algorithmic process that uses a system (i.e., computer)
to select and adjust the data using mathematical comparisons and rule-based
processes. The claims at issue in SmartGene relied upon “expert rules” for
“‘evaluating and selecting’ from a stored ‘plurality of different therapeutic
treatment regimens.’” Id. at 955. The “expert rules” in SmartGene are
analogous to the “one or more criteria defined in the one or more workflows
created by the user” in claim 1.
The steps of claim 1 are also similar to the steps that the Federal
Circuit determined were patent ineligible in Electric Power Group LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). In Electric Power, the method
claims at issue were directed to “performing real-time performance
monitoring of an electric power grid by collecting data from multiple data
sources, analyzing the data, and displaying the results.” Elec. Power Grp.,
6
Appeal 2016-008389
Application 12/814,564
830 F.3d at 1351—52. There, the Federal Circuit held that the claims were
directed to an abstract idea because “[t]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions.” Id. at 1354.
Providing data from one system to another and outputting data for
display using generic computer components are routine and well-known
functions. Appellants have not identified any particular inventive
technology for performing those functions. Here, the advance the claims
purport to make is a process of gathering and analyzing information, then
displaying the information, and not any particular assertedly inventive
technology for performing those functions. See, e.g., Elec. Power Grp., 830
F.3d at 1354.
Examining earlier cases in which a similar descriptive nature can be
seen is sufficient to establish the disputed claims are directed an abstract
idea. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir.
2016) (explaining that when determining whether claims are directed to an
abstract idea, “both this court and the Supreme Court have found it sufficient
to compare [the] claims at issue to those claims already found to be directed
to an abstract idea in previous cases”); see also Amdocs (Israel) Limited vs.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that
the “decisional mechanism courts now apply” for deciding if claims are
directed to an abstract idea “is to examine earlier cases in which a similar or
parallel descriptive nature can be seen”).
7
Appeal 2016-008389
Application 12/814,564
For these reasons, we are not persuaded of error in the Examiner’s
finding that the claims are directed to the abstract idea of comparing new
and stored information and using rules to identify options. Ans. 12—13.
Turning to the second step of the Alice inquiry, we find nothing in
claim 1 that adds anything “significantly more” to transform the abstract
concept of comparing new and stored information and using rules to identify
options into a patent-eligible application. Alice, 134 S. Ct. at 2357. We are
not persuaded by Appellants’ arguments that the claims recite additional
elements that transform the abstract idea into a patent-eligible application.
App. Br. 16—17. Appellants assert that the claimed invention recites non­
generic functions (create, monitor, and execute) performed by the workflow
manager. Id. Appellants argue that the claimed process, when viewed “as a
whole,” comprises steps of monitoring of dynamic data, alert generation,
creation of detailed workflows, and initiation of complex data extraction
from the repositories by way of execution of workflows. Id. at 17.
According to Appellants, those steps include computer-implemented
processes that are significantly more than the alleged abstract idea. Id.
We remain unpersuaded because Appellants have not persuasively
explained how the “computer-implemented processes” add something
“significantly more” to transform the abstract concept of comparing new and
stored information and using rules to identify options into a patent-eligible
application.
Appellants also argue that, because the Examiner did not reject the
claims over prior art, the claims recite “an improvement to the field of
clinical data mining systems” and thus “an inventive concept exists in the
claimed invention.” App. Br. 17—19. Appellants’ argument is not
8
Appeal 2016-008389
Application 12/814,564
persuasive because, even if we were to conclude Appellants’ claims are
nonobvious, such finding would not necessarily lead to the conclusion that
subject matter is patent-eligible. See Ass ’n for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
Accordingly, we sustain the Examiner’s rejection under 35 U.S.C.
§ 101 of representative independent claim l5 and claims 2, 3, 5—9, 11—15,
17—19, 21—25, 27—31, 33, 34, 36-40, 42-45, and 47-49, which Appellants
have grouped with claim 1. See App. Br. 19.
DECISION
The decision of the Examiner to reject claims 1—3, 5—9, 11—15, 17—19,
21-25, 27-31, 33, 34, 36-40, 42-45, and 47^19 is affirmed.
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. § 41.50(f).
AFFIRMED
5 See 37 C.F.R. § 41.37(c)(l)(iv) (“the failure of appellant to separately
argue claims which appellant has grouped together shall constitute a waiver
of any argument that the Board must consider the patentability of any
grouped claim separately.”).
9