Ex Parte Gegner et al

Patent Trials and Appeals Board

Apr 25, 2019

14001679 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/001,679 08/27/2013 Guenter Gegner
24737 7590 04/29/2019
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.
2011P00254WOUS 4776
EXAMINER
FERNANDES, PATRICK M
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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 GUENTER GEGNER and SEBASTIAN HEELER
Appeal2018-000969
Application 14/001,679 1
Technology Center 3700
Before: CHARLES N. GREENHUT, FREDERICK C. LANEY, and
SEAN P. O'HANLON, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Koninklijke
Philips Electronics N.V. (App. Br. 1 ).
Appeal2018-000969
Application 14/001,679
CLAIMED SUBJECT MATTER
The claims are directed to a patient deterioration detection system.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A deterioration detection system for detecting deterioration of
a patient of a medical institution, said system comprising:
one or more processors programmed to:
receive attended physiological data for a patient, the
attended physiological data including measurements of a
plurality of physiological parameters of the patient;
calculate a baseline patient score for the patient from the
attended physiological data using a scoring table;
subsequently receive unattended physiological data for the
patient, the unattended physiological data including
measurements of the physiological parameters of the patient;
calculate a subsequent patient score for the patient from
the subsequently received unattended physiological data using
the scoring table;
compare the baseline and subsequent patient scores to
determine any change in the patient score; and,
a notification device configured to notify a clinician of
patient deterioration in response to a change in the patient score
exceeding a threshold.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jacobsen et al.
Swedlow et al.
Booth et al.
Hu et al.
Martin et al.
Tivig et al.
us 6,160,478
US 6,463,310 Bl
US 2007 /0276277 Al
US 2009/0093686 Al
US 2009/0216556 Al
US 2009/0289799 Al
2
Dec. 12, 2000
Oct. 8, 2002
Nov. 29, 2007
Apr. 9, 2009
Aug. 27, 2009
Nov. 26, 2009
Appeal2018-000969
Application 14/001,679
EXAMINER'S REJECTIONS
Claims 1-24 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-24 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
Claims 1, 2, 6-8, 10, 13, 16-19, 21, and 24 are rejected under 35
U.S.C. § 102(b) as being anticipated by Hu.
Claims 3-5, 11, 12, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hu and Tivig.
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hu and Jacobsen.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over and Martin.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hu, Martin, and Booth.
Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hu, Booth, and Swedlow.
OPINION
§ 112
Although set forth under the first paragraph of§ 112, the substance of
the Examiner's rejection relates to a lack of claim clarity-an issue more
appropriately addressed under the standards set forth in the second
paragraph of§ 112. Final Act. 2-3; Ans. 17-18; see MPEP §§ 2173, 2174.
The issue raised by the Examiner relates to the meaning of the recited terms
"attended" and "unattended." Final Act. 2-3. The Examiner acknowledges
( Ans. 17-18) the express definition of these terms in the Specification is:
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"Attended vital signs are vital signs obtained with the supervision of a
clinician, whereas unattended vital signs are vital signs obtained without the
supervision of a clinician." Spec. 1:27-29. However, the Examiner points
out that the characterization of data as "attended" or "unattended" depends
on the presence or absence of "supervision," which itself is a term of degree.
See Ans. 17-18 ("it is unclear what the level of supervision can mean. For
example is a nurse being at a nurses station considered supervision? Does it
require the clinician to be in the room when the data is gathered?"). There is
nothing wrong, per se, with using a term of degree to define the metes and
bounds of a claim's scope. However, in such cases the specification should
provide some standard for measuring the degree necessary to satisfy the
claim language. See MPEP § 2173 .05(b )(I) ( citing, inter alia, Seattle Box
Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984)).
This is critical so as to reasonably inform the potential infringer as to the
metes and bounds of the claim's scope. In re Hammack, 427 F.2d 1378,
1382 (CCPA 1970). It is not clear on the record before us what degree of
supervision or lack thereof is required to satisfy the claim terms "attended"
and "unattended," respectively. As, based on the Examiner's explanation,
the Examiner's rejection appears to have been set forth under the incorrect
paragraph of§ 112, Appellants have not been afforded a full and fair
opportunity to respond to the merits of this rejection. Accordingly, we
modify the Examiner's rejection under§ 112, first paragraph, to be
predicated on§ 112, second paragraph, and in doing so designate this
opinion as including a "new ground" of rejection under 37 C.F.R. § 4I.50(b)
so that Appellants may be afforded the procedural options to respond
associated therewith.
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An additional issue of claim clarity arises with regard to claim 18. A
step of "receiving the deteriorated unattended physiological data" is recited
in a "method for verifying deteriorated unattended physiological data."
Claim 18 subsequently recites steps to be followed, "in response to
intermittently receiving the unattended physiological data ... " Among those
steps is "receiving supplemental unattended physiological data" and sub-
steps that occur "in response to intermittently and/or continuously receiving
unattended physiological data." First, in regard to the "intermittently and/or
continuously receiving" phrase, it is not clear how the same data can be both
intermittently and continuously received. Second, both "unattended
physiological data" and "supplemental unattended physiological data" are
previously recited in the claim. It is not clear if the reference to "unattended
physiological data" in this clause is intended to generically refer to either of
the previously recited "unattended physiological data" or "supplemental
unattended physiological data," or if it was intended to refer only to the first
"unattended physiological data." Third, the "capturing measurements of at
least one of the physiological parameters" clause presents a similar issue
because it is unclear whether this refers to only the initially set forth
"measurements of one or more physiological parameters," or either of the
"measurements of one or more physiological parameters" or the
subsequently recited "additional measurements of at least one of the
physiological parameters." Fourth, the last clause adds to this confusion
referring to "the measurements of the deteriorated unattended physiological
data" when the claim previously recited only "measurements of one or more
physiological parameters" and "additional measurements of at least one of
the physiological parameters," neither of which provide clear antecedent
basis for "the measurements of the deteriorated unattended physiological
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data" Fifth, the last clause also recites a comparison between these
measurements and "corresponding measurements of the supplemental
unattended physiological data" when no such measurements were previously
recited as having been made according to the claim. It is not clear if this
limitation was intended to introduce new measurements or demonstrates that
the "supplemental" aspect was inadvertently omitted from one of the
previously set forth measuring steps. For the foregoing reasons, we are
unable to discern with sufficient certainty the scope of claim 18. Thus, in
addition to the reasons discussed with regard to the attended/unattended
language, we also reject claim 18 under 35 U.S.C. § 112, second paragraph
for these additional reasons.
§ § 102 and 103 rejections based on Hu
With regard to independent claims 1, 7 and 20 the Examiner asserts
without specific citation to supporting evidence that the temporal aspects of
the claims are satisfied by the cited paragraphs of Hu. Final Act. 5 ( citing Hu
paras. 29, 31, 46, 61; figs. 2, 3 ); Ans. 18 ("Examiner has shown in the Office
Action how [Hu] teaches this temporal order as shown on pages 5-6 of the
Office Action"). We have carefully studied the cited portions of Hu and it is
not apparent how the Examiner arrived at this conclusion. App. Br. 12-16. A
rejection must be set forth in sufficiently articulate and informative manner
as to meet the notice requirement of§ 132, such as by identifying where or
how each limitation of the rejected claims is met by the prior art references.
In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R.
§ 1.104( c )(2) ("When a reference is complex or shows or describes
inventions other than that claimed by the applicant, the particular part relied
on must be designated as nearly as practicable. The pertinence of each
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reference, if not apparent, must be clearly explained and each rejected claim
specified."); Gechter v. Davidson 116 F.3d 1454, 1460 (Fed. Cir. 1997)
(PTO must create a record that includes "specific fact findings for each
contested limitation and satisfactory explanations for such findings."). The
Examiner goes on to state that "Applicant provides no technical reason or
functionality for the temporal order and thus the order is considered a design
choice which is obvious to one of ordinary skill in the art." Ans. 18. If fully
developed, this type of reasoning may suffice to demonstrate unpatentability
under 35 U.S.C. § 103(a). However, the Examiner's reasoning in this regard
is ofno relevance to the question of anticipation under 35 U.S.C. § 102(b).
Insofar as the rejection under 35 U.S.C. § 103(a) is concerned, the Examiner
does not provide further evidence or reasoning to further develop this
position or otherwise address this shortcoming in the § 102 rejection.
"[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int'l. v. Teleflex, 550 U.S. 398,418 (2007). For the
foregoing reasons, the prior art rejections of claims 1, 7, and 20, and of those
claims depending therefrom, cannot be sustained on the basis set forth by the
Examiner.
Unlike claims 1, 7 and 20, claim 18 presents such significant issues
related to indefiniteness that we are unable to render a definitive decision on
the merits of the Examiner's anticipation rejection against independent claim
18 (App. Br. 14--15), and its dependent claims 19 and 24, at this time. Before
a proper review of the rejection under 35 U.S.C. § 102(b) can be performed,
the subject matter encompassed by the claims on appeal must be reasonably
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understood without resort to speculation. Since claim 18 fails to satisfy the
requirements of the second paragraph of 35 U.S.C. § 112 we reverse the
rejection under 35 U.S.C. § 102(b) without reaching the merits of that
rejection at this time. See, e.g., In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(A prior art rejection cannot be sustained if the hypothetical person of
ordinary skill in the art would have to make speculative assumptions
concerning the meaning of claim language.).
§ 101
In arguing the§ 101 rejection, sections S, T, V, and W of the brief
argue aspects of claim 1. Section U argues claim 7 specifically. Appellants
briefly point out what each of independent claims 1, 7, 18 and 20 recites in
section R (App. Br. 25), and briefly point out what claim 23 recites in
section S (App. Br. 27). We consider claims 1 and 7 as the only claims
separately argued under 37 C.F.R. § 37(c)(l)(iv) and note that merely
pointing out what a claim recites coupled with a general assertion the claim
satisfies the statutory requirements does not suffice to amount to a separate
argument for that claim under 37 C.F.R. § 37(c)(l)(iv). See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011).
Although, as discussed above, there is some uncertainty as to the
scope of claims 1 and 7, the issues discussed above do not prevent us from
generally agreeing with the Examiner that neither claim 1 nor claim 7, as
presently set forth, defines statutorily eligible subject matter. 2 We address
2 It is noted that the USPTO issued Revised Patent Subject Matter Eligibility
Guidance (84 Fed. Reg. 50) on January 7, 2019 available at
https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf
(last visited Mar. 27, 2019)
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only the issues raised by the Appellant concerning the Examiner's position.
See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010).
As the Examiner correctly points out, claims 1 and 7 recite steps
involved in the gathering of data, 3 performing calculations on that data, 4 and
outputting the results of those calculations 5. These calculations constitute
mathematical concepts falling within the purview of abstract ideas held
ineligible6 and gathering and outputting data in routine, generic, or
3 "receive attended physiological data for a patient"; "subsequently receive
unattended physiological data for the patient";
4 "calculate a baseline patient score for the patient from the attended
physiological data using a scoring table"; "calculate a subsequent patient
score for the patient from the subsequently received unattended
physiological data using the scoring table"; "compare the baseline and
subsequent patient scores to determine any change in the patient score"
5 "a notification device configured to notify a clinician of patient
deterioration in response to a change in the patient score exceeding a
threshold"
6 Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of hedging ...
reduced to a mathematical formula ... is an unpatentable abstract idea[.]");
Diamond v. Diehr, 450 U.S. 175, 191 (1981) ("A mathematical formula as
such is not accorded the protection of our patent laws'') ( citing Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)); Parker v. Flook, 437 U.S. 584, 594 (1978)
("[T]he discovery of [ a mathematical formula] cannot support a patent
unless there is some other inventive concept in its application."); Benson,
409 U.S. at 71-72 (concluding that permitting a patent on the claimed
invention "would wholly pre-empt the mathematical formula and in practical
effect would be a patent on the algorithm itself'); Mackay Radio &
Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) ("[A] scientific
truth, or the mathematical expression of it, is not patentable invention[.]");
SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a "series of mathematical calculations based on
selected information" are directed to abstract ideas); Digitech Image Techs.,
LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014)
(holding that claims to a "process of organizing information through
mathematical correlations" are directed to an abstract idea); Bancorp Servs.,
LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280 (Fed.
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conventional ways has repeatedly been held to be extra-solution activity that
fails to remove the claim from the realm of the abstract. See Electric Power
Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016). 7
Appellants' alleged solution to the purported problem of unreliable
unattended patient measurements (App. Br. 25; Spec. 1) is set forth only as a
series of broad abstractions and therefore fails to integrate the purported
solution into a practical application. The Examiner correctly points out that
claims 1 and 7 before us are very similar to the claims held ineligible in
Electric Power. Ans. 23-25. Appellants essentially dismiss the Examiner's
position in this regard with very minimal analysis. See Reply. Br. 17.
Appellants' claim lacks the practical, specific, or particular application
necessary to avoid preempting others from making well-known comparisons
of data from well-known sources to accurately determine deterioration of the
patient. See, e.g., Electric Power 830 F.3d at 1356. Turning to the data
gathering and outputting steps, as discussed above, those do not provide an
inventive concept amounting to significantly more than the judicial
exception, the calculation, itself, Appellants' claim would improperly
monopolize a healthcare provider's ability to compare deterioration data
obtained through unattended means to that obtained when attended by a
clinician. Comparing attended and unattended forms of patient physiological
data is a basic and fundamental tool of providing healthcare. For these
reasons, claims 1 and 7 fail to meet the standard for patent eligibility under §
101.
Cir. 2012) (identifying the concept of "managing a stable value protected
life insurance policy by performing calculations and manipulating the
results" as an abstract idea).
7 See, e.g., MPEP §§ 2106.05(e), (g) and cases cited therein.
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DECISION
The Examiner's rejection of claims 1-24 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
Pursuant to 37 C.F .R. § 41.50(b ), we enter new grounds of rejection
against claims 1-24 under 35 U.S.C. § 112, second paragraph.
The Examiner's rejection of claims 1-24 under 35 U.S.C. § 101 is
affirmed.
The Examiner's prior-art rejections are reversed.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
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(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED8; 37 C.F.R. § 4I.50(b)
8 "The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed" 37 C.F.R. § 4I.50(a).
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